*The views expressed in this article do not represent the views of Santa Clara University.
Left: Lynn Goldsmith’s Portrait of Prince. Credit: Lynn Goldsmith (taken from Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021), cert. granted, 212 L. Ed. 2d 402, 142 S. Ct. 1412 (2022))
Right: Andy Warhol’s commissioned image of prince, as seen in Vanity Fair’s Purple Flame Article. Credit: Andy Warhol and Vanity Fair (taken from Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021), cert. granted, 212 L. Ed. 2d 402, 142 S. Ct. 1412 (2022))
On December 3, 1981, respected photographer Lynn Goldsmith was tasked with photographing the up-and-coming musical icon Prince. Goldsmith, well known for her ability to capture the emotion of famous musicians and bring to life the individual behind the famous figure, personally applied makeup to Prince, selected his wardrobe, and arranged the lighting for the shoot. According to Goldsmith, the introverted Prince was nervous and uncomfortable during the photoshoot and only allowed her to take 23 photographs before leaving.
Several years later, in 1984, Goldsmith, through her agency, LGL, licensed one of the photographs of Prince to Vanity Fair as an artist reference. With this reference, Vanity Fair commissioned the famed visual artist Andy Warhol to create an image of Prince in his distinct pop art style. The artwork was published alongside an article about Prince in the November 1984 Issue, giving credit to both Goldsmith and Warhol.
That publication marked the end of the licensing agreement between Vanity Fair, Goldsmith, and Warhol and the beginning of a legal saga culminating in the Supreme Court of the United States (“SCOTUS”) granting certiorari in March of this year to settle the dispute. The question at hand: did Andy Warhol's subsequent actions result in works of art protected by the fair use doctrine, or are they a blatant and derivative rip-off of a famed photographer's work?
The controversy began after the publication of the November 1984 Vanity Fair article when Warhol created 15 additional pieces of art based on Goldsmith's photograph. These 16 images became known as the "Prince Series" and consisted of silkscreen portraits on canvas and drawings on paper, all of Prince.
After Andy Warhol died in 1987, the Andy Warhol Foundation for the Visual Arts (“AWF”) gained ownership of the title and copyright of the Price Series. Over the course of almost 20 years, AWF sold or transferred custody of 12 of the pieces to third parties. The four remaining pieces were transferred to The Andy Warhol Museum. AWF has continued to license the images for use in magazines, museums, and other artistic endeavors.
Remarkably, Goldsmith claims she was not made aware of the Prince Series until more than 30 years after the pieces were created. Shortly after the death of Prince on April 22, 2016, the parent company of Vanity Fair, Condé Nast, contracted with AWF to license the original Prince artwork linked to the 1984 article cover. Condé Nast ultimately licensed a different piece from the Prince Series and published it on the cover of a tribute edition of the magazine in May 2016. Goldsmith was not contacted or credited in relation to this cover.
After learning of the Prince Series, Goldsmith contacted AWF and informed them they were infringing on her copyrighted photograph of Prince. In turn, AWF sued Goldsmith claiming non-infringement and fair use. Goldsmith countersued for copyright infringement. Ultimately, the District Court for the Southern District of New York ruled in favor of AWF. The court found the work was transformative and thus protected under the fair use doctrine. The fair use doctrine allows individuals to use copyrighted work based on a four-factor test analyzing the (1) purpose and character of a work; (2) nature of the copyrighted work; (3) amount and substantiality of the portion used in comparison to the copyrighted work; and (4) effect on the market or value of the copyrighted work. Works that are deemed to be transformative are more likely to be considered fair use based on the purpose and character of the secondary work and the nature of the copyrighted work.
The District Court found the work was transformative primarily because of how the work was perceived: a masterpiece created by a founder of the pop art movement and an iconic image in pop culture, Andy Warhol. Lynn Goldsmith subsequently appealed the District Court ruling. The United States Court of Appeals for the Second Circuit heard the case, overruled the District Court ruling, and found the work was merely derivative and not transformative. Complicating the matter, the Appellate Court chose to implement a new test to ascertain whether a work is transformative by merely analyzing the work compared to the original rather than considering how the work was perceived.
The preceding test, applied by the District Court in this case, analyzed whether a work was derivative or transformative based on whether or not a person believed the work was transformative—a rather subjective test. The Circuit Court opted to analyze the difference between transformative and derivative by objectively analyzing if the work is “fundamentally different and new” from the original and embodied an “entirely distinct artist purpose” so that it may stand apart from the original.
This test, if implemented, would no longer require that judges act as art critics and would simplify future fair use cases by better differentiating between what is derivative and what is transformative. However, the test applied by the District Court has case precedent and thus carries more weight. Ultimately, SCOTUS will decide which test to apply. Their decision will have a lasting impact on fair use cases.
SCOTUS heard Andy Warhol Foundation v Goldsmith on October 12, 2022, two days before this article was published, so their ruling cannot yet be surmised. This holding will be particularly impactful because SCOTUS doesn’t hear many copyright cases, about one a year on average. Combining this element with the start of Justice Ketanji Brown Jackson’s tenure in late June, this complex copyright case could go in any direction.
Several factors can be analyzed when predicting whether SCOTUS will rule in favor of AWF or Goldsmith. Since 2007, SCOTUS has reversed 71% of Circuit Court Decisions and 65% of Second Circuit Court Decisions. Statistically, that may indicate that they will overrule the Second Circuit’s new test and rule in favor of AWF.
So, the question to be answered is a question that has plagued the courts and attorneys alike. Will SCOTUS uphold a confusing, subjective test based on precedent, or opt to adopt a new test meant to clarify the difference between transformative and derivative work? We will have to wait for their opinion, but to be sure, SCOTUS’s ruling will have a profound and lasting impact on artists’ rights not only to create but protect their work.