Justices debate whether Warhol image is fair use of photograph of Prince

Wednesdays argument in Andy Warhol Foundation for the Visual Arts v. Goldsmith wandered widely, as the justices considered whether a famous set of images that Andy Warhol based on a 1981 photograph of Prince by the award-winning photographer Lynn Goldsmith were such a fair use of the photograph that Warhols successors can license them for commercial use without the permission of (or compensation to) Goldsmith.

As Roman Martinez explained on behalf of the Andy Warhol Foundation (which controls the intellectual property of the late Warhol), the foundation argues that Warhols work was so transformative that the continuing exploitation of Warhols series of images after the death of Prince owed nothing to the photograph on which Warhol based those images. The principal reaction of the justices to the argument of Martinez was to pose a series of hypotheticals, all of which seemed to the questioner plainly to require permission from the underlying copyright, but none of which seemed obviously distinguishable from the foundations position that any new message or meaning is enough to free a follow-on work from any obligation to the original work.

Justice Elena Kagan put it most bluntly when she explained that under Martinezs argument

there may be nothing left to the original author for derivative works. [I]ndeed, we expect Hollywood, when it takes a book and makes a movie, to pay the author of the book. But I think moviemakers might be surprised by the notion that what they do [isnt] transformative. I mean, mostly movies are tons of new dialogue, sometimes new plot points, new settings, new characters, new themes. You would think [that amounts to] new meaning and message [under the test you propose]. So why is it that we, you know, cant imagine that Hollywood could just take a book and make a movie out of it without paying?

In the same vein, Justice Amy Coney Barrett (perhaps channeling my case preview) debated with Martinez why under his rule the acclaimed Peter Jackson movies about the Lord of the Rings needed to pay a royalty to Tolkiens estate. Martinez started by suggesting that the movies had not added much of substance to Tolkiens works but quickly backed down, confessing a general lack of familiarity.

More humorously, Chief Justice John Roberts posited a claimant who put a little smile on Princes face to press the message that Prince can be happy. Surely, he suggested, [t]he message is different from the (dour) face of Prince in the original photograph.

Most memorably, Justice Clarence Thomas asked Martinez to imagine him lets all practice our best imagining skills here at a Syracuse football game, with a large poster bearing a blown-up image of Orange Prince (the image at issue in the case before the court) with a Go Orange caption at the bottom. After the game, Thomas suggested, he would be marketing the image to all my Syracuse buddies. The problem for Martinez, of course, is that the addition of Go Orange plainly adds a new message to Princes work, but the natural intuition is that a license fee still would be owed, a fee that is not easy to reconcile with Martinezs argument.

On the other side, the presentation of Lisa Blatt (representing Goldsmith the photographer) was largely occupied with more abstract discussions of what the statute (Section 107 of the Copyright Act) means when it directs attention to the purpose and character of the use. On the one hand, it is easy to say (as Blatt argues) that the purpose of both uses Goldsmiths photograph and the images Warhol derived from that photograph was commercial licensing for publication in magazines in stories about Prince. On the other hand, you could just as easily say that Goldsmiths original photograph was intended to provide an accurate representation of how Prince looked, while Warhols images had a profoundly non-representative intention.

Roberts seemed particularly interested in that point. He repeatedly returned to non-representative attributes of Warhols depiction, emphasizing that if you really wanted to know what Prince looks like, [h]e doesnt have one eye thats blacker than the other [and] his head doesnt float in the air as it does in Warhols but not in Goldsmiths. As he put it, Warhol sends a message about the depersonalization of modern culture and celebrity status. Thus, he suggests, its not just a different style. Its a different purpose. One is the commentary on modern society. The other is to show what Prince looks like.

Having said that, it is fair to say that much of the justices discussion with Blatt (and Yaira Dubin, representing the government in support of Goldsmith) seemed less concerned about figuring out which way to vote and more with how to craft a useful opinion rejecting Warhols claims.

In summary, the justices were highly engaged in this one, so I would not expect an opinion any time this fall. I think the principal question left for the justices will be whether they can affirm outright or whether they need to vacate the decision of the lower court and remand asking that it clean up some stray language in its existing opinion.