Further Thoughts On Warhol v. Goldsmith

Viewed through the lens of Perez Hilton—remember him?—and the early days of blogging.

On the left: Lynn Goldsmith’s photo of Prince. On the right: Warhol’s ‘Orange Prince.’ (Images via the U.S. Supreme Court.)

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Last week the Supreme Court decided Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith, a fascinating case about the “fair use” doctrine in copyright law. I discussed it in last weekend’s Judicial Notice, naming it the Ruling of the Week, but it’s interesting and important enough to merit additional discussion.

And as a longtime blogger who uses images in my work, I’ve dealt on a professional, practical level with fair use—an issue that lawyers generally don’t confront in their day-to-day work (unless they happen to be copyright attorneys). So I have what I think is an unusual perspective on Warhol, which I’ll now share.

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I’ll begin with brief background on Warhol. But if you’re familiar with the legal and factual issues in the case, you can skip ahead to the next section.

Here are the facts, as set forth in the opinions of the Supreme Court and Second Circuit. In 1984, Vanity Fair (VF) sought to illustrate a story about Prince, the late musical icon. It paid $400 to Lynn Goldsmith, a leading rock-and-roll photographer, for one-time use of a photo she took of Prince as an “artist reference.” It then hired the famous artist Andy Warhol, who produced one of his signature silkscreens based on Goldsmith’s photo, and that silkscreen was used to illustrate the VF article.

Unbeknownst to Goldsmith, Warhol used her Prince photo to make 15 additional works, 13 silkscreen prints and two pencil illustrations, which together with the VF image constitute the “Prince Series.” After Warhol died in 1987, the Andy Warhol Foundation (AWF) acquired title to and copyright in the Prince Series. AWF sold or otherwise transferred 12 of the physical artworks in the Series to third parties, such as collectors and galleries, and the remaining four went to The Andy Warhol Museum.

AWF retained copyright to the Prince Series images, which it licensed for editorial, commercial, and museum usage. After Prince died in 2016, Condé Nast, Vanity Fair’s parent company, licensed a different work from the Prince Series for the cover of a VF tribute issue to Prince. AWF received $10,000, as well as credit for the image; Lynn Goldsmith received no money or attribution.

Not surprisingly, this all spawned litigation. After Goldsmith wrote to AWF complaining of copyright infringement, AWF sued Goldsmith for a declaratory judgment of non-infringement or fair use, and Goldsmith counterclaimed for infringement. Judge John Koeltl (S.D.N.Y.) granted summary judgment to AWF on fair use, but the Second Circuit reversed. In an opinion by Judge Gerard Lynch, it held that all four factors of the fair-use statute, 17 U.S.C. § 107, favor Goldsmith. Those factors are as follows:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The Supreme Court granted certiorari, but narrowed the issues. It agreed to decide only whether the first factor in the fair-use analysis, “the purpose and character of the use,” favors Goldsmith or AWF.

In an opinion by Justice Sonia Sotomayor for seven justices, the Court held that “[o]n that narrow issue” of factor #1, and “limited to the challenged use” (the 2016 commercial licensing to Condé Nast), the first factor favors Goldsmith. Justice Sotomayor stressed the fact that AWF’s challenged use was the same as Goldsmith’s—licensing photos to magazines, for the purpose of illustrating stories—and it was a commercial use, too. To rule against Goldsmith, Justice Sotomayor argued, “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.” That would be unfair to the original creators—here, Goldsmith—and it would discourage the creation of artwork in the first place, which the Copyright Act was intended to promote.

Justice Elena Kagan, joined by Chief Justice John Roberts, vigorously dissented. She stressed how greatly Warhol transformed Goldsmith’s photograph, turning it into an original and distinctive work of art with a meaning all its own. Citing numerous examples across different areas of creative endeavor, she explained how much artists rely and draw upon the work of earlier artists in creating new works—and how the law must provide “breathing space” for such borrowing. She warned that the majority’s decision “will impede new art and music and literature,” “thwart the expression of new ideas and the attainment of new knowledge,” and “make our world poorer.”

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It’s hard for me to believe, but I’ve been blogging about law and the legal profession for almost two decades—first at Underneath Their Robes (2004-2006), then at Above the Law (2006-2019), and now at Original Jurisdiction. To those of you who followed me back in the UTR days, you’ve been reading me for almost 20 years. We are officially… old. (And I remain, as ever, grateful for your readership and support.)

In the early days of blogging, it was challenging to find images to illustrate blog posts—at least in ways consistent with copyright law, which doesn’t allow you to just grab someone else’s photo and use it to accompany your writing. Stock photo services, which give paying subscribers access to a large number of licensed images that they can use, were not yet widely available and affordable to individual bloggers. And misconceptions about image use ran rampant within the blogging community. For example, many bloggers believed that if a picture appeared on Google Images, then it was fair game to use in a blog post—which is not true. (As for why Google itself isn’t engaged in copyright infringement with Google Images, see Perfect 10, Inc. v. Google Inc., in which the Ninth Circuit held that Google’s creation and display of thumbnail images in Google Images constituted “fair use.”)

As a lawyer, I was more cognizant of the copyright issues than most bloggers. My usual solution was to utilize (pretty amateurish and often ugly) public-domain images in my blogging. Many other bloggers, especially in the text-focused legal world, simply didn’t use images at all, and some well-known bloggers who were around back then still don’t use images today (e.g., Howard Bashman of How Appealing or Michael Dorf of Dorf on Law). To the extent that well-selected visual material can enhance the reading experience, this dearth of images made for a less enjoyable “blogosphere.”

Enter Mario Lavandeira aka Perez Hilton, the celebrity gossip blogger and a leading figure in the early days of blogging. I followed Hilton’s work and we had a shared sensibility, which is why some folks referred to Underneath Their Robes as “Perez Hilton for the federal judiciary” (although he was always more audacious than I was).¹

Hilton had a more creative—and controversial—approach to image use. He took celebrity photographs from major photo agencies like X17, marked them up in a distinctively juvenile fashion using white pen—e.g., by adding a line of cocaine coming out of the nose of Lindsay Lohan, or by appending a snarky caption—and posted the altered images on his blog. These pictures were recognizably “Perez Hiltons,” since he always used that signature white pen and had something sassy to say—and this “transformation” laid the groundwork for his fair-use defense.

In November 2006, the photo agency X17 sued Hilton for copyright infringement, alleging unauthorized use of 51 images and seeking damages of $7.6 million. Hilton responded by claiming fair use, specifically, transformative use. As his lawyer Bryan Freedman told the Los Angeles Times, to rule against Hilton “would be to eliminate the ability to comment on and transform photographs under the fair-use exception to the Copyright Act.”²

Alas, no judge or jury ever ruled upon Hilton’s defense. X17’s case against Hilton was settled in August 2009, on confidential terms. That was arguably unfortunate—had it made it to trial, or even summary judgment, it might have provided some useful guidance to bloggers about fair use (and maybe today we’d be talking about the Perez Hilton case rather than the Andy Warhol case).

What would have happened if Perez Hilton had litigated his fair-use theory? A friend of mine, the late Julie Hilden—who practiced First Amendment law at Williams & Connolly before becoming a legal commentator and novelist—analyzed Perez Hilton’s position back in 2007 for FindLaw. In an excellent explainer, she explored fair use by comparing and contrasting two situations: politics blogger Michelle Malkin using excerpts from rap artist Akon’s music videos in order to criticize him and his work, and Perez Hilton using celebrity photos for his blog.

After assessing Malkin’s fair-use claim and finding it strong, Hilden shifted to evaluate Hilton’s, going through the four factors:

First, there's the factor of the purpose and character of Hilton's use of photograph agency X17's works. Hilton's site accepts advertising; indeed, its right column is all ads, and it solicits more ads. Clearly, Hilton is making commercial use of the photos.

Is the use transformative, however? Yes. But a court would doubtless find, say, Malkin's use more transformative than Hilton's. That's because whereas Malkin is folding her excerpts of Akon's work into a work of criticism with a larger point, Hilton is simply reprinting photographs and scrawling a few words—often slurs or obscenities—on them, or putting white dots on celebrities' mouths to represent cocaine, or on their crotches to represent semen.

But even though she didn’t think he had a great argument under factor #1 of the fair-use test, Hilden ultimately concluded that “[t]he first factor probably slightly favors Hilton.” Why? Citing Campbell v. Acuff-Rose Music, Inc., in which the Supreme Court upheld 2 Live Crew’s raunchy parody of Roy Orbison’s “Oh Pretty Woman” as fair use, Hilden wrote that “[c]rude as it may be, I believe Hilton's work ought to qualify [as fair use]; it tries to bring the high and mighty down to size, and to topple pedestals.”

Returning to the present, Hilden’s conclusion back in 2007 that factor #1 favored Hilton supports Justice Kagan’s claim today that the Court’s Warhol decision represents a “doctrinal shift” and a “remaking” of the law on the first factor. Prior to last week, the law was fairly generous towards secondary creators, requiring relatively little from them in terms of the “transformation” required for transformative use under factor #1—in order to provide artists with the “breathing room” needed to create new works that reflect or draw upon the work of earlier artists.

But remember, of course, that factor #1 is just a single factor of a four-factor test, and not even the most important one. Reviewing the remaining factors, Hilden concluded that they favor X17—especially the critical factor #4, “the effect of the use upon the potential market for or value of the copyrighted work”:

Fourth—and again, most importantly—there's the factor of the market substitution effect. Here's, it's powerful. You might go to X17online.com and see a given photo—but at PerezHilton.com, you can see it with a caption, too. Some viewers will doubtless bookmark PerezHilton, rather than X17online.com. That's a problem, as both are ad-supported.

Similarly in Warhol, the other three factors favor Goldsmith, particularly factor #4 (as explained by Judge Lynch in the Second Circuit opinion, which helpfully walks through all four factors). Indeed, Justice Kagan accuses the majority of “transplant[ing] factor 4 into factor 1,” by focusing excessively on how both Goldsmith and AWF license work to magazines.

And in explaining why Warhol came out the way it did, I’d submit that the majority might have been led astray in its analysis of factor #1, the only factor before the Court, because of the gravitational pull of the other three factors, which heavily favor Goldsmith. Put another way, Goldsmith was a highly sympathetic plaintiff: a pathbreaking female photographer who makes a living by selling her work to magazines—and who might have lost out on a sale to Vanity Fair, a prestigious magazine to which she had sold work in the past, because VF decided to instead license the work of a far more famous, male artist.

How should Warhol have come out, in my view? The Supreme Court should have held, for the reasons given by Justice Kagan in her spirited and persuasive dissent, that factor #1 of the fair-use factors narrowly favors the Andy Warhol Foundation. But on remand, Lynn Goldsmith should have prevailed on the bottom-line issue of liability, based on how she trounces AWF on the other three factors—especially factor #4, which addresses the problem of “market substitution” (i.e., a secondary creator ripping off a primary creator, then going to market and taking revenue that should have gone to the primary creator).³

So what can we learn about fair use from Warhol versus Goldsmith, X17 versus Perez Hilton, and my own experiences as a blogger and creator? Here are four observations.

First, when properly conducted as a holistic, four-factor analysis, fair-use doctrine accords with most people’s idea of rough justice and common sense. For the reasons I’ve given, I believe that AWF and Justice Kagan were right on the law, but Goldsmith and Justice Sotomayor were right on the equities, i.e., “what’s fair.” If a fair-minded layperson, someone who’s neither a lawyer nor an artist, were to look at this situation, they would probably conclude that Goldsmith got a raw deal. Similarly, going back to Perez Hilton, a fair-minded layperson evaluating that situation would probably conclude that Hilton was ripping off X17 and its photographers—and that if he wanted to use their images, he should have paid them.

Second, in the wake of Warhol, the so-called “transformative use” doctrine under factor #1 is considerably weaker, and going forward it will be much more about “use” than about “transformation.” Again, I think Justice Kagan’s assessment of the pre-Warhol state of the law is accurate (citations omitted):

Before today, we assessed “the purpose and character” of a copier’s use by asking the following question: Does the work “add[] something new, with a further purpose or different character, altering the [original] with new expression, meaning, or message”? When it did so to a significant degree, we called the work “transformative” and held that the fair-use test’s first factor favored the copier (though other factors could outweigh that one).

But today’s decision—all the majority’s protestations notwithstanding—leaves our first-factor inquiry in shambles. The majority holds that because Warhol licensed his work to a magazine—as Goldsmith sometimes also did—the first factor goes against him.

Applying the Warhol version of fair use to X17 v. Perez Hilton, Hilton would lose. His “transformation” of celebrity photos, turning them from glamour shots into sardonic commentary on Hollywood culture, would be deemed vastly less important than what he was using the pictures for. He was using the X17 photos to attract readers and make money from ads—a commercial use, and the exact same use as X17.

Third, even though I think that Justice Kagan had the better of the technical legal argument on factor #1, the majority’s position does have an advantage in terms of the institutional competence of the judiciary. Judges are much better equipped to evaluate “uses”—for example, to quote from the preamble paragraph of § 107, “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research”—than they are to assess the nature, scope, or significance of artistic “transformation.” Here’s what Justice Neil Gorsuch’s wrote in his Warhol concurrence (emphases supplied by Justice Gorsuch):

Nothing in the copyright statute calls on judges to speculate about the purpose an artist may have in mind when working on a particular project. Nothing in the law requires judges to try their hand at art criticism and assess the aesthetic character of the resulting work. Instead, the first statutory fair-use factor instructs courts to focus on “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.”

Put another way, one could try to distinguish Andy Warhol from Perez Hilton by arguing that the former was a great artist and the latter is… not. But as Judge Lynch put it in the Second Circuit opinion, “the district judge should not assume the role of art critic,” a conclusion that the Warhol Court endorsed “in part.” While judges must examine “the meaning of a second work… to the extent necessary to determine whether the purpose of the use is distinct from the original,” Justice Sotomayor wrote, they “should not attempt to evaluate the artistic significance of a particular work.”

Fourth and finally, on whether the Warhol case will end up chilling artistic expression, I’m more sanguine than Justice Kagan. It’s a narrow decision, addressing only a single factor of a four-factor test, in the very specific context of licensing—something that relatively few artists are successful enough to have to worry about. The ruling also doesn’t touch the physical works of art in the Prince Series, now in private collections or museums (as Judge Dennis Jacobs noted in his Second Circuit concurrence).

And creators will adapt to this new legal regime—just as Perez Hilton changed his ways after getting sued. Even though a court never ruled against him, the litigation was expensive. As he told the L.A. Times, “It was costing me so much money to fight that lawsuit. I became a big boy without ever meaning to, or planning to, and I had to play by the big-boy rules. I pay for every single image on my website now.” And all these years later, his site still is still up and running, presumably now copyright-complaint (even if it doesn’t loom as large culturally as it did in the mid-aughts).

Perez Hilton wasn’t the only one who “grew up.” As the blogosphere matured after 2006, the year that X17 sued Hilton, many of us also learned more about fair use. In the early days of Above the Law, some of our contributors were not, shall we say, as cognizant of copyright as they should have been. We received some letters claiming copyright infringement—and they caused us to clean up our act. We purchased subscriptions to multiple stock-photo services at ATL, and we also started taking pictures of our own. This continues to be my practice here at Original Jurisdiction: I generally use photos that are (1) courtesy photos used with permission, (2) photos from Getty Images (to which I have a subscription), (3) photos in the public domain, or (4) photos I take myself. (So if you ever see me standing outside your law firm or law school and taking lots of pictures—which annoys my husband whenever we’re out and about—I’m making my own stock photos.)

So my prediction is that creators will adapt to the post-Warhol world, and they will still find ways to create. I’ll give Justice Sotomayor the last word: “If the last century of American art, literature, music, and film is any indication, the existing copyright law, of which today’s opinion is a continuation, is a powerful engine of creativity.”

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1. In a New Yorker interview, Judge Richard Posner said that Underneath Their Robes was “occasionally a little vulgar, but this is America in 2005.” Perez Hilton, I would submit, was frequently vulgar, and more than just “a little.”

2. If Freedman’s name rings a bell, it’s because he’s a leading entertainment litigator who’s now representing Tucker Carlson and Don Lemon in their disputes with their former employers, Fox and CNN, respectively.

3. If Lynn Goldsmith wins in the end no matter what, based on holistic analysis of all four fair-use factors, the almost 90 pages of Supreme Court analysis might be dismissed here as “academic.” But I agree with Justice Kagan: “the overall balance [of the four factors] cannot come out right unless each factor is assessed correctly,” and Warhol “is about (and only about) the first.”