Virtually no one in the scholarly community is happy with the Supreme Court’s 2023 decision in Andy Warhol Foundation v. Goldsmith. The case produced aggressive majority and dissenting opinions by justices whom we normally think of as well aligned: Justice Sotomayor writing for the majority, and Justice Kagan writing in dissent. Peter Karol’s recent article shows that the opinions generated more heat than they did light, because the two Justices fundamentally misunderstood the case, the law, or both. This leaves the case’s precedential value deeply in doubt.
The case pitted the Andy Warhol Foundation (AWF), a nonprofit organization created after Warhol’s death to license uses of his artwork, against Lynn Goldsmith, a photographer who took a photo of the musician Prince in 1981. In 1984, Goldsmith’s licensing agency granted Vanity Fair a license to use the photograph as an artist reference for a story that would appear in the magazine. Vanity Fair then commissioned Warhol to create an image to illustrate a story about Prince. Warhol (and/or his team) created 16 images based on the Goldsmith photo (the Prince Series), one of which was used by Vanity Fair. Then, when Prince died, Condé Nast contacted AWF about licensing one of the Prince Series prints for a commemorative issue, which it published in 2016. Condé Nast chose a different Warhol work depicting Prince for the cover of that issue.
Litigation began when AWF, the licensing agency, filed a declaratory judgement action against Goldsmith asking the court to find that “the Prince Series is a fair use.” As Karol notes, this was a strange first step, because AWF wasn’t asserting that any particular use (e.g. creation of the series) was fairly done, but rather that the works as a whole represent a fair use.
But the confusion quickly grew with Goldsmith’s counterclaim. Goldsmith alleged that AWF infringed her copyright in the photo by: (1) reproducing; (2) publicly displaying; (3) commercially licensing; (4) distributing; and (5) incorporating into derivative works her photo. As Karol explains, however, while four of these activities could constitute copyright infringement (1, 2, 4, & 5), there was no evidence that AWF actually did any of those things. That is, Goldsmith did not show that AWF copied the photo or created the cover image. Those behaviors were done by non-parties, by Warhol and his team or by Condé Nast. Goldsmith did claim that AWF commercially licensed a work based on her photograph, but granting a license simply isn’t copyright infringement. It’s not one of the owner’s enumerated exclusive rights.
Building on recent work by Pam Samuelson, Karol next shows how this “licensing use” became the centerpiece for the Supreme Court’s judgment. Samuelson has argued that the Office of the Solicitor General was responsible for “hijacking” the case and setting it down the wrong path. Based on the SG’s brief, the Court only addressed the “licensing use” by AWF, because it thought that Goldsmith waived any claims she might have had about the creation of the series or against museums’ display of the works. Thus, Justice Sotomayor’s opinion focused almost exclusively on a behavior that is itself non-infringing and for which a fair use defense is unnecessary.
Karol helpfully explains why licensing a copyrighted work isn’t a copyright-relevant use of the work, but rather just a grant of permission and a contract not to sue. The owner of the licensed asset (here AWF) grants permission to someone else who actually uses the asset (here Condé Nast) in a copyright-relevant way by making and distributing copies of it to the public. The license, on its own, needn’t assert that the licensor actually owns any copyright in the work. It simply indicates that the licensor won’t sue the licensee. The best argument for how AWF violated one of Goldsmith’s exclusive rights is that AWF “authorized” others to reproduce the work when it was not entitled to do so. But as Karol argues, any claim in this direction would require pleading and proving that AWF was liable for some sort of secondary infringement rather than direct infringement. And, of course, Goldsmith never attempted to do that.
So what should we take from this case? It seems unlikely that the Supreme Court intended to create a new species of direct copyright infringement for unauthorized licensing. If so, many parties in art, film, and music licensing have new liabilities to fear. Karol, understandably, doesn’t like that reading, so he offers two other suggestions that “stay faithful to the Court’s arguments and intent while avoiding the potential hazards of its foundational error.”
The first is simply to treat Condé Nast as the true direct infringer and interpret the Court’s analysis in that light. As noted, this would require the challenging task of locating some secondary liability for AWF, but doing so is not implausible.
The other alternative is to assume—despite a lack of evidence—that AWF created a digital copy of the Warhol image that it distributed to Condé Nast. To me, this is probably the easier way to teach the case to students, but as Karol notes, many art licensing agencies clearly do not distribute images to their licensees, so it’s hard to know how the Court’s opinion affects them.
Once again, the Supreme Court has made life even more difficult for copyright law professors. And just as it did in Star Athletica, the Court’s misreading of the Copyright Act created the mess. Is it too much to hope that a Court committed to textualism could read the statute properly? I guess so.
