OPINION ANALYSIS

Justices rule against Andy Warhol estate in copyright dispute

Thursday’s decision in Andy Warhol Foundation for the Visual Arts v. Goldsmith provides a major statement in the role that copyright law plays in fostering artistic creativity, as the court upheld the claim of a famed celebrity photographer, Lynn Goldsmith, that the Andy Warhol estate infringed her copyright in a photograph of the musician Prince when it licensed an image Warhol derived from that photograph to serve as a cover on a Condé Nast issue published shortly after Prince’s death. In a particularly unusual line-up, Justice Sonia Sotomayor wrote for a majority of seven; Justice Neil Gorsuch, joined by Justice Ketanji Brown Jackson, agreed with her opinion and wrote a brief separate opinion. Only Justice Elena Kagan, joined by Chief Justice John Roberts, dissented.

Scholars and practitioners will debate the details of Warhol for years, and I certainly will not do the opinions justice in this brief article. All I can do is outline the main points on which Sotomayor relied. As the case came to the court, the lower court rejected Warhol’s claim that his licensure of the picture to Condé Nast was a fair use of Goldsmith’s copyrighted photograph, which is not unlawful under federal copyright law even if it otherwise infringed the copyright in the work. The copyright statute requires courts to consider four distinct factors in determining whether a use is fair: the character of the later use; the nature of the work; the substantiality of the copying; and the effect of the later use on the market for the original work. The lower court concluded that all four of those factors weighed in favor of Goldsmith, and the court agreed to review Warhol’s argument that the first factor (the “character” of the later use) weighed in Warhol’s favor.

Sotomayor readily concludes that the first “fair use” factor favors Goldsmith, largely because the specific use that Goldsmith challenges is the licensure by Warhol’s estate of his print to a magazine, a use that “share[s] substantially the same purpose” as the uses Goldsmith commonly made of her photographs, and precisely the same use for which Warhol himself paid Goldsmith on a one-time basis a quarter of a century earlier. The absence of a licensing fee or agreement this time makes all the difference.

Sotomayor’s opinion characterizes the “fair use” defense as a central part of the copyright law’s “balancing act between creativity and availability.” For her, the first factor, the “character” of the later use, “relates to the problem of substitution,” and thus does not protect the later “use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work.” When the later work will “substitute for” or “supplant” the original work, as here, that factor cuts against the fairness of the later use.

Sotomayor points to the preamble of the relevant section of the statute, which identifies “criticism, comment, news reporting, teaching …, scholarship, or research” as the “sorts” of copying that are “fair,” and thus protected. She suggests that those uses “ordinarily d[o] not supersede the objects of, or supplant, the work. Rather, [they] us[e] the work to serve a different end.”

Warhol is the first effort by the court to address fair use in this century, and Sotomayor spends a considerable time discussing the court’s last extended treatment of the subject, its 1994 opinion in Campbell v. Acuff-Rose Music, holding that 2 Live Crew’s parody of Roy Orbison’s “Oh, Pretty Woman” was a fair use. For Sotomayor, it is central to Campbell that 2 Live Crew’s work was a parody, because (in the words of the Campbell court), “parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s … imagination.” In the same way, she explains, “commentary or criticism that targets an original work may have compelling reason to … borro[w] from it.” That is not true, in contrast, when “an original work and a secondary use share the same or highly similar purposes,” especially when “the secondary use is of a commercial nature.” Warhol just as easily could have based his work on any other photograph of Prince; Goldsmith’s happened to be the ones provided to him.

Central to Sotomayor’s analysis (and the key point on which Kagan and Roberts part ways from her) is the idea that the way in which the secondary user exploits the work is the touchstone of the second factor, not the artistic motivation that generates the later work. All agree that Warhol’s artistic contribution is substantial, and reflects an aesthetic intention not shared by Goldsmith. But for Sotomayor, the only relevant feature of Warhol’s use is that it is a commercial licensing of an image, created by Warhol but undeniably based on Goldsmith’s work, for a fee to serve as a magazine cover. Sotomayor explicitly stops short of criticizing the numerous earlier uses of a group of prints Warhol made from the Goldsmith image, which have been displayed widely in museums since their creation in the 1990’s, and the opinion offers little or no reason to think those uses are unfair.

As to the use in the magazine at issue here, though, Sotomayor is clear. Goldsmith’s work, “a celebrity photograph,” commonly is used “to accompany stories about the celebrity, often in magazines. … [L]icenses, for photographs or derivatives of them, are how photographers like Goldsmith make a living. They provide an economic incentive to create original works, which is the goal of copyright.” Through that lens, the case is trivially easy, because the later exploitation is not just vaguely similar, it is almost identical to the use Goldsmith commonly makes. Sotomayor characterizes the use as “substantially the same as that of Goldsmith’s photograph,” a use that “shared the objective[s] of Goldsmith’s photograph, even if the two were not perfect substitutes.” Adding to that the “commercial nature” of Warhol’s exploitation of the print, Sotomayor can only conclude that the “character” of Warhol’s use weighs against a finding that his use is fair.

Sotomayor cautions that in some cases “borrowing heavily from an original” can be fair use, offering a rather gratuitous analysis of Warhol’s famous Campbell’s Soup cans. Where the original advertisements were designed “to advertise soup,” Warhol’s works did “not share that purpose” because their “commentary on consumerism [was] orthogonal to advertising soup” and “therefore does not supersede the objects of the advertising logo.”

Sotomayor’s opinion includes a lengthy response to Kagan’s dissent, which doubtless will occupy commentators for years. I cannot address that discussion in detail here, but I can pick out one particular theme that seems central to Sotomayor’s perspective: the copyright law’s framework for derivative works. Among the exclusive rights that the copyright law protects is the exclusive right to create derivative works. If any derivative work that had an artistic intention that was markedly different from the intention of the original work was a fair use, then the right to create derivative works would be nugatory. Most major movies based on books transform the books considerably, yet we do not think those are fair uses of the books; we expect the movie studios to pay (often hefty) licensing fees for the right to base a movie on the book. For Sotomayor, the dissent’s focus on the necessary “fairness” of any artistically reconfiguring use “waves away the statute’s concern for derivative works.”

Sotomayor closes with a summary of the reasons the majority’s decision strikes a suitable balance between earlier and later authors. She sees a statute “replete with escape valves” that prevent the rights granted to an original creator from stifling follow-on authorship. In the end, she concludes that “the last century of American art, literature, music, and film” show that the existing balance, as the majority sees it “is a powerful engine of creativity.”

Again, I caution the reader that I provide only an introductory discussion of the answers Sotomayor offers to the debatable questions this case raises. I expect the lower courts will struggle with those answers for the next few decades, until the court decides to step in again.