Andy Warhol and Photographers Take Their Case to the Supreme Court: Third Addendum

This post is an update. Read the original post here, the first addendum here, and the second addendum here.

At the beginning of his oral argument before the Supreme Court, Roman Martinez, counsel for the Warhol Foundation, stated:

… the stakes for artistic expression in this case are high. A ruling for Goldsmith would strip protection not just from the Prince Series but from countless works of modern and contemporary art. It would make it illegal for artists, museums, galleries, and collectors to display, sell, profit from, maybe even possess a significant quantity of works. It would also chill the creation of new art by established and up-and-coming artists alike.

Transcript of oral argument 4:23-5:7.

This Insight focuses on the potential import of the Supreme Court’s decision for museums, which have a multitude of activities that implicate copyright rights — most relevant here, the display of original artworks in their collections or on loan to the museum that incorporate preexisting works. Copyright rights are also implicated in displays by the museums of images of these works online or in print publications or use of the images for promotional purposes. But would a decision against the Warhol Foundation really put these museum functions at risk? This issue — the “museum problem” — was discussed by the parties in their briefs, in amici briefs (see, for example, the brief of The Robert Rauschenberg Foundation et al. and the brief of the Art Institute of Chicago et al. discussed below) and in the Supreme Court oral argument. The attention to the issue by both sides and a broad swath of the museum community suggests that the justices may need to address the museum problem if they find that the Warhol Foundation infringed Goldsmith’s copyright.

The Warhol Foundation, in its brief, argues:

the decision below could prevent museums, foundations, and galleries from displaying culturally significant artwork. Only a “lawfully made” painting or print of a copyrighted work may be publicly displayed by someone other than the copyright owner. 17 U.S.C. §§ 106(5), 109(c). Faced with a choice between copyright infringement litigation under the Second Circuit’s circumscribed transformative use standard and removing artwork from public view, many institutions may choose the latter. Museums and galleries without significant financial resources are especially likely to err on the side of not displaying works that draw on preexisting creations, depriving the public of the opportunity to interact with those pieces.

Brief for Petitioner at 55.

Goldsmith, however, argues that museum functions are not endangered and, regardless of Section 109, can be justified under fair use principles. Brief for Respondent at 36. The brief does recognize that analysis of the four fair use factors can come out differently depending on the uses, citing Bouchat v. Baltimore Ravens Ltd. P’ship, 619 F.3d 301 (4th Cir. 2010) (finding that the use by the Baltimore Ravens and the National Football League of a logo created by the plaintiff did not constitute fair use, but use of the same logo in the Ravens lobby did). Goldsmith also argues that the discretionary nature of injunctive relief would limit the real remedies available against museums where they acted in the public interest. Brief for Respondent at 37. However, this seems disingenuous since the threat of litigation would be sufficient to create the chilling effect.

In its amicus brief, The Rauschenberg Foundation, while noting that a museum might have a separate fair use defense as to its use of an infringing work (Amicus brief of The Robert Rauschenberg Foundation et al. at 34, note 6), argues as follows:

The court of appeals’s standard would have significant negative consequences for artistic practice, forestalling the creative innovation copyright is meant to advance… The threat is not just to practicing artists. Given the facts of this case, artist foundations and other arts organizations are at risk as well. The liability they now face jeopardizes their charitable missions — which go far beyond preserving the works of past artists, and instead extend to projects aimed at educating the general public and supporting the arts community generally.

Amicus brief of The Robert Rauschenberg Foundation et al. at 33-34.

In oral argument, Justice Barrett posed the museum question to Lisa Blatt, counsel for Goldsmith, and they had this exchange:

JUSTICE BARRETT: So, Ms. Blatt, what about the use in the museum, like a Warhol hanging in a museum, versus the use in Conde Nast and Vanity Fair? Is there any difference?

MS. BLATT: Absolutely and for a variety of reasons. The first is Factor 4. … Factor 4 is just different. Goldsmith doesn’t compete in that market.

On Warhol — if I can just take you away from Prince — and also now that this Prince Series is famous, I don’t see how any museum can’t display these…

Transcript of oral argument, 77:23-78:12.

Ms. Blatt and Justice Kagan also had the following exchange on the subject:

JUSTICE KAGAN: But maybe there’s a different point about museums, and the point is why do museums show Andy Warhol? They show Andy Warhol because he was a transformative artist because he took a bunch of photographs and he made them mean something completely different. And people look at Elvis and people look at Marilyn Monroe or Elizabeth Taylor and Prince, and they say this has an entirely different message from the thing that started it all off. And that’s why he’s hanging up on those museums.

And that’s why whatever the Section 4 — the — the Factor 4 inquiry might be, that’s why it’s hard to look at it and not say under Factor 1 that’s transformation.

MS. BLATT: Well, in our view, that -­ I mean, I think the government might have a different view under museums, but everyone agrees that in museums there’s going to be fair use. And there’s also particular provisions, mainly 109, that both our brief and the government’s brief talk about that separates for display for museum purposes.

Transcript of oral argument, 79:5-80:2.

In concluding his rebuttal, Mr. Martinez, arguing for the Warhol Foundation, reiterated that the interests of museums as well as other artists were at stake:

If …Warhol infringed the copyright, it wasn’t lawfully made, Your Honors, this case has meanings – implications beyond just Warhol. It affects all artists and especially contemporary artists.

Transcript of oral argument, 122:8-13.

The Legal Issue

Museums are allowed to display copyrighted works in their collections or on loan pursuant to Section 109(c) of the Copyright Act so long as the works were “lawfully made.” If a Warhol work was not “lawfully made,” then is a museum displaying the work also guilty of copyright infringement? Or is the museum, as argued by counsel for Goldsmith, entitled to a separate fair use defense? Assuming this is the case, how would the conclusion differ depending on the nature of the museum’s activity (for example, reproduction in a scholarly catalog vs. reproduction in a promotional brochure for the museum), and, perhaps most importantly, what would be the chilling effect on the museum that has to weigh these factors to decide whether to proceed with the action? Citing the wide-ranging activities of museums in addition to display — online exhibitions, publications, catalogues, documentaries, etc. — the amicus brief filed on behalf of a group of museums posed the problems this way:

The Second Circuit’s decision also causes uncertainty for museums because it creates risk for routine and fundamental museum activities by its muddled distinctions concerning potential copyright liability for “original works” and “reproductions”…

The museums serve broad audiences, including those who physically attend their galleries, and those who do not. Museums create and publish, in many media, reproductions of works on display or in their collections, including works not usually on display that otherwise would be inaccessible to the public. The avenues for such reproductions include catalogues, documentaries, websites, and other embodiments of creative works. Where, as here, original works incorporating elements of preexisting works do not usurp the market for such works and offer enormous benefits to the art-viewing public, their display and reproduction by museums should, at a minimum, be found non-infringing (as opposed to “not particularly relevant”).

Because of the nebulous boundaries in the decision below, the museums and the Association [of Art Museum Directors] are concerned as to how this ruling would be applied, including to these same works, other Warhol or contemporary works, and generally any works that incorporate preexisting works, as well as whether the ruling will impact the museums’ wide-ranging missions. This uncertainty creates a chilling effect on the museums’ activities, which any decision by this Court should seek to avoid.

Amicus brief of Art Institute of Chicago et al. at 5-6.

Lutzker & Lutzker will continue to follow this fascinating and complicated case to analyze its potentially far-reaching consequences, including those for museums and the art world in general.