This article is a modified exert of Chapter 7 from Mr. Shrum’s book, Guitars, Gavels & Gold, published by Kendell Hunt in 2022.  Used with permission.

The case of Warhol v. Goldsmith was argued in front of the Supreme Court in October of 2022 and SCOTUS issued its ruling in the matter this past Thursday, May 18.  The lower courts rely extensively on the Campbell and Cariou cases in order to apply fair use principles to appropriation art.  The genesis of this case occurred in 1981, when Lynn Goldsmith, on assignment for Newsweek magazine, took a hauntingly striking portrait of the artist, Prince. Goldsmith is well-known for, among other things, her portraiture of famous musicians and celebrities. To create the right mood, Goldsmith spent hours in conversations with Prince and applied makeup, eyeshadow, and lipstick in order to capture Prince’s mysticism and the intensity in his eyes. The photograph became an instant classic. Three years later, Vanity Fair licensed the photograph to be used in an article entitled “Purple Fame” and, unbeknownst to Goldsmith and in breach of the license, commissioned the pop artist Andy Warhol to create one of his iconic silkscreens of Prince for publication with the article. Warhol cropped the photograph and screen printed it, and his edited version of the Goldsmith appeared in the magazine.

Warhol is well-known as an “appropriation” artist, that is, for
“borrowing” the creations of other people and entities and incorporating them into his own creations. For example, Warhol similarly “borrowed” Otto Bettman’s famous photograph of Marilyn Monroe to create a well-known silkscreen of the superstar in 1962 (“Marilyn Diptych”) and borrowed the design and trademark of the Campbell’s soup can and the shipping containers for Brillo pads, with both of which he had an obsession, for other cultural pop art pieces.  At first glance, one might get the impression that Warhol is simply drawing inspiration from the ideas contained in the original works, as the Progress Clause intends, but a closer examination of the silk screening process leads to the conclusion that Warhol is quite literally copying the original works in order to create his pop art. There is no doubt that Warhol’s silkscreen prints are perceived as culturally valuable, as one of the Monroe prints sold just recently for $195,000,000. Of course, the question, in this
case, is not as to the value of the creation, or its aesthetic value, but whether it constitutes legal and fair use of the original Goldsmith.

Serigraphy, or screen printing, is not a new process: it is said to have originated in China during the Song Dynasty (960–1279 AD).
In the early 1900s, as technology evolved and photosensitive materials were
created, the process was modernized to more closely resemble the process used now. The process is quite simple, but what is important to understand for the purpose here is that when a person wishes to silk-screen a photographic image, the actual image is used in its entirety to begin the process. In other words, the silkscreener must actually copy the original photographic image, as Warhol did in the case of both Marilyn and Prince.

This issue came to a head when Prince died in 2016. Before his death in 1987 and, again, without the consent of Goldsmith, Warhol created 15 different versions of the edited silkscreen he had created for Vanity Fair in 1984. Upon Prince’s death, Vanity Fair printed one of the versions in a memorial. With all of the press surrounding his death, Goldsmith became aware of the various derivatives and filed a lawsuit against the magazine’s publisher together with The Andy Warhol Foundation for the Visual Arts, Inc. for, inter alia, copyright infringement.

The Foundation argued that its namesake transformed Goldsmith’s photograph and gave it new meaning, a necessary prerequisite to their primary argument that Warhol’s design is not infringement pursuant to the fair use doctrine.
In 2019, the issue went before Judge John G. Koeltl of the U.S. District Court in
Manhattan, where he agreed with the Foundation, finding that Warhol had sufficiently “transformed” Goldsmith’s photograph “from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” Realistically, however, in comparing the two works, it is extremely difficult to maintain that the mere addition of primary and secondary colors through the silk screening process makes the image of Prince
“larger-than-life.” In fact, it can be argued that the Warhol print does transform the image in the least, but rather crops and copies it in its entirety and then adds the colors through the process. It would seem  that here, as in Cariou, the justices were a bit enamored by the celebrity of Warhol which may have been affecting their objectivity.

On appeal, the Second Circuit reversed Judge Koeltl, finding that the district court erred in its assessment and application of the four fair-use factors found in 17 U.S.C. §107, and the works in question do not qualify as fair use as a matter of law because the Warhol screen prints are virtually identical to the Goldsmith photograph. Judge Gerard Lynch, writing for the court, points out that the Circuit’s opinion relied on the Supreme Court’s guidance in the Campbell case concerning the application of the first of the four factors, that is, the purpose and character of the work as to when a work is considered “transformative” in nature. The Campbell court noted that in order to evaluate whether a new work is transformative, the new work must at least “mimic an original to make its point” (1); thus, the court must examine how it “may reasonably be perceived” by the “reasonable person” (2).  Such a subjective evaluation must
gauge “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”  (3)

As the Second Circuit itself has recognized, this emphasis on perception essentially blurs the line between a work that may be perceived as “altering the first with new expression” and one that uses “the same mate-rial but in a new form . . . without adding something new,” which, of course, is a derivative work requiring a license from the owner of the original copyright. The Court recognized this conundrum when it states:

While that description may be a useful shorthand, it is likewise susceptible to misapplication if interpreted too broadly.  Indeed, many derivative works “add something new” to their source material

The problem, of course, is that if a court is considering whether an adaptation is infringing, an entirely different analysis should be conducted more in line with Justice Learned Hand’s abstraction test, extracting the ideas from their protectable expressions. For this reason, in distinguishing a transformative work from a derivative work, the Second Circuit considered the purpose of both the primary and secondary works. If the purposes align, the secondary work is derivative, if not then the secondary work is transformative.

It would be curious if this distinction can be drawn without being purely subjective, as the Second Circuit itself recognizes in Warhol:

But purpose is perhaps a less useful metric where, as here, our task is to assess the transformative nature of works of visual art that, at least at a high level of generality, share the same overarching purpose (i.e., to serve as works of visual art).

It would seem that a flawed metric is not a metric at all and will lead to widely divergent results. For example, in the 2006 case of Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006), the Second Circuit found Koons’ use of Blanch’s original photograph Silk Sandals by Gucci to create a painting was transformative where he allegedly used the original image as “fodder for his commentary on the social and aesthetic consequences of mass media,” while in the earlier case of Rogers v. Koons, where Koons recreated Roger’s original photograph as a three-dimensional statute intended “as a commentary of society,” they adjudged the sculpture be an infringing adaptation, even though the Koons’ stated purpose in both cases were very similar, if not identical. Further, using the same metrics, the Second Circuit found transformation for the majority of Prince’s pop art copies of Cariou’s photograph, where the purpose of Cariou’s original photo-graph was to create “deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs,” while the majority of the adaptations by Prince were “crude and jarring works” that were “hectic and provocative.” (4)

In Warhol, the Court attempts to explain
these apparent inconsistencies as follows:

The sculpture at issue in Rogers was a three-dimensional colorized version of the photo-graph on which it was based. See 960 F.2d at 305.
In Blanch, however, Koons used
Blanch’s photograph, depicting a woman’s legs in high-heeled shoes, as part of a larger work in which he set it alongside several other similar photographs with “changes of its colors, the background against which it is portrayed, the medium, the size of the objects pictured, [and] the objects’ details.” 467 F.3d at 253.
In so doing, Koons used Blanch’s photograph
“as raw material for an entirely different type of art . . . that comment[ed] on existing images by juxtaposing them against others.” Id. at 262 (Katzmann, J., concurring). And in Cariou, the copyrighted works found to have been fairly used were, in most cases, juxta-posed with other photographs and “obscured and altered to the point that Cariou’s original [was]barely recognizable.” 714 F.3d at 710. The works that were found potentially infringing in Cariou, however, were ones in which the original was altered in ways that did not incorporate other images and that superimposed other elements that did not obscure the original image and in which the original image remained, as in the Koons sculpture at issue in Rogers, a major, if not dominant component of the impression created by the allegedly infringing work. See id. at 710-11.

Thus, a restatement of the Second Circuit’s perception test to determine when a secondary work is trans-formative is as follows: the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a “new meaning or message” entirely separate from its source material.

Unfortunately, when the lower court in Warhol v. Goldsmith attempted to apply this test, the Second Circuit found that they did it wrong and committed a reversible error. After examining Warhol’s “Prince” series of screen prints, the district court found that the Warhol series “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” (5)

The
Second Circuit described this as an erroneous application of its precedent because, it said, “whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic . . . draws from the work.” In other words, the Circuit cautioned the district court not to position itself as an “art critic” because “such perceptions are inherently subjective,” and the result is that any adaptation could thus be treated as transformative.

In Warhol, the Second Circuit attempts to hone the perception test down to a finer point. The test should be objectively applied by examining “whether the secondary work’s use of its source material is in service of a ‘fundamentally different and new’ artistic purpose and character, such that the secondary work stands apart from the ‘raw material’ used to create it,” that is, “something more than the imposition of another artist’s style on the primary work. . . .” With this sharply hewn explanation, the Second Circuit deems that the perceived purpose of Warhol’s work is not different than that of the Goldsmith photograph and, as such, is not transformative with the meaning of the first factor of the fair use analysis. The Court objectively determined that the Prince Series of silkscreens retained the
“essential elements” of the Goldsmith photograph, modifying it only to “magnify some elements of th[e original] material and minimize others.” The Court held that because the Prince Series remained “recognizably derived” from the original it failed to transform and was thus, not fair use. In doing so, the Second Circuit specifically rejected what it considered the subjective evaluation of the Prince silkscreens as “immediately recognizable Warhols” because doing so would create a “celebrity-plagiarist bias” toward more well-known artists. It is important to note that the Second Circuit’s reasonable perception test differs significantly from the opinion of the Ninth Circuit, which considers a work “transformative” when it conveys a different meaning or message from its source material.

The Foundation filed a writ of certiorari with the Supreme Court for review of the Second Circuit opinion, which was granted on March 28, 2022. Amici briefs and other proponents on the side of the Foundation argue that copying is essential to “creativity” in art and argue that appropriation artists must have some room to build on, allude to, and transform works that came before them. They argue that fair use embodies not only notions central to copyright law itself, but with regard to creativity, which invokes consideration of the First Amendment. Of course, opposing amici briefs argue that the concept of copyright already possesses “speech-protective” contours that ensure an artist’s ability to create.   In their oral arguments, the petitioner argued that Warhol’s “Orange Prince” was sufficiently transformative.

The strategy of categorizing Warhol’s art as free speech fails.  Rather, the issue became whether Warhol’s usage of Goldsmith’s copyright was transformative to the degree that it was permissible as a fair use.   The court said no.  Justice Sonia Sotomayor, writing for the 7-2 majority, opined:

In this case . . . Goldsmith’s original photograph of Prince, and AWF’s copying use of that photograph in an image licensed to a special edition magazine devoted to Prince, share substantially the same purpose, and the use is of a commercial nature.”

In essence, Sotomayor clarified that “[i]f an original work and a secondary use share the same or highly similar purposes” and both are “commercial’ in nature, fair use does not apply.

Justice Elena Kagan vehemently dissented, joined by Chief Justice John Roberts, stating:

“[This decision] 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.”

I disagree with the dissent’s assessment here.  As explained earlier, the process of serigraphy involves direct copying of the original – not the expression of new ideas, and thus such will not be hampered.  In fact, the minority here is committing the same logical error as the lower court, correct by the Second Circuit, by inserting themselves as art critics and attributing perceived meaning to the secondary work.  Prevent a third party from copying the original work – no matter how famous the artist – is the essence of the copyright!  Anytime original work of art is recognizable in the derivative work, and permission has not been obtained from the original artist, that is infringement.  As Sotomayor pointed out:

Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists . . . . “Such protection includes the right to prepare derivative works that transform the original.”

This decision goes a long way toward rectifying the ambiguity created by Justice Souter in Acuff-Rose v. Campbell where he borrowed the word transformative from the definition of a derivative work in the Copyright Act and applied it to the four factor analysis of fair use.

Footnotes:

(1)  Campbell, 510 U.S. at 580–81

(2)  Cariou, 714 F.3d at 707, quoting ibid, 510 U.S. at 582

(3)  Campbell, 510 U.S. at 579.

(4)  467 F.3d at 25.

(5)  Warhol, 382 F. Supp. 3d at 326.