A Can of Copyright - US Supreme Court Rules on Fair Use in Andy Warhol's Work

From the iconic lithographic cans of Campbell's soup to the Marilyn Monroe, Andy Warhol's art is iconic and one that most (if not everyone) recognises. However, with success and notoriety comes potential legal battles, particularly if artists "take inspiration" from works of other artists. In the US the doctrine of fair use is very broad and can encompass several acts, but it's remit in relation to more direct copying as 'inspiration' has been hazy. A recent, and rare foray into the realm of the US Supreme Court was set to make matters clearer, and the awaited decision was indeed handed down earlier this Summer. 

The case of Andy Warhol Foundation for the Visual Arts Inc. v Lynn Goldsmith concerned the aforementioned iconic art of Andy Warhol, namely his lithographs of the music artist Prince. The lithographs used a picture taken by a famous photographer in her own right, Ms Goldsmith, in 1984 for Vanity Fair magazine as an "artist reference". Ms Goldsmith had licenced the picture to Vanity Fair with the strict condition that it only be used once in the magazine. Mr Warhol created 15 lithographs of Prince in total, and later his Foundation licenced one of those works to Conde Nast for a story about Prince. Ms Goldsmith subsequently informed the Foundation that they had infringed her copyright in her picture, which then lead to the Foundation suing Ms Goldmith asserting fair use. The lower courts have reached differing outcomes on the matter, which lead to the case ending up in the Supreme Court for final decision.  

The Foundation did not challenge the conclusion made by the Court of Appeal that the lithograph and the series of works created by Warhol are substantially similar. This left the question of whether Mr Warhol's use of the photograph was 'fair use'. In addition, the only factor within the assessment of fair use remained the first factor, i.e. whether "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes" weighs in Ms Goldsmith's favor or if the work would be considered 'transformative'.

The first factor specifically looks at whether, as has been firmly established in Campbell v Acuff-Rose Music Inc: "an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations like commercialism". This means that even though the expression may be new (as the Foundation argued), it, by itself, is not enough to deal with the first factor. 

Justice Sotomayor, handing down the majority's decision, focussed on the meaning of the first factor at issue. She noted that it "considers the reasons for, and nature of, the copier’s use of an original work", and specifically asks "whether the new work merely ‘supersede[s] the objects’ of the original creation… (‘supplanting’ the original), or instead adds something new, with a further purpose or different character". In other words, does the new work 'substitute' the other work, or is its purpose the same or highly similar to that of the original work. 

The preamble to section 107 of the US Copyright Act does give helpful guidance on what may be included in this factor, which includes, but is not limited to: "criticism, comment, news reporting, teaching… scholarship, or research". The similarly will be a degree of similarity, rather than a clear cut similarly assessment, so the Court will not restrict itself to just these categories. 

If a use has a further purpose or different character it is deemed to be 'transformative', which is, yet again, a matter of degree. However, there is a minimum threshold for transformative use, specifically that the "degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative". 

To summarize a very lengthy and detailed discussion of the minutiae of the definition of the first factor, Justice Sotomayor summarized it as: "the first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use. If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying".

Justice Sotomayor then moved on to considering whether the particular 'use' of the protected works would be an 'infringement'. 

Ms Goldsmith's pictures were used in a variety of ways: (i) to create the Vanity Fair illustration and the other Prince Series works; (ii) Vanity Fair then used the photograph when it published Warhol’s illustration in 1984; and (iii) the Foundation used the photograph when it licensed an image of Warhol’s Orange Prince to Condé Nast in 2016. However, only the latter 2016 use has been argued to be infringing. 

Typically photographs, such as Ms Goldsmith's, are used accompanying articles relating to the given celebrity or subject. As such, the use by Condé Nast and the Foundation in 2016 was substantially the same. The use was also clearly of commercial nature, as the images were licenced from the Foundation, weighing against a finding of fair use. Taken together these factors weigh against fair use absent some other justification for copying, i.e. any transformative nature of Mr Warhol's work.

Justice Sotomayor then moved on to considering whether Mr Warhol's work was transformative. As described in the Campbell decision, as mentioned above, transformative use is one that "alter[s] the first [work] with new expression, meaning, or message". Agreeing with the Court of Appeals, Justice Sotomayor noted that "any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative", however, the courts should not attempt to evaluate the artistic significance of a particular work. 

The key, in the Court's view, is what the purpose of the new, potentially transformative work, really is and if the use is distinct from the original. In this case, the licensing of the lithographic image by Condé Nast is similar to the use of the original work, namely as illustrating a magazine about Prince (although acknowledging difference between them). 

Justice Sotomayor noted that "[t]o hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals". 

Despite arguments made by the Foundation, the Court rejected their argument that the Warhol lithographic was commentary on the dehumanizing nature and effects of celebrity. According to Justice Sotomayor, the commentary could not stand on its own two feet, and the commercial use of it required compelling reasons to see otherwise.  

Ultimately, the Court held against the Foundation, determining that "Goldsmith’s original photograph of Prince, and AWF’s copying use of that photograph in an image licensed to a special edition magazine devoted to Prince, share substantially the same purpose, and the use is of a commercial nature[, and]  AWF has offered no other persuasive justification for its unauthorized use of the photograph". This means that the first factor would weigh in favor of Ms Goldsmith. 

The scathing dissent by Justice Kagan highlights the contentious nature of this decision, and its potential impact on both copyright holders and artists trying to take inspiration of other works. The decision does limit the scope of artistic inspiration in the world of fair use, and potentially may have a cooling effect on art creation (though this remains to be seen). It does, however, add further weight to the copyrights held by individuals and entities, which they will undoubtedly receive with open arms. As said, the impact of the decision will be interesting to see and whether more derivative, or 'inspired' works will be litigated in the future. 

Retrospective - Breach of Trust in Intellectual Property

Intellectual property, in essence, carries its worth and value in the knowledge or ingenuity of the inventor, or the creation of the author of a work, not necessarily in the tangible (or at times, intangible) property that is created from that. With this comes a great deal of risk, in modern days in terms of industrial espionage or the accidental or intentional leaking of details related to books etc, which renders the subsequent intellectual property much less valuable or even worthless. Through this one can understand that a great deal of trust is often placed on those with special access to particular information or details, which can be broken and cause potential damage to the creator. The modern doctrine of breach of trust is well-established, but it stems its roots from the mid-19th century.

One of the first cases that dealt with breach of trust in relation to intellectual property was Prince Albert v Strange all the way back in 1849. The case concerned a collection of etchings and drawings made by both Queen Victoria and Prince Albert of various domestic subjects for their own enjoyment, subsequently being commissioned to be printed as a collection. These etchings were made in a private press, due to their personal nature and thus Prince Albert's wish was for them to remain fully private. William Strange was a printer and publisher in London who somehow obtained copies of some of the etchings, allegedly through the aforementioned private press where the etchings were commissioned from. The prints made by Mr. Strange were made from plates held by Prince Albert and Her Majesty, thus bringing their acquisition into question. Mr. Strange (and the other defendants) wished to print a catalog of the etchings under the title of "A Descriptive Catalogue of the Royal Victoria and Albert Gallery of Etchings", which contained detailed descriptions of 63 etchings with additional critique of those works. Mr. Strange argued that he had the right to publish the works, even though disapproved by the Royal plaintiffs, and the Court of Chancery had to decide whether he was indeed entitled to do so, thus dissolving the initial injunction granted to the plaintiffs.

The case brought about the consideration of property and trust in relation to that property. This is best illustrated by the comments of Lord Chancellor Cottenham, where his Lordship stated that "[t]he property of an author or composer of any work, whether of literature, art or, science, in such work unpublished and kept for his private use or pleasure, cannot be disputed". What his Lordship is clearly saying is a property right of trust (or privacy in a sense) in personalty which is created by someone. This applied, prior to the case, for example to personal correspondence in the form of letters. The defendant did not contest the ownership of the property by the plaintiffs, but still argued that any person who obtains such property would still have the right to publish it. Even though the defendant merely intended to publish descriptions of the works, the Court saw that this would be akin to the publishing of the etchings themselves from imprints, which the defendant would not be entitled to do.

Lord Cottenham agreed that the right of privacy in property did exist and that the defendant would not have the right to use and publish them even if he had acquired copies of those works. Although an interesting notion, what is of importance for us in the case at hand is whether there would be a breach of trust should the defendant have published the catalog; this being the need for the injunction itself.

An artist's rendition of the Royals' etchings

The potential breach of trust related to the actual possession of the etchings, which were potentially obtained through illicit means. Mr. Strange's possession of the etchings, in his Lordship's mind, had to have originated in a breach of trust, confidence or contract on part of the printer's employees or the printing press' owner (one of the other defendants in the case). How the etchings were obtained remains unknown, but as his Lordship observed, this would not matter as mere possession by Mr. Strange was enough to establish that fact. This was further expanded on by his Lordship, demonstrating this very point, using the case of Tipping v Clarke: "If the Defendant has obtained copies of [artistic works], it would very probably be by means of some clerk or agent of the Plaintiff; and if he availed himself surreptitiously of that information, which he could not have had except from a person guilty of a breach of contract in communicating it, I think he could not be permitted to avail himself of that breach of contract". Mr. Strange was subsequently denied the dissolving of the injunction due to this breach of trust.

The Court's observations do match a common law notion of copyright in unpublished works (something which even exists today); however the Court's observations could potentially extend to a right of privacy over property of confidential nature, irrespective of it being copyrighted work or not. Although the case is of little relevance in the sphere of modern breach of trust or confidentiality, it goes to show the importance of certain types of works, especially in relation to intellectual property.