Warhol v Goldsmith: All’s fair in Art & War?
As the dispute between the Warhol Foundation and Lynn Goldsmith reaches the US Supreme Court, we consider the road to Washington and the issues at stake
Last week the United States’ Supreme Court heard oral argument in The Andy Warhol Foundation v Lynn Goldsmith - a copyright dispute over what is (and is not) permitted under the US doctrine of “fair use”. Given the case’s potential impact on the market for certain art works by Warhol and other artists who appropriate the work of others without permission, it was somewhat fitting that the hearing before the nine US Supreme Court Justices at 10AM Eastern Time on 12 October 2022 coincided with the VIP previews of Frieze in London – where several Warhol works hung above the hallowed turf of Regent’s Park.
Once bitten
Warhol did not initially seek permission from the brands or photographers whose work he immortalised through his silkscreen process. As a result, he was sued for copyright infringement at least three times in the US courts during his lifetime by the creators of the source imagery in his now iconic Flowers (1964), Race Riot (1964) and Jackie Kennedy (1966) works. Those three claims were settled out of court, but they placed copyright firmly on Warhol's radar from 1966 - when he was sued by Patricia Caulfield - and he began taking his own photographs or securing licenses from the source photographers to mitigate legal risk.
Prince Rogers Nelson (aka/fka “Prince”), photographed by Lynn Goldsmith (1981)
‘Purple Fame’
Fast-forward to 1984. Vanity Fair magazine was preparing a feature on the musician then-known as Prince whose ‘Purple Rain’ album was the talk of the town. The article would be titled ‘Purple Fame’ and the magazine approached the acclaimed artist-photographer Lynn Goldsmith’s licensing agency for a one-off permission to use her 1981 image of Prince as an artist reference. An artist reference allows another artist to create a derivative work based on Goldsmith’s portrait.
Extract of licence issued by Goldsmith’s agency to Vanity Fair. Note deletion of “or reproduce”.
Goldsmith’s agency issued a well-drafted licence (partly shown above) to the magazine specifying the parameters of its permission and charged a USD 400 licensing fee. Vanity Fair did not - and was not required to - inform Goldsmith that the artist they had commissioned was Andy Warhol. Vanity Fair published its piece on Prince in November 1984 – illustrated by Warhol’s “Purple Prince” – and Goldsmith was credited as the image source as required by the licence.
Vanity Fair’s 1984 “Purple Fame” article and accompanying Warhol illustration of Prince. (Source: US Court Documents)
Creative licence
Unbeknownst to Goldsmith – and apparently remaining unknown to her until Prince’s death in 2016 – Warhol did not stop with the “Purple Prince” commission. Instead, he created 16 works in a variety of colour-ways which together comprise his “Prince Series”.
Warhol’s 16-work Prince Series. (Source: US Court Documents)
On Prince’s death in 2016, Condé Nast published a special commemorative edition with Warhol’s “Orange Prince” on the cover – which Goldsmith had neither seen nor authorised. Condé Nast had obtained a license from The Warhol Foundation to use “Orange Prince” - and paid a USD 10,000 licence fee to the Foundation. Goldsmith received no payment or image credit. Not unreasonably, Goldsmith argues that by licensing works from the Prince Series to illustrate articles about Prince (not Warhol), the Foundation is competing in the same licensing market as her 1981 photograph of Prince.
The 2016 Condé Nast magazine cover and Goldsmith’s 1981 Prince Photograph.
Goldsmith notified the Foundation of its apparent violation of her copyright in the Prince photo and threatened legal action if an agreement could not be reached. Turning defence into attack, the Foundation filed proceedings in 2017 against Goldsmith before the New York District Court seeking a declaratory judgment that Warhol’s Prince Series works were non-infringing or, in the alternative, that they made “fair use” of Goldsmith’s photograph. Goldsmith and her agency counter-claimed for copyright infringement.
Road to the Supreme Court
The 1st Instance District Court ruled in 2019 that Warhol’s use was permitted “fair use” – meaning Warhol had not committed copyright infringement. Goldsmith appealed to the Second Circuit Court of Appeals, which is probably the most important US federal appeals court for copyright cases since it hears appeals from New York. The Second Circuit ruled decisively in Goldsmith’s favour in March 2021, overturning the District Court and finding Warhol’s use was not fair. The Warhol Foundation petitioned the Supreme Court to hear its appeal in late 2021 and permission was granted in March 2022. Given that the US Supreme Court rejects almost all of the cases it is asked to review each year - it accepts just 100-150 appeals from over 7,000 petitions – and has never heard a fair use case involving the visual arts, art lawyers and the wider art world await the decision with breath that is bated.
Copyright law in context
In general, copyright regimes around the world seek to incentivise creativity by granting creators exclusive rights to copy and profit economically from their qualifying works – and to prevent others from doing so – for a limited period. Like some artistic mediums, that requires the drawing of lines. The dividing line between acceptable taking and illegal copyright infringement depends on the jurisdiction and, by international standards, the US “fair use” doctrine provides the greatest scope for artists to legally use the work of others without permission. This is consistent with the primacy given to freedom of speech in the United States as enshrined in the First Amendment to the US Constitution and it is no coincidence that the most well-known appropriation artists are (or were) Americans working in the US.
SUPERFLEX, I Copy Therefore I Am (2011) - altering Barbara Kruger’s 1987 iconic print work Untitled (I shop therefore I am).
Amicus “Friend of the Court” briefs supporting the Warhol Foundation were filed by artists including Barbara Kruger - who makes no secret of her antipathy to copyright - and the Robert Rauschenberg and Roy Lichtenstein Foundations. Whilst potentially more permissive than copyright regimes in Europe and the UK, the US fair use doctrine is notoriously unpredictable and decisions are regularly overturned on appeal – as the current Warhol v Goldsmith dispute illustrates.
“Fair use” under US law
To assess whether a challenged use of a copyrighted work - such as Warhol’s use of Goldsmith’s photograph - is “fair”, US courts are required to consider the following four non-exclusive statutory factors contained at Section 107 of the US Copyright Act 1976:
the purpose and character of the use, including whether the use is commercial or for non-profit 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;
the effect of the use on the potential market for, or value of, the copyrighted work.
Highlighting the doctrine’s unpredictable nature, the District Court considered all four fair use factors favoured the Warhol Foundation; and the Second Circuit Appeal Court considered all four factors favoured Goldsmith.
Is it transformative?
Whilst the US Copyright Act requires a holistic balancing of all four fair use factors, the US Supreme Court muddied the waters in 1994 by introducing the concept of “transformativeness” in a landmark fair use decision involving a music parody of the Pretty Woman theme song.
Building on a 1990 Harvard Law Review article by respected Judge Pierre Laval, the Supreme Court held in its Pretty Woman opinion that a challenged work would be “transformative” if it:
“adds something new, with a further purpose or different character, altering the [appropriated work] with new expression, meaning, or message… the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”
Since that decision, US courts have gradually expanded the application of “transformativeness” such that it has become a litmus test for fair use – particularly in claims relating to appropriation art – swallowing the other factors. Nowhere is this expansion more evident than a 2013 decision involving another Prince - this time the renowned artist Richard Prince.
Cariou v. Prince
In Cariou v. Prince, the Second Circuit Appeal Court held that 25 of 30 contested works by Richard Prince were entitled to a fair use defence because they were transformative. Richard Prince had taken images he found in Patrick Cariou’s Yes Rasta book and incorporated these in various guises into his Canal Zone series (named after The Panama Canal Zone where he was born). In reaching its decision, the Second Circuit overturned the lower court’s decision which had ruled against Richard Prince and his gallery Gagosian.
Richard Prince, The Canal Zone, 2007
Celebrity-plagiarist privilege?
Three years later - in a 2016 decision - the Second Circuit acknowledged criticism of its ruling in Cariou v. Prince and said that decision represented the “high-water mark of our court’s recognition of transformative works”. In what some consider to be a further rowing-back from said high-water mark, the Second Circuit’s 2021 ruling in Warhol v Goldsmith said:
Finally, we feel compelled to clarify that it is entirely irrelevant… that “each Prince Series work is… recognizable as a ‘Warhol.’” … Entertaining that logic would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct that artist’s style, the greater leeway that artist would have to pilfer the creative labors of others. But the law draws no such distinctions; whether the Prince Series images exhibit the style and characteristics typical of Warhol’s work (which they do) does not bear on whether they qualify as fair use under the Copyright Act.
Looking ahead
It is to be hoped that the US Supreme Court will provide guidance on when a work is (and is not) “transformative” – and what that means in the context of the other fair use factors. The decision is expected in the coming months. In the meantime, the recording of the oral argument and transcript make for fascinating listening and reading and are available here.
[1] Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013)
[2] TCA Television Corp. v. McCollum, 839 F.3d 168, 181 (2d Cir. 2016)
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