The Supreme Court has saved the Andy Warhol Foundation from itself

The Supreme Court of the United States issued its long-awaited ruling in the dispute between the photographer Lynn Goldsmith and the Andy Warhol Foundation for the Visual Arts (AWFVA) on 18 May. The Court ruled that the Foundation’s delivery to Condé Nast in 2016 of an Andy Warhol silkscreen from 1984 based on a photograph taken by Goldsmith of the musician Prince in 1981 did not qualify for the defence of fair use. While there were many predictions after the hearing of oral arguments last year, it was impossible to discern how the nine justices would align. In the end, seven of the nine signed on to an opinion by Justice Sotomayor, with a dissent from Justice Kagan that Chief Justice Roberts joined. The Court ruled narrowly that the Warhol Foundation could not claim fair use, but avoided larger questions about appropriation in art. While many were hoping for a bright-line test for fair use, the Court wisely ruled on the case before it. In so doing, the US high court reminded artists – and lawyers – that the fair use law looks to the purpose for which the secondary work is used, not to whether an artist claims or a court finds a different artistic meaning.

This case raised important questions about borrowing or appropriating elements of visual art, and attracted friend of the court briefs from all sides of the art world. Some (like the one I submitted) urged the Court to look at the case narrowly: that is, as a question about the purpose of the use of the photograph in Vanity Fair in 2016. Others expressed concern that Warhol or other appropriation artists would essentially be pushed out of the market if a broad definition of fair use, resting on whether a work added a new meaning or message, were not recognised.

The fundamental collision in this case and many like it over the last 30 years concerns the importance of whether a work is ‘transformative’ – a word that does not actually appear in the law. Instead, a Supreme Court case of 1994 (Campbell v. Acuff-Rose Music, Inc.) – involving 2Live Crew’s version of Roy Orbison’s song ‘Pretty Woman’ – considered that a work might be a fair use if it were ‘sufficiently transformative’; that is to say, if it added a new meaning or message to the first work. The issue has been that since Campbell, US courts have applied the transformative standard inconsistently. Some have treated transformation as a get-out-of-jail-free card, essentially equalling fair use.

It is important to understand that the Court took the narrow path. The Court did not rule that the Prince series by Warhol infringed Goldsmith’s copyright (Warhol actually had a licence for the original work for use in Vanity Fair in 1984), or that Warhol’s works generally fail to qualify as a fair use when they use other images. It ruled only that the Warhol Foundation had exceeded its rights by co-opting Goldsmith using her own work.

The chief argument in favour of the Foundation was the idea that acceptance of new meaning or message as sufficiently transformative is essential to support the creation of future art. Otherwise, the argument went, artists would be deterred by the risk of infringement.

This argument has always failed to answer two critical questions. First, what about the original artist? Lynn Goldsmith is an artist just as much as Andy Warhol was. Headlines about threats to ‘appropriation art’ just skip over the assumption that such appropriation is almost an entitlement. Why would that be so? In any event, the Copyright Act says otherwise. Indeed, the Court took pains to note that other works by Warhol had little to fear from the Copyright Act. The other thing to remember is that this case concerned only the first of the statute’s four factors; the remaining three concern the nature of the copyrighted work, the amount and substantiality of what was copied in relation to the work as a whole, and the effect of the secondary work on the potential value and market of the original work. A secondary work could fail to satisfy the first factor, and still be a fair use if the balance of the other three factors are met. Yet had the Foundation prevailed, the reverse would never be true; works with new meaning or message would have carte blanche and the first artist would have no recourse. It would never be possible to find infringement, and would render the fair use statute meaningless.

There has been much discussion of the dissent by Justice Kagan, which is full of sarcasm and invective for the majority opinion written by Justice Sotomayor (which regrettably also returns the favour).The dissent makes the cardinal error of any ad hominem argument: it fails to persuade. Rather than sneering ‘the majority plants itself firmly in the “I could paint that” school of art criticism,’ Justice Kagan might well have noted that her dissent smacks of ‘I took Art History 101, let me explain art to you.’ The dissent’s attempt to reconcile the works of Giorgione, Titian and Goya is entertaining, but it is ultimately insulting and not much more.

Justice Kagan’s art history is also mediocre. Those famous paintings don’t depict the same woman. They aren’t offered at the same moment to illustrate a newsworthy event for which they are in competition at the same time. Their commentary on each other (had they been created when each was under copyright) is entirely consistent with the majority’s opinion. Rather, the dissent pours meaning into each of those images that its authors obviously read somewhere else. This was highlighted by the Chief Justice’s commentary at oral argument: ‘You don’t say, oh, here are two pictures of Prince. You say that’s a picture of Prince, and this is a work of art sending a message about modern society.’ This kind of tendentious, conclusion-driven narrative is terrible art history and worse law. The meaning of a work that a judge derived from elsewhere is a useless standard, and the Court’s rejection of it is important.

Finally it must be said that this case need never have been filed. The Andy Warhol Foundation picked a fight that Goldsmith did not ask for and took an extreme position that threatened the ability of a whole category of artists to control their work in a manner consistent with copyright law. Rather than pay Goldsmith the customary licence fee, the Andy Warhol Foundation tried to burn the entire industry of photographic licencing to the ground. The Foundation is not an artist and its complaints about the future of art creation border on the absurd. It is fortunate that the Supreme Court stuck to the case before it.

If there’s any silver lining for the Foundation, it is that it should have been careful what it wished for. Had its theory prevailed, its enthusiastic policing of the copyright of Warhol’s works would have been in grave peril. At oral argument in response to a hypothetical from Justice Thomas, the Andy Warhol Foundation would not admit that using the Orange Prince image to make ‘Go Orange’ posters for a Syracuse University basketball game would be fair use. If the Foundation had won, it would have been open season on appropriating Warhol.

Nicholas M. O’Donnell is an art lawyer and a litigation partner at Sullivan & Worcester LLP.