The late musician Prince shocked the world in 1993 by dropping his name and adopting a
symbol as his personal moniker. So it is ironic that a landmark case before the U.S. Supreme
Court this term will forever be known as the “Prince case.”

In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, the Court finds itself
at the intersection of pop culture and constitutional law. At issue is when the “fair use” exception
applies to the copyright law requirement to obtain permission before using pre-existing works.
In this case, the pre-existing work is Lynn Goldsmith’s black-and-white photograph of Prince.
Goldsmith licensed the photograph to Vanity Fair magazine in 1984 for $400 and a photo credit.
Vanity Fair gave the photograph to Andy Warhol to create an illustration for their 1984 cover
story on Prince. The resulting “Prince Series” includes sixteen silkscreen paintings of Prince
nearly identical to the photo, with splashes of color and other elements typical of Warhol’s pop
art style.

Then two events occurred that paved the road to the Supreme Court. Warhol died in
1987, leaving copyright to the Prince Series in the hands of the Andy Warhol Foundation for the
Visual Arts, Inc. In 2016, Prince died. To commemorate the artist’s death, Vanity Fair
requested permission from the Warhol Foundation to use a different image from the Prince
Series. By this time, the Warhol Foundation had grown into a lucrative licensing machine,
raking in millions in licensing fees for others to use Warhol’s works. They charged Vanity Fair
$10,250 for a single image from the Prince Series. Goldsmith got nothing – no licensing fee, no
photo credit – so she sued the Warhol Foundation for copyright infringement and back licensing
fees.

The Warhol Foundation argued that Warhol’s creative contribution transformed the
Prince photograph into a new work conveying Warhol’s meaning and message. A comparison of
the two works reveals slight aesthetic differences, but the question is whether these differences
are enough to meet the legal test for “transformative fair use.” This test asks questions like:

Did the artist take more than necessary to create the new work? Courts like to see artists
take the minimal amount necessary. While the Warhol Foundation argued that Warhol only took
Prince’s face, that was basically the entire photo.

What is the purpose of the new work? Non-commercial uses are generally considered
fair use. Due to the licensing fees, both works in this case are commercial.

Was it necessary to take this exact work to convey the artist’s meaning or message? On
this point, the Court distinguished between Warhol’s 1962 painting Campbell’s Soup Cans and
the Prince Series. The former is fair use, because it was necessary to portray the exact cans as
they appear on the shelf to make the point about mass production and consumer culture. This is
what makes parody fair use, too. You can’t get the joke if you don’t know what the joke is
about. To the contrary, even if the Prince Series is viewed as commentary on celebrity status, it
was not necessary to use Goldsmith’s photo to make the point.

The underlying goal of copyright law is incentivizing creation, which is presumed to be a
positive for society. This is accomplished by protecting creative rights, but not to an extent that
hinders creative expression. It is a delicate balance that has makes possible cover bands, book-
to-film adaptations, spin-off series, music sampling and countless other creations based on earlier
works. Even Warhol appeared to understand this system. Unlike his foundation, Warhol paid
for the photos he used, or photographed his subjects himself. So why all the fuss? Is denying
the benefit of fair use to the Prince Series a threat to creation, or a threat to the bottom line of the
Warhol Foundation?

This case is only made more difficult by the evolving nature of creativity. We live in a
mashup world that is only getting mashier with every new innovative tool to unleash our
creativity. You can see this in the deluge of digital works flooding the Internet. Where is the
line between copying and inspiration? Does today’s generation see the Prince Series as a
revolutionary art form, or nothing more than a 1980’s version of photo editing they could
recreate in seconds on their phone? What happens when the author is a computer program, or
the canvass is the metaverse?

Despite the serious issues at play, I do hope the “Prince case” brings much needed levity
to law school classrooms everywhere. It certainly did at the Supreme Court’s oral argument last
month. Justice Thomas, long known for his reticence, announced that he was in fact a Prince fan
in the 1980’s.

“No longer?” asked Justice Kagan.

“Only on Thursday nights,” he replied with a chuckle.

We need more chuckles at all levels of government, especially between public servants
with views as divergent as Elena Kagan and Clarence Thomas. The Court will rule before the
term ends in July. While the outcome is a tossup, I do know one thing. I want Justice Thomas to
write the opinion – on a Thursday night.