Canadian copyright law likely to be influenced by Warhol decision

By Tony Poland, LegalMatters Staff • A U.S. Supreme Court (SCOTUS) ruling that saw the Andy Warhol Foundation lose its copyright fight with a celebrity photographer may have “some persuasive authority in Canadian courts,” says Toronto intellectual property lawyer John Simpson.

On May 18, SCOTUS upheld a lower court’s decision that found Warhol’s work, based on a Lynn Goldsmith photo of rock icon Prince, did not constitute “fair use” under copyright law.

“Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists,” the Court stated. 

Simpson, principal of IP boutique Shift Law Professional Corporation, says the case garnered significant attention from lawyers, scholars and artists alike and will likely continue to attract attention north of the U.S. border.

“It should be noted that it has been almost 30 years since the U.S. Supreme Court has pronounced on fair use so this is a significant ruling,” he says. “I expect Canadian courts to consider this decision at some point in the future. It will surely be raised by copyright lawyers in Canada in relation to fair dealing which is our version of the U.S. doctrine of fair use.

“I think SCOTUS’s application of fair use to the facts, in this case, will be persuasive to Canadian courts when they have to apply fair dealing to similar facts.”

Warhol commissioned to create Prince image

Warhol was commissioned by Vanity Fair magazine to create an image of Prince for a 1984 article. A 1981 photo taken by Goldsmith was used as the source and she received credit.

Warhol also created silkscreens and pencil illustrations based on the original photo, most of which were not authorized by Goldsmith who only found out about the unauthorized works after Prince’s death in 2016.

SCOTUS rejected the argument by Warhol’s estate that the portrait created using Goldsmith’s photograph should be considered the work of Warhol alone.

“To hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals,” Justice Sonia Sotomayor wrote on behalf of the majority.

Simpson, who was not involved in the case but comments generally, tells LegalMattersCanada.ca that the central issue in the case was whether Warhol’s use of Goldsmith’s original photo in creating the unauthorized works was sufficiently “transformative” to avoid liability for copyright infringement.

Laws deal with how original work can be used

He explains that Canada and the U.S. each have copyright laws that deal with how an original work can be used.

“A big difference between fair use in the U.S. and fair dealing in Canada is that fair dealing is restricted to certain prescribed purposes, such as research, private study, education, parody or satire, criticism or review, and news reporting,” Simpson says. “In the United States, fair use applies to any number of uses as long as they are deemed to be ‘fair.’”

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Transformative use is a type of fair use where someone takes a copy of an original work and alters it to make something new, he says. While transformative use is not, in and of itself, a prescribed form of fair dealing in Canada, it is arguably what happens when a work is used for the purpose of parody which is a prescribed form of fair dealing. So I believe the same considerations would apply in parody case here,” says Simpson. 

“What was fatal to this particular claim of fair use was the fact that the allegedly infringing work was competing directly with the original work,” he says. “If there is one takeaway from this decision, it is that if you are going to claim fair use or fair dealing for the purposes of parody, you are very likely going to have to prove that your work is not going to be a substitute for the original work in the marketplace.”

Simpson says ultimate use is an important consideration when taking someone’s work and creating a new one, citing Warhol’s famous images of the Campbell soup cans.

‘Classic example of transformative use’

“That would be a classic example of transformative use because he took them from just a purely commercial thing, a label on a soup can, into a work that stands as cultural commentary,” he says. “He is not selling anything with Campbell soup labels on it. However, with the Prince image, it was competing directly with the original work. It was created for exactly the same purpose as the original, to depict Prince in a magazine.”

Warhol’s use of the Goldsmith photo in the Prince case should not be seen in the same light as some of Warhol’s other works, says Simpson.

“The purpose of Campbell’s logo is to advertise soup. Warhol’s canvases do not share that purpose. Rather, the Soup Cans series uses Campbell’s copyrighted work for an artistic commentary on consumerism, a purpose that is orthogonal to advertising soup,” the SCOTUS majority stated.

 Simpson says “I believe the outcome of the Warhol case would have been the same if decided in Canada, though a Canadian court would get to that result through a slightly different analysis.”