Andy Warhol estate loses fair-use appeal over Prince image

US Supreme Court rejects Warhol Foundation’s appeal of fair use | Dissenting justices cite art history to support argument that appropriation in art has precedent | Opinion will impact how follow-on works and transformative works are defined and protected.

The US Supreme Court has rejected the argument that the publication of an Andy Warhol silkscreen image of the musician Prince was fair use, in a victory for the photographer who took the original photograph.

Justices delivered a splintered 7-2 decision handed down yesterday, May 18, dismissing an appeal filed by The Andy Warhol Foundation for the Visual Arts (AWF) in 2022 against a Second Circuit Court of Appeals’ decision, which had found against AWF.

In its appeal, the Foundation had denied infringing photographer Lynn Goldsmith’s copyright in her 1981 photograph of Prince, one of several commissioned by Newsweek magazine in the same year for an article about the musician—for which Goldsmith received $400.

Warhol later used the photograph under a one-time only licence, granted by Goldsmith, to create his Prince Series for Vanity Fair magazine in 1984.

After Prince died in 2016, Condé Nast, publisher of Vanity Fair, purchased a licence from AWF to publish Warhol’s Orange Prince image on the cover of the magazine.

Goldsmith informed AWF that she believed it had infringed her copyright, but the Foundation sued her for a declaratory judgment of noninfringement, arguing fair use. Goldsmith subsequently counterclaimed for infringement.

The Supreme Court decision yesterday punctuates a long-running copyright battle between AWF and Goldsmith, and while it underscores the protections provided under US copyright law, there will likely be far-reaching repercussions for artists creating follow-on works and for how transformative works are defined.

In its decision, delivered by Justice Sonia Sotomayor, the Supreme Court stated that “Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists.”

Drawing upon the protections afforded by the US Copyright Act, the court found that AWF’s “copying use of” Goldsmith’s photograph “…share substantially the same purpose, and the use is of a commercial nature.”

The ruling, which focused only on the licensing of the Orange Prince image, went on to say that “AWF has offered no other persuasive justification for its unauthorised use of the photograph. Therefore, the ‘purpose and character of the use…’ weighs in Goldsmith’s favour.”

Notably, justices considered the sole question of whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes”.

But the dissenting justices, Justice Elena Kagan and Chief Justice John Roberts, drew upon art history to support their opinions, saying Warhol as ‘“master appropriator…had plenty of company”. They cited follow-on works such as Manet’s 1863 painting Olympia, which derived inspiration from works by Titian and Giorgione; and Francis Bacon’s 1953 Study After Velázquez’s Portrait of Pope Innocent X.

‘Significant ramifications’ for art—including AI

Bill Frankel, a partner at Crowell & Moring, told WIPR that the ruling is “likely to have significant ramifications in the art world”.

“It places limitations on artistic freedom for appropriation artists by narrowing the interpretation of fair use as applied to their works of art.”

He added that it has the potential to affect the market and value for AWF’s Prince Series and other appropriation artworks, and poses copyright risks and uncertainties for art dealers, collectors, and museums.

As for the potential ramifications beyond the art world, Frankel said that the court’s reframing of what constitutes ‘transformative’ is likely to  impact other licensed works—generative AI in particular.

“Currently pending, and foundational, legal cases dealing with text, code, and artwork generated by AI systems all involve significant fair use issues,” he said.

A ‘narrow’ decision

Robert McFarlane, a partner at Hanson Bridgett agreed, saying that the decision “leaves room for an ultimate determination that AI-created art may be transformative.”

He described the court’s decision to base its decision on the first fair use factor as “narrow”.

“What is notable from the opinion is not the holding, but the analysis,” he said. “The decision is very narrow and, when framed in the manner done by the majority, not too surprising.

“The court was careful to limit its analysis to whether AWF’s use at issue in the litigation was a transformative use, and expressed no opinion as to whether Warhol’s creation of the original Prince series infringed on Goldsmith’s copyright.

“In sum, the decision primarily serves to remind courts that copyright law is statutory law, and that courts should adhere to a traditional statutory analysis, rather than engaging in a critical review of works of art.”

Dissenting voices

Preetha Chakrabarti, also a partner at Crowell & Moring, noted the dissenting opinions in the decision, referring to Justice Kagan and Chief Justice Roberts, saying it is “a reminder that intellectual property law often transcends ideological lines”.

The two justices accused the majority of leaving the first fair use factor “in shambles,” and lamented the majority’s focus on the commercial use of Warhol’s work over and above all else, “including any true analysis of the deeper transformative nature of Warhol’s work, undermining ‘creative freedom’ and upending doctrinal copyright law,” said Chakrabarti.

“Where does this leave us?,” she asked. “The narrow holding is unsurprising, and, as with most decisions on copyright law from the high court, will need to be sliced and diced and analysed for every specific instance of potential application.”

She said that “at first blush, this decision is certainly concerning for artists who monetise their work”.

Joe Gratz, a partner at Morrison Foerster, commented that “the vigorous, spirited back-and-forth between Justice Sotomayor’s majority opinion and Justice Kagan’s dissent is a reminder of why we all care so much about copyright: because it forms the legal backdrop for creativity and culture.”

He added: “The court looked not at the purpose of the painting, but at the purpose of the licensing transaction.”

Joel Wachs, president of AWF, said in a statement: “We respectfully disagree 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.

“Going forward, we will continue standing up for the rights of artists to create transformative works under the Copyright Act and the First Amendment.”

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox.