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Music industry welcomes US Supreme Court ruling in Prince artwork copyright case

By | Published on Friday 19 May 2023


The music industry has welcomed a US Supreme Court ruling in a big old copyright dispute that had visual art at its heart, but was centred on a photo of a pop star and – more importantly – impacts on the always tricky concept of fair use. And in a way that could impact on the increasingly lively copyright debates around generative AI.

The dispute was between the Andy Warhol Foundation and the photographer Lynn Goldsmith over artworks produced by Warhol in the 1980s that used a photo of Prince as a reference. When Warhol first used Goldsmith’s photo of Prince in 1984 to create his distinctive artwork, it was part of a commission from the magazine Vanity Fair, and use of the photo was licensed by publisher Condé Nast, with Goldsmith getting a co-credit when Warhol’s artwork was published.

However, Warhol subsequently created a number of different versions of the artwork which are collectively known as the ‘Prince Series’. Goldsmith was seemingly unaware of this until 2016 when Condé Nast published a commemorative magazine following Prince’s death which featured one of Warhol’s artworks – known as ‘Orange Prince’ – on its cover.

The Andy Warhol Foundation – which administers the late artist’s works – licensed the use of that artwork to Condé Nast for the 2016 magazine cover without Goldsmith’s consent.

It was at that point that Goldsmith told the Foundation that she believed that Warhol’s Prince Series – and the licensing of an artwork from it to Conde Nast without her consent – infringed the copyright in her original photo. It was the Foundation who then went legal in the New York courts in 2017, seeking confirmation that Warhol’s artworks constituted fair use under US copyright law and therefore did not infringe Goldsmith’s copyright.

All copyright systems identify certain scenarios when copyright protected works can be used without getting permission from the copyright owner, often in order to protect freedom of expression. So things like critical analysis, news reporting, quoting and parody are often covered by specific copyright exceptions.

The US principle of fair use provides many of the same exceptions, though is more ambiguous and generally more wide-ranging. In this case the Warhol Foundation was relying on the argument that so called ‘transformative uses’ of copyright protected works can be considered fair use.

Guidance on fair use from the US Copyright Office notes that “transformative uses are more likely to be considered fair – transformative uses are those that add something new, with a further purpose or different character, and do not substitute for the original use of the work”.

At first instance a judge in the New York courts decided that Warhol’s use of Goldsmith’s photo qualified as fair use on this basis, and the Foundation did not infringe Goldsmith’s copyright by licensing the Warhol artwork to Conde Nast.

But the Second Circuit Appeals court overturned that ruling in 2021. The Foundation then took the matter to the US Supreme Court, arguing that the Second Circuit’s interpretation of transformative fair use was wrong, and also conflicted with rulings in the Ninth Circuit Appeals Court on the other side of the country.

Yesterday the Supreme Court ruled in favour of Goldsmith. Law360 notes that the court “found that Warhol Foundation’s licensing of ‘Orange Prince’ to Conde Nast didn’t have a sufficiently different purpose as the photo taken by Goldsmith – both were ‘portraits of Prince used in magazines to illustrate stories about Prince'”.

Meanwhile judge Sonia Sotomayor wrote in her judgement: “As portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and Andy Warhol Foundation’s copying use of it share substantially the same purpose”.

It was a 7-2 ruling in favour of Goldsmith, with the two other judges in the Supreme Court disagreeing strongly with the majority position, and claiming that their colleagues had shown a “lack of appreciation” for the way Warhol’s artworks differed from Goldsmith’s original photo.

But the majority position argued that too wide a definition of transformative use would “swallow the copyright owner’s exclusive right to prepare derivative works”.

For most copyright owners – including music companies – any decision that narrows the definition of fair use, or at least stops the concept from being expanded, is a good decision, given copyright owners would always prefer to have control over the exploitation of their works, including in the creation of derivative works.

And that’s particularly true in the context of the increasingly urgent conversations around generative AI. The music industry is adamant that anyone who uses data connected to existing songs and recordings to train a music-making AI tool needs a licence from whoever owns the copyright in the original music.

But some argue that fair use might apply in at least some generative AI scenarios. That is still to be tested in the American courts and any widening of the concept of transformative fair use in cases like this could have had an impact on that debate.

So, it’s no surprise that the music industry was pleased with the ruling in the Andy Warhol Foundation v Lynn Goldsmith case. The CEO of the Recording Industry Association Of America, Mitch Glazier, said yesterday: “We applaud the Supreme Court’s considered and thoughtful decision that claims of ‘transformative use’ cannot undermine the basic rights given to all creators under the Copyright Act”.

“Lower courts have misconstrued fair use for too long and we are grateful the Supreme Court has reaffirmed the core purposes of copyright”, he went on. “We hope those who have relied on distorted – and now discredited – claims of ‘transformative use’, such as those who use copyrighted works to train artificial intelligence systems without authorisation, will revisit their practices in light of this important ruling”.

Meanwhile, according to Variety, National Music Publishers Association CEO David Israelite stated: “Today’s Warhol Foundation decision is a massive victory for songwriters and music publishers. This is an important win that prevents an expansion of the fair use defence based on claims of transformative use”.

“It allows songwriters and music publishers to better protect their works from unauthorised uses, something which will continue to be challenged in unprecedented ways in the AI era”.

“Copyright owners should have the right to make or approve decisions about new, reimagined uses of their works”, he added. “This decision enhances our ability to protect songwriters from increasingly broad claims from would-be infringers of fair use, strengthening creators’ rights to determine how their art is exploited and valued”.

That said, Re:Create – an organisation that speaks on copyright issues for tech companies and other users of content – is keen to stress that a key element of the Prince artwork dispute was the licensing of that image to Conde Nast without Goldsmith’s consent. And, according to Re:Create Executive Director Joshua Lamel, the precedent set in the new Supreme Court ruling is not necessarily as far reaching as some copyright owners would like.

“All art and innovation build on work that came before – an endless cycle of recreating that pushes society and culture forward, allowing us to reflect on the past and aspire for the future” he said yesterday. “We are encouraged that the Supreme Court continues to recognise that fair use is critical to unlocking free expression for all”.

“Specifically”, he went on, “the court did not rule on if Andy Warhol’s transformative artworks were a fair use. Instead, they found only the specific act of the Foundation then licensing them to a magazine, in direct competition with the magazine photograph the art was based on, was not a fair use. This shows that fair use is alive and thriving and that the Supreme Court takes a very thoughtful fact-based approach to applying it, as intended”.