What We Don’t Know in Warhol – Who the Infringer Is and By Doing What
by Pamela Chestek • May 22, 2023 • copyright • 1 Comment
I expect to see a lot of reports that the recent Supreme Court decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith held that Andy Warhol’s Prince series of 16 works, or at least the “Orange Prince” that was licensed to Condé Nast, is an infringement of Lynn Goldsmith’s photograph. In fact, what the infringement was, and by whom, is a mystery.
The Supreme Court described the infringement this way:
Here, Goldsmith’s copyrighted photograph has been used in multiple ways. The Court limits its analysis to the specific use alleged to be infringing in this case – AWF’s commercial licensing of Orange Prince to Condé Nast – and expresses no opinion as to the creation, display, or sale of the original Prince Series works.
But granting a license isn’t reproducing, distributing, creating a derivative work, displaying, or performing, so merely granting a license shouldn’t be an infringement. Assume this hypothetical – Condé Nast acquires a copy of the Warhol without AWF’s knowledge or assistance and Condé Nast then sought a license when it decided to commercialize the work. AWF could have said “You’re licensed to the Warhol, you’re on your own for Goldsmith.” In that case, AWF would not have committed any infringing act, either directly or indirectly.
This is not to say that AWF didn’t infringe, only that granting a license – signing a contract – can’t be it. If AWF made a copy of Orange Prince to give to Condé Nast, that could be an infringing act. But the most obvious use – reproducing it as the cover of the magazine – wasn’t AWF’s infringement. That exercise of the exclusive right was by non-party Condé Nast, not AWF. That might make AWF secondarily liable for infringement, but that’s a different analysis.
What do we know from the decisions? AWF had filed a declaratory judgment action, asking the court to declare that the creation of the Prince series was not an infringement.1 Goldsmith then counterclaimed for infringement. However, she had statute of limitations problems with alleging that the creation of the original works was infringing, so she alleged that AWF’s granting of licenses was the infringement.
On cross-motions for summary judgment, the district court punted on infringement:
AWF argues that it did not infringe Goldsmith’s copyright to her Prince Photograph because none of Warhol’s Prince Series works, including the work licensed to Condé Nast in 2016, are substantially similar to the Goldsmith Prince Photograph under the “ordinary observer test” for substantial similarity. But the Court need not address this argument because it is plain that the Prince Series works are protected by fair use.
So we have two different theories for infringement, Warhol’s original creation of the Prince Series and the licensing of Orange Prince. The court of appeals followed the same path, although disagreeing with the district court’s evaluation of fair use and further finding that, as a matter of law, the Warhol work infringed the Goldsmith photograph.
So we just don’t know what the conduct was that was infringing. But how can one do a fair use analysis without knowing what the use was against which to measure “fair”? This decision is probably best thought of as clarifying the first fair use factor, but nothing beyond that.
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 21-869, 2023 WL 3511534 (U.S. May 18, 2023)
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021)
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312 (S.D.N.Y. 2019)
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- AMF seems to have also made a questionable assumption, which is that if the Warhol work was created lawfully, every later use of it will also be lawful. ↩
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