AWF v. Goldsmith (Pt. 3): Lynn Goldsmith, Art Licensing, and a Needle Scratch
Copying is not a problem until the wrong person knows about it.
Welcome to Day 3! Here is a quick recap of key points from Day 2:
The plaintiff in AWF v. Goldsmith was not Andy Warhol, but The Andy Warhol Foundation.
Lynn Goldsmith did not sue the Foundation; AWF sought a declaratory judgment against Lynn Goldsmith.
The Supreme Court did not rule on the artwork Orange Prince; it ruled on the use of a reproduction of Orange Prince on a magazine cover for a $10,000 licensing fee.
The Andy Warhol Foundation spent over $2.1 million on legal fees between 2017 and 2021.
Today’s new important fact:
Goldsmith expressly disclaimed all remedies as to museum display, collector possession, and sales of Orange Prince. That was legalese for “Goldsmith did not sue AWF over the actual artwork Orange Prince and in fact seems to have always been fine with the artwork’s existence.”
NEEDLE SCRATCH.
What?
“Katherine, are you saying that Orange Prince might be fair use after all?”1
I have a confession to make. For the last two days, I have been (a) telling you to focus only on the magazine cover reproduction of Orange Prince but also (b) slipping into discussion of the unique artwork Orange Prince.
That wasn’t a mistake. That was the Foundation’s approach to its case.
In truth, Goldsmith never claimed that Orange Prince infringed her photograph. AWF said that. Goldsmith claimed that a reproduction of Orange Prince on a magazine cover infringed her copyright. Goldsmith’s briefs, and her attorney’s oral arguments, are stuffed with disclaimers and reminders of this distinction.2
It was the AWF team that repeatedly tried to collapse this distinction, from their very first filing all the way to oral arguments before the Supreme Court. Media accounts reproduced and recirculated this conceptual collapse for years, and if you think that wasn’t part of AWF’s strategy, I encourage you to re-read Day 2 in this series.
In truth, nearly everyone agrees that THE ARTWORK Orange Prince is transformative.3 Even Lynn Goldsmith. Especially Lynn Goldsmith.4
Sotomayor could not address Orange Prince in the majority opinion because that’s not how opinions work. The transformativeness of Orange Prince was not at issue (which is legalese for “the question answered by the judges”). The transformativeness of THE MAGAZINE COVER was at issue. And the justices can only rule on the issue at bar, so they didn’t rule on Orange Prince.
Let me say that again because you can’t be confused on this point: The Supreme Court did not rule on Orange Prince.
That may be hard to understand. Editors certainly don’t seem to get it.
To keep this distinction clear in our minds, we will henceforth refer to Orange Prince - as in, the 16 x 20 silkscreen on linen made in 1984, now owned by a private collector - as “The Artwork.” We will refer to the reproduction of The Artwork that graced the cover of Condé Nast’s 2016 special edition “The Genius of Prince” as “The Cover.”
The distinction between The Artwork and The Cover matters very much because licensing matters very much, and this distinction is at the heart of licensing.
We have to understand what makes The Artwork different from The Cover to understand licensing, which is essentially a fiction. But guess what? All intellectual property is kinda fictional. When you buy a book, you can hold it in your hands, turn the pages, and inhale its papery smell. A book is tangible property. The contents of that book are protected by copyright, which is a form of intangible property. We have no material experience of copyright; we agree that it exists, but we can’t touch, see, or smell it the way we can touch, see, and smell a book.
Does that make copyright less real? No less real than the speed limit. You can get into legal trouble if you violate copyright or the speed limit, which makes them both very real to your legal and financial interests.
But if The Artwork is protected by fair use, doesn’t that wipe out everything I said yesterday about billion-dollar problems? It does not. You see, copyright is not “a right.” It’s a bundle of six rights:
The right to reproduce and make copies of an original work;
The right to prepare derivative works based on the original work;
The right to distribute copies to the public by sale or another form of transfer, such as rental or lending;
The right to publicly perform the work;
The right to publicly display the work, and
The right to perform sound recordings publicly through digital audio transmission.5
The four rights in bold - reproduction, derivative works, distribution, and display - are the ones we usually focus on when discussing visual art.
Any of these rights can be rented out, given away, or sold. They can be transferred in whole or in part. They can be transferred for a short while, a long while, or forever. That’s licensing. The ultra-formal versions in AWF v. Goldsmith actually happened via legal contracts, but you encounter licenses all day long. Post a photo to Instagram? License. Stream a Spotify song? License. Update your iPhone? License. When you signed up for these services, you agreed to their Terms of Use, which are replete with licenses. The digital world is powered by licenses.
In 1984, Lynn Goldsmith contracted with Vanity Fair magazine to provide one of her photographs as an “artist reference.”6 Goldsmith is a photographer and film director - a highly-lauded professional whose work is in the collection of the Museum of Modern Art, just like Warhol. She has won loads of awards and founded the first photo agency focused on celebrity portraiture.
A photo agency licenses the work of photographers. Like an artist’s estate, it’s a money-making venture. An agency acts as a middleman between photographers who own the copyright to their photos and designers/creatives/magazines/websites that need professional photos. The photographer gets to spend time being creative and making new work while the agency negotiates money for reproductions of photographs previously made. The photographer licenses her work via her agent, implicating rights 1, 2, and 3 above.7
Here is the Goldsmith - Vanity Fair license from 1984:
One photograph. To be used one time in a full-page layout. One time in less-than-one-quarter page. Any further uses are not allowed. Easy enough, right?
Warhol used the image to create 16 additional silkscreens and sketches known as the “Prince Series.” Legal? Illegal? I can’t tell you that. No one can tell you that, because it depends on what Warhol or the Andy Warhol Foundation does with the objects.
Returning to Day 1, but with some clarification, you can make whatever the hell you want to make with whatever materials you want to reuse in your bedroom / art studio / garage. Problems arise when you want to sell, reproduce, distribute, or display the thing you made in your bedroom / art studio / garage.
When an Appropriation Artist like Warhol creates a new image using pre-existing material (in this case, a silkscreen using Goldsmith’s photograph), he holds a very “thin” copyright over the resulting work. Specifically, Appropriation Artist holds copyright over only the new additions. The underlying material is still owned by Prior Artist (i.e., Goldsmith), and Appropriation Artist can’t sell/display/reproduce/distribute The Artwork without (a) getting a license or (b) relying on fair use.
But here’s a secret about appropriation: copying is not a problem until the wrong person knows about it.
The “wrong person” is the copyright holder who continues to possess one or more of the six rights you’ve violated by using their work without permission. Technically, it’s always illegal. Practically, no one gives a shit until you impact their reputation or bank account.8
AWF had loads to say in their initial filing about Goldsmith’s improbable ignorance of the Prince Series, but her knowledge or ignorance doesn’t matter. A copyright holder only has the opportunity to object to infringement within the statute of limitations.9 Despite AWF’s copious protests to the contrary, Goldsmith could not possibly have gone after The Artwork in 2017. She was time-barred, and any court would have thrown a claim out on that basis.10
Here’s another secret: a copyright holder can choose to assert her rights whenever she wants - or not at all.
Goldsmith likely knew about The Artwork and didn’t care; it wasn’t a problem.11 It became a problem, and Goldsmith reached out “amicably” to the Foundation, when The Cover impacted her bank account.12
You see, Goldsmith is a professional photographer, not a contemporary artist. Those are two different fields and two different markets. Collectors buying the artworks from the Prince Series were probably not interested in buying copies of her Prince portrait.
However, licensing images to magazines was another ball of wax. Licensing images to magazines was Goldsmith’s whole deal. Licensing for a Condé Nast retrospective issue on the life of Prince was her missed deal. We’re not talking about the Sotheby’s catalog. We’re talking about those expensive glossies at the Whole Foods checkout.
Warhol silkscreens are not the usual illustrations for that kind of publication. Goldsmith portraits are.
As an art historian, I can see why Orange Prince is a more dramatic and saleable choice than the Goldsmith portrait. Using the “genius” of Warhol to sell “The Genius of Prince” is a no-brainer. It’s perfectly obvious why the Condé Nast editor wanted to depict Prince in the iconic, flattened, dehumanized manner of a Warhol portrait. The aesthetic decision is clear, logical, and sound. It makes for a great cover by subliminally communicating many simultaneous messages to the viewer.13
But, to swipe some copy from the public domain, we can “hold two opposing ideas in mind at the same time and still retain the ability to function.”
I think about The Cover one way as an art historian.
As a lawyer, I think about The Cover very differently.
When advocating for an appropriation artist, I want to know if her work has the same value and intent as the original in the context where it is being sold/reproduced/displayed/etc.14
When advocating for a copyright holder, I want to know if there is any cognizable economic harm to her reputation or interests.
Here’s another secret: in fair use, market harm isn’t just about provable economic harm. It’s about potential market harm.
If Goldsmith’s photograph potentially could have graced the cover of “The Genius of Prince,” then she can claim market harm.15
A license is a contract, plain and simple. (To the extent that contracts are ever simple.) When negotiating a license, I can ask for whatever the licensor (usually, an artist) or licensee (usually a corporation but sometimes a second artist) as long as the terms are legal. Usually, we ask for money and credit, but we can ask to be paid in cheese if we want.16
Goldsmith liked to get money and credit. Here are two examples:
Goldsmith got money and credit when Purple Prince appeared in Vanity Fair in 1984. She did not get money or credit for The Cover, from either Condé Nast or the Foundation. Et voilà - harm.
While any claim concerning The Artwork was time-barred, claims concerning reproduction of The Artwork are not time-barred. The creation of The Artwork is one instance of reproduction, one instance of infringement, one opportunity to raise a fair use defense. But every reproduction of The Artwork - such as The Cover - is also one instance of reproduction, one instance of infringement, one opportunity to raise a fair use defense.
Here’s the main point of AWF v. Goldsmith: fair use is not a one-and-done assessment.
Just because The Artwork qualifies as fair use does not mean The Cover qualifies as fair use.
Maybe Appropriation Artist can make The Artwork, but he still can’t reproduce, sell, display, or distribute The Artwork without permission. Unless the Appropriation Artist can claim fair use in each and every new context.
That’s The Billion-Dollar Problem.
Over the last 30 years, thousands of artworks incorporating pre-existing material have been sold for billions of dollars. Now it’s unclear what artists, museums, and collectors can do with those works.17
Fair use sounds mystical, like a magic wand, doesn’t it? It’s exactly like a magic wand. I’ll explain tomorrow. See you then!
Personally, I think Orange Prince is less transformative than Orange Marilyn, but (a) the reason is indexical and (b) dependent on transformativeness-as-a-spectrum, which is my weird addition to the canon. A spectrum framework is great for a contemporary art historian or a transactional lawyer. A spectrum approach does not work for the adversarial and binary nature of litigation unless you enjoy funding a “battle of the experts.”
See Goldsmith’s SCOTUS brief. See the oral arguments. Transcript here. Audio here. Video here. (The video is not a cinematic masterpiece but will help you keep track of which justice is speaking.) See the entire filing history, which I will link for you once I’ve organized it, because I’m obsessive and generous.
I’m not going to talk about the briefs amici until at least Day 5, and probably not even then. They’re voluminous and polemical, and most of them make me really mad.
From the very beginning: Goldsmith District Court brief.
By the way, copyright is political. The Copyright Alliance is conservative (not like the Tea Party, like pro-authors’-rights), but has excellent educational resources. Bear their orientation in mind, please. I’ll link to more liberal resources, too, but that is a great intro to The Bundle.
Dark Yellow Dot is not a source of legal advice. That said, it’s a good resource! I’m an animation geek, so I’ll take any opportunity to tell people about rotoscoping.
If you’re thinking, “This sounds great, tell me more,” Jenny Blake recently recorded a 3-episode podcast series on licensing all kinds of creative work. Again, this is not legal advice, but Jenny & Co. can tell you more from a creative’s point of view.
This is what I do all day at work: convince people to stop giving a shit about a legal problem. Generally, it means (1) soothing their feelings and (2) figuring out the right amount of money. It’s amazing what a balm money can be for hurt feelings.
To remind you, in case I haven’t said it enough, Goldsmith didn’t file a claim. AWF did.
Actually, this isn’t all that speculative. See Goldsmith SCOTUS brief.
Goldsmith SCOTUS brief, p17.
If you’re curious to know more, you’re probably interested in “visual studies” which is a cousin of or branch of art history. (Depending on which professor you ask. I honestly cannot with that distinction, and sincerely hope everyone has stopped fighting about it.) Nicholas Mirzoeff is arguably The Guy, but I find John Berger or Maritka Sturken and Lisa Cartwright more engaging.
Esteemed copyright scholar Peter Jaszi boils fair use down to two questions (rather than four factors):
(1) Did the unlicensed use “transform” the material taken from the copyrighted work by using it for a different purpose than that of the original, or did it just repeat the work for the same intent and value as the original?
(2) Was the material taken appropriate in kind and amount, considering the nature of the copyrighted work and of the use?
As he says, “Both questions touch on, among other things, the question of whether the use will cause excessive economic harm to the copyright owner. If the answers to these two questions are “yes,” a court is likely to find a use fair. Because that is true, such a use is unlikely to be challenged in the first place.” (Emphasis mine.)
Yes, I am talking about Factor 4 when the case was decided on Factor 1. It’s a four-part balancing test, no case is ever truly limited to one factor, and counsel discussed Factor 4 extensively on oral argument, so why would I limit myself that way?
Our North Carolina clients cannot ask to be paid in marijuana, because marijuana is illegal in that state. But our New York clients can ask to be paid in sattiva or indica! That’s a funny example, but it’s also accurate.
This is very good news for the Geneva Free Port.