(Left: photo of Prince, © Lynn Goldsmith. Right: silkscreen portrait of Prince, initially composed by Andy Warhol, copyright currently held by the Andy Warhol Foundation for the Visual Arts, Inc.)
Before I get into the heart of my critique, let me establish some facts as I have perceived them to be. First, Andy Warhol the artist, never initially infringed on anybody’s copyright. The first image in the Prince Series, a.k.a “Purple Fame”, was completed and published within the parameters of a licensing agreement between Vanity Fair and Goldsmith’s agency. Vanity Fair’s intent for the artwork was apparently to use it as mere ‘window-dressing’, so to speak, to accompany a puff piece written about Prince. It should be noted that the doctrine of fair use was codified into copyright law at the time and yet Vanity Fair still felt it necessary to secure a license to have the work done.
I suppose one could charge Warhol for infringement for the fact that he did additional screen prints based on Goldsmith’s photograph. However given that Warhol completed this work towards the end of his life, given the ‘unfinished’ nature of some of these prints, and given that fact that Warhol himself never published this work, it may never be known why he did these additional prints or what his ultimate intentions were for the Prince Series.
Ultimately Warhol’s work got bequeathed to an organization known as the Andy Warhol Foundation for the Visual Arts (AWF). While the AWF may have some noble aims, let’s not pretend that one of their objectives isn’t to monetize the work of a celebrated, dead artist, which they get to do well into the 2nd half of the 21st century, thanks to how ridiculously long copyrights terms are. Following’s Warhol death in 1987, the AWF would occasionally license work from the Prince Series to be exhibited in museums and to be published within a number of anthologies that chronicled Warhol’s work. It’s difficult to gauge how well-known this work was outside of Warhol’s most ardent admirers.
Following Prince’s death in 2016, Condé Nast approached the AWF to ask if they could re-use “Purple Fame” for a special edition of their magazine, one that would be solely devoted to Prince. Ultimately Condé Nast choose to license a different print from the Prince Series, a.k.a “Orange Prince”. It’s not entirely clear why Condé Nast made this decision. However, there is one conjecture that I can’t escape from, yet could never prove. And that would be the notion that the AWF were aware that “Purple Fame” was created under a licensing agreement, and that if Condé Nast chose a different image it would then allow them to bypass any licensing restrictions. Ultimately Lynn Goldsmith discovered the existence of Condé Nast’s Prince tribute edition which then kicked off a debate on copyright and fair use. Well to be fair perhaps ‘debate’ is too strong a term. Rather it’s fostered a bunch of knee-jerk rhetoric on the notions of fair use and copyright.
With this conflict, I couldn’t think of a better example of how modern liberalism has completely divorced itself from deeper intellectual inquiry in lieu of expressing pithy, populist sentiments. What’s probably worse is to see publications like Techdirt, who attempt to pass themselves off as thoughtful intellectuals, offer a shallow, highly-skewed perspective on the Supreme Court’s decision. If one reads the opening introduction by Cathy Gellis in her editorial that was published on May 25th, the hyper-dramatic, alarmist tone is impossible to ignore. Her arguments stand in sharp contrast to the commentary made by the 2nd Circuit Court when they stated that “fair use presents a holistic context-sensitive inquiry ‘not to be simplified with bright-line rules’”. This latter notion suggests that fair use cases often hinge on the specific details of the secondary use to the degree that they don’t easily lend themselves to broad, wide-ranging precedents.
The sensationalism though doesn’t stop here. In the final paragraph of Gellis’s case background section she offered the following characterization
And so, in an act that apparently deeply offended the majority, Conde Nast approached the Andy Warhol Foundation ..., to license his[Warhol’s] portrayal of Prince, instead of approaching Goldsmith to license hers.
First, if Condé Nast preferred Warhol’s work to Goldsmith’s, that’s simply a matter of personal taste; why anyone, let alone Supreme Court justices, would be offended by that is ridiculous. But embedded within this statement is an interesting point that doesn’t get probed further. What would have prevented either Condé Nast or the AWF from contacting Goldsmith (or even her agency) to inquire about the potential further licensing of “Purple Fame”? Many on the left who argue on behalf of Warhol don’t seem interested in addressing this question. And it’s a rather fascinating question to ponder when you consider some of the facts that Gellis choose to exclude in her case background. One was the fact that Condé Nast initially requested to use “Purple Fame” which was noted in the 2nd Circuit filing and reiterated in the proceeding Supreme Court filing as well. This is important since “Purple Fame” was published with a credit given to Goldsmith for providing the source photograph, as the 2nd Circuit had noted. Another fun fact about this case is that Condé Nast is the parent company to Vanity Fair. My only critique towards Condé Nast for their role in this whole mess is this: Why did Condé Nast not also request a license from Goldsmith, when the initial image in question was published in one of their subsidiary properties with a credit given to the photographer? Sadly, they’ll probably never be forced to answer that question.
Once Gellis gets to the heart of her argument, she once again indulges in over-emphatic embellishments. Consider the following remark:
Without fair use, copyright can easily become a tool of censorship, where a copyright holder can effectively say no to subsequent expression.
Again, this decision did not eliminate the doctrine of fair use and secondly even with the concept of fair use, copyright contains censorial potential. In fact I would argue that the very thing that offers incentives for artists to create new works, is the exact same thing that enables copyright to be used as a restrictive, censorial club; that being the monopolistic right for artists (or copyright holders) to economically exploit their work. Goldsmith’s agency could have said ‘no’ to Vanity Fair back in 1984. Similarly the AWF could have said ‘no’ to Condé Nast nearly 3 decades later and in both cases the respective publishers would have no remedy to compel any sort of compliance. Granted there would be little economic rationale for either Goldsmith or the AWF to make such decisions. Vanity Fair could have easily found other photos of Prince taken by other photographers, leaving Goldsmith out in the cold. The AWF choosing not to license Warhol’s Prince Series prints at a time when demand for such content was unusually high would make even less sense. But Gellis never attempted to consider economic imperatives that might usher in new works, which afforded her the ability to make even more dubious points like the following:
Conde Nast had a magazine article to illustrate and wanted to find a picture of Prince that best fulfilled its editorial needs. Yet the upshot to the majority decision is that it was apparently not allowed to make that choice. Goldsmith gets to block it...
I think the issue here was that Goldsmith was not given a chance to block it. That work which contained her creative labor was licensed and published without her consultation or knowledge. Regardless of this though the choice that Condé Nast wanted to make was still attainable. All they had to do was secure the necessary licensing. And again given the high demand for visual imagery that captured Prince in the days following his death (a demand that clearly wasn’t sustainable), why would Goldsmith choose not to exploit this? Arguments like the one cited above are made by people who don’t understand the business of creative labor.
During the syllabus portion of the Supreme Court’s filing, there was an interesting point about fair use’s role in copyright law that’s worth noting here:
Copyright, however, balances the benefits of incentives to create against the costs of restrictions on copying. This balancing act is reflected in the common-law doctrine of fair use
From this language one could view fair use as a fulcrum on which the rights of copyright holders and the rights of artists who wish to incorporate the creative labor of others in their work is balanced. What I find common among opinion pieces like the one Gellis has authored, is that such a balancing act only seems to offer one concrete danger; that being a scenario where the courts define fair use too narrowly, which would impose a rigidly strict legal landscape on artists who wish to create secondary works. This is a legitimate danger and any judge who proceeds over a question of fair use should take caution to avoid such an outcome. However only in the 2nd Circuit filing and in the Majority opinion does one ever encounter the possibility that there could be dangers, should the scales tip in the other direction.
Early in the 2nd Circuit’s analysis of the first factor, they stated:
whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic – or for that matter, a judge – draws from the work. Were it otherwise, the law may well “recogniz[e] any alteration as transformative.”
Later on they added:
The word ‘transformative,’ if interpreted too broadly, can also seem to authorize copying that should fall within the scope of an author’s derivative rights.
The Majority opinion would for the most part reiterate these arguments, especially in the following passage:
Even granting the District Court’s conclusion that Orange Prince reasonably can be perceived to portray Prince as iconic, whereas Goldsmith’s portrayal is photorealistic, that difference must be evaluated in the context of the specific use at issue….that degree of difference is not enough for the first factor to favor AWF, given the specific context and commercial nature of the use. To hold otherwise might authorize a range of commercial copying of photographs to be used for purposes that are substantially the same as those of the originals.
When it came to the underlying purpose for both works, the 2nd Circuit did a better job of addressing this. First they mentioned the nature of how Goldsmith’s work was incorporated into the Prince Series.
the Prince Series retains the essential elements of its source material, and Warhol’s modifications serve chiefly to magnify some elements of that material and minimize others. While the cumulative effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.
Ultimately this lead the 2nd Circuit to conclude that:
there can be no meaningful dispute that the overarching purpose and function of the two works at issue here is identical, not merely in the broad sense that they are created as works of visual art, but also in the narrow but essential sense that they are portraits of the same person.
Essentially Warhol used content from an image of Prince to create a slightly different image of Prince, one that was clearly built off the original. Once “Orange Prince” was finished, it implicitly had a similar purpose to that of Goldsmith’s photo. If there’s one thing that can be extracted from the 2nd Circuit ruling as well as the Majority Opinion, it’s this; for a secondary work to achieve a distinctive purpose in regards to fair use, it must do more than offer an alternative expression in relation to the original. It can reasonably be assumed that Warhol wanted to express a message in his work that was distinct from the information conveyed in Goldsmith’s photo. But this alone should not be enough to qualify the use of a work as fair. As noted earlier, if this were the case then it would authorize a wide array of copying within the ‘creative’ disciplines, possibly to the detriment of those who create ‘original work’. This clearly is not a concern for Gellis as evidenced by her comment towards the end of her discussion of the first error.
Copyright law is not supposed to be about the “value” of the original work but about the value in making sure we can get more new works.
When I first read this it seemed absurdly paradoxical to me. How can one argue that copyright should be more concerned with the procurement of secondary work than the procurement of original work? The incentives for artists to create original works and the incentives for artists to create secondary works are inherently connected to each other and there is no logic in significantly favoring one over the other. If a legal system was developed that significantly imperiled the incentives to create original works, would this not negatively impact the ability for others to create secondary works? To wit, for Warhol’s Prince Series to even exist, it was first necessary for photographers to have the economic incentive to take pictures of Prince to begin with.
Ultimately though the purpose of a work is not merely to impart the expression of the artist, one has to consider the ways in which a work can be used. In regards to how original works of creativity are used in secondary works, Gellis constructs a doomsday scenario when interpreting the effects of this decision. The main thrust of her argument is given as follows:
If expression builds upon a work that came earlier (and, as Kagan reminded in an above excerpt, most new works are likely to in some form), as soon as that new expression is monetized, per this decision the expressive quality of the new work immediately becomes subordinated to that profit motive in assessing whether it constitutes a fair use. Thus expression made for free will be more protected from infringement liability as a fair use than expression made for money, or, to put it another way, monetized expression will be less protected than non-monetized expression.
Here Gellis is clearly conflating the concepts of commercialization and monetization in order to over-sensationalize the significance of this decision. Let’s be clear, commercialization and monetization describe two different concepts. In monetization one attempts to directly sell their work for financial compensation. For instance if an online news site publishes an article about this case and in doing so includes the relevant images, this would clearly would be a case of fair use. The purpose in using these images in relation to the accompanying news article would be to augment the information conveyed by the article’s text in order for the reader to understand the pertinent issues of the case on a deeper level. This purpose would obviously be distinct from how the images were used by the initial artists themselves. Should this article then be placed behind a pay wall (i.e. should it be monetized) this would not in any way change the nature, purpose or the overall character in how these images were used. Thus the use of the images in this instance would be equally fair both in front of the pay wall as it would be behind it, rendering the notion of monetization as immaterial. In commercialization, one attempts to use their work or the work of others to sell other commodities. If for instance I plaster an image of “Orange Prince” on a coffee mug and then attempt to sell that coffee mug, this would represent a commercial use of the image. Here I’m not so much selling a copy of Warhol’s work, but rather I’m simply exploiting this particular artistic work in order to sell a coffee mug. In this scenario both the AWF and Lynn Goldsmith should rightfully send me a cease-and-desist letter and there would be no court in the land that would regard my use as fair, due to my obvious commercial intent among the other factors that would weigh against me.
One key fact about this case, that Gellis again chose to gloss over, was that Condé Nast licensed “Orange Prince” in order to use it on the cover of their Prince tribute edition. I would argue that the cover image of a magazine is designed to draw potential readers towards the product. It’s designed to compel them to pick it up and read its contents, and ultimately to purchase a copy. Putting the image on the magazine cover makes the use distinctly commercial in nature. One could argue that Condé Nast wanted to use “Orange Prince” in order to sell copies of its own product, that being their tribute edition to Prince. In regards to this particular use of Warhol’s work, the purpose here is not distinct from how Goldsmith’s photograph could potentially be used. And to me I don’t see how the mere personal preference of one work over another would necessarily create such a distinction. Such a preference might offer a valid argument to assert fair use on the 4th factor, but not the 1st. Furthermore, no one is arguing that Condé Nast’s act of putting “Orange Prince” on the cover of its magazine would represent a fair use of the work, nor is anyone arguing that Condé Nast shouldn’t be required to pay a licensing fee in order to do such a thing. Thus this issue is less about free speech and more a matter of how the work in question should be properly licensed. The central question here is this: is it possible for an artist of a secondary work to make such a transformative use of an original work, so as to render the copyright interests from the original artist inapplicable should the latter work be commercially exploited as it was here?
The 2nd Circuit actually argues that this is possible during the ‘commercial use’ portion of their argument:
the commercial nature of a secondary use is of decreased importance when the use is sufficiently transformative such that the primary author should not reasonably expect to be compensated. See, e.g., Blanch, 467 F.3d at 254.
However in this specific case the 2nd Circuit did not judge Warhol’s initial copying as transformative and their analysis of this was pretty thorough. Honestly I wished the Supreme Court had addressed this aspect more, especially as it pertains to weather or not Goldsmith could be considered a valid licensor of the work. Because it did not, I found the analysis of both the Majority and the Dissenting opinions to be weaker than that of the 2nd Circuit. However I still don’t disagree with the 2nd Circuit’s ruling. What I would disagree with however is Gellis’s interpretations of how this will impact future cases. Her notion that a work could be considered infringing based on how it is used later seems to ignore that fact that the courts also found the initial creation of the work to be infringing as well. And as for the notion that this creates a liability time bomb for artists and copyright holders; this was already a characteristic of copyright law.
I would argue that millions of acts of copyright infringement occur everyday, however in regards to the 6 stated rights from Section 106, cases are very rarely brought to the court solely on the basis of the first two rights. Generally a work has to be disseminated to the public (which is covered by the latter four rights) and gain some sort of stature before a charge of infringement is made. And note that in this case it took the publication of an image in a magazine for the copyright issues with the Prince Series to even be raised. An artist who, in private, creates a secondary work that incorporates an original work in a manner that does not conform to fair use has induced copyright liability upon the creation of the secondary work. Nothing in the 2nd Circuit ruling or in the Majority opinion would make me believe that such a liability could be generated at a later point in time and then retroactively applied to the point of creation. Had the 2nd Circuit concurred with the district court in asserting that Warhol’s initial use was fair, Goldsmith would have simply lost all claims to relief. The fact that this liability may sit idle for decades again is nothing new. Consider the case of Henry Darger. Nathan and Kiyoko Lerner spent decades bringing Darger’s work into greater prominence. The prize for doing this was a lawsuit due to the fact that they always had a legally dubious claim to the copyright in Darger’s work. There is always a certain level of obscurity that must be maintained in order to avoid bringing such liability to fruition.
However the strangest outcome of this case has to be the left’s current contempt for Goldsmith, who in this case essentially played the role of an artist attempting to assert her rights against a corporate entity that tried to deny her remuneration for her work. To highlight this contempt Gellis tried to argue that Warhol’s initial use was fair due to Goldsmith supposedly dropping her claims to such
AWF sued to make sure that Warhol’s copying of the Goldsmith’s picture was a fair use. It does not appear that Goldsmith disputed that it was. Her dispute was about a later use of the later Warhol work, even though its underlying legitimacy was no longer in question once she dropped her claims.
The fact that Goldsmith first contacted the AWF and claimed that they infringed her copyrights and would later counter-sue for infringement would suggest that she did dispute the argument of fair use. I don’t understand how one can completely ignore this. Also just because she chose not to seek relief for Warhol’s initial use, does not mean that she accepts this particular use as being fair. Regardless of where Goldsmith sought relief the underlying legitimacy of Warhol’s use should be a matter for the courts to consider and the 2nd Circuit effectively ruled on this. It also should be noted that the AWF choose only to challenge the 2nd Circuit’s ruling on the 1st fair use factor, and I would not necessarily construe this to mean that the AWF concurred with the 2nd Circuit in regards to their ruling on the other 3 factors. Later though Gellis really twists the knife.
And if she is entitled to some economic benefit from the use of the orange Prince picture, does that not make her unjustly enriched by Warhol’s later creativity that imbued the picture with the new meaning Conde Nast was attracted to? After all, the thing about the picture that Conde Nast wanted wasn’t the thing that she put there, or else it could have licensed her picture. What Conde Nast wanted was what Warhol had put there.
And what exactly did Warhol put there? Warhol took an image that he himself did not create, he modified it and then tinted the entire image with an orange color. While I think Warhol did enough to generate copyright protection for his specific, collective alterations, the end product was not solely the result of ‘his creativity’. In fact I would argue that the most distinctive aspect of “Orange Prince” was the image of Prince itself, which should be more attributed to Goldsmith than to Warhol. The courts in this case confirmed that copyright law exists for the benefit of all artists both big and small, with no apparent weight given to an artist’s cultural stature, which I think was a good thing as a matter of law. “Orange Prince” as it stands today incorporates the combined creativity of both Lynn Goldsmith and Andy Warhol, why is it difficult to embrace the idea that both should gain from its commercial exploitation?
