On May 18th, 2023, the Supreme Court of the United States handed down its decision in the case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith. In a 7-2 vote, the Court ruled in favor of photographer Lynn Goldsmith, finding that pop artist Andy Warhol had infringed Goldsmith’s copyright in a photo she took of the music artist Prince in 1981. The outcome of the case hinged largely on the Andy Warhol Foundation’s assertion that Warhol’s use of the photo constituted “fair use.”
Some photographers are declaring this a victory in the fight against rampant infringements and the almost-certainly expected claimed defense of “fair use.” Others in the creative community have expressed concern that this ruling may stifle creative expression. While fair use is absolutely critical in both creativity and free expression, I believe this ruling warrants neither jubilation nor despair. The scope of the actual ruling is very specific, and only further highlights the complicated nature of how the fair-use exemption is actually employed in deciding the balance between maintaining the incentive to create, and furthering progress in science and the arts. I’d still call this case a “win” for at least the photography community, if not all creatives, particularly because the Court’s finding emphasizes the necessity and value of actual fair uses of copyrighted works in creative expression, and cuts through the varying degrees of bullshit that are often raised in fair-use defenses during copyright litigation.
Background of the Case
For brevity’s sake (I know, rare for me), I’ll only summarize the main points of the case here, but I recommend the Wikipedia page on the case for a more detailed timeline.
In 1984, Vanity Fair (part of Condé Nast) commissioned Andy Warhol to create a silkscreen print of Prince for publication in response to the release of Prince’s Purple Rain album. Goldsmith licensed a photo to Vanity Fair that she took of Prince in 1981, for one-time use as an artistic reference for this purpose, and received $400 plus a co-credit when the finished piece was published.
Unbeknownst to Goldsmith, between 1984 and 1987, Warhol went on to create sixteen variants of the print (which relied heavily on Goldsmith’s photograph), known as the Prince Series. When one of the variants (known as “Orange Prince”) was published on the cover of a Condé Nast magazine commemorating Prince after his death in 2016, only then did Goldsmith find out about the variants, and that the Andy Warhol Foundation had licensed the Orange Prince variant to Condé Nast for $10,000. The Foundation was credited, but Goldsmith was not.
After Goldsmith contacted the Andy Warhol Foundation and notified them of her claim of infringement, the Foundation, in a rather aggressive move, sought a preemptive declaration from the court that Warhol’s prints did not infringe Goldsmith’s copyright, or in the alternative, that the use was fair use, and even attempted to bar Goldsmith from bringing litigation in the matter. Goldsmith filed a counterclaim for copyright infringement. The district court decided in favor of the Foundation, which was later reversed on appeal. The Supreme Court of the United States granted certiorari, ultimately ruling in favor of Goldsmith by a vote of 7-2.
Fair Use: It’s Not That Simple
People love to throw around the term “fair use,” but it’s more specifically called the “fair-use exemption” (keyword: “exemption”), a narrow set of circumstances in which uses of copyrighted works that would otherwise have been considered infringement, are deemed exempt. When deciding fair-use cases, judges examine four factors, which are weighed against each other and not necessarily dispositive on their own:
- the purpose and character of the use
- the nature of the copyrighted work
- the amount and substantiality of the portion taken, and
- the effect of the use on the potential market.
Notice that at least two of these factors refer to the “use” of the work. This is where things can quickly become nuanced and complicated. One particular use of a work may fall within the fair-use exemption, whereas another use of the same work may not. As architectural photographers, we are used to enjoying all the rights granted exclusively to copyright holders: the right to reproduce the work, prepare derivative works, distribute/license the work to others, and publicly display/perform the work. At least with respect to our copyright in our images, we can exploit these rights without limitation. This is not necessarily so in fair-use cases, because even though a work that relies on another copyrighted work in such a way as to be considered a derivative work (a legal term, not in the pejorative sense), may itself qualify for copyright protection, its dependence on the other work still leaves any potential uses of that image beholden to the fact that it is a derivative work (one of the rights held exclusively by the copyright owner). If a specific use is not deemed fair use, it is still an infringement.
In other words, fair use is not an exemption from someone’s copyright in a work; it is an exemption for specific uses of that work. The threshold will vary based on how the use weighs against the four factors. There is a myth that simply changing a work by a certain amount (e.g. 30 percent) avoids copyright infringement issues, but this is demonstrably false. The fair-use exemption is in place so as not to stifle creative expression, a vital component of a free society. However, as observed in the Goldsmith case, creative expression is decidedly different from the commercialization of that expression.
The Goldsmith case reinforces the narrow scope of the fair-use exemption; however, it also reminds us of the nuanced and multifactorial nature of whether a particular use is considered fair use. The only fair-use factor presented to the Supreme Court concerned “the purpose and character of the use…of a commercial nature or…nonprofit educational purposes.” As a result, the Court declined to offer an opinion as to whether the mere creation of the variants in the Prince Series violated Goldsmith’s copyright, or whether the display, or even sale, of those original prints would constitute infringement. The issue at hand was AWF’s commercialization of “Orange Prince” by way of licensing the image to Condé Nast, a commercial endeavor.
The Foundation argued that Warhol’s use of Goldsmith’s photograph was transformative; that among other purposes, “Orange Prince” was meant to comment on the “dehumanizing nature” and “effects” of celebrity. However, Justice Sotomayor states in the Opinion that simply adding new expression, meaning, or message, is not enough. She writes:
“Otherwise, ‘transformative use’ would swallow the copyright owner’s exclusive right to prepare derivative works, as many derivative works that ‘recast, transfor[m] or adap[t]’ the original, §101, add new expression of some kind. The meaning of a secondary work, as reasonably can be perceived, should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original.”
This next bit is my favorite (emphasis added in appreciation of bad-assery):
“Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists. Such protection includes the right to prepare derivative works that transform the original. The use of a copyrighted work may nevertheless be fair if, among other things, the use has a purpose and character that is sufficiently distinct from the original. In this case, however, Goldsmith’s photograph of Prince, and AWF’s copying use of the photograph in an image licensed to a special edition magazine devoted to Prince, share substantially the same commercial purpose.”
In other words, the nature of the licensed image was for the same essential purpose as Goldsmith’s original photograph could have served—to depict Prince in a magazine.
The Goldsmith case was not about the strict copying of a photograph, but the reliance on that photograph in the course of producing a derivative work and, ultimately, commercializing it beyond the terms of the original license. Some architectural photographers would say this case is not really applicable to our genre, since in an infringement situation, our work is more commonly copied as-is, rather than modified in the course of producing a separate visual work.
However, I’d argue that makes it all the more important. Given that “fair use” seems to be the go-to defense among those on the receiving end of an infringement claim, defendants will often insist that their use of our photographs was somehow “transformative,” adding new commentary or some other creative spin on our work via text-based articles or incorporation with other visuals. The Goldsmith case reinforces that the bar for establishing a fair-use defense remains squarely above simply adding something to an existing work, particularly when such use of the original work hinders its secondary licensing market for the commercial gain of the party claiming “fair use.”
As architectural photographers, we produce images that frequently have value for multiple parties. Fortunately, this means more value for us as well—one of the fundamental tenets of copyright law. Unfortunately, where there is value, there will be misappropriation. As I stated in a previous article on handling infringement claims, there are two categories of photographers in the world—those whose work has been infringed, and those whose work will be infringed. Those who misappropriate your work for their own gain will not only defend their conduct as “fair use”; they will even claim you are trying to extort them or are attempting a “shakedown” (as the Andy Warhol Foundation claimed of Goldsmith). The Goldsmith case should serve as a reminder that just because an infringing party claims a fair-use defense, does not mean it has any merit. We are commercial photographers and, by definition, are paid for the distribution and usage of our work. Any use that competes with, hinders, or replaces a secondary licensing opportunity, particularly if commercial in nature, is unlikely to meet the standard of the fair-use exemption. Register your work, stand up for your rights, and get paid.