Andy Warhol Part Ii: Fair Use Preemption, Predictions and More on the U.s. Supreme Court Andy Warhol Foundation Case

• Publication year: 2023
• Author: Alexandra Darraby

ANDY WARHOL PART II: Fair Use Preemption, Predictions and More on the U.S. Supreme Court Andy Warhol Foundation Case

Alexandra Darraby

Art Law Firm

Andy Warhol Foundation Case History Chart

Andy Warhol Foundation for the Visual Arts, Inc. (Warhol) v. Goldsmith, 382 F.Supp.3d 312 (SDNY July 1, 2019); reversed and remanded, 992 F.3d 99 (2d Cir. March 26. 2021); reversed in part, vacated in part, withdrawn and superseded on rehearing, 11 F.4th 26 (2d Cir. August 24, 2021); cert. granted, 142 S.Ct. 1412, 212 L. Ed. 2d 402 (March 28, 2022).

SUPREME COURT OPINION IMPACTS LICENSING, ECONOMY, AND CULTURE

What do rappers, computer coders, game developers, sci-fi fans, authors, screenwriters, composers, comedians, and cartoon characters have in common? How are film, TV, music, streaming, publishing, the Internet, and the arts related? All of them—and some forty or so amici curiae briefs submitted by interest groups from every sector—await the U.S. Supreme Court opinion on transformative fair use in Andy Warhol Foundation v. Goldsmith^*

The case has serious economic and legal consequences but oral argument held October 12, 2022 was not without moments of levity, interspersed with Justices sharing their musical listening preferences. Prince is the iconic musician whose copyrighted photograph is the subject of the ongoing dispute. Notably, his music is completely unrelated to the case in any of its iterations. And there have been several iterations and judicial fair use interpretations of the Prince image since litigation began in 2019 based on a photograph taken by defendant Goldsmith years earlier.

What the Warhol case exemplifies—like other fair use cases—is the adage that reasonable minds can differ, and in fair use cases they do differ. Fair use cases travel up and down the ladders

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of justice more frequently than Hasbro tokens in the box game Chutes and Ladders. Each rung is a step up or down of reversals, rehearings, remands, vacates, and more.

Until the Supreme Court issues its opinion, the New Matter editors provide a fair use refresher (see Andy Warhol, Part 1 in this issue). Meanwhile, the author clarifies some common assumptions and cautiously offers predictions—to be tested in the next New Matter article after the Supreme Court opines.

FAIR USE DECLARATORY JUDGMENT: PATHWAY TO INFRINGEMENT PREEMPTION

Fair use, codified in Title 17 of the U.S. Code, is an affirmative defense to a copyright infringement. This has led to a general misunderstanding that the copyright owner is the plaintiff in Warhol and that Warhol is defending on fair use. This assessment is rational but erroneous; in fact, the claims and claimants are switched. Warhol sued as plaintiff for declaratory relief asserting fair use¹ after the copyright holder sought licensing fees for specific reproductions in prints referred to as the Prince Series.² Declaratory relief is available on copyright claims, including those predicated on infringement defenses, exposing a losing plaintiff in some jurisdictions to discretionary awards of attorney's fees under Section 505.³

A fair use declaratory judgment preempts copyright infringement by mooting the defendant's claim of infringement. Section 107 is unequivocally clear and express: "fair use of a copyright work...is not an infringement of copyright." The courts are not asked in fair use declaratory relief actions to determine if the work...