The U.S. Supreme Court will review a ruling that an Andy Warhol print infringed a photo of Prince as it weighs non-software fair use for the first time in decades.
The Andy Warhol Foundation told the high court that a U.S. Court of Appeals for the Second Circuit decision threatened “draconian consequences” for creations deriving inspiration from other works. The court held that use of Warhol’s stylized color print on the cover of Vanity Fair in 2016 infringed photographer Lynn Goldsmith’s 1981 photo of Prince.
The justices will have an opportunity to offer guidance for determining when using an old work as inspiration or a component for a new work alters its expression and purpose enough to be fair use.
“I’m so excited. I’ve been writing about the issue of fair use in contemporary art for a long long time,” art law professor Amy Adler of New York University said. “It’s a very tricky and difficult question to determine whether something is fair use of another work, so in that sense the Supreme Court will have its work cut out for it.”
The case hinges largely on the transformative use concept introduced by the Supreme Court in the 1994 decision Campbell v. Acuff-Rose Music Inc. There the high court found rap group 2 Live Crew’s parody of “Pretty Woman” transformed the Roy Orbison song, so it didn’t infringe. The transformativeness aspect was incorporated into the four-part analysis’s first factor, which focuses on analyzing the nature of the allegedly infringing work.
The high court will hopefully clarify what’s appropriate under the four-factor statutory fair use analysis, art and copyright attorney Sergio Munoz Sarmiento said. He also said he hoped the Supreme Court will “gut” the “horrific transformative test” created by Campbell, “making sense of this mess we’ve had since” then. He said he’s one of few art lawyers who backs the Second Circuit outcome and rejects current application of transformative doctrine.
But whether attorneys worry more about the curtailing of creator rights or of artistic freedom and free expression, they generally agree the high court’s decision will weigh heavily on future copyright cases.
“I think everybody’s very excited and nervous at the same time,” Sarmiento said.
No ‘Bright Lines Here’
The Second Circuit reversed a New York federal court’s finding that Warhol’s work was fair use because it transformed the photo and added new expression and meaning.
The appeals court chided the lower court for playing “art critic” and subjectively deciding on summary judgment that the expressions differed. It noted Goldsmith’s rights to derivatives of her works under copyright law, as well as the market impact on Goldsmith’s potential to license the photo to a magazine.
Adler, who has participated on friend-of-the-court briefs backing the Warhol Foundation, described the “art critic” criticism as an effort to remove subjectivity from the fair use analysis. But she called it a mistake by the court to “pretend that setting forward this new narrow standard of whether a work ‘recognizably derives’ from another” removed subjectivity. That standard itself is also subjective, she said.
She also pointed to the importance of fair use as a First Amendment check to ensure free expression.
“I think a lot of people had the sense that fair use law got too permissive, but even if that were so, the Warhol case severely constricts fair use law beyond what I believe the Supreme Court laid out in” Campbell, Adler said.
Thomas Maddrey, general counsel for the American Society of Media Photographers, said the high court providing a better understanding of transformative use is a good thing as different circuits don’t uniformly apply it. But Maddrey, who wrote a brief backing Goldsmith, said he believed the Second Circuit got it right.
“Broadening fair use in substantial ways would be detrimental to millions of creators and copyright owners,” he said.
A tricky part about analyzing whether art transforms stems from the difference in legal thinking and art thinking, copyright attorney Sarah C. Odenkirk of Cowan, DeBaets, Abrahams & Sheppard LLP said. Courts want to know a work’s purpose while artists intentionally leave it vague, letting the beholder decide. Courts ultimately take a holistic approach in cases and avoid bright lines, which “makes sense because you can’t have bright lines here,” she said.
“These are the questions we get all the time. Artists saying, ‘I’ve done XYZ, is this transformative?’ Maybe? Unfortunately the only way you’re going to find out is you’re going to have to get sued and have a court rule,” Odenkirk said. “There’s no formula.”
Latham & Watkins LLP represents the foundation. Williams & Connolly LLP represents Goldsmith.
The case is Andy Warhol Found. v. Goldsmith et al., U.S., No. 21-869, cert. granted 3/28/22.
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