Warhol and Prince Case Could Shake Up Copyright Law

which I was in the eighties and no longer. Well only on Thursday night, the justices were considering whether Andy Warhol was within his rights to create fifteen silk screens of prints using a copyrighted photograph of the musician by rock and roll photographer Lynn Goldsmith. In trying to decide if Warhol's work had meaningfully transformed the photograp f the

Justice is posed hypotheticals. Let's say that I'm also a Syracuse fan, and I decided to make one of those big blow up posters of orange prints and change the colors a little bit around the edges and put go orange underneath. Would you sue me? But some of the justices, including the Chief Justice, pointed out the transformative effect of

Warhol's work. It's not just that Warhol has a different style, is that Unlike Goldsmith's photograph, Warholes sends a message about the deep personalization of modern culture and celebrity status and the iconic and it goes through the different features to support that. So it's not just a different style, it's a different purpose. One is the commentary on modern society. The other is to show what Prince looks like. My guest is intellectual property litigator Terence Ross, a partner caton

uchun rose Men, described the issue here. This appeal to the Supreme Court rises out of a lawsuit for copyright infringement filed by Lynn Goldsmith against the Andy Warhol Foundation. Um Lynn Goldsmiths was relatively famous photographer from the seventies and eighties. UM famous for her photographs of rock stars. She has photographed I think I saw more than one

hundred album covers of rock bands, which is incredible. And she was commissioned by Newsweek, which was doing a piece on a young and up and coming rock star by the name of Prince. She was commissioned to do a photograph of him that would be used on the cover, and she didn't absolutely iconic facial portrait of him um which really demonstrates the creativity of photography. George shows is a very, very vulnerable young person who's obviously afraid of

the limelight at that point of his career. Now, the curious thing the photo was not actually used by Newsweek in his Magnanique magazine story, opting instead for live photos of his live performance, but it was widely regarded as a great photograph of the early eighties. So move forward time in Prince has become a significant rock star and celebrity in his own right, really a superstar of the

music scene. And Vanity Fair magazine commissioned Andy Warhol to do an illustration for the cover of its magazine relating to the article it's doing on Prince, and they expressly licensed this photo from Lynn Goldsmith. The Prince give it to Andy Warhol and say we want you to use this photograph from Lynn Goldsmith as the basis for your illustration, And without apparently Vanity Fair or Wynn Goldsmith knowing it, he goes out and does a whole series of brightly

colored silk screens based on the photograph. And when I say based on it, it really takes the photograph and simply makes some changes to it, in particular adding color. The magazine Vanity Fair comes out with the color shot that Lynn Goldsmith is expecting to see there. Andy Warhol then dies a couple of years later, thinking early, and all of his rights and assets passed to the Andy

Warhol Foundation. A number of years later, Vanity Fair after Prince dies, wants to sort of revisit this famous Vanity Fair piece that it did and asked the Andy Warhol Foundation for permission to use one of these silk screens of Brents that Warhol had done in eighty four, and they put it on the cover of Vanni magazine. This is two thousand six. Lynn Goldsmith sees it on the news stand and she says, wait a minute, I didn't

license that, and calls up Vanity Fair. They say, oh, um, well, we got it from the rights from the Andy Warhol Foundation, which says that they owned the copyright. And so Lynn Goldsmith calls up the Andy Warhol Foundation, which takes it a very aggressive position, insisting that they've got the copyright on it, that she has no rights on it, and they're not about to pay her anything by way of

the license. Te and indeed, they seem to be so confident in their positions that they go to court and filed declaratory judgment lawsuits saying, we're seeking a declaration that we have not infringed upon Lynn Goldsmith's photograph based on the doctrine of fair use, which is a complete defense to copyright infringement. The trial court in New York agrees with them and grants them summary judgments, saying that the fair used defense protects these Andy Warhol Folk screens of Prince.

Lying Goldsmith takes it up on appeal to the Second Circuit, and the Second Circuit says, wait a minute, what are you talking about. Fair use does not cover this, and they rule in favor of Lying Goldsmith, going to the extreme extent of saying that summary judgment should be granted to her that she wins, not even sending it back for further reconsideration her jury trialgy She just wins um and the Warhol Foundation has now appealed that decision from

Second Circuit to the Supreme Court. Supreme Court held very interesting and lengthy arguments on Wednesday. Is the question whether Warhol's work transformed Goldsmith's photograph? Well? Is that simple? To understand what's going on here, what has to understand a little bit about the fair used defense. The fair used defense statutory written into the Copyright Act. It says that there shall be no copyright infringement if secondary work is

taking advantage of this fair used defense. The fair used defense says courts should consider four non exclusive factors. The very first factor, and what's widely regarded as the most important, is for the court to look at the purpose and

character of the secondary use. There are three other factors that all have to be considered, but that's usually considered the most important, and in a very famous decision by the Second Circuit a few years ago, Second Circuit per Judge Leavell said that the key to this one factor is whether or not the secondary work somehow transformed the original work. And the Supreme Court has since bought into this transformative use test and is now part of the law,

even though it's not in the statute. But I would say that the issue up on an appeal here spring courts is not whether or not that's the law. It's not whether or not the work is transformative. The question really is what does it mean? What is required for work to be transformative How do you transform a work in such a way that the fair use defense applies.

There are many transformative uses that do not constitute fair use, and so the key here at issue for the Spring Court is to give some sort of guidance, some sort of definition to low courts as to what constitutes a transformative use that is entitled to take advantage of the fair use defense. At one point, Justice Alito question whether judges were qualified to focus on the meaning of the work or was that a job that should be left

to art critics. And I remember that the Second Circuit criticized the district court judge for being an art critic. But how do you get out of this without being somewhat of an art critic. Well, it's a great question.

And the Second Circuit, in saying that district court judges trial judges are not allowed to be art critics, are not out to sit in judgment on the artistic merits of work, take advantage of a long history going back over a hundred years in that court in the Second Circuit with respect to artwork, music work, dramatic works such as plays and adels of saying that trial courts judges

cannot be critics of the work. And so that's a very well grounded position to the Second Circuit took the issue you raises a very good one is well, if

that's true, what do you do? And I think it's somewhat enlightening that the response that the Council for the Andy Warhol Foundation gave to that question from Alito is that the judge should look at the work and and decide whether or not it is transformative or not, in essence betting the farm on the argument that the Second Circuit, in this long history of judges not being art critics, is just wrong a matter of law. It's a very

strong and aggressive position that the Warhol Foundation. I mean, you have to remember here, Jude, what justice a leader started off. That colloquy was saying was, well, if Mr Warhol were alive today, what would he say was the meaning of this work that transformed it? He wouldn't tell you, though, right? Can't you actually right? And neither would counsel. Warhol Foundation essentially says, well, Mr Warhol's testimony is not available, basically,

but it wouldn't have any meaning. Even if it did, It's up to the judge to look at it, which kind of surprised me which side did better in the rural arguments. Would you say so? I was a little bit taken aback the extent to which you could place certain justices on one side or the other. We've talked about this before, June, but the passing of Justice Ginsburg and the retirement of Justice Bryer has transformed this court with respect the copyright law. Those two justices were the

oposide ends of the spectrum. Justice Ginsburg taking a position that copyright should be strongly enforced, a really strong advocate for strong, vigorous copyright protection, and Justice Brian was at the other end of the spectrum, opposing strong copyright protection. And so we were all wondering in the copyright community what this new court would um do in this really important case. And keep in mind, June, this is the first time since that the Supreme Court has taken up

a fair use question. And so it's not just a really important notal point in copyright law that we're faced with, but a point in time in which we don't have the two principals advocates for the competing positions on the Court anymore. And yet, notwithstanding that, it seemed that there were justices willing to step up and fill those rules. So on my scorecard here I had Justice Kagan and Chief Justice roberts in the camp that would say that

this was a fair use. Adjustice roberts In. Tickler just came flat out and said, this is a different purpose. The Warhol Prince had a different purpose from the photo. He said, Warhol sends a message about the de personalization of modern culture and celebrity status for all practical purposes, that he's voting in favor of the Warhol Foundation. Hagan's remarks took a similar approach. And then on the other side, I had what I think are for justices for the

position that this is not fair use. Justice Thomas, Justice Alito, Justice Barrett, and Justice Cantanji Brown, all of whom posed hypothetical to the Council for the Warhol Foundation that sort of took this whole transformative use a new meaning test to its ridiculous limits. Justice Alito, i guess, asked the question, well, if you'd simply change the photos so that Prince was smiling, would that be a transformative use? Because it changed the meaning from a vulnerable young rock star to a happy

rock star, would that be good enough? Similar Justice Thomas, he asked a really interesting question, what if all you had done was colorized the edges of the black and white photograph of prints such they were, they were the colors of Syracuse University, and you were intending to send a commentary on supporting the sports teams at Syracuse University.

These sorts of hypothetical posts are typically intended by judges to point out the ridiculousness of somebody's position, and so the fact that those four justices all went that route with sort of extreme hypotheticals sent a message to me that they are leaning towards this not being a fair youth. I will point out the Warhol Foundation to the extent I have this right at this point of school, I would have to run the tables on the other three

to get there. It's a very challenging case. Both sides say the potential stakes here are enormous, not just on the art world, but on publishing, on movies and so on. Are they exaggerating or do you agree with that? Absolutely? This is going to be one of the most significant decisions with respect to secondary works of all time in

Anglo facts and law. At issue is control of the original work by the artists for the original work, and to the extent that this is held to be not a fair use, I think the critics are correct that that will mean that the original artists have much more control over their works. The question is whether or not the next step in that argument is correct. Does giving the original artists more control over the work inhibit future creativity? And as we heard in the or argument, there was

a lot of discussion of licensing. Doesn't the right to license these original works to make changes allow you to still engage in level of creativity? This was not said in court, but look, you had very wealthy entities involved here. You had Vanity Fair, Andy Warhol. They clearly had the wherewithal to license the photograph again from Lynn Goldsmith in order to do these sixteen chlorized folk screens, but they

deliberately chose not to. It strikes me that Lynn Goldsmith was entitled to some benefit for her creativity in the first place, which she was being deprived of. So yes, there is going to be a change in the bargaining power amongst artists as to secondary uses of original works, whether or not stops creativity. And I just don't think so, Thanks so much, Terry. That's intellectual property litigator Terence ross A partner Captain Eugen Rosenmanton. The Solicitor General's Office remains

the diversity pipeline for Supreme Court advocacy. The office, along with attorneys from state and local governments, sent the majority of women to the lecture and last term. In total, twenty three female government attorneys argued during the term, while law firms and academia sent fifteen. Joining me is Bloomberg Law Supreme Court reporter Kimberly Strawbridge Robinson who keeps track

of the numbers. So we've talked before about the number of men arguing at the Supreme Court vastly outnumbering the number of women. Four women are arguing in the October session. How does that stack up? Is that about the same as usual or better than usual? Well, it's about the same as usual. So typically we see between twelve of arguments at the Supreme Court being made by women. This time, you know, four out of twenty two is eighteen percent. So it's right in the middle of what we're typically

used to. But I think you know one thing to notice we we talk about um women, I think you know, to some expense, it's low hanging fruit, but it really signals a lack of diversity across the board, you know, not just with gender, but with race, with you know, attorneys with disabilities, with military service, just all kinds of this diversity that we really don't see reflected in the advocates who argue before the Supreme Court. Two of the women who argued in the October session are in the

Solicitor General's office. Tell us about the role of the Solicitor General's office in getting women to the podium, Sure says, the solicitor General's Office is the federal government's top lawyers at the Supreme Court. They are not only argue in cases that the federal government is officially involved in as a party, but they argue a lot of cases as sort of friends of the court. And so that office

isn't you know, staffed by that many attorneys. So getting into that office almost guarantees you, you know, multiple Supreme Court arguments in a term, which is significant. Is something that's really hard for even really established attorneys to do

in private practice. So what that does is it allows the attorneys who are there, who are often relatively early in their careers to kind of build this critical mass of Supreme Court cases that they can take out to the world, and so people will hire them and we'll be seeing them back at the Court again and again

for years to come. So, you know, the makeup of the Solicitor General's Office is really really important in establishing, you know, diversity in the future of the Supreme Court bar The current Solicitor General is a woman, the second to be Solicitor General the last being now Justice Elena Kagan. So is the office making an effort to get more women and more minorities into the office. Well, we don't know, So the Solicitor General's Office hasn't officially said that, you know,

that's an effort that they're trying to make. But we have seen kind of a shift in the demographics of that office during the Trump administration, not really due to you know, the d o j's own sort of policies or anything like that, but just sort of the timing of when people come and go from the office. We saw a number of female assistant Solicitor Generals leave the office, and we saw a real shift in the number of

women who were arguing at the court. There have been a number of women who have been hired under the Biden administration. I believe the three most recent hires have all been women. So they haven't made an official statement that that's something that they're looking for, but it sure those seems to show in the numbers that they have not just with women, but with also with different kinds

of diversity, um, in particular racial diversity. So you wrote about Yarra Dubin, who recently joined the Solicitor General's office. Do lawyers often leave law firms for a time to do a stint in the solicitor General's office and then return, Yeah, so, I mean it varies a little bit, but I would say in general, you're looking at somebody who um often

comes from private practice. You know, a firm that has you know, an appellate and Supreme Court practice, or a boutique firm, somebody who has often clerked at the Supreme Court before, and they will go to the Solicitor General's Office, which is a really highly thought after position, and typically stay there about five years before heading back out to private practice. And we really see that that gives them the ability to argue you know, ten or more cases.

It doesn't sound like a lot. But when you look at the Supreme Court, they only hear about sixty to seventy cases each term, So coming out with ten cases it's a really big deal. It's a good amount of experience to then go out and convince clients that you know, you have what it takes to argue in front of the justices and and you can do the job for them. Do the justices treat lawyers who are new to the court, first timers with sort of more kindness than they would

other lawyers, or it doesn't matter. Well, the Supreme Court is usually very respectful of the advocates. You know, again, we're talking about an appellate argument here, so it's not as if people are getting into yelling matches. But it did seem, particularly with the Steuben's argument, that the justices were being a bit more careful with her. We still know, however, saw some pretty tough questioning on her part, trying to

pin down the federal government where they were. But after that, you know, two of the justices that thank you so much. That was very helpful. Something that you don't always see a repeat advocate, something you really rarely see whenever somebody that they've seen up there before. So I know you you've done the numbers. How many women from private practice argue at the Supreme Court or this term haven and how many women from the Solicitor General's office. Well, this

term it's just haven't half. You know, we just kicked off this term in October and we only had eight cases. So you know, two of the women have come from private practice too, from the Solicitor General's office. But I suspect those numbers will shift if history is any guide. You know, in the past, we've seen you know, attorneys not just from the Solicitor General's office but from other governments like state, muncile government tend to provide the majority

of women attorneys who argue cases at the court. The last term is a good example. Last term, government entities spent twenty three female lawyers and all other entities, law firms, academia, public interest groups sent just fifteen. So it's really important, you know, to pay attention to the composition of those government groups, um and kind of understanding what the future of the Supreme Court bar is going to look like. The Alabama voting case had a different kind of cross

section of lawyers. It did. Yeah, that was a case where it was unique, UM in several respects. First, there were four different attorneys who were arguing the case. Typically there's only two, maybe three if the federal government is arguing.

Before was quite a lot. But when we look at the attorneys who were arguing, it was unique in the sense that there were two attorneys of color, two women arguing, including UM, as you mentioned the US Solicitor of General Elizabeth Blagger, who was just the second woman to hold

the office. And you know, we saw two first timers who were making their Supreme Court debut, which is somewhat unique, and that most of the cases at the Supreme Court are handled by people who are considered veterans as who have igory five or more cases before the court before. So it was really a typical in the sort of representation UM that was arguing that case. And of course, you know, that was an important case to have that kind of representation because it was a case about voting

rights for minority voters. So UM, I think one that that we would expect to see that sort of a typical representation. Thanks so much, Kimberly. That's Bloomberg Law, Supreme Court reporter Kimberly Strawbridge, Robinson, and that's it for this edition of The Bloomberg Law Show. Remember you can always get the latest legal news on our Bloomberg Law Podcast.

You can find them on Apple Podcasts, Spotify, and at www dot bloomberg dot com, slash podcast, slash Law, and tune into The Bloomberg Law Show weeknights at ten pm Eastern right here on Bloomberg Radio. I'm June, so you're listening to Bloomberg