29 March 2022CopyrightAlex Baldwin

SCOTUS to examine fair use in Warhol ‘Prince Series’ case

The US Supreme Court has agreed to hear arguments on whether Andy Warhol’s 'Prince Series' infringed a photographer's copyright, the outcome of which could change the law on ‘fair use’.

Warhol Foundation v Goldsmith centres around complaints from photographer Lynn Goldsmith that an altered version of her photograph of the later singer Prince—in which Warhol altered the contrast and colouring to create his own work—infringes on her original photograph.

The second circuit heard the case in March 2021 and ruled that the modified images did not qualify as fair use, despite claims from The Andy Warhol Foundation for the Visual Arts that the work was transformative as the work portrayed Pince as an “iconic, larger-than-life” figure, compared to the “vulnerable human being” depicted in Goldsmith’s photograph.

In the decision, Justice Gerard Lynch claimed that it was not a judge's role to “assume the role of art critic” to ascertain the meaning of a work.

The Andy Warhol Foundation petitioned the Supreme Court in December last year, claiming that the second circuit’s ruling “casts a cloud of legal uncertainty over an entire genre of visual art” and could threaten a “sea-change in the law of copyright”.

The Supreme Court said on Monday, March 28, that it will weigh in on the decision that could have significant consequences on the transformative nature of artwork and have broad implications beyond the traditional arts, including for digital content and fashion.

‘Essential role’ of fair use

Roman Martinez, a partner at Latham & Watkins and lead counsel for The Andy Warhol Foundation said he welcomed the Supreme Court’s decision to grant review.

“The ‘fair use’ doctrine plays an essential role in protecting free artistic expression and advancing core First Amendment values. We look forward to presenting our arguments to the court and hope they will recognise that Andy Warhol’s transformative works of art are fully protected by law.”

Martinez’s colleague Andy Gass, also a partner, added: “Our goal is to preserve the breadth of protection it affords for all—from the Andy Warhols of the world to those just embarking on their own process of exploration and innovation.”

Hearing speculation

With confirmation that the court will consider the case, the question remains what the justices will focus on in hearings.

Samuel Lewis, co-chair of Cozen O’Connor’s copyright practice group, told WIPR: “The court may focus on the statutory definition of derivative work, its reference to transformation, and how that does or does not impact the fair use analysis (in particular, whether Warhol’s use of the image was transformative or derivative).

“While the court’s decision in  Google v Oraclefocused more on the fair use factors, another recent decision, Fourth Estate Public Benefit Corp v, was very much focused on statutory construction. I suspect statutory construction and definitions may play a role in the outcome of this case.”

Surprising announcement

In its petition, the Foundation cited Google v Oracle, which it claimed invalidates the second circuit decision.

The decision held that Google could “precisely” copy software code but avoid infringement by using the code to create a “highly creative and innovative” alternative to the original.

With Warhol now being considered, it could give greater clarity to transformative fair use alongside that decision.

Lewis said he was “somewhat surprised” that the Supreme Court accepted cert given its Google v Oracle opinion.

“That said, my understanding is that the petition was based, in part, on the notion that the framework employed by the Second and Ninth Circuits for assessing whether a work is transformative in nature is in conflict with Supreme Court precedent and the framework used by other circuits,” explained Lewis.

Preetha Chakrabarti, partner at Crowell & Moring said she was also surprised, “but mostly because IP attorneys have been hoping for clarity and guidance from the Supreme Court on transformative fair use for a long time.”

Chakrabarti said artists and creators could be most affected by the ruling, including those working in digital asset marketplaces, such as NFTs.

She added: “And in terms of tangible, physical assets, fashion designers should pay attention as well—images are often used in arguably transformative ways for placement on apparel and such. That “arguably” may get narrower (or at the very least, clarified) with this decision.”

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