Fair Use of a Million-Dollar Copyright? How Andy Warhol Foundation’s Suit Against Photographer May Drastically Impact Sports Marketing
Photo Source: Daniel Arrhakis, Tribute To Prince - Wings Of Dreams And Purple, FLICKR (Apr. 22, 2016) (CC BY-NC 2.0)
By: Jake Paul* Posted: 02/17/2023
To Be (Fair Use) or not to Be (Fair Use): That Is the Question
Section 102 of the Copyright Act defines copyright as an “original work of authorship fixed in any tangible medium of expression.”[1] They can include literary works, musical works, dramatic works, graphics, sculptures, motion pictures, sound recordings, and architecture.[2] Section 107 of the Copyright Act allows a defendant to avoid copyright infringement upon successfully showing that their new work was used to, among other purposes, criticize, comment on, report on, teach about, or research the original work.[3] These purposes constitute the Fair Use exception, and the court will weigh the following factors to grant the defendant such exception: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of portion used . . . ; and (4) the effect of the use upon the potential market for or value of the copyrighted work.”[4] Notably, these factors should not be treated in isolation but instead looked at in totality.[5]
In the last quarter century, the Supreme Court has looked at what counts as Fair Use.[6] One of the heavily scrutinized aspects of Section 107 is the first factor because it requires unpacking a work’s purpose and character.[7] The Court in Campbell v. Acuff-Rose Music, Inc. held that the first factor requires determining whether the new work is transformative, a characterization that suggests the new work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”[8] To be sure, that new thing added must also be important.[9]
Fair Use in Most Recent Application
In 1981, photographer Lynn Goldsmith took a black-and-white photograph of the infamous singer Prince in New York on assignment from Newsweek magazine.[10] Goldsmith described the photo as highlighting Prince’s fragility, vulnerability, and humanity.[11] Three years later, Vanity Fair magazine commissioned artist Andy Warhol to illustrate Prince by using Goldsmith’s photograph as she licensed it, for which Vanity Fair credited and compensated Goldsmith.[12] However, during this time, Warhol created the Prince Series, composed of sixteen Prince silkscreens, fifteen of which exceeded the scope of Goldsmith’s license and which she was not compensated for.[13] In 2019, the Andy Warhol Foundation (“AWF”) sought a declaratory judgment that all sixteen silkscreens satisfied the Fair Use exception to copyright infringement, and Goldsmith countersued for copyright infringement, praying for an unspecified amount in damages and profits earned by AWF from the infringement.[14]
The district court held that Warhol added something new to the image, focusing on the silkscreens’ expressions, aesthetics, and communicative perceptions.[15] Specifically, the court found that AWF’s silkscreens were “reasonably . . . perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.”[16] However, the Court of Appeals for the Second Circuit reversed the Fair Use finding, refusing any attempt to determine the meaning or intent behind the work.[17] It held that the Prince Series was not transformative.[18] The Second Circuit acknowledged that new meaning or message could play a part in the analysis, but those features alone could not exhaust the analysis.[19] The court applied a more qualitative analysis, holding that the Foundation’s images did not stand apart from the “raw material” used by Goldsmith to create it.[20] With this backdrop, the Supreme Court granted cert.[21] The Court must decide how to apply Section 102, 107, and case precedent in deciding whether the Second Circuit was correct in reversing the Foundation’s Fair Use of Goldsmith’s image.[22]
Smile (or Frown) for the Camera: Bright-Flash Impact on Sports Marketers
Regardless of who the Court sides with, their opinion will set the bar for sports marketing behavior.[23] The decision will affect whether and how artists and photographers can use images of athletes and the brands and logos they associate with without violating copyright laws.[24] Ruling for AWF will likely mean that AWF can license the images for commercial use without being required to compensate or receive permission from Goldsmith, the original photographer.[25] This would cause a domino effect on the sports marketing industry.[26] Siding with AWF will, of course, strengthen the Fair Use exception, but it is unclear whether the court will rule that, in analyzing transformative value, extracting a work’s new meaning and message will alone suffice to address the first factor in the Fair Use exception.[27] A holding for Goldsmith could cause lots of modern and contemporary sports artists to lose the power to promote and profit from their work.[28] The Court has to be sensitive not to damage copyright law’s primary goal of “promot[ing] the Progress of Science and useful Arts” by pulling the chair out from those who fairly promote derivative works.[29]
If the court sides with Goldsmith, original artists, in general, would have more control and entitlement to compensation.[30] This could substantially restrict the use of, say, iconic sports images.[31] It could be the case that the Court views copyright law’s primary goal more favorably from the viewpoint of original artists.[32] The Court could digest Goldsmith’s argument of permitting the copying of only what is necessary to achieve the enumerated examples of Fair Use.[33] Despite finding Fair Use, the Campbell Court recognized the difficulty in creating truly new work, which adds points for Goldsmith.[34] Should the Court impose a test where a copyist defendant can shift the burden back to the original artist plaintiff to disprove the copyist’s meaning and message, this can be very difficult to disprove, which handcuffs original artists.[35] Goldsmith agrees that new meaning and message alone should not be enough to be Fair Use because many derivative works include new meaning, and they should not be allowed to escape infringement merely by adding a new meaning to the original work.[36] In fact, Justice Kagan emphasized this point during oral arguments by questioning why movie makers who use new plots and new dialogues (i.e., new messages) should not have to pay the original author of the book on which the movie is based.[37] New works could have multiple purposes or messages, and so, under a new meaning and message analysis, a new work could easily escape copyright infringement by declaring its purpose to be different from the one of the original work.[38]
Takeaway
Ultimately, if the Court weighs heavily on how each artist chose to depict Prince and what meanings can be drawn from the works, this teaches sports marketers to be careful with how they choose to use existing copyrights.[39] If this is the case, sports artists cannot merely change the aesthetics of the original work because that may not be transformative enough.[40] While this may be a “stick” by taking away from an artist’s creativity, it may also serve as a “carrot” by challenging artists to improve their approach to creativity.[41]
*Staff Writer, Jeffrey S. Moorad Sports Law Journal, J.D. Candidate, May 2024, Villanova University Charles Widger School of Law.
[1] See 17 U.S.C. 102 (identifying critical statute of copyright definition).
[2] See id. (listing more examples).
[3] See 17 U.S.C. 107 (creating Fair Use exception).
[4] See id. (suggesting totality of the circumstances analysis). For further discussion on these factors, see infra notes 5–9 and accompanying text.
[5] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994) (emphasizing how to evaluate the factors).
[6] See id. at 571–74 (finding Fair Use via parody for 2 Live Crew’s rap parody of Roy Orbison’s “Oh, Pretty Woman”); see also Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1200–09 (2021) (finding Fair Use in Google’s software platform).
[7] See Campbell, 510 U.S. at 578–79 (discussing first factor in Fair Use test); see also Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 37 (2d Cir. 2021) (citing Google, 141 S. Ct. at 1203) (discussing first factor in Fair Use test), cert. granted, 142 S. Ct. 1412 (2022).
[8] See Campbell, 510 U.S. at 579 (setting the standard for new works being transformative).
[9] See Andy Warhol Found., 11 F.4th at 37 (citing Google, 141 S. Ct. at 1203) (framing the Fair Use test more clearly with this additional adjective), cert. granted, 142 S. Ct. 1412 (2022).
[10] See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 318 (S.D.N.Y. 2019) (describing the photograph that caused lawsuit), rev’d in part, vacated in part sub nom. Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).
[11] See id. (identifying distinguishing feature).
[12] See id. at 318–19 (introducing facts that led to lawsuit).
[13] See id. at 319–22 (introducing artwork at center of case dispute).
[14] See id. at 322 (acknowledging infringement issue); see also Answer of Defendants, Counterclaim of Lynn Goldsmith for Copyright Infringement and Jury Demand, at 27, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312 (S.D.N.Y. 2019), (No. 17-cv-2532), 2017 WL 6818950 (identifying prayer for relief). AWF obtained ownership of Warhol’s work after he passed in 1987. See id. at 320 (demonstrating change in possession). The silkscreens were sold for millions of dollars. See The Supreme Court meets Andy Warhol, Prince and a case that could threaten creativity, Nina Totenberg, NPR (Oct. 12, 2022, 5:00AM), https://www.npr.org/2022/10/12/1127508725/prince-andy-warhol-supreme-court-copyright (identifying economic impact of case).
[15] See Andy Warhol Found. for the Visual Arts, Inc., 382 F. Supp. 3d at 325–27 (emphasizing intent behind the art).
[16] See id. at 327 (distinguishing original and new works).
[17] See Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 41 (2d Cir. 2021) (ignoring intent behind the art and refusing to play “art critic”), cert. granted, 142 S. Ct. 1412 (2022).
[18] See id. at 43 (“[T]he Prince Series retain[ed] the essential elements of the Goldsmith Photograph without significantly adding to or altering those elements.”).
[19] See id. at 41–42 (differing significantly from district court).
[20] See id. at 42 (“[T]he secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material.”).
[21] See 142 S.Ct. 1412 (Mem) (granting cert to resolve legal issue).
[22] For further discussion of Section 102, 107, and case precedent, see supra notes 1–20 and accompanying text.
[23] See Michael McCann, WARHOL-PRINCE SUPREME COURT CASE MAY TRANSFORM SPORTS MARKETING, Sportico (Oct. 12, 2022, 12:01 AM), https://www.sportico.com/law/analysis/2022/andy-warhol-prince-supreme-court-1234691115/ (citing Michael Jordan image as example)
[24] See id. (citing Michael Jordan image as example).
[25] For further discussion of Goldsmith, the original photographer, see supra notes 10–14 and accompanying text.
[26] For further discussion of the impact on sports marketing, see McCann, supra note 24 and accompanying text.
[27] For further discussion of the four factors in the Fair Use test, see supra notes 4–5 and accompanying text; see also Nicole D. Galli, Andrew J. Costa, & Katherine Cancelliere, Transforming the Fair Use Doctrine? Highlights From ‘Warhol Foundation v. Goldsmith’, The Legal Intelligencer (Dec. 19, 2022, 1:47PM), https://www.law.com/thelegalintelligencer/2022/12/19/transforming-the-fair-use-doctrine-highlights-from-warhol-foundation-v-goldsmith/#:~:text=Fair%20Use%20Doctrine%3F-,Highlights%20From%20’
Warhol%20Foundation%20v.,figure%2C%20beyond%20an%20ordinary%20human (applying new meaning and message to AWF’s theory for the case). Suggesting that Prince was transformed into “a flat, impersonal, disembodied, mask-like appearance” that comments on the dehumanizing nature of celebrity” could add points to AWF’s theory because it adds expression on top of meaning and message. See Jeannie Suk Gersen, THE SUPREME COURT’S SELF-CONSCIOUS TAKE ON ANDY WARHOL, The New Yorker (Oct. 19, 2022), https://www.newyorker.com/news/daily-comment/the-supreme-courts-self-conscious-take-on-andy-warhol (suggesting new work’s sense of transformative feature to Goldsmith’s original).
[28] For further discussion of compensating original artists, see supra note 13 and accompanying text; see also High Court Hears Copyright Row Over Warhol Use of Prince Photo, 31-2 Mealey’s Litig. Rep. Intell. Prop. 1 (2022), https://www.lexislegalnews.com/articles/81731 (argument of Roman Martinez) (“A ruling for Goldsmith would strip protection . . . from countless works of modern and contemporary art. It would make it illegal for artists, museums, galleries, and collectors to display, sell, profit from, maybe even possess a significant quantity of works.”).
[29] See U.S. Const. art. I, § 8, cl. 8 (setting stage for textual interpretation debate by both parties); see also Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 325 (S.D.N.Y. 2019) (citing Castle Rock Entm’t, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132, 141 (2d Cir. 1998)) (considering whether the promotion of “Progress of Science and useful Arts” is better served by not subjecting the new images to infringement than by subjecting them), rev’d in part, vacated in part sub nom; see also Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021) (utilizing same clause as district court for analysis).
[30] For further discussion of compensating original artists, see supra note 13 and accompanying text.
[31] See McCann, supra note 23 (citing Michael Jordan image as example).
[32] For further discussion of this constitutional clause, see supra note 29 and accompanying text.
[33] For further discussion of enumerated examples of Fair Use, see supra note 3 and accompanying text; see also High Court Hears Copyright Row Over Warhol Use of Prince Photo, supra note 28 and accompanying text (identifying Goldsmith’s argument).
[34] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) (emphasizing that few things in “truth, in literature, in science and in art . . . are strictly new and original throughout.”).
[35] See High Court Hears Copyright Row Over Warhol Use of Prince Photo, supra note 28 and accompanying text (considering the different tests to apply to Fair Use).
[36] See Ronald Mann, Justices Debate Whether Warhol Image is “fair use” of Photograph of Prince, SCOTUSblog (Oct. 14, 2022, 9:50 PM) https://www.scotusblog.com/2022/10/justices-debate-whether-warhol-image-is-fair-use-of-photograph-of-prince/ (quoting Justice Kagan’s question during oral argument).
[37] See id. (pressuring AWF’s “new meaning and message” theory as basis for transformative analysis).
[38] See id. (elaborating on the point).
[39] For further discussion on the Supreme Court’s considerations of Fair Use, see supra notes 23–39 and accompanying text.
[40] For further discussion on the Supreme Court’s considerations of Fair Use, see supra notes 23–39 and accompanying text.
[41] For further discussion on the Supreme Court’s considerations of Fair Use, see supra notes 23–39 and accompanying text.
