<em> Andy Warhol Foundation v. Goldsmith </em>
Outside the U.S. Supreme Court, the public line elongated as more spectators joined and waited on the chilly morning of October 12th. Around 10 A.M., the Court heard the oral arguments in an art appropriation case, Andy Warhol Foundation v. Goldsmith. The Court granted certiorari and reviewed the holding of the U.S. Court of Appeals for the 2nd Circuit. The petitioner Andy Warhol Foundation challenged the lower court's decision in fair use defense. That evening, AUWCL hosted the "I.P. at the Supreme Court series: Andy Warhol Foundation for the Visual Arts v. Goldsmith." The panelists carefully surveyed the oral arguments and the 2nd Circuit's decision. This article provides readers with the background of the 2nd Circuit decision and some principal precedents that contoured the fair use doctrine.
Introduction
Art appropriation cases are creatures of pattern. The disputes typically arise from famous, top players in the contemporary art world—like painter Richard Prince or graffiti artist Shephard Fairey—who went beyond the scope of permissible use and created their work by copying photographs of lesser-known photographers without attribution.
Lynn Goldsmith is a professional photographer and owner of a celebrity photography agency, L.G.L. In 1981, before musician Prince Roger Nelson ("Prince") became a music legend, Goldsmith arranged a photoshoot for Prince in her studio. She took 23 photographs, 11 in color and 12 monochromatic. Goldsmith set the lighting during the photoshoot to highlight Prince's bone structure, sensibility, and vulnerability. She also applied additional lip gloss and eye makeup for Prince.
After the photoshoot, Goldsmith licensed her photo through L.G.L. to Vanity Fair, granting the magazine to publish it as an illustration in its November 1984 issue. After the case released, Vanity Fair attributed Goldsmith for image credit and wrote an accompanying article for the photograph.
Through Vanity Fair, Andy Warhol received a commission from the magazine to create a series of artworks ("Prince Series") based on Goldsmith's photograph. But, unbeknownst to Vanity Fair and Goldsmith, Warhol created 14 silkscreen prints and two pencil sketches without attributing to Goldsmith's pictures.
When Warhol passed away, the Andy Warhol Foundation (A.W.F.) resumed care for the artist's life works, including the "Prince Series." Between 1993 to 2004, A.W.F. acquired the copyright for the series and the foundation auctioned off and retained pieces for the Andy Warhol Museum. In 2016, Vanity Fair contacted A.W.F. again for the commercial licensing of a specific work—"Orange Prince"—to publish in the magazine's 2016 issue.
After Vanity Fair published the issue, Goldsmith learned about the "Prince Series." That November, she immediately registered her original photographs with the U.S. Copyright Office and announced that A.W.F. infringed her copyright..
Procedural History
In April 2017, A.W.F. took legal action, responding to the photographer's copyright registration. A.W.F. sought a declaratory judgment of non-infringement in the U.S. District Court. The Court granted summary judgment for A.W.F. and ruled in favor of the foundation's fair use defense. In response to the District Court's decision, Goldsmith filed an appeal to the 2nd Circuit, attempting to negate the foundation's fair use defense.
Holding and Analysis
Fair use is a legal tool, an affirmative defense, which defendant may use to escape liability under the threat of copyright infringement. Despite infringement occurring, the defendant can nonetheless convince the Court that the use complies with the §107's preamble and four factors.
Before Congress statutorily defined the four factors in the 1976 Act, a core principle of fair use was the common law tradition of "fair abridgment." Justice Story's Folsom v. Marsh decision was the first case that paved fair use foundation in English law. Justice Story, outlined the "genesis" of four factors as follows: "the nature and objects of the selections made, the quantity and the value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersedes the objects of the original works."
Analogously, , 17 U.S.C. §107 has six non-infringing purposes in its preamble (copying for criticism, comment, news reporting, teaching, scholarship, or research) and the four much- debated factors:
1. The purpose and character of the use, including whether such use is commercial in nature or is for nonprofit educational purposes.
2. The nature of the copyrighted work.
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
4. The effect of the use upon the potential market for or value of the copyrighted work.
The Supreme Court's interpretation of the four factors since 1984 has evolved. After the 1990 publication of Judge Pierre N. Level's "Toward a Fair Use Standard," the Court began to interpret the four factors with less focus on the statute's abstract language and more on the context and circumstantial evidence of each case. Guided by Judge Level's writing, most fair use analysis starts by answering the "calls for case-by-case analysis…(not) treated in isolation…all are to be explored, and result weighed together, in light of the purposes of copyright."
By following the Supreme Court’s interpretation, the 2nd Circuit added varying approaches to each factor in their Warhol decision. Weighing all four factors, the Court held that each factor skewed in favor of Goldsmith and denied A.W.F.'s fair use defense.
FACTOR ONE
First, the 2nd Circuit held that the purpose of the character of Warhol's "Prince Series" had no transformative use. Despite there being commercial use in the series, the Court concluded that the evidence is not strong enough to favor a fair use defense. The rules the court used for the two types of use under the first factor —transformative use and commercial/nonprofit use—are precedented by prior Supreme Court holdings.
A. Transformative Use
The famous Campbell v. Acuff-Rose Music, Inc was the first case that introduced the concept of transformative use. In this music parody case, the majority opinion authored by Justice Souter, established that for a secondary work to be transformative, it must align with the constitutional objective "to promote the progress of science and useful art." More importantly, a copy, such as a parody, sheds light on the original work by creating something new. In Google v. Oracle, Justice Breyer further reinforced that a use is transformative if it "adds something new and important" to the original expression it copied.
Here, the 2nd Circuit affirmed that there must be something new to find transformative use, such as "something more than the imposition of another artistic style" or more than mere alteration or recasting of the original with a "new aesthetic." Therefore, the court characterized Warhol's work as "derivative" rather than "transformative" because it merely "pilfer(ed) the creative labor" from Goldsmith.
However, this reasoning leaves out whether aesthetics should be seen as innovative, independent creations. Throughout art history, aesthetic innovations such as Cubism and Impressionism arguably were regarded at their time as "new and important"—in ways that contemporary audiences view Warhol's handling of silkscreens as “new and important". The 2nd Circuit's response to this argument—viewing Warhol's and Goldsmith's work "side-by-side"—invites the question of whether a judge should be an art critic.
It is, at least to some, problematic to leave this question unanswered. According to the 2nd Circuit: "judges are typically unsuited to make aesthetic judgments…because such perceptions are inherently subjective." Nonetheless, fair use defense premised on equity is just as subjective as judging art. The outcomes are up to who's judging and perceiving. Here, 2nd Circuit characterizes Warhol's creations two-sidedly: either as works of visual art in a broad sense or portraits of the same person. Therefore, this approach narrowly decontextualized Warhol's career, his works' artistic, historical, social, and many other relevant factors that frame the "Prince Series".
B. Commercial Use
The judicial interpretation of commercial use relies less on the Court’s opinion, and more on the strict statutory interpretation of §107. It also relies on the value-driven rationale behind the development of the statute. The commercial/nonprofit use defense turns on whether the law sees value in the public's "great need" for the secondary creation.
Here, the 2nd Circuit reasoned that Warhol's works had artistic value, rendering them "commercial in nature." For a work that is not commercial in nature, Justice Breyer observed that a nonprofit work can "tip the scales in favor of fair use." Here, despite the commercial nature, the Court acknowledged that A.W.F. foundation's mission is to "serve the greater public interest."
Moreover, the 2nd Circuit found that for work that is commercial (but non-transformative), it may "also serve the public interest or that the profits from its commercial use are turned to the promotion of non-commercial ends does not factor significantly in favor of finding fair use under the circumstances present here."
This standard, however, does not align with the Supreme Court's prior approaches. In the majority opinion for Sony Corp. of American v. Universal City Studios, Inc. and Harper & Row, Publishers, Inc. v. Nation Enterprises, Justice O'Connor specified that "the crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the use stands to profit from exploitation of the copyrighted material without paying the customary price", such as a licensing fee. Therefore, the 2nd Circuit leaves a gap open between commercial-nonprofit interpretation, which calls for mending, and standardizing by the Supreme Court.
FACTOR TWO
Second, the 2nd Circuit evaluated the nature of Goldsmith's copyrighted work under the copyright idea-expression dichotomy analysis and published-unpublished distinction. The court found that both approaches favor Goldsmith.
A. Idea-Expression Dichotomy
Copyright law recognizes ideas as unprotectable factual information. Expression of an idea, however, with additional sparks of creativity may elevate the idea into a copyrightable expression. As Justice Breyer states, the idea-expression is the nature of the copyrighted work and this "points toward fair use".
Here, the idea in Goldsmith’s photograph is Prince's face and therefore one cannot copyright it. However, the 2nd Circuit held that a claim of fair use gives greater leeway for work that is "factual or informational" than works that are "expressive or creative". Despite Goldsmith's photograph containing expressive elements—such as Goldsmith’s creative choices in applying eye makeups, lip gloss, her conscious manipulation of the camera's shutter speed and aperture— the 2nd Circuit decision smears the co-existence of idea and expression in Goldsmith's work over with a "transformative blob" (a phrase quoted from panelists during the W.C.L. event).
B. Published-Unpublished Distinction
The publication status is more prevalent in books, articles, and other literary authorships. In Harper & Row, Justice O'Connor clarified that the unpublished nature of a work is "a key factor, though not necessarily a determinative factor, to negate fair use defense." Here, the 2nd Circuit considered this scope as a narrow and limiting factor weighing less than the overarching "transformative blob" that the court prioritizes. Yet, the court recognized Goldsmith's unpublished photograph because it was for "single use on limited terms."
The 2nd Circuit held the second factor has limited weight in cases like Prince, where creative/unpublished work carries a transformative purpose. Should transformative use leap over and police the other factors? Why does it matter?
FACTOR THREE
Third, the 2nd Circuit's analysis on the amount and substantiality of the use factor closely follows the precedent's quantitative and qualitative analysis. However, the 2nd Circuit's and the District Court's standards differ regarding how much and to what extent that use may quality for fair use defense.
A. Quantity of Material Used
In Campbell, Justice Souter characterized that the quantity of the material used measures in proportion of copyrighted material to the infringer's work. A small amount of material used, commented by Justice Breyer in Google v. Oracle, can fall outside of the fair use defense's scope if the material copied "consists of the heart of the original creation." Conversely, a large amount of material used can fall within the fair use defense's scope if the material used "captured little of the (original) material's creative expression."
Known as a "super factor", the heart of creative expression in the copyrighted work should dominate the court's analysis. Yet, instead of explaining what constitutes the heart of Goldsmith's photograph, the 2nd Circuit decision follows its prior holding in Bill Graham Archives v. Dorling Kindersley—"percentage of material use is more relevant to transformative use."
The 2nd Circuit smeared the transformative use, again, over another factor. It also rejected A.W.F.'s and the District Court's identification of the heart of copyrightable elements in the Goldsmith photo. These elements are light, shade, and contrast that Goldsmith utilize as her protected creative choice and are not creative expressions that can be protected.
By using the method of cropping and flattening, Warhol only captured the factual elements such as Prince’s face and did not incorporate lighting, shading, and tonal contrasts that Goldsmith incorporated in her photograph. Therefore, A.W.F. demonstrated that Warhol’s use only concerns elements that fall within the scope of fair use.
B. Quality and Importance in Relation to Original Work
Like the quantity argument, in Campbell, Justice Souter identified that the "super factor"/"heart of the original" also concerns the quality analysis. He said, "copying does not become excessive copying if the portion taken was limited to the original's heart."
On the one hand, Goldsmith made the expressive choice in applying additional makeup and lip gloss. She meant to emphasize his vulnerability and sensitivity. The photographer testified that she wanted to capture Prince's "willing[ness] to bust through what must be [his] immense fears to make the work that [he] wanted to [make]."
On the other hand, Warhol created an iconic image with his signature tonal contrasting and flattening techniques to visually critique celebrity worship and consumerism at large. Therefore, Goldsmith amplified Prince's humanity. Warhol reduced it.
However, the 2nd Circuit did not embrace artists' ends/purposes in making these creative expressions. It focused on putting a means to an end and brushes aside the heart of qualitative difference between the copy and the original. The court reasoned that, = "Warhol images are instantly recognizable as depictions or images of the Goldsmith Photograph itself." Therefore, the court looked at the "resemblance" between the two works and undermines the "effects" that Warhol employed to alter the photograph. This contradictory approach, signals the Supreme Court a need to reconcile.
FACTOR FOUR
Fourth, the 2nd Circuit evaluated the harms of the use to both the primary market (Goldsmith's licensing market) and the secondary market (Warhol's art market). They did this by first identifying the relevant markets, then assessing actual and potential damage to the markets.
Goldsmith identified the relevant markets as the licensing market for popular print magazines and the derivative markets that Goldsmith licenses to other artists.
Warhol's works harmed these markets by "usurping" them with "competing substitute(s)." Therefore, the 2nd Circuit found that Warhol's creation encroached on these markets, not by overlapping his own works with them, but by having a "significantly more breathing space" than what the original work’s market might have.
Justice O'Connor, in Harper & Row, held that this factor is "the most important element of fair use…when properly applied, is limited to copying by others which do not materially impair the marketability of the copyrighted work." Even if there is a potential threat to the original market, the threat must "become widespread” and can “adversely affect" the original market.
At first, there was no overlap between Warhol's art market and Goldsmith's commercial licensing market, as the 2nd Circuit concluded. Warhol's works are sold through auction houses, such as Christie's or Sotheby's, for millions of dollars. The circulation of Warhol’s works in these high- end art markets have nothing to do with Goldsmith's photograph licensing markets and therefore, Warhol's sales could not harm Goldsmith's market financially.
However, the "creativity-related harm," as Justice Breyer characterized it, should also be considered because monetary losses may "jeopardize the incentive to protect demand for original expression." Whether the "Prince Series" will deter the incentive of licensing derivative work based on Goldsmith photographs is a murky debate. Nevertheless, without addressing the “creativity-related harm”, the 2nd Circuit only considered Warhol market’s harm to other artists' future incentive in entering licensing agreement with Goldsmith for their derivative works based on her photograph.
Conclusion
Thus, the effort towards "standardizing" the fair use doctrine is winding and unclear. What will the Justices decide after oral arguments? Will the holding determine a fate for fair use? Only time can tell. Years from now, there could be another problematic use that will further challenge the doctrine and push the IP law to keep up with technology. However, there will be no definitive answer until the Supreme Court mends the holes apparent in the 2nd Circuit’s opinions and levels out the plethora of standards of fair use in the context of art appropriation cases.