Warhol Fair Use Ruling Reframes Appropriation Art Legal Fights

Artist Richard Prince, like Andy Warhol, has won and lost fair use decisions. Attorneys aren’t entirely sure how much harder those fights will become in the wake of the Supreme Court’s landmark Warhol ruling.

One week before the high court found a Vanity Fair cover featuring Warhol’s work didn’t transform Lynn Goldsmith’s photo of the musician Prince, Richard Prince took a district court loss over a museum exhibit featuring photos and comments culled from Instagram. It all comes 10 years after the appropriation artist set a “high water mark” in Second Circuit precedent involving his alterations of a series of photos.

The opinion in Warhol Foundation v. Goldsmith nominally addresses only the first of four fair use factors: “purpose and character” of the use, including any commercial nature. It advises against letting subjective changes in the original work’s meaning override the other fair use considerations. Warhol’s changes may have added expression, Justice Sonia Sotomayor wrote, but the use’s “purpose” was identical to Goldsmith’s: commercially licensing it to a magazine.

Attorneys and law professors generally agree that Sotomayor’s opinion in the Warhol case was narrowly tailored and lacks new bright line rules, yet it should nevertheless be very influential in fair use cases. It remains to be seen just how influential, as lower courts interpret it in an analysis that still hinges on case-specific facts that can fall in a substantial gray area.

“That void is still out there,” intellectual property attorney Andrew Stroud of Hanson Bridgett LLP said. “But it’s going to be harder for artists like Prince to simply appropriate things and say, ‘I’ve changed it, and therefore it’s transformative.’ The Supreme Court is telling us in Warhol that doesn’t fly anymore.”

Court watchers widely view the opinion as reining in many lower courts’ interpretation of the high court’s last non-software fair use decision, 1994’s Campbell v. Acuff-Rose Inc. That opinion deemed rap group 2 Live Crew’s “Pretty Woman” a transformative “parody” that added new “meaning” and “message,” making it a fair use of Roy Orbison’s original song.

Some praised Sotomayor’s opinion and Justice Neil Gorsuch’s concurrence. But IP professor Amy Adler of New York University said the “retrenchment from what lower courts had assumed was available to artists” would chill art, though “there’s a lot left open by this decision.”

“The result will be a lot more litigation. Litigation about ‘What do we mean by commercial?’ ‘At what level of generality should we interpret purpose?’” she said. “It would steer a rational artist away from crossing the line, and that line is very hard to see.”

‘High-Water Mark’

Sotomayor endorsed rather than rejected former Justice David Souter’s opinion in Cambpell, instead warning against overemphasis on the transformativeness analysis it spawned.

IP professor Shyamkrishna Balganesh of Columbia University said the opinion “vindicated” ... “vindicated " a brief he and Columbia Law colleague Jane C. Ginsburg co-authored with professor Peter S. Menell of the University of California-Berkeley. The trio advised a return to Campbell‘s holistic message as opposed to fixation on its “new meaning” and “message” language.

“Courts and scholars have really focused on three or four lines from Campbell and ignored the fact that Justice Souter didn’t just tell you what transformative use was, but how to do the analysis,” Balganesh said in an interview. “Our brief said, ‘Go back and read Campbell, it gives you this beautiful blueprint.”

The Second Circuit’s 2013 decision in Cariou v. Prince epitomized transformativeness’ post-Campbell reach. The appeals court later called it the “high-water mark of our court’s recognition of transformative works.” Cariou reversed a lower court by finding fair use in 25 Richard Prince works where he lightly altered images from a series of photographs of Rastafarians in Jamaica.

More recently, a New York district court’s May 11 decision denied Prince a fair use summary judgment over his gallery consisting of Instagram images with comments he either made or manipulated attached. Exemplifying the uncertainty of Warhol’s reach, attorneys had widely varying perspectives on how it would have impacted that analysis.

“The Warhol decision confirms the judge’s analysis,” said Stroud, who said he’s long represented photographers. “That judge got it exactly right. If that summary judgment motion were to be decided now, judge could say ‘See: Warhol.’”

Finding Purpose

But others noted the cases turned on fundamentally different factors and facts. Sotomayor stressed that the foundation’s purpose—licensing images of the late rockstar to a magazine, the only use of Warhol’s work addressed by the court—was the same as Goldsmith’s purpose. Richard Prince’s uses in art galleries, meanwhile, are at least somewhat more distinguishable from the original photographers’ purposes.

“The Richard Prince cases fall on the idea that he hasn’t made sufficient changes,” IP attorney Bart A. Lazar of Seyfarth Shaw LLP said. “The Warhol case should not have a great impact on the Richard Prince cases.”

Adler added that despite Warhol trimming fair use, the lack of overlap in markets for the works may leave Prince “more room to maneuver.”

But Balganesh said other aspects of the Warhol analysis would hurt Prince. The artist did little to alter the photos for his commercial Instagram art exhibit. Sotomayor’s opinion described a “sliding scale” where the more commercial the use, the higher the bar for transformativeness, Balganesh said.

“I think there would have been a stronger argument if Prince was on Instagram taking people’s random things to make social commentary,” Balganesh said. “But he turned it into pretty expensive, marketable art.”

Adler, who has written extensively on appropriation art, raised the concern of how granularly courts should define “purpose.” That, like transformativeness, falls on a spectrum that could be just as difficult and subjective to decipher, she said.

She pointed to the writing of Judge Learned Hand, a Second Circuit judge from 1924 to 1951. He said that at some point in a “series of abstractions” between copying an entire expressive work wholesale and merely using the same broad idea or even just a title, copyright protection ceases.

Hand said that “nobody has ever been able to fix that boundary, and nobody ever can.”

Derivative Tension

Another analytical spectrum in fair use analyses lies between a creator’s statutorily protected right to control derivatives of their work and works that are so transformative as to be truly new. Sotomayor didn’t attempt to define a boundary. But she said even clear derivatives add expression, so merely deeming any added meaning transformative would “swallow” creators’ derivative rights.

Sotomayor said a “reasonably” perceived meaning—including criticism or commentary on the original—should be considered if needed to determine whether there’s a new purpose. But she said courts should not “attempt to evaluate the artistic significance of a particular work.”

Some attorneys worry that won’t make work any simpler for lower courts.

“If anything, they were trying to remove subjectivity,” Adler said. “Nonetheless, they created so much room for balancing different aspects of the use. There’s so much language ‘to the extent this,’ ‘to the extent that,’ ‘the more commercial it is.’ It just makes everything so unpredictable.”

Balganesh said the notion of transformativeness had been “pushed to its breaking point.” He and others have said courts often let it overwhelm commerciality in the first factor. It has also at times effectively negated any impact on the market for the original—or potential derivatives—in the fourth fair use factor, which judges have described as the most important.

But Adler questioned whether all artists are commercial the moment they sell their work. She also said Justice Elena Kagan’s dissent rightly argued that Sotomayor flipped Campbell on its head. Campbell said greater transformation negated a use’s commercial nature, while Warhol framed commerciality as negating a work’s transformative nature, she said.

“This has changed how courts are going to evaluate the first factor,” Adler said.

Balganesh pointed to Sotomayor’s questioning at oral argument why that particular photo of Prince was needed if the idea was to merely use it to depict the musician, not comment on Goldsmith’s work.

Stroud added that any artist who wants to benefit from the use of a photo usually can, as most are willing to license it and it’s generally not expensive. He rejected the idea that the ruling would hinder art, calling it “a completely false narrative” and saying the “transformative use test is alive and well.”

“Judges reading Warhol would see the Supreme Court is trying to pull it back some,” Stroud said. “But it’s not bashing it over the head and killing it. It would make my job much easier if it did.”