US Supreme Court's Andy Warhol decision keeps 'fair use' questions alive

People are reflected on a portrait of U.S. artist Andy Warhol during an exhibition in Madrid
People are reflected on a portrait of U.S. artist Andy Warhol by Timm Rautert during the exhibit "Warhol on Warhol" at Madrid's Casa Encendida Cultural Centre in this November 23, 2007. REUTERS/Susana Vera/File Photo

May 22 (Reuters) - The U.S. Supreme Court's long-awaited ruling in a case about Andy Warhol's art may have raised as many questions as it answered about the controversial copyright doctrine of fair use, legal experts said.

The high court on Thursday affirmed that Warhol's painting of the rock star Prince did not make fair use of the Lynn Goldsmith photo it was based on, allowing her copyright lawsuit against Warhol's estate to continue.

The limited decision reconfigured the fair-use test, but it provided less clarity than some had hoped for about when and how the doctrine should apply.

The result, said Harvard Law School professor Rebecca Tushnet, is "extremely unfortunate for creators because it doesn't provide guidance for future cases."

Fair use promotes freedom of expression by allowing the unauthorized use of copyright-protected works under certain circumstances. In deciding when it applies, courts have largely focused on whether a work is "transformative": if it adds new artistic expression like parody, education or criticism.

But Justice Sonia Sotomayor's majority decision stressed another consideration -- the commercial purpose of the Warhol Foundation's use of Goldsmith's work. The court's longtime focus on artistic transformation had threatened to "swallow" the right of copyright owners to control who makes derivatives of their work, the court ruled.

Some legal observers were concerned that the justices had not provided more detail about what lower courts considering appropriative art should do.

"It's very difficult to understand how this ruling changes the fair use analysis with respect to the creation and sale of original art works employing appropriative practices," said Megan Noh, co-chair of the art law practice at Pryor Cashman. "It doesn't provide the clearer guideposts that attorneys representing visual artists, galleries, and collectors were hoping for."

The court confined its focus to the licensing of Warhol's painting for a magazine issue commemorating Prince, as opposed to the broader question of whether Warhol's art itself violated Goldsmith's rights.

The majority decision says courts weighing fair use should ask if it is "realistic to think that somebody could have used the plaintiff's work instead of the defendant's work for that use," said Joe Gratz, a partner at Morrison & Foerster.

It was "pretty clear" that a magazine could license Goldsmith's photo instead of Warhol's painting to depict Prince, which is "very different from most fair-use cases," Gratz added.

The last time the Supreme Court ruled on fair use in art was in 1994, when it decided that rap group 2 Live Crew's parody of singer Roy Orbison's "Oh, Pretty Woman" made fair use of the popular 1960s song.

It may take many more years for the next case to arrive, said Bruce Ewing, a partner at Dorsey & Whitney who called Sotomayor's decision "an attempt to provide clarity and practicality to a very difficult area."

Fair-use cases are "so fact-specific and so dependent on a lot of different moving parts that I think it's going to be a while," Ewing said.

Reporting by Blake Brittain in Washington

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets, for Reuters Legal. He has previously written for Bloomberg Law and Thomson Reuters Practical Law and practiced as an attorney. Contact: 12029385713