There has been much publicity concerning the case which has now reached, on final appeal, the US Supreme Court, where the Andy Warhol Foundation for the Visual Arts is claiming ‘fair use’ in relation to a Warhol series of works derived from a photograph by Lynn Goldsmith.
The case deals with the Prince Series created by Warhol based on Goldsmith’s photograph of the (now late) musician Prince, and questions whether Warhol’s changes were sufficiently transformative from the original photograph to fall within fair use.
In 1981 Goldsmith had photographed Prince at the start of his musical career and three years later magazine Vanity Fair obtained a licence to use a single black and white image taken by Goldsmith to be used as an ‘artistic reference’.
Vanity Fair then commissioned Warhol who created a highly colourised print of just Prince’s head from the photograph.
Warhol created a further 15 variants of the Prince portrait. One of these, the Orange Prince, was used in 2016 by Vanity Fair’s parent company Condé Nast when it published a commemorative magazine after Prince’s death. Goldsmith received no credit as the source image, and only the Foundation was attributed.
Goldsmith informed the Foundation she believed the additional works were copyright violations of her photograph.
The question for the justices who have been looking at the case which reached the Supreme Court last year is whether that second use – for which the magazine did not pay Goldsmith – infringes Goldsmith’s copyright in the photograph on which Warhol based all the images.
The English way
In English law there is an exception to breach of copyright known as ‘fair dealing’ but this is rather different and narrower than the ‘fair use’ defence existing across the pond.
‘Fair dealing’ enables noncommercial research or private study; criticism or review; or reporting of current events.
Factors determining whether such activities are indeed fair include whether the activity commercially competes with the proprietor’s exploitation of the copyright work; if there has been prior publication of the copyright work; and whether a fair-minded and honest person would have dealt with the copyright work in the same way, and the extent to which use of the copyright work is necessary for the permitted purpose.
The three permitted activities (i.e. non-commercial research or private study; criticism or review; reporting of current events) are very specific.
But many believe that the US ‘fair use’ exception/defence is a recipe for litigation.
The American way
In determining ‘fair use’ US Judges consider four factors:
1. The purpose and character of the use;
2. The nature of the copyright work;
3. The amount and substantiality of the portion taken; and
4. The effect of the use upon the potential market.
One commentator has stated that ‘unfortunately, the only way to get a definitive answer on whether a particular use is a fair use is to have it resolved in Federal Court’.
It is the first factor which, it seems, provides a launch-pad for the esoteric arguments, made on behalf of the Andy Warhol Foundation, that Warhol ‘transformed’ the Goldsmith image and gave it ‘a new meaning and message’.
Warhol’s Counsel referred to his client’s ‘transformative meaning’, and ‘new and important follow – on expression’ to justify the difference between the Goldsmith photograph and the Warhol creation.
This sort of phraseology seems peculiar to the US ‘fair use’ argument.
The Counsel proclaimed that to find against him would undermine ‘copyright’s key goal, promoting creativity for the public good’.
He argued that the Court that first heard the case, the District Court, correctly recognised that the transformative meaning or message ‘was so significant here that that would mean that we win under Factor 1, and …for the other reasons under the other Factors that we also win the whole case’.
That District Court’s decision was reversed on appeal to the Second Circuit. Hence the final appeal to the US Supreme Court by the aggrieved Warhol Foundation, seeking another reversal.
One of the Judges gave the Warhol Counsel a rough time, pointing out that both photographs may very likely be used in the same market – i.e. a big point against the Warhol Foundation under Factor 4.
The Counsel continued, arguing that the particular magazine article that was being illustrated with the Warhol image – ‘Purple Fame’, all about Prince – was an article that would “want a Warhol-type work that has as its meaning or message a picture of Prince that shows him as the exemplar of …. the dehumanising effects of celebrity in America”.
There are then questions from the Court about how to determine what the “new meaning or message” is.
The Counsel argued that sometimes the Judges determine it themselves, sometimes it is by way of evidence from the creator of the work, and sometimes it is expert evidence.
He went on to say that – if his defence is disallowed – struggling young artists would be intimidated and that they “don’t want to have to be ‘tied up in litigation’….”
He did acknowledge, however, that if just the colour of a painting is changed by a subsequent artist then he may be “just a knock-off artist making a bogus claim to new meaning or message …”
The Judges then return to giving the Counsel a hard time because both photographs were for magazines – i.e. pitched at the same market (Factor 4). The Counsel responds that the audience for Warhol is very different to the audience for Goldsmith.
One Judge then claimed that the Counsel’s argument poses “an existential threat to photographers”.
The Counsel retorted that “the kind of transformation that is important here … creates a new original work in a fundamental way … because it has a different meaning or message.”
Another Judge then attacked the Counsel on the meaning of “purpose” in Factor 1, saying this could be just ‘commercial purpose’. The Counsel responds that it could also include “meaning or message”, i.e. that the one does not exclude the other.
Time for Counsel for Goldsmith to perform.
She succinctly summarised: “Petitioner (i.e. the Warhol Foundation) argues adding new meaning is a good enough reason to copy for free. But that test would decimate the art of photography by destroying the incentive to create the art in the first place…”
It was then the turn of Counsel on behalf of the US Government (as an amicus curiae or ‘friend of the court’ with an interest in the case) taking Goldsmith’s side:
“Using another artist’s work as a starting point to turn around and compete directly with their original has never been considered fair.”
The Judges’ decision is expected in a matter of weeks.
Milton Silverman is senior commercial dispute resolution partner at Streathers Solicitors LLP, London.
