The Supreme Court recently heard arguments for the Warhol v. Goldsmith copyright case, which will have a dramatic impact on content providers and the definition of “fair use,” but it may also have an a similar effect on other creators, including inventors whose issued patents may be uncertain.
The crux of the matter is the definition of what is transformative? Is a new work of creative expression sufficiently different from the underlying one, or is it merely derivative, a rearrangement of the original in an attempt to avoid paying licensing fees?
In a digitally-articulated world, copying and rearranging can become creation. But it can also be an abuse of the ‘fair use’ doctrine, effectively an avoidance of paying for the right to use the underlying work. The test for creation has evolved and creators, such as designers, content providers and inventors, are frequently not in the position to enforce their rights, especially against deep-pocketed players. Celebrity photographer Lynn Goldsmith, an independent, is not letting this go.
Goldsmith clearly owns the her original photograph of Prince. There is no argument there. The question is did it become something else – a new work – when Andy Warhol “transformed” the original by colorizing it? The Justices have some interesting ideas. Was it simply a matter of “fair use,” a sort of hip-hop sampling of the original, a tribute more than a theft? Did Vanity Fair have the right to run the Warhol portraits based on Goldsmith’s work without her permission?
The Warhol touch, which has been applied to portraits of celebrities as diverse as Marilyn Monroe and Chairman Mao, is meaningful financially as well as aesthetically. The Warhol Foundation argues it need not license Goldsmith’s image because of the transformative nature of Warhol’s portrait. The magazine’s position is unclear.
Denial of Standing
Many patent infringers claim that patented inventions, despite being issued by the USPTO, are insufficiently novel and not patent-worthy under current laws. Often, they can prove so in most federal district courts. The denial of the a work’s legal standing and value under an umbrella of uncertainty makes it easy for some businesses to refuse to pay licensing fees. It enables businesses like the Andy Warhol Foundation and, in an invention context, companies like Apple, to refuse to pay royalties. Most small IP owners can not afford to argue otherwise.
Traditionally, a relatively small amount of reconfiguring of a work can escape copyright infringement. With patents, the originality of an invention or process is more difficult to design around, but many USPTO-issued patents, in many areas of art, turn out not to be valid under scrutiny because of vague laws and unreliable courts.
In 1984 Vanity Fair licensed one of Goldsmith’s photos of Prince shot on Dec 1981 for $400 to create an illustration of Prince to be used in an article “Purple Fame,” reports PetaPixel, an industry publication in excellent summary of the dispute. Vanity Fair did not inform Goldsmith that the photo was being used by Warhol as a reference, and she did not see the article when it was initially published.
Goldsmith was also unaware that Warhol had created 15 additional artworks based on her black & white studio photograph. This was known as the “Prince Series” and included 14 silkscreen prints (12 on canvas, 2 on paper) and 2 pencil drawings. [No, this was not her 15-minutes of fame.]
On April 21, 2016, at the age of 57, Prince died of an accidental overdose at his home and recording studio in Minnesota. He had sold 150 million records worldwide, which put him among the best-selling music artists of all time. (He was notoriously careful with his copyrights and trademarks, at one point changing his name to “the Artist Formerly Known as Prince” to allow him to create and share new material that eluded his recording contract. Were he still alive, Prince would likely be suing one or all of the parties.)
The next day, on April 22, continues PetaPixel, Condé Nast, which is Vanity Fair’s parent company, contacted the Andy Warhol Foundation (AWF). They were interested in producing a commemorative issue on Prince and wanted to use the 1984 image.
“The courts generally have failed to understand the important role of
secondary licensing in the photography business model”
Condé Nast obtained a license from the Foundation and published the tribute magazine, which carried a Prince Series image on an orange background on the cover in May 2016. The image was credited to the Foundation, and there was no mention of Goldsmith in the attribution.
Goldsmith first became aware of the Prince Series and the other images only after the cover was published. She informed AWF in late July 2016 that the artwork had infringed on her copyright.
In November 2016, Goldsmith had her Prince’s photo registered with the copyright office as an unpublished work.
On April 7, 2017, AWF launched a “preemptive strike” against Goldsmith by suing her before she had a chance to file a copyright infringement lawsuit first.
In a January 2015 Facebook post, Goldsmith wrote, “It is a crime that so many ‘artists’ can get away with taking photographers’ images and painting on them or doing whatever to them without asking permission of the ‘artist’ who created the image in the first place.”
Prominent intellectual property and entertainment attorney Robert E. Allen, partner at Glaser Weil, LLP in Los Angeles, has been closely following this and similar cases.
Importance of Secondary Licensing
“This is an exceptional result for creators,” say Allen. “There have been a number of past lawsuits in which photographers and other creators have pursued other artists for appropriating their photographs and derivative works in other mediums.
“It’s not always gone well for the photographers because the courts generally have failed to understand the important role of secondary licensing in the photography business model.” [Similarly, the courts have failed to understand the importance of patent licensing, not only to small business success but to the vitality of innovation, which is perceived as a threat by some large companies.]
SCOTUS has heard arguments for the Warhol v. Goldsmith copyright case. The Court can rule at any time. This dispute, and others like it, is not that unusual. It is only time until the metaverse and Web3 – the disintermediated Internet – will be generating IP disputes of its own.
Image sources: Lead photo courtesy Lynn Goldsmith ©; Artist Andy Warhol by Jack Mitchell and licensed under CC BY-SA 4.0; PetaPixel.com