Aug. 15, 2022 - Several photo organizations, including NPPA, filed an amicus brief with the U.S. Supreme Court on Monday in what is destined to be an influential copyright infringement case between a professional photographer and the foundation for pop artist Andy Warhol.
The case, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith involves a photograph of the artist Prince, taken by Lynn Goldsmith, that was appropriated by Andy Warhol in 1984. At the time, Vanity Fair licensed a Prince photographic portrait by Goldsmith to serve as an “artist reference for an illustration to be published in Vanity Fair.” Vanity Fair then commissioned Warhol to use that photo to create a portrait of Prince for the magazine. The Goldsmith license, for which she was paid $400, specified: “NO OTHER USAGE RIGHTS GRANTED.” The image ran alongside a credit to Warhol and Goldsmith. Elsewhere in the issue Vanity Fair credited Goldsmith for the “source photograph.”
Unbeknownst to Goldsmith, Warhol made several other works derived from Goldsmith’s photo. The Andy Warhol Foundation (AWF) inherited Warhol’s work after his death and when Prince died in 2016, the foundation licensed one of those unauthorized pieces to Condé Nast—Vanity Fair’s parent company—for the cover of a tribute publication on the musician’s life for which AWF collected a licensing fee of approximately $10,000. Goldsmith did not receive either a fee or a credit for this use.
When Goldsmith became aware of the 2016 Condé Nast image use, she contacted AWF to try to resolve the infringement. Like so many others who believe everything is free-for-the-taking, rather than pay Goldsmith and resolve the issue, AWF added insult to injury and sued Goldsmith, seeking a declaratory judgment of non-infringement, or, in the alternative, a finding of fair use. Goldsmith countersued, alleging that AWF’s commercial licensing of the Prince Series image to Condé Nast infringed her copyright in the photograph. Unfortunately, the district court granted summary judgment to AWF, and found that the use was protected by “fair use,” a principle that allows copyrighted works to be used without permission in limited circumstances such as criticism, commentary, and parody. Fair use involves a four-factor analysis of the facts and the law.
Goldsmith appealed that ruling and the Court of Appeals for the Second Circuit reversed and holding that the image was not fair use, because the use of the Warhol in the 2016 Condé Nast publication was not transformative. After a ruling by the U.S. Supreme Court in a different copyright case involving fair use, AWF asked the Second Circuit to reconsider its prior ruling, which it did, once again finding that the use was not fair. AWF then petitioned the Supreme Court to review the case. The Supreme Court agreed to hear it this Fall.
Both AWF and Goldsmith have filed their initial briefs in this case along with many other amicus (friend of the court) briefs in support of AWF. The primary question that the Supreme Court is considering is whether the use of the Warhol piece in a publication is a “transformative” use, which is a part of the fair use evaluation. The main point of AWF’s argument is that the Warhol image “conveys a meaning or message” different from that of the Goldsmith photograph and therefore should be protected by the fair use doctrine. Our brief, jointly authored by attorneys from the National Press Photographers Association (NPPA), American Society of Media Photographers (ASMP) and American Photographic Artists (APA), filed in support of Goldsmith, argues that such use is not transformative because Warhol did nothing more than convert an artistic photographic portrait of Prince into a derivative portrait of Prince. The works were also used for the same purpose and in the same market—on the cover of magazines. Additionally, such use is not the type that is highlighted as an example of fair use in the Copyright Act, or in the legislative history.
This is the first time in modern history that the Supreme Court has examined an alleged “fair use” defense in a copyright infringement case involving photography. The high court ruled on fair use in a software case last year, and on 2 Live Crew’s parody of “Pretty Woman” 30 years ago. A favorable outcome in this case will provide critical support for photographers who continue to struggle with prolific copyright infringement and infringers who claim “fair use” for uses that are well within what would normally be available as a licensed use. Just this month, the Ninth Circuit court of appeals held that the use of a photograph of an ephemeral lake in an article about the phenomenon was not fair use. And in so doing, it overturned a district court that once again, got the case wrong. Photographers have struggled more than once with district court judges who don’t quite understand the broad range of uses of a photograph and the distinction between infringement and fair use.
Because of such confusion and wrongly decided cases, NPPA is urging the Supreme Court to provide direct guidance that in these very fact-determinative cases there is a stark difference between reporting about a photo (often fair use) and reporting about the subject in the photo (not fair use). In many instances, use of the original is necessary when the photo itself is the story, and that kind of use is more likely to be fair use, but when an image merely illustrates what the article discusses such as the ephemeral lake story, the story can be told without misappropriating the photo, and it is not fair use. The use that is at issue in this lawsuit—of Warhol’s derivative work based on Goldsmith’s photo—was to illustrate a story about Prince. Thousands of photographs would have sufficed to tell the story. And the Warhol piece was not commentary, critique or even a parody of Goldsmith’s work. Therefore, our brief asks the Supreme Court to find that Warhol’s use was not fair use.
NPPA general counsel Mickey H. Osterreicher said “as we have seen far too often, the fair use exception threatens to swallow the rule and turn copyright law on its head.” Deputy general counsel Alicia Calzada added, “we hope that the high court sees through the noise created by those who are star-struck by the name ‘Warhol,’ and hold that the AWF work was not a criticism or commentary on the original photograph, but merely an artist free-riding on the talent and efforts of a photographer. The photo could have been properly licensed and paid for, but Warhol and AWF chose not to.”
In an unexpected but extremely welcome twist in this David versus Goliath case, the United States, represented by attorneys from the U.S. Copyright Office and the Solicitor General filed an amicus brief in support of Goldsmith. Just as the trade organizations argue, the United States brief asserts that the fair-use inquiry focuses on the use at issue in the case, and that in this case “the allegedly infringing use served the same purpose as Goldsmith’s photographs have frequently been used — the commercial licensing of the Warhol piece for publication.” They warn that if AWF’s defense were adopted, “countless secondary uses that currently require licensing would become presumptively fair.” Both our brief and theirs note that such an outcome would decimate the market for licensed photography.
NPPA, ASMP and APA were joined by the North American Nature Photographers and Getty Images in the brief. NPPA was represented by Mickey H. Osterreicher and Alicia Calzada.
Read the Amicus Brief filed by NPPA, ASMP, APA and the North American Nature Photographers and Getty Images