Warhol v. Goldsmith

From The Center for Art Law:

Since the opening of his retrospective at The Whitney Museum of American Art, From A to B and Back Again, Andy Warhol is the talk of the town… again. One of the Museum’s facades is now covered with poppy flowers, and its fifth floor is dominated by a rainbow Mao Tse-Tung. Though the visual imprints Warhol has left on the art world and popular culture are inescapable, the legal heritage he delegated to his Foundation after his death in 1987 are less acclaimed. The entity has been confronted with many litigations addressing copyright and authenticity issues related to the artist’s works and most often to his screenprints.

One of the most recent cases, The Andy Warhol Foundation For The Visual Arts, Inc. v. Goldsmith et al (“the Goldsmith case”) lays an unusual scenario in that regard; one where the Foundation raced its way to court before its adversaries, photographer Lynn Goldsmith and her company Lynn Goldsmith Ltd.

The case involves Goldsmith’s 1981 photo of late singer Prince and Warhol’s Prince Series, of which Goldsmith’s photo is the basis. Her and her company had threatened to file a litigation against the Foundation for copyright infringement if they did not receive compensatory damages.

On April 7th, 2017, the Foundation (“the Plaintiff”) filed a complaint against Lynn Goldsmith and Lynn Goldsmith Ltd. (“the Defendants”) on four causes of action. The Plaintiff’s complaint offers an insight on Copyright Law, the essence of Pop Art, and Warhol’s emblematic silkscreened vision.

Lynn Goldsmith emerged as one of the first American female photographers in the “Sex, Drugs & Rock n Roll” era. Her work is featured is major national collections, such as The Museum of Modern Art or The Smithsonian National Portrait Gallery, and her coffee table book New Kids on the Block, was featured on The New York Times Best Seller list. She was one of the first artists to portray late singer Prince, as his career was just beginning to sprout. In 1981, Newsweek hired Goldsmith for their article dedicated to the rising pop star. In one of the pictures from that photoshoot, he wears a serious gaze, high-waisted dress pants and silver suspenders, a white buttoned up shirt and an untied bow around his neck. His hands are nonchalantly tucked in his side pockets. When Goldsmith was asked to describe how her subject spoke to her in that moment, she said she saw “someone who could be so expressive and really was willing to bust through what must be their immense fears to make the work that they wanted to do, which kind of required a different part of themselves, but at the heart of it all, they’re frightened.”

. . . .

Lynn Goldsmith, photo of pop artist Prince, 1981, for Newsweek.

Upon the release of his Grammy Award winning album Purple Rain, glossy magazine Vanity Fair spread his portrait across its November 1984 issue. The magazine’s photo department asked for a written license to use Goldsmith’s 1981 picture to illustrate the article, which the artist and her company delivered. As one of the backbones of an art movement that targets popular culture, fame and the media, Andy Warhol was asked to create a more colorful version of the photograph to be featured on a full page across from the article. Warhol’s screenprint featured a purple Prince on a dark orange background. The mention ©1984 by Lynn Goldsmith was featured below it.

[Above: Reproduction of pages 66-67 of the November 1984 issue of Vanity Fair, featuring one of Warhol’s screenprint depicting pop artist Prince.  
Exhibit taken from the Complaint.]

. . . .

The Plaintiff requested a declaratory judgement in anticipation of the Defendants’ “baseless claims.” The Foundation now hopes the Second District Court will consider Warhol’s Prince Series in light of its previous Prince case – Richard Prince, that is – in which the judge had found the Defendant’s work to be transformative and protected by fair use, back in 2013.

Left: Lynn Goldsmith, 1981, Newsweek.
Right: Andy Warhol, Prince Series, 1984, Vanity Fair.
Exhibit taken from the complaint. 

The Complaint supports these arguments with extensive factual background and explanations on Warhol’s artistic signatures. In order to demonstrate that his art is incomparable to Goldsmith’s, the Plaintiff relies on Warhol’s unique production process and silkscreens, as well as on the message he conveys through his work. In the same way it may feel unnatural to think of a person differently than as both a body and a mind, an artwork’s aesthetics is inseparable from its latent message, when it has one. This is especially true for a Warhol silkscreen in which, as analyzed in one of The Whitney’s walltexts, “the photograph (…) became both the subject of the painting and the means by which Warhol made it.”

Thus, the Defendants’ arguments travel from visual to symbolic language to persuade the Court of the work’s originality, while exploring the newly pushed boundaries of fair use and the more traditional equitable doctrine of laches.

. . . .

The Defendants argue that Warhol’s works transcend their subjects’ personality. While Goldsmith uses her camera to create confidential portraits, Warhol used public figures to comment upon social issues. His muses served as human billboards for the topics he denounced, and he chose them for what he believed society associated them with, rather than for who they were as individuals. Warhol’s messages were effective because he worked off images most Americans were familiar with; images that had been ingrained in the common imagination. As an example, the Complaint alludes to the artist’s 1962 silkscreen representations of Marilyn Monroe, which transformed her publicity photo for the movie Niagara (1953). Dr. Tina Rivers Ryan stated that the use of two-dimensional silkscreens in this work creates an “emotional ‘flatness’ and [turns] the actress into a kind of automaton.” Warhol hoped his use of universal photographs would lead his audience into questioning and comparing them to his alterations. His portraits would have been deprived of their essence without a clear reference to popular culture.

In his expert opinion for the Foundation, Dr. Thomas Crow explains how Warhol applied that very technique to transform Goldsmith’s photograph. According to Dr. Crow, “the heightened contrast that Warhol preferred has the effect of isolating and exaggerating only the darkest details: the hair, moustache, eyes, and brows. One conspicuous effect of these changes was to make the subject appear to face fully towards the front as a detachable mask, negating the more natural, angled position of the figure in the source photograph.”

Warhol’s litigious work merely shows the singer’s face and hair. Prince’s outfit and body language were an essential part of Goldsmith’s photo. Interestingly, Warhol was able to separate the physical body from the person’s head for most of his prints. This gives his viewers the impression that the model depicted is only half real. Though Prince is still recognizable, Warhol’s portrait cuts off parts of his personality that were focused on in Goldsmith’s work. Clearly, the two visual artists had different intentions behind their portrayals.

. . . .

Fair Use Defense

An artwork can qualify as fair use in several situations defined in the Copyright Act. For example, an artist does not need the copyright owner’s authorization to use his work to create a parody or some other form of satire of the original work.

Left: Patrick Cariou, Yes Rasta, 2000. 
Right: Richard Prince, Canal Zone Series, 2008, powerHouse Books, Gagosian Gallery. 

In Cariou v. Prince, the facts were similar to the casein question here, and practically launched the Goldsmith lawsuit. The Court of Appeals for the Second Circuit faced an issue related to artist’s Richard Prince’s use of Patrick Cariou’s photograph of Rastafarians. In order to declare that (Richard) Prince’s works were protected by the doctrine of fair use, the Court interestingly stated that “Much of Andy Warhol’s work, including work incorporating appropriated images of Campbell’s soup cans or of Marilyn Monroe, comments on consumer culture and explores the relationship between celebrity culture and advertising.” When the case settled, Goldsmith expressed her disagreement with the justice system on social media, acting as a spokeswoman for contemporary artists. She then decided to threaten the Andy Warhol Foundation to defend her own work against satire was predictable, yet overdue.

Surely, in 2016, Goldsmith was still motivated be the anger she had shared in her Facebook post about copyright laws not changing in artists’ favor three years earlier. Perhaps she still has hope today that the power of Warhol’s prints will fade with time once, and if, the Goldsmith case reaches the Court of Appeals. However, copyright cases involving the Foundation seem to tilt more in its favor every time.

. . . .

UPDATE: on July 1, 2019, the Southern District of New York ruled in a summary judgment that, although Goldsmith’s photograph is protected by copyright, the Foundation properly pleaded the Fair Use defense. Despite the works being commercial in nature, the Andy Warhol Foundation is a nonprofit, and gave works to be exhibited in museums – the works therefore “add value to the broader public interest.” The court also ruled that Warhol’s Prince are transformative, purveying a different message than Goldsmith’s photographs.

UPDATE: on March 26, 2021, a few days prior to PG making this post, the Court of Appeals for the Second Circuit ruled on appeal from Goldsmith that “The Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law” and that Warhol’s use did not constitute fair use and was not transformative enough.

Link to the rest at The Center for Art Law

For those who have no patience with legalese, the Warhol Foundation won at the trial court level and the photographer won at the Court of Appeals, which reversed the trial court’s decision.

PG notes that the Court of Appeals decision was released less than two weeks ago. PG hasn’t checked the rules for how quickly the Warhol Foundation needs to start the process of appealing the Court of Appeals decision to the US Supreme Court, but suspects that time has not yet expired.

Today, the US Supreme Court issued one of its rare opinions concerning copyright law issues.

This case held that that Google could legally use elements of Oracle’s Java application programming interface (API) code when building Android. As with the Warhol case the Java API case revolved around the question of fair use.

You can be certain that the attorneys for the Warhol Foundation are intensely studying the Supreme Court opinion. The attorneys for the photographer are imbibing mind-altering substances and preparing to dig into the Supreme Court opinion in a day or two. Billable hours are proliferating with blinding speed.

From the Stanford University Libraries:

What Is Fair Use?

In its most general sense, a fair use is any copying of copyrighted material done for a limited and “transformative” purpose, such as to comment upon, criticize, or parody a copyrighted work. Such uses can be done without permission from the copyright owner. In other words, fair use is a defense against a claim of copyright infringement. If your use qualifies as a fair use, then it would not be considered an infringement.

So what is a “transformative” use? If this definition seems ambiguous or vague, be aware that millions of dollars in legal fees have been spent attempting to define what qualifies as a fair use. There are no hard-and-fast rules, only general guidelines and varied court decisions, because the judges and lawmakers who created the fair use exception did not want to limit its definition. Like free speech, they wanted it to have an expansive meaning that could be open to interpretation.

Most fair use analysis falls into two categories: (1) commentary and criticism, or (2) parody.

Commentary and Criticism

If you are commenting upon or critiquing a copyrighted work—for instance, writing a book review—fair use principles allow you to reproduce some of the work to achieve your purposes. Some examples of commentary and criticism include:

  • quoting a few lines from a Bob Dylan song in a music review
  • summarizing and quoting from a medical article on prostate cancer in a news report
  • copying a few paragraphs from a news article for use by a teacher or student in a lesson, or
  • copying a portion of a Sports Illustrated magazine article for use in a related court case.

The underlying rationale of this rule is that the public reaps benefits from your review, which is enhanced by including some of the copyrighted material. Additional examples of commentary or criticism are provided in the examples of fair use cases.

Parody

A parody is a work that ridicules another, usually well-known work, by imitating it in a comic way. Judges understand that, by its nature, parody demands some taking from the original work being parodied. Unlike other forms of fair use, a fairly extensive use of the original work is permitted in a parody in order to “conjure up” the original.

Link to the rest at the Stanford University Libraries

While PG does not contest that the Stanford summary of fair use covers a great many copyright/fair use cases, addresses the Supreme Court’s fair use decision in the Google v. Oracle case only in passing.

Transformative Fair Use

Here’s a key excerpt from the Supreme Court’s Google v. Oracle decision:

Google’s copying of the API to reimplement a user interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, constituted a fair use of that material as a matter of law.

Transformative fair use can be a very squishy, blobby thing for courts to deal with. There is more than a little “I know it when I see it” reasoning that gets dropped into the mix. The border between transformative and non-transformative qualifies as quite an impressive gray line.

The latest Supreme Court decision includes the term, “transformative”, twenty-seven times. Here are a few examples:

The inquiry into the “the purpose and character” of the use turns in large measure on whether the copying at issue was “transformative,” i.e., whether it “adds something new, with a further purpose or different character.” . . . Google copied only what was needed to allow programmers to work in a different computing environment without discarding a portion of a familiar programming language. Google’s purpose was to create a different task-related system for a different computing environment (smartphones) and to create a platform—the Android platform—that would help achieve and
popularize that objective. The record demonstrates numerous ways in which reimplementing an interface can further the development of computer programs. Google’s purpose was therefore consistent with that creative progress that is the basic constitutional objective of copyright itself.

[W]e have used the word “transformative” to describe a copying use that adds something new and important. . . . “‘artistic painting’” might, for example, fall within the scope of fair use even though it precisely replicates a copyrighted “‘advertising logo to make a comment about consumerism.’” . . . . Or, as we held in Campbell, a parody can be transformative because it comments on the original or criticizes it, for “[p]arody needs to mimic an original to make its point.”

Rather, in determining whether a use is “transformative,” we must go further and examine the copying’s more specifically described “purpose[s]” and “character.”

There was a dissenting opinion in the Supreme Court case:

The Purpose and Character of the Use – The second-most important factor—“the purpose and
character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” —requires us to consider whether use was “commercial” and whether it was “transformative.” . . . . But “we cannot ignore [Google’s] intended purpose of supplanting [Oracle’s] commercially valuable” platform with its own. . . . . Even if we could, we have never found fair use for copying that reaches into the tens of billions of dollars and wrecks the copyright holder’s market. . . . .

A work is “transformative” if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” . . . . This question is “guided
by the examples [of fair use] given in the preamble . . . Those examples include: “criticism, comment, news reporting, teaching . . . , scholarship, or research.” . . . .

Although these examples are not exclusive, they are illustrative, and Google’s repurposing of Java code from larger computers to smaller computers resembles none of them. Google did not use Oracle’s code to teach or reverse engineer a system to ensure compatibility. Instead, to “avoid the drudgery in working up something fresh,” Google used the declaring code for the same exact purpose Oracle did. As the Federal Circuit correctly determined, “[t]here is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”

That new definition eviscerates copyright. A movie studio that converts a book into a film without permission not only creates a new product (the film) but enables others to “create products”—film reviews, merchandise, YouTube highlight reels, late night television interviews, and the like.

Circling back to the Warhol case, for PG, Warhol’s creation transformed the original photo into something fundamentally different. No one who wanted to use the original photograph for commercial purposes would be satisfied with the painting. No one who wanted something with the overall impact of the painting would have been satisfied with the photograph.

PG suggests the court decision concerning the use of the Rastafarian photo (above) supports his commercial purposes discussion above. No one interested in licensing the original photo from the photographer would be satisfied with the painted version and vice versa.

For PG, the Warhol case is much stronger for transformation than the Google/Oracle case for a transformative use of the photo to create something different and which does not compete with the original or impair its commercial value.

Legal/Philosophical Diversion – Feel Free to Skip

Something about the education, background and experience of most judges makes them unusually clumsy when it comes to copyright and copyright infringement cases. Hence PG’s skepticism about some copyright decisions. He will note in passing that most judges have similar problems with patents and patent infringement matters.

In a copyright infringement case PG tried a very long time ago, a federal judge in a private conference with PG and opposing counsel said that, if PG’s client had taken the content of the publications of the opposing party and used it for commercial purposes, PG’s client was the equivalent of a thief.

The problem with the judge’s emotional response was that the US Supreme Court had recently released an opinion that clearly stated that material of the type PG’s client had copied was not protected under US copyright law.

Some writings and publication are protected by copyright and others are not.

As an example, if you take a list of the states in the United States and reorder it in reverse-alphabetical order or in the order in which they were admitted to the to the Union, even if no one has ever done so before, you are not entitled to a copyright on the results of your work.

The specific case that supports PG’s statement in the prior paragraph (and PG’s contention to the afore-mentioned cranky judge) is a U.S. Supreme Court decision that the selection and arrangement of the pages in a typical telephone directory fails to satisfy the creativity requirement underlying the principal of copyright protection and is therefore not protected by copyright. (Feist Publications, Inc. v. Rural Telephone Service Co., 111 S.Ct. 1282 (1991)).

End of Diversion

PG suggests the bottom line for authors is to be aware of whether you are creating something that was inspired by the protected work of someone else or if you are copying the protected work of someone else and making a few tweaks.

He notes that, once copyright protection has lapsed for a creative work, copying is perfectly legal and, in PG’s “freedom to authors” opinion, perfectly ethical as well.

9 thoughts on “Warhol v. Goldsmith”

  1. PG, this must be one of your longest – and most interesting – postings. I was especially impressed that you’d already studied the Oracle v Google decision when it only came out the day you posted. I’ve had a vague feeling of sympathy for Google throughout the case but must admit that I found Justice Thomas’s dissent rather more convincing than Justice Breyer’s majority opinion. However, given that I’m neither a US citizen nor a lawyer no one is going to give a damn about my views. Plus the right decision was reached as they should have accepted the original jury’s decision rather than second guessing them.

    As for Andy Warhol, I must admit that my sympathy is with the photographer. Whatever skill may have been required originally we are today faced with something where the original image is still easily recognisable and the manipulation could be done in a few minutes by anyone familiar with Photoshop or Gimp, and while Warhol is not around to do this, thousands of others are going to be happy to feed off of other people’s work. The Andy Warhol Foundation may be a non profit but this does not make them non commercial nor does it stop them making profits and they could easily have paid a reasonable fee to license the photograph.

    • On Oracle: They admitted violating reverse engineering practices and they kept on throwing up different excuses tbat were, as SCOTUS proved, irrelevant. Which is why tbe case lasted 10 years. The case looks to have been settled on scale. The misuse was effectively judged not significant enough. Breyer’s justification, though, opens a bigger can of worms than just going De Minimis. Lots of cases will follow as more reverse engineers cut corners. A better ruling would’ve been to cut Oracle’s award to $1.

      On the photo: this one won’t last long. The photographer’s position is not unlike the news peddlers who want to be paid to be quoted, even with attribution and links. Untenable. The Warhol piece is no substitute for the original nor does it pretend to. The judge needs a refresher on the tests for fair use.

  2. The short answer to PG’s “I’m not sure”:

    The ordinary time to file a petition for certiorari (request to have an appellate decision heard) is 90 days after issuance of the mandate in the case. The mandate in the Second Circuit ordinarily issues about a month after the decision issues, because:

    There’s a (depending on certain circumstances) ten or fourteen day period after the panel opinion issues to request rehearing en banc by the entire Circuit Court. While such a petition is pending, if timely filed, the mandate will not issue… so the 90-day clock on the certiorari petition will not have begun ticking.

    The key point on an en banc rehearing is that it will only be granted if a majority of judges on the Second Circuit, after seeing the petition (and, perhaps, requesting a response and reviewing that), believe that either (a) the panel decision was procedurally improper, usually by overruling a prior decision without an intervening change in Supreme Court or statutory requirements, or (b) the panel made a clear error of law. And even then, nothing is certain. En banc petitions are granted in something around 1% of all cases, so frequently the en banc petition is a tactical means to delay issuance of the mandate and thereby get more time to prepare a cert. petition without having to file for an extension (and those extensions are granted only for “good cause shown” by the Supreme Court, usually fewer than 20 a year out of 10,000+ petitions).

    And all of this is going to run straight into a serious doctrinal error that the Supreme Court made yesterday in the Google matter, but it’s now the law: Fair use determinations are a matter of law. Certain facts can be found by a jury regarding fair use, but the weighing of the four statutory, fifth ever-present-nonstatutory, and catch-all factors is strictly for the judge after yesterday.

    Yes, this really is the short answer. The longer answer, which is no doubt going to occur in law journals over the next couple of years, requires at least 150 footnotes.

  3. There’s one wrinkle in this case that is not being discussed:

    It’s not Warhol’s originals that are being attacked. It’s the mass-market reproductions that are being attacked, and for good reason: The statute of limitations on the originals is problematic (the plaintiff would need to prove that she wasn’t aware of them until less than three years prior to filing suit, and had no way to become aware of them). The mass-market reproduction, however, is more recent…

    …and leads to a contract claim. Warhol’s license to use the photographs was for the originals only. The real question here — and it’s at least in part a question of New York contract law — is whether mass reproduction exceeds the scope of the license. This is parallel to the standardized test company that says they want to use a poem for the AP English exam only, and for one year only, but then puts it into a graduation-requirement standard test used in six different states for eleven years. (Confidentiality requirements in settlement agreements keep me from being more detailed.) Yes, the company licensed the right to use the poem in a test… just not that one, just not that extensively, both of which influenced the price offered and paid for the permission.

    The “fair use” question now returns it to the District Court to determine whether, since the use was adjudged not fair, the actual use exceeds the license granted inside the statute of limitations in a way that will afford the plaintiff some relief. Had fair use held up, that would have overruled the license claim entirely (if it was fair use, no license was needed — just like one has no obligation to pay a license fee on an expired patent or copyright). It’s a less-than-obvious interplay between federal and state law (Erie… it’s truly eerie…)

    • Hmmm… but with Warhol, when speaking of his famous silkscreen prints, there are no “originals” apart from the limited edition of prints. Each print is an original… an “original print.” Here’s how Christie’s states it:

      #4. Originals vs. editions and multiples—what do I need to know?
      An ‘original’ print is technically a unique work given it is generally produced as a limited number of impressions (collectively known as an edition), and each print is given an edition number, typically written as a fraction — for example, 24/50. The number to the right of the slash indicates the edition size (in this example, 50), while the figure to the left is the individual print’s number. […]

      (from Prints & Multiples: https://www.christies.com/features/Prints-Collecting-Guide-7471-1.aspx )

      Unless you’re speaking of the print used by the magazine to be included in its page layout if it were a one-off, say by the commission for the magazine and not also part of an edition. But the caption at top of this post says “one of,” which implies there are others, therefore there’s an edition, and each print is, therefore, an original.

      P.S. the same theory applies to other forms of fine-art printmaking including inkjet prints. In that case, each print (in a signed and numbered limited edition) is considered a “digital original.”

      • Harald, any definition coming from Christie’s on an issue of copyright is self-serving twaddle; and that one is worse than most, as it ignores the requirements of VARA (17 U.S.C. § 106A), which make original works in the “fine arts” Special. The redefinition of “original” is orthogonal at best to what copyright law demands of “original.”

        The critical problem in this dispute is that the silk screens are not what is at issue. The coffee mugs and t-shirt bearing reproductions of the silk screens are. That’s entirely outside the snooty scope of anything from Christie’s.* This is fundamentally the Princess Bride problem:

        “You keep using that word. I do not think it means what you think it does.”

        In this instance, a technical term from copyright law — “original,” concerning the standard for coverage by copyright at all — has been misappropriated as referring to a later part of the process of exploitation in one subset of copyright, just like so much else in English. But that misappropriation has been then reversed into a purported “technical term” of its own, thereby obscuring everything. (Which was rather Goldman’s somewhat… inconceivable point.)

        Christie’s isn’t in the business of selling art. Christie’s is in the business of taking an eyebrow-raisingly-high commission on sales of rarity… and of artificially creating and defining rarity so as to denigrate anything that is “not rare” as “unworthy of the attention of our social betters.” Which, of course, is precisely the opposite of the concern of any author!

        * I have decades of contempt for the self-serving racism and class warfare at the heart of the Christie’s business model… and personnel. It would be fascinating indeed to have one of their management defend that definition you cited in the context of, say, a looted burial-site “souvenir” from a non-Caucasian culture. Or even a Caucasian one, just not Western European. OK, including Western European, too; ask a Christie’s manager to defend their take on “original” relating to, say, the Elgin Marbles (which are at the purported heart of Western European civilization).

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