In May 2023, a landmark court decision was published addressing the lawfulness of artists appropriating into their works other artists’ pre-existing images. The Supreme Court of the United States decided the case, which was brought by the Andy Warhol Foundation for The Visual Arts (AWF). It concerned one of a series of silkscreen prints, Orange Prince, 1984, made by Warhol using a photograph of the musician Prince taken in 1981 by Lynn Goldsmith.
The facts of the case were not disputed. Before his death in 1987, Warhol’s standing in the contemporary art world was already significant, and has since become indisputably immense. Goldsmith is a professional photographer, whose career as a leading rock music photographer began in the 1970s when, notably, his subjects included Bob Dylan, Mick Jagger, Patti Smith, Bruce Springsteen and Prince, and prints of his photographs are held in collections at London’s National Portrait Gallery and New York’s Museum of Modern Art.
In 1981, Goldsmith was commissioned by Newsweek magazine to photograph the then emerging musician Prince Rogers Nelson to accompany its article ‘The Naughty Prince of Rock’. One of Goldsmith’s studio session photographs of Prince, a black-and-white, full-length shot, is the subject of this case: Goldsmith owns its copyright.
In 1984, Goldsmith licensed that photograph to Vanity Fair to serve as an ‘artist reference for an illustration’ in the magazine. The terms of the licence were that the illustration was ‘to be published in Vanity Fair, November 1984 issue. It can appear one-time full page and one-time under one quarter page. No other usage right granted.’ Goldsmith was paid $400. Vanity Fair commissioned and paid Warhol to execute the illustration. Using Goldsmith’s photograph, Warhol created a purple silkscreen portrait of Prince’s head. The image accompanied an article entitled ‘Purple Fame’, crediting Goldsmith as the ‘source’ photographer.
Beyond executing the single illustration authorised by Goldsmith’s copyright licence to Vanity Fair, Warhol created 15 further works based on Goldsmith’s photograph: 13 silkscreen prints and two pencil drawings, known collectively as the ‘Prince Series’, 1984. After Warhol’s death in 1987, AWF inherited most of Warhol’s unsold works and their copyrights. AWF sold 12 of the ‘Prince Series’, transferred the others to the Andy Warhol Museum in Pittsburgh, and asserts copyright ownership of each of them.
When Prince died in 2016, Condé Nast obtained a copyright licence from AWF to reproduce Orange Prince in its tribute publication entitled The Genius of Prince, 1958–2016. Condé Nast paid AWF $10,000 for the licence. Goldsmith received no fee or photographic source credit. It is significant to note that between 1981 and 2016 Goldsmith was paid, for granting copyright licences to reproduce her Prince photo image, by publications such as Guitar World, Musician, Newsweek, People, Reader’s Digest, Rolling Stone, Time and Vanity Fair – all of which credited Goldsmith as the photographic source.
Goldsmith did not know about the ‘Prince Series’until 2016, when she saw Orange Prince reproduced on the cover of the tribute published by Condé Nast. On seeing Orange Prince, Goldsmith immediately recognised her image, and notified AWF of her belief that it had infringed her copyright. In response, AWF sued Goldsmith for a declaratory court judgment of non-infringement of copyright or, in the alternative, a ‘fair use’ copyright defence (UK copyright law has a similar defence called ‘fair dealing’). Goldsmith counterclaimed for infringement of copyright.
In 2019, those inaugural lawsuits were decided in AWF’s favour, but were reversed in 2021 on appeal by Goldsmith, after which result AWF appealed to the US Supreme Court. Hence the recent final appeal. The US Supreme Court’s full complement of nine Justices heard the case. Written analyses and reasons were given by two Justices, with whom the other seven variously agreed.
Justice Elena Kagan is widely considered to be the Court’s most moderate justice. For example, in 2022 Kagan was, notably, in a minority of four Justices who were against the Court’s controversial overturning of its own celebrated 1973 Roe v Wade ‘pro-choice’ decision (of which reversal she said ‘it places in jeopardy other constitutional rights, from conception to same-sex intimacy and marriage’). In AWF’s case, Kagan’s opinion was delivered in her customary unorthodox writing style, using examples and analogies aimed at engaging non-legal readers – visual artists were probably in mind. Kagan dwells more on the creative act than on the US Copyright Act, more on art than law.
Kagan viewed Orange Prince as an ‘eye-popping silkscreen … based on but dramatically altering an existing photograph’. It is an example of Warhol’s art of reframing and reformulating iconic images of popular culture first created by others. His artworks connected the traditions of fine art with mass culture, and ‘earned his conspicuous place in every college’s Art History’. Copyright law’s core purpose is to foster creativity, which is why it permits fair use of copyrighted material to allow artists to build creatively on the work of other artists. Kagan said ‘let’s be honest, artists don’t create all on their own; they cannot do what they do without borrowing from or otherwise making use of the work of others’.
Kagan made detailed reference to the creative processes Warhol employed to create Marilyn in 1964, which he evidently also used to make the ‘Prince Series’ in 1984. Both images conveyed visual meaning different to that of the original photographs from which they were derived, saying they were ‘biting critiques of the cult of celebrity, and the role it plays in American life’. The legal issue in this case is whether such a transformation should matter in assessing whether Warhol made ‘fair use’ of Goldsmith’s copyrighted photo, to which question Kagan said ‘the answer is yes – it should push toward (although not dictate) a finding of fair use’.
For courts to determine whether in fact and in law a use has been fair, US copyright law requires four factors to be considered, the first of which lay at the heart of AWF’s case: ‘the purpose and character of the use’ made of a pre-existing copyright work, including whether such use is of a commercial nature. A user’s purpose requires a court to look at whether the original image was used as raw material that was ‘transformed in the creation of new information, new aesthetics, new insights’ – a judicial enquiry that ‘matters profoundly’, Kagan said.
Kagan gives detailed examples, drawn from the canon of popular non-visual cultural history, of when authors freely ‘borrowed’ in their works: William Shakespeare, Robert Louis Stevenson, Mark Twain, Thomas Mann; Charlie Parker, Chuck Berry, Jimi Hendrix, Eric Clapton, Bob Dylan. Nick Cave is pointedly quoted from his online newsletter, The Red Hand Files: ‘The great beauty of contemporary music, and what gives it its edge and vitality, is its devil-may-care attitude toward appropriation – everybody is grabbing stuff from everybody else, all the time. It’s a feeding frenzy of borrowed ideas that goes toward the advancement of rock music – the great artistic experiment of our era.’
On visual art, Kagan prayed in aid submissions the Court had received supporting AWF, from lawyers representing the Foundations of Robert Rauschenberg, Roy Lichtenstein and Joan Mitchell, and New York’s Brooklyn Museum. Together, they contended that Warhol had worked within an established centuries-old tradition of artists using and reusing existing imagery, which is ‘part of art’s lifeblood … not just in workaday practice or fledgling student efforts, but also in the revolutionary moments of art history’.
In concluding her extensive discourse, Kagan asked: ‘If Warhol does not get credit for transformative copying, who will?’ In other words, whether there would be troubling consequences for artists less famous than Warhol being unable to benefit from fair use. Further, copyright law’s overall purpose – to foster and promote creativity – would be frustrated: new art and music and literature would be stifled; the expression of new ideas and the attainment of new knowledge would be thwarted, thereby making ‘our world poorer’. Chief Justice John G Roberts Jr was the only other member of the Court to concur with Kagan.
The other seven Court members concurred with Justice Sonia Sotomayor, who delivered the Court’s majority judgment. Widely regarded as the liberal conscience of a conservative Court, Sotomayor had joined Kagan in opposing the overturning of Roe v Wade in 2022. In AWF’s case, Sotomayor’s opinion was delivered in a customary orthodox judicial style, focusing more on the US Copyright Act than on the creative act, more on law than on art.
Sotomayor stressed that AWF did not challenge whether Goldsmith’s photograph and the ‘Prince Series’ works are substantially similar (UK copyright law has a similar test of ‘sufficient similarity’ of ‘a substantial part’). The only question is whether the ‘purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes’ weighs in Goldsmith’s favour. AWF contended that the purpose and character of its use of Goldsmith’s photograph weighed in favour of fair use, because Warhol’s silkscreen image of the photograph has a new meaning or message that makes the use ‘transformative’ in the fair use sense.
However, in Sotomayor’s opinion, whether a work is transformative does not turn merely on the stated or perceived intent of the artist, nor on the meaning or impression that a critic or a judge draws from the work; otherwise, copyright law might recognise any alteration as transformative. Moreover, US copyright law is replete with escape valves (as is the UK’s): the requirement of originality; the legal standard for actionable copying; the limited duration of copyright; and the defence of fair use, including whether the amount taken is reasonable in relation to the purpose of the use. These doctrines, and others, provide ample space for artists and other creators to use existing materials to make valuable new works. They account for most, if not all, of the examples given in Kagan’s dissenting opinion. If the last century of US art, literature, music and film is any indication, the existing copyright law, of which this opinion of the Court is a continuation, is a powerful engine of creativity.
In closing her opinion, Sotomayor concluded: the purpose and character of AWF’s use of Goldsmith’s photograph, in commercially licensing Orange Prince to Condé Nast’s special edition magazine devoted to Prince, does not favour AWF’s fair use defence to copyright infringement. AWF’s use is not transformative, being for substantially the same purpose of Goldsmith’s original photo. Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists. Accordingly, AWF’s appeal is denied.
Responding to this result, AWF said it ‘respectfully disagrees with the Court’s ruling that the 2016 licensing of Orange Prince was not protected by the fair use doctrine. At the same time, we welcome the Court’s clarification that its decision is limited to that single licensing, and does not question the legality of Andy Warhol’s creation of the “Prince Series” in 1984. Going forward, we will continue standing up for the rights of artists to create transformative works under the Copyright Act and the First Amendment.’ Goldsmith said she was ‘thrilled by today’s decision and thankful to the Court for hearing our side of the story. This is a great day for photographers and other artists who make a living by licensing their art.’
The Court’s comprehensive reasoning, together with Kagan’s extensive dissenting opinion, will doubtless be considered by – perhaps even influence – not only jurists worldwide, but also appropriation art practitioners such as Jeff Koons, Sherrie Levine and Richard Prince.
© Henry Lydiate 2023
HL’s Note March 2024: On 18 March 2024 the original federal trial court revisited its initial 2019 judgment to implement the US Supreme Court’s 2023 decision; and ordered AWF pay $10,250 damages for lost profits to Goldsmith for copyright infringement, plus $11,273 for her legal costs. The damages award mirrored the fee of $10,250 paid to AWF by Condé Nast for licence to use Warhol’s orange version of Goldsmith’s Prince in its 2016 tribute publication to the late musician.