Justices Conclude Warhol Foundation Violated Copyright With Prince Portrait
WASHINGTON — A divided Supreme Court on Thursday concluded that the pop artist Andy Warhol infringed on a photographer’s copyright when he used her work as the basis for a portrait of Prince that appeared in Vanity Fair magazine.
In a 7-2 ruling the justices held even though Warhol’s cropping and addition of various colors to Goldsmith’s original photograph may have added a “new expression” or “meaning or message” to the underlying photograph, in the commercial context the original and Warhol’s version “share substantially the same purpose,” and therefore violated the “fair use” provision of copyright law.
The case arose from what at the time was a fairly routine magazine assignment. In 1981, Newsweek hired Lynn Goldsmith, then an established rock photographer, to take a series of photographs of Prince in concert and at her studio.
At the time, Goldsmith, a Detroit, Michigan native who joined the staff of Elektra Records in the early 1970s, was well-known for her work in television — producing ABC-TV’s “In Concert” program — and for chronicling the lives and careers of the Rolling Stones, Bruce Springsteen and Michael Jackson, among others.
In the end, Newsweek published one of the concert photos and Goldsmith hung on to the in-studio portraits she had taken.
Three years later, Prince was a superstar. His 1982 album “1999” had elevated him from being a critic’s favorite to mass popular appeal. If anything, his 1984 follow up, “Purple Rain” and the accompanying film, made him an even bigger star.
It was at this point that Vanity Fair hired Warhol to create an image to appear with an article it had in the works entitled “Purple Fame.”
According to court documents, the magazine paid Goldsmith $400 to license one of the portrait shots she had taken in 1981, agreeing that though it would only be used as an “artist reference,” she would receive credit for the photograph and it would only be used once, in the November 1984 issue in which “Purple Fame” appeared.
Warhol then went ahead and used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with the article.
Unbeknownst to Goldsmith, however, Warhol didn’t just create one image based on her work, but a total of 16. Each was altered in different ways to create an “Impersonal” and “mask-like” appearance that the Warhol Foundation would later argue was the artist’s unique statement on the nature of extreme fame.
In 1987, Warhol died suddenly while supposedly making a good recovery from gallbladder surgery at a New York City hospital.
Shortly thereafter, the Andy Warhol Foundation for the Visual Arts, Inc., assumed ownership of his work, including the 16 images in what was by then called “The Prince Series.”
When Prince died after accidentally overdosing on fentanyl in 2016, Vanity Fair decided to publish a special issue celebrating his life and paid the foundation $10,250 to use a different image — “Orange Prince” — from the series for the cover.
Goldsmith, the court documents said, didn’t know the other images existed until she saw the magazine on a city newsstand.
Angered that her image was used without permission and that she received no money nor credit, Goldsmith notified the foundation of her belief her copyright had been infringed upon. The foundation responded by suing her, seeking a declaration from court that her copyright had not been infringed upon. Goldsmith then filed a counter suit.
In hearing the case, The U.S. District Court considered the four fair use “factors” laid out in 17 U. S. C. §107.
The law states that notwithstanding specific exemptions, “the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means … for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.”
In determining whether the use made of a work in any particular case is a fair use, the law says the factors to be considered include:
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
In the end, the federal judge ruled the four-factor analysis favored the foundation. But the 2nd U.S. Circuit Court of Appeals disagreed, finding all four fair use factors favored Goldsmith.
By the time the case reached the Supreme Court last fall, the sole question presented was whether the first fair use factor — “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes” — weighed in favor of foundation’s commercial licensing to Condé Nast.
The problem with the foundation’s argument, a majority of the justices concluded, was that in their view the first fair use factor focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism.
In the end, said Justice Sonia Sotomayor, writing for the majority, “Lynn Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists.
“To hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals,” she said.
But Justice Elena Kagan, writing in a dissent in which she was joined by Chief Justice John Roberts, vehemently objected to the majority’s reasoning.
“You’ve probably heard of Andy Warhol; you’ve probably seen his art,” she wrote. “You know that he reframed and reformulated — in a word, transformed — images created first by others. Campbell’s soup cans and Brillo boxes. Photos of celebrity icons: Marilyn, Elvis, Jackie, Liz — and, as most relevant here, Prince.
“That’s how Warhol earned his conspicuous place in every college’s Art History 101,” she continued.
“Inhibit[ing] subsequent writers and artists from ‘improv[ing] upon prior works’ — as the majority does today — will frustrate the very ends sought to be attained by copyright law. … It will stifle creativity of every sort. It will impede new art and music and literature. It will thwart the expression of new ideas and the attainment of new knowledge. It will make our world poorer,” she said.
Madhavi Sunder, the Frank Sherry Professor of Intellectual Property at Georgetown University and an expert on copyright, communications, technology and intellectual property law told The Well News Thursday called the Warhol Foundation ruling “a real sea change for copyright law” and the first significant decision by the court narrowing fair use “in decades.”
“And what it does is, it really narrows the fair use doctrine,” Sunder said. “The fair use doctrine is supposed to give breathing space to creators. With it, we’re balancing the need to incentivize creators with the promise of a copyright to protect their work for a limited period of time against the need for new creators to be able to borrow from works that pre exist in order to create new ones.
“Historically, fair use has played a pivotal role in keeping the engine of free expression going,” she continued. “That changed today. … and it’s not an exaggeration to say you can read this decision to almost be a chokehold on that breathing space.”
In Sunder’s reading of the decision text, what the majority has said is, “If you’re going to take a copyrighted work and try to make something new of it, you have to have a distinct justification for your actions.
“In other words, you now have to show that this work is useful for making you new work. But there’s a catch. The way the justices describe or understand “usefulness” is not the way an artist would think of usefulness.
“An artist wants to take images and raw materials from the world around us, recast it, remix it, and burn it to create something new, with a wholly different message,” Sunder said. “But they don’t necessarily have a ‘reason’ for the raw materials they choose, or necessarily think of raw materials as useful parts – you know, we’re not talking about mechanical engineering, we’re talking about art.
“I think the court majority takes a narrow view of how artists need existing materials to make new works, and I think that’s to the detriment of artists,” she said.
Sunder said she understands that many creative people championed Goldsmith, thinking of her as the lesser known creator in the situation laid out in the litigation and wanting her to get recognition and remuneration for her work.
“At the same time though, artists don’t want too many barriers and royalties and permissions to stand in the way of their ability to create works of art. And I do think this decision is going to ultimately create more barriers and more of a “permissions” culture that could ultimately stifle creativity,” she said.
Sunder also sees Thursday’s ruling as the court turning away from the 123-year-old precedent set by 1903 case Bleistein v. Donaldson Lithographing Company, in which the court found for the first time that advertisements were protected by copyright.
That case revolved around the work of George Bleistein, an employee of the Courier Lithographing Company, who created a series of posters for a traveling circus. When the circus ran out of the original set of posters, it went to a competitor of Courier, the Donaldson Lithographing Company and asked it to print more.
The Courier and Bleistein sued, and Donaldson objected on the basis that the posters were mere advertisements that should not be considered eligible for copyright protection.
Writing for the Supreme Court majority, Justice Oliver Wendell Holmes Jr. said, “It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.
“At the one extreme, some works of genius would be sure to miss appreciation,” Holmes wrote. “Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time.
“At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge,” he continued. “Yet if they command the interest of any public, they have a commercial value — it would be bold to say that they have not an aesthetic and educational value — and the taste of any public is not to be treated with contempt.”
“That statement has been the rule in copyright law ever since,” Sunder said. “Judges aren’t supposed to be making artistic determinations. And that means we basically are more accepting of the artistic merit of more work. I think that’s a good rule.
“This decision calls that long-standing approach into question with seven justices weighing in on the meaning and message and the artistic value of Andy Warhol’s “Orange Prince.”
In a written statement, Electronic Frontier Foundation attorney Cara Gagliano, who represented the Warhol Foundation, said, “We are still digesting the opinion, but we are glad to see that the Supreme Court did not adopt the Second Circuit’s extreme interpretation of the first fair factor use.
“In finding that the Warhol Foundation’s use was not transformative, the court construed the alleged infringing use narrowly — ‘to illustrate a magazine about Prince with a portrait of Prince,'” Gagliano said.
“And it then found that, in combination with the use’s commerciality, the first factor favored Goldsmith,” she continued. “In applying the decision going forward, lower courts should note both that the opinion is limited by the facts of the case and that it substantially reaffirms prior formulations of this part of the fair use analysis.”
But A.B. Miner, founding director and chief curator of the Georgetown University Art Galleries and an associate professor of Museum Studies at the institution, remained disturbed by the ruling.
“It sets a precedent for infringement on creative freedom. There is a history of important contribution to the contemporary art landscape by artists employing this strategy: appropriation art,” he said. “Would we outlaw sampling by musical artists? How would that impact popular music and popular culture? There is a fine line of course, but it’s one artists know how to walk.”
Dan can be reached at [email protected] and at https://twitter.com/DanMcCue