Is Andy Warhol’s Orange Prince transformative and non-infringing? The copyright bar and much of the art world has been anxiously awaiting the answer to this question since the Supreme Court decided to take up the matter. Apparently, Justices Kagan and Roberts were waiting for the same thing.
Background
In 1984, Andy Warhol created for Vanity Fair magazine a silkscreen portrait of Prince Rogers Nelson based on a Lynn Goldsmith photograph which the magazine licensed from Goldsmith’s agency for this purpose. The image was printed alongside an article about the musician titled “Purple Fame”. Unbeknownst to Goldsmith, Warhol created 15 other works from the photo. These were not authorized under the license. In 2016, Condé Nast licensed from the Andy Warhol Foundation (successor in interest to the Warhol copyrights) one of the unauthorized Warhol images of Prince (“Orange Prince”) as the cover of its publication about the late musician upon his untimely death. Goldsmith, believing the cover image infringed her copyright in her photograph, contacted the Foundation. They sought a declaration of non-infringement from the district court and were successful. The Second Circuit reversed, and the Supreme Court took up the matter last fall.
Eclipsing the opinion itself is the mordacious exchange between Justices Sotomayor and Kagan. The back and forth is so scathing, it has become the subject of several articles without comment on the holding of the case.
Despite their bitter debate, one fact was not in dispute: Prince is one of the twentieth century’s greatest rock stars and a celebrity icon. On that, we can all agree.
The opinion is a boon to Prince’s brand as an affirmation of his fame. This group of trademark lawyers couldn’t be more pleased.
Fair Use and Transformativeness
Transformativeness has become a key factor in fair use jurisprudence since it was introduced by Pierre Leval in the Harvard Law Review (P. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990)) and discussed in Campbell v. Acuff-Rose (Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569 (1994)). Post Cambpell, many cases have turned on this very issue, even when all remaining fair use factors might have favored a different outcome. Transformativeness and the degree required for a secondary work to be non-infringing has been undefined and hotly debated for decades. No clear standard has emerged from the body of cases in which it has been discussed. Even the Second Circuit clarified its own precedent (Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013)) when discussing the transformativeness of Orange Prince in the decision that opened the door to this case. (Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, et. al., 992 F.3d 99 (2d Cir. 2021).)
Many hoped the Supreme Court would provide a dissection of transformativeness as applied to copying that would define the line separating mere derivatives from transformative second works in the way Campbell distinguished parody from mere satire. A review of the articles and commentary that came out shortly after the Court granted cert bears this out.
Although this Court provided a detailed framework for applying the first fair-use standard, it did so without evaluating the art in question. The Court framed the argument around the challenged use (licensing), not the transformativeness of the secondary work, noting that judges should not assume the role of art critic.
The dissent was harsh, eviscerating the majority for failing to recognize the differing aesthetics and messages of the works and for evaluating transformativeness on a basis that would nullify the value of these differences anyway. It accuses the majority of improperly basing its analysis of the first fair use factor on the business of of the secondary work rather than its content.
The “Fifth” Factor
This author notes an invisible fifth factor not enumerated in section 107: whether fair use is being claimed as a right or as a defense. “The best defense is a good offense” might not be true when relying on fair use to justify the unauthorized use of a creative work for a commercial purpose not related to education, news reporting, or other statutory exception. Just ask the authors of “Blurred Lines”. Williams v. Gaye 895 F.3d 1106 (9th Cir. 2018). They were not dragged into court to defend an infringement action. They sought a declaration of non-infringement (fair use) and lost. The Gayes were defendants/counterclaimants, not plaintiffs. This aspect of the case seems to have been lost amid the repeat characterizations of the Gayes as copyright bullies seeking to own a genre of music. Similarly, the Andy Warhol Foundation sued Goldsmith for non-infringement, winning at the district court but losing on appeal. Like the Gayes, Goldsmith was the defendant/counterclaimant, not the plaintiff.
Both cases are instructive strategically. When considering an action for non-infringement, remember your burden and assess the true cost of losing. The copyright owner of a complaining work is not subject to a four-factor balancing test with little clarity as to which factor will carry the outcome. And recovery is lopsided. Winning a declaration of non-infringement brings no monetary reward but a losing counterclaim could be extremely costly.
Rochelle Claerbaut
Neal & McDevitt, LLC
