Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

At last, the on the protectability of the subjects of ‘pop art’. In 1984, Vanity Fair magazine received a licence from photographer Lynn Goldsmith to use her 1981 portrait of Prince, which she had shot on assignment for Newsweek. Fast forward to 2017, when Vanity Fair published a special issue to pay homage to the recently deceased musician that featured ‘Orange Prince’ – Andy Warhol’s pop art depiction of Goldsmith’s photograph. The question of whether Warhol’s Prince silkscreens may be considered fair use has now made its way up to the US Supreme Court, and on October 12th of this year, . This is the outlining the arguments that were made in the matter of Andy Warhol Foundation for the Arts v Goldsmith.

In determining fair use according to the statute, one of the primary points of contention involved the meaning behind the of the alleged use. The Warhol Foundation contended that the purpose of ‘Orange Prince’ was to comment on modern society, thereby conveying unto the original an entirely different meaning and message. Lisa Blatt, representing Goldsmith, proposed that one may just as easily argue that the “purpose” of both uses was the commercial licensing of the works for publication. Blatt’s arguments were supported by Yaira Dubin, representing the Justice Department, who also highlighted the foundation’s commercial licensing of Warhol’s work, saying that “using another artist’s work as a starting point to turn around and compete directly with their original has never been considered fair.”

Of course, the magnitude of such a household name as Andy Warhol’s was not lost to the court. Justice Kagan questioned the influence such a name might have on the query: “Now we know who Andy Warhol was and what he was doing and what his works have been taken to mean. So it’s easy to say that there’s something importantly new in what he did with this image.” On the other hand, Justice Kagan also acknowledged that there must be a reason why Warhol’s art is hung up on the walls of museums: “[W]hy 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.”��

The Supreme Court judges addressed a statement made by the , which ruled in favour of Goldsmith. The Court of Appeals had warned that judges “should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue.” Justice Alito, in particular, seemed to disagree with the statement, pondering the kind of perspective that would be appropriate in determining such distinctions: “Well, suppose that [somebody]...made an almost exact copy [of the Mona Lisa]…If you showed [the two works] to most people today, they would say, well, all right, brown dress, blue dress, red dress, doesn’t make any difference, right?...But, if you called somebody who knows something about Renaissance art, the person would say that makes a big difference.”

The commentary strikes at the ambiguity often found in determining cases involving intellectual property, if only because there is an inherently subjective element to construing creations of the mind. However, though patent law has the “person of ordinary skill in the art” standard and trademark law has the “ordinary casual consumer somewhat in a hurry” standard, copyright law often relies on a judge’s evaluation of whether infringement has occurred.

There is much to be anticipated from the Supreme Court’s final decision, the kind of effect such a decision might have on the world of art and photography, as well as whether a ruling in favour of the foundation would indeed “decimate the art of photography by destroying the incentive to create the art in the first place,” as Blatt argues.

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Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

Over 3 years have passed since New 91��ɫ’s District Court a ruling in the matter of Andy Warhol’s “Orange Prince”, and the ripples of the case have finally made their way up to the Supreme Court. On Wednesday, October 12th, 2022, the judges of the US Supreme Court heard from both sides, and considered whether Warhol’s , which he had based on a 1981 photograph of Prince by photographer Lynn Goldsmith, may be considered a use that is “fair”.��

The doctrine of fair dealing in Canada has long played an important role in balancing the scales of copyright law from leaning too far in favour of copyright holders. The fair dealing exceptions recognize certain uses of protected works as benefitting society, and thereby safeguard those uses from findings of infringement. The parallel doctrine in the US tracks along similar reasoning and is known as the ‘fair use’ doctrine. In determining whether a use of a copyrighted work is “fair,” courts consider numerous factors, including whether the use in question is “transformative” of the original material.

In , the Supreme Court was invited to assess whether a work was “transformative” when it conveys a different meaning or message from its source material, or whether, in cases where the accused work “recognizably derives” from its source material, judges are forbidden from deriving or considering such meanings. It was an engaging proceeding with an abundance of references to pop culture icons and current affairs, and was punctuated at times by laughter in the courtroom at an amusing hypothetical posited by one of the judges.����

Roman Martinez appeared on behalf of the Andy Warhol Foundation, and clarified the issue at hand, as well as the Foundation’s position: “[b]oth courts below agreed, and Goldsmith doesn’t dispute, that Warhol’s Prince Series can reasonably be perceived to convey a fundamentally different meaning or message from Goldsmith’s photograph. The question in this case is whether that different meaning or message should play a role, any role, in the fair use analysis. Our answer is yes.” Martinez argued that while Goldsmith’s original photograph captured a “vulnerable-looking Prince,” Warhol’s depiction turned it into a commentary on celebrity and fame – an entirely different meaning and message.��

The judges somewhat pushed back against this argument. Justice Elena Kagan suggested that in Hollywood, while a movie adaptation of a book might introduce plenty of new elements that may make a derivative work “transformative” under Martinez’s proposed test (“...new dialogue, sometimes new plot points, new settings, new characters, new themes”), one would still expect some sort of licensing agreement to be required.

Chief Justice John Roberts and Justice Clarence Thomas also commented on Martinez’s arguments, albeit in more lighthearted terms. The Chief Justice wondered whether a claimant who depicted Prince with “a little smile on his face” may advance the argument that the “meaning or message” of the work was fundamentally changed to convey that “Prince can be happy” or that “Prince should be happy.” Justice Thomas in turn asked Martinez to imagine the Justice at a Syracuse football game as a Prince fan, “which [he] was in the ‘80s.” Justice Kagan interjected, “No longer?,” to which Justice Thomas replied, “Well…so only on Thursday night.” This elicited some laughter in the courtroom. Justice Thomas continued, “And I decide to make one of those big blowup posters of ‘Orange Prince’ and change the colours a little bit around the edges and put ‘Go Orange’ underneath. Would you sue me for infringement?,” insinuating that the changes and add-ons may be considered to convey a new “message” to Warhol’s work, under the Foundation’s proposed test. In response, Martinez emphasized that the verdict in both scenarios would largely depend on the degree of transformation in meaning or message, as well as the other factors in the ‘fair use’ analysis, such that a holistic assessment may be applied.

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The original Lynn Goldsmith photograph (left) and Andy Warhol's Prince portrait (right), as reproduced in court documents. Photo Credit:

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Tianchu Gao is an IPilogue Writer and a 1L JD Candidate at Osgoode Hall Law School.

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On March 26, 2021, the found that the famed artist Andy Warhol violated photographer Lynn Goldsmith’s copyright by using her photo of the singer Prince to create his “Prince Series.” The series was originally commissioned by Vanity Fair after it bought the license of the photo portrait from Goldsmith. until Tribute magazine featured the image, without crediting her, when Prince passed away in 2016.

The legal question at the center of the dispute is whether Warhol’s series is of Goldsmith’s original photograph. A permissible derivative creation, or fair use, requires transformative changes made to the original. The that Warhol’s works were fair because they transformed a “vulnerable, uncomfortable person” in Goldsmith’s original photograph into “an iconic, larger-than-life figure.” Judge Gerald Lynch overturned this analysis in the appellate court, claiming that Warhol’s changes—including shallower depth, brighter hues, and larger size—were mere visual flourishes. “It does not follow…that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative,” .

This is not the first time Andy Warhol was sued for IP infringement. In fact, nearly all creations by Andy Warhol are derivatives of existing images—celebrity photos, advertisements, magazine illustrations, etc.—to the extent where one could argue that the essence of Warhol’s art is . As a pioneer of , Warhol was one of the first artists to appropriate low-brow commercial imagery to challenge the notion of art as the products of geniuses’ inspirations. Following Warhol’s footsteps, artists in the pop art movement, as a form of cultural critique, deliberately mimicked machines and performed mechanic labor in their creations. In this sense, the originality of Andy Warhol’s art largely lies in the concept of appropriation, rather than any aesthetic quality. Yet, this conceptual innovation is not part of the legal test for the transformative nature of visual art.

The appellate court’s decision partly considered Goldsmith’s weakened ability to license and profit from her work used by the Warhol series. As one of the world’s most commercially successful artists, Andy Warhol had amassed tremendous fortune by making simple and repetitive changes to existing images created by other less-known artists. A great imbalance in power and wealth exists between the two parties in this case. On the other hand, Warhol’s great commercial success was the choice of the market. After all, Vanity Fair commissioned an Andy Warhol print, his signature silkscreen, instead of a creative portrait of Prince.

The Warhol Foundation plans to appeal the ruling, according to an The implication of the result will be far-reaching. If Goldsmith wins, the Warhol Foundation will probably face floods of litigations after years of diligent copying and printing by Warhol. The decision may even change the practice of many contemporary artists.��

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Its Purpose is the Protection of Personality Rights

The Act was first introduced to the Minnesota Senate in the wake of the death of world-famous musician and Minneapolis native Prince, who died unexpectedly and without a will. The PRINCE Act, as reported, is short for , had its introduction and on May 9^th, 2016. The Act reportedly required to proceed quickly through the reading but failed to pass before the end of the legislature’s session.

The Act provided a potential plaintiff with a claim for by recognizing “a property right in a person’s name, voice, signature, photograph, or likeness [“Personality Property Rights”].” ��Not only did the Act provide exclusive rights to the individual during their lifetime, it proposed the protection of those rights for a minimum of 50 years after death. After death, the rights would be transferred to an executor, administrator or heir, who would maintain ownership of the right until a successful claim of non-use for commercial purpose was made.

The Act would prohibit the unauthorised use of a persons’ protected personality property for commercial gain and provides a variety of remedies from an injunction to damages. Fair use, however, remains an important limitation. The limitation for fair use is a mirror of Title 17 of the United States Code: . As a result, any of the protected property types with connections with the news, public affairs or sports broadcast would be deemed fair use and therefore permissible under the act.

How does it compare to Canadian Law?

Currently, there are four Canadian common law provincial jurisdictions with —British Columbia, Manitoba, Newfoundland, Saskatchewan—that provide a cause of action for the unauthorized appropriation of another’s personality. In jurisdictions without a written statute, the common law tort for wrongful is used to protect proprietary rights similar to those that would be protected under the PRINCE Act had it been passed.�� The tort prohibits the of another’s name or likeness without permission. Although there is some uncertainty as to how far the tort extends, Canadian suggests that it covers at least the use of another’s personality, image and name. A successful plaintiff must prove the defendant ��their personality for commercial gain.

Notably, Canadian common law also protects one’s exclusive right to market his/her own personality. A plaintiff can recover damages resulting from an infringement, even without proving intentional appropriation for commercial gain.

Similar to the proposed PRINCE Act, the tort of misappropriation of personality has built within it a public interest limitation. In [Gould Estate] the plaintiff’s appropriation of personality action failed because the court deemed the impugned use of Glenn Gould’s photographs and interview material as a permissible use in the interest of the Canadian public. Consequently, it appears that thoughts, ideas, newsworthy events and matters of public interest are exempt from the tort of misappropriation of personality.

The Canadian common law and the PRINCE Act diverge on the topic of posthumous protection. The of British Columbia, Newfoundland and Saskatchewan provide that the common law protections on personality rights extinguish upon the death of the person holding those rights (Manitoba's , however, lacks such a provision). Despite three of four provincial acts prohibiting the survivability of the right, in the Ontario Court of Justice held that such an intangible proprietary right was akin to copyright and therefore should be devisable to heirs. The decision was later , albeit on different grounds. As a result, there is still much confusion as to whether the proprietary rights protected by the tort of appropriation of personality are indeed devisable and, if so, how long after death the rights��would survive.

Difficulties ahead

It is unclear how broad in scope the fair use exemptions with be under the��PRINCE Act, if it is eventually passed. The courts may gradually carve out its scope on a case-by-case basis. The��definition of fair use in the PRINCE Act and the public interest limitation in Canadian common law seem to protect altruistic uses in which the object is to provide the public with information. It will be particularly interesting to see how the court handles situations in which such altruistic pursuits lead to material commercial gain by another.

Olivia McKenzie��is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

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Artist has developed his artistic career by appropriating imagery and adding his own elements, presumably as a form of social commentary. Prince images from plaintiff��Patrick Cariou’s Rastafarian photography. The scanned pictures were printed directly onto canvas and were altered by Prince’s addition of new elements. An example of Prince’s work using Cariou’s photography may be seen .

Prince claims that the images used are merely while Cariou’s lawyer maintains that Prince ��This distinction is important because it goes to the determination of Fair Use, which is the key issue in determining��the legality of appropriation art.

The issue of whether Prince’s works are transformative is essential to the existence of ; however, this is a subjective determination. The of an artwork is analyzed through observations regarding how the artist’s contributions have varied the original. Further, to be transformative, the additions some form of criticism or commentary on the original work.

The United States District Court decided against Prince. His works were found not to be transformative and therefore do not quality as��fair use. It that the court focused largely on Prince’s inability to explain effectively how his additional elements generated any further meaning or provided any commentary on Cariou’s originals. Furthermore, Prince did not adequately articulate any particular meaning for his appropriated works. This finding emphasizes the subjective element involved in fair use rulings and critics of this decision are quick to point to other that are able to find a transformative element without any direct commentary on the original work. In any event, Prince has appealed the District Court’s decision and a ruling will likely be heard early this year.

This appeal should be helpful in clarifying some of the surrounding art and copyright in light of modern technological developments. In addition to changing notions of what constitutes art, new are providing new mediums for creativity. The Internet provides users with countless images that they can easily download and save for various creative purposes.

This case also illustrates some of the that can arise when applying legal principles to the realm of art and creation. It has been argued that what is considered transformative to an artist cannot be reconciled with legal concepts.

Nora Sleeth is a JD candidate at Osgoode Hall Law School.

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