Please join us on Monday, June 12, 2023 at noon for a discussion of the recent Supreme Court case Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (May 18, 2023)

In 1981 Newsweek commissioned professional photographer Lynn Goldsmith to photograph a then “up and coming” musician named Prince Rogers Nelson, which was published along with an article about Prince.

A few years later, Goldsmith granted a limited license to Vanity Fair for use of one of her Prince photos as an “artist reference for an illustration.” The terms of the license included that the use would be for “one time” only. Vanity Fair hired Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400.

When preparing the Vanity Fair cover, Warhol created a total of 16 works known as the Prince Series derived from Goldsmith’s photo, including one known as “Orange Prince”.

After Prince died in 2016, Vanity Fair’s parent company (Condé Nast) purchased a license for $10,000 from Andy Warhol Foundation for the Visual Arts, Inc. (AWF) to publish Orange Prince for use in a special edition magazine commemorating Prince. Goldsmith did not know about the Prince Series until 2016, when she saw Orange Prince on the cover of Condé Nast’s magazine.

Goldsmith notified AWF of her belief that it had infringed her copyright. AWF then sued Goldsmith for a declaratory judgment of noninfringement or, in the alternative, fair use. Goldsmith counterclaimed for infringement.  The following litigation resulted:

[1] The Southern District of New York considered the four fair use factors in 17 U. S. C. §107 and granted AWF summary judgment on its defense of fair use.

[2] The Court of Appeals for the Second Circuit reversed, finding that all four fair use factors favored Goldsmith.

[3] The Supreme Court evaluated a single question: whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature,” §107(1), weighs in favor of AWF’s commercial licensing to Condé Nast.  The Supreme Court affirmed the Appeals court ruling in favor of Goldsmith 7-2, in an opinion by Justice Sotomayor. Justice Gorsuch filed a concurring opinion, in which Justice Jackson joined. Justice Kagan filed a dissenting opinion, in which Chief Justice Roberts joined.

Mark Goldstein of SoCal IP Law Group LLP will lead a discussion of the case.

The case is available here: https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf