Sullivan has filed an amicus curiae (friend of the court) brief in the upcoming Supreme Court case Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith. The brief was filed as counsel of record for copyright scholar Philippa S. Loengard, the Kernochan Center for Law, Media and the Arts at Columbia Law School. The case concerns the applicability of Section 107 of the Copyright Act, which permits as a fair use that would otherwise be copyright infringement—to a print made by Andy Warhol from a photograph of the musician Prince by photographer Lynn Goldsmith. In particular, the question presented to the Court addresses the implications of the Court’s holding nearly thirty years ago in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) that allowed for the possibility that a secondary use could be considered a fair use if it were sufficiently “transformative.” What exactly that means in the context of visual art has been a fraught—and at times incoherent—subject in recent years. Our brief explains that the Court should return the analysis of fair use to the four factors established by Congress. In the case of the first of the four factors, the Court should focus on the statutory language of the purpose and character of the works. By contrast, the inquiry into the meaning or message of the works advocated by the Warhol Foundation and the amici supporting it is a fool’s errand that provides no clarity and would render the copyright in photographs effectively unenforceable. This case is not a battle between Lynn Goldsmith and Andy Warhol; those artists proved entirely capable in 1984 of arranging the balance for themselves. It is a battle between a maximalist view by the Warhol Foundation that dismisses the value of photography as a creative medium at all.
Goldsmith took the photograph in question in 1981 as part of a number of images of Prince, then a rising star but far from a household name. She licensed images from that shoot to various magazines, including a cover of Musician, People, Reader’s Digest, and the Smithsonian catalogue. Prince’s album Purple Rain in 1984 was a cultural event that is hard to imagine in today’s diffuse media market. The album dominated the Billboard charts, and spawned an eponymous, if flawed, motion picture (which, in perhaps the greatest display of self-confidence by Prince, also features a number of absolutely mind-blowing sets by rival band The Time). Prince was the man of the moment between the end of the clash between disco and guitar rock, New Wave, and the supernova that was Michael Jackson. Prince’s peerless guitar skills and effervescent charisma made him arguably the biggest rock star in the world.
Vanity Fair magazine took notice and commissioned Warhol to make an illustration for its article “Purple Fame.” Vanity Fair licensed the Goldsmith photo “for use as artist reference for an illustration to be published in Vanity Fair,” and agreed to credit Goldsmith in the magazine along with Warhol’s silk screen.
Warhol made a series of Prince prints, including the one “Purple Prince” one that appeared in Vanity Fair. Warhol’s prints reproduce from Goldsmith’s photo Prince’s head above the shoulders. Color is added to Prince’s face, and to the background. The lines of Prince’s hair at the edge are made more jagged by parallel lines in a lighter color.
The dispute that led to the case before the Court is not about whether Warhol had a fair use right in 1984. He did need one because Vanity Fair had a license for that exact use. The current dispute arose because in 2016 Prince died and demand for images of him spiked. Condé Nast sought permission from the Warhol Foundation—which controls Warhol’s own copyright after Warhol’s death in 1987—to reproduce the “Purple Prince” image in question. Condé Nast ultimately ran an “Orange Prince” Warhol Print on a cover, but this time Goldsmith went unmentioned. Goldsmith reached out to the Warhol Foundation to resolve the dispute over a license that no one had requested.
Instead, the Warhol Foundation sued Goldsmith, and Goldsmith counterclaimed for infringement arising out of the 2016 use. The District Court held that the Warhol prints were a fair use, but the Second Circuit reversed. Earlier this year, the Supreme Court agreed to hear the Warhol Foundation’s petition.
The doctrine of fair use allows secondary users to use otherwise copyrighted works without penalty. The concept was codified in Section 107, but the origin of an exception to copyright allowing later creators the freedom to use works has its roots in 19th century law and tradition. Campbell constituted a watershed moment in this jurisprudence. There, the Court referenced the Hon. Pierre N. Leval’s article Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990) and the judge’s recharacterization of the purpose and character analysis that had traditionally held sway. Whereas previous cases looked at whether the secondary work superseded the original creation, the Court allowed for a second possibility that might permit the secondary work to be considered a fair use—the infusion of new meaning or message. Campbell, 510 U.S. at 579. The Court did not define the addition of new meaning or message as the exclusive avenue to fair use, however, nor did the Court reach the application of this test. Lower courts have struggled in the interim to determine whether artists’ works would qualify for the fair use exception when analyzing meaning or message in place of the prior inquiry into the purpose or character of the works. In recent years, particularly in the visual arts, the first factor has taken on increasingly more importance, and become determinative in a majority of cases. See Jiarui Liu, An Empirical Study of Transformative Use in Copyright Law 22 Stan. Tech. L. Rev. 163 (2019).
Since Campbell, courts have frequently turned to the first factor of Section 107 to determine whether the facts weigh in favor of fair use. Even in Campbell the Court recognized that 2 Live Crew’s song might qualify as transformative because it “comment[ed] on the original or criticiz[ed] it, to some degree.” 510 U.S. at 583. The Court emphasized that the song, “Pretty Woman” which humorously comments on the naiveté of the original Roy Orbison hit, “Oh, Pretty Woman,” “necessarily springs from recognizable allusion to its object through distorted imitation.” Id. at 588. Transformativeness can constitute a new purpose and character—Campbell has already so held. Yet transformativeness cannot be an outcome determinative factor for the simple reason that Congress chose not to make it one.
With regard to determining a new meaning or message, however, the devil has been in the details, and as our brief sets forth, the results have been wildly inconsistent. More to the point, if any new meaning or message is sufficient to be transformative, and if being transformative equals fair use, copyright becomes all but unenforceable. But copyright is a balance, intended to promote creative expression and also provide economic benefits to the creators.
As our brief advocates, the Court should return to a more direct examination of the purpose and character of the works, following Congress’s instructions rather than engaging in a subjective inquiry about who means what. This focus would strike the right balance. If an artist uses earlier images for the same purpose—depicting a lake in Death Valley after a storm, or Prince—then he cannot realistically claim to have satisfied Section 107. If an artist uses the existence and fame of an earlier work for another purpose entirely—like Velázquez using the Rubens copies that hung on the walls of his patron King Philip IV of Spain in Las Meninas, to cite the example we use in our brief—he has nothing to fear.
Finally, the brief notes the fact that someone who understood this balance well was none other than Andy Warhol. Warhol regularly licensed images like Mickey Mouse when appropriate, and eventually balanced his own works between photographs he licensed, and photographs he eventually started to take himself.
The Court will hear argument on October 12, 2022.
