A case before the US Supreme Court about a restyled image of Prince could have profound consequences for photographs of athletes and teams. The justices on Wednesday will hear oral arguments for Andy Warhol Foundation for the Visual Arts. v. Goldsmithone of the most celebrated intellectual property law cases in years.
In 1981, Newsweek hired prominent rock-and-roll photographer Lynn Goldsmith to photograph Prince. One photo was a portrait, which Newsweek did not run.
When Prince’s popularity surged in 1984, Vanity Fair paid Goldsmith $400 for the right to use the unpublished portrait as an “artist reference” for Andy Warhol. Although Goldsmith had only agreed to one silkscreen portrait, Warhol made 16. Vanity Fair published one of Prince having purple skin (a play on his best-selling album Purple Rain) for its story, “Purple Fame.” The magazine credited Goldsmith as providing the source photograph. Warhol, meanwhile, died in 1987 and ownership of his works passed to the foundation.
Fast forward to 2016. After Prince’s death, Vanity Fair‘s parent company, Condé Nast, learned about the 15 other images and paid the foundation approximately $10,000 for the right to run Warhol’s illustration of Prince having orange skin.
One problem: Goldsmith wasn’t paid or credited.
Goldsmith warned the foundation of potential copyright infringement, which prompted the foundation to sue Goldsmith in the Southern District of New York for a declaration of non-infringement. Goldsmith countersued, arguing copyright infringement. The foundation insisted Warhol’s work was protected by “fair use.” Under copyright law, the fair use doctrine allows copying of others’ works for criticism, comment, reporting, education and other purposes. Courts apply a four-factor balancing test that weighs (among other factors) the purpose and amount of copying and how much the copying would hurt sales of the original work.
In 2019, Judge John Koeltl sided with the foundation, stressing that Warhol’s work transformed Goldsmith’s photograph into a new and creative expression. Warhol’s image had removed Prince’s torso and made him appear as a flat, two-dimensional figure. Warhol also utilized unnatural colors to communicate an “aesthetic and character different from the original.”
Two years later, the US Court of Appeals for the Second Circuit reversed the decision. Judge Gerard Lynch explained that Warhol’s work was not transformative since both images were “of the same famous musician with an overlapping customer base.” Warhol “created the series chiefly by removing certain elements from the Goldsmith Photograph, such as depth and contrast,” but nevertheless retained “the essential elements” of that photograph and “the overarching purpose and function of the two works at issue here is identical. ”
The Second Circuit’s ruling sent shock waves through the IP world. It conflicted with a long-held understanding that a work is transformative when it communicates a different meaning from the original, such as the altered “aesthetic and character” cited in the original judgment. Critics argued the Second Circuit had “collapsed whether two works are substantially similar—a related question before any consideration of fair use is required—into a rejection of fair use.” The Supreme Court agreed to take the case, and scores of interested parties have filed amici briefs.
A brief by a group of copyright law professors led by Harvard Law School’s Rebecca Tushnet highlights the sports implications. The brief references Bouchat v. Baltimore Ravens, which centered on the Ravens’ “Flying B logo” in the mid 1990s. A man who previously developed a very similar logo sued for infringement after seeing the logo appear in (among other things) a photographic display in the stadium and videos on the NFL Network and NFL.com. In one video, “Top Ten: Draft Classes,” the Flying B logo briefly appears in a segment on the Ravens’ 1996 draft class. In another, “Top Ten: Draft Busts,” the logo appears momentarily.
The US Court of Appeals for the Fourth Circuit found the Ravens’ use transformative. The display and videos, the court noted, “used the Flying B as part of the historical record to tell stories of past drafts, major events in Ravens history, and player careers.”
Tushnet’s brief seizes on that ruling, stressing that transformative use includes “the recognizable use of images of a sports team logo in contexts that historicized them.” They worry the Second Circuit’s “new focus on recognizability—that is visual similarity” could “distort fair use doctrine.” The Ravens might have been in trouble if the applicable test was not whether there was a new meaning but instead whether the images look too much alike.
The professors also call attention to litigation over an iconic image of Michael Jordan in Life shops. In the 1980s, Life hired photographer Jacobus Rentmeester to photograph Jordan, and he captured an iconic shot that ran in the magazine:
Nike later used a photo that seemed to be inspired by Rentmeester in a marketing campaign:
Rentmeester sued Nike for copyright infringement but lost. The Ninth Circuit reasoned that “a photographer who produces a photo using a highly original lighting technique or a novel camera angle cannot prevent other photographers from using those same techniques to produce new images of their own.”
That’s how the law has ordinarily worked and makes sense to most people, but if the Court sides with the Warhol foundation, it’s possible “no one else could take a photograph of Michael Jordan leaping without Jacob Rentmeester’s permission,” according to the copyright professors’ brief.
Not everyone agrees. An opposing group contends that strong copyright protection is needed to protect those who create original works.
For example, US Sen. Marsha Blackburn of Tennessee, whose state includes many Nashville artists and musicians, argues in her amicus brief that the Copyright Act should be “interpreted in keeping with Congress’s intent—which in turn reflects the vision of the Founders—to preserve the economic incentive for creators to make original works of artistic genius. Strong copyright protections have provided the legal environment under which American musicians, authors, artists, photographers, and other content creators have flourished for centuries.”
Meanwhile, a group of law professors that includes Columbia Law School’s Jane Ginsburg (daughter of the late Justice Ruth Bader Ginsburg), contends that Congress never intended for “courts to reduce fair use to an inquiry into transformativeness.” Ginsburg urges the Court to remember that “transformativeness of a use should be balanced against the commercial purpose of such use.”
The Court will issue a decision sometime this term, which ends next summer.
Tushnet told Sporty the Court could go in one of several directions, including a “narrow decision that focused on appropriation of art” or “a much broader decision that would affect many creative reuses.” She added that if the Court sides with the Warhol, it might “try to distinguish the kinds of historical/biographical uses that constitute fair use” in cases such as the Ravens litigation.