On May 18, 2023, the United States Supreme Court ruled in favor of famed rock photographer Lynn Goldsmith against the Andy Warhol Foundation for the Visual Arts, Inc.’s (AWF), in a long-awaited decision impacting fair use under Section 107(1) of the Copyright Act. The opinion written by Justice Sotomayor, in which Justices Thomas, Alito, Gorsuch, Kavanaugh, Barrett and Jackson joined, held that the “purpose and character” of AWF’s commercial use of Warhol’s portraits of Prince shared the same commercial purpose of the original photograph taken by Ms. Goldsmith and, as a result, did not constitute fair use. The Court’s decision affirmed the ruling of the Second Circuit Court of Appeals, which held that the Warhol work was derivative of the original, and noted that “the new expression may be relevant to whether a copying use has a sufficiently distinct purpose or character” but that factor was not dispositive by itself. The Court found that the Warhol Foundation’s licensing of the Orange Prince to Conde Nast did not have a sufficiently different purpose as the Goldsmith photograph because both were “portraits of Prince used in magazines to illustrate stories about Prince.”
The case concerns an orange silkscreen portrait of the artist formerly known as Prince created by Warhol, referred to as “Orange Prince,” which was created by Warhol from a black-and-white photograph taken by Goldsmith to illustrate an article in Newsweek. In 1984, Goldsmith gave Vanity Fair permission to use the photograph in a new commissioned purple silkscreen portrait by Warhol that appeared in the magazine’s November issue. Unbeknownst to Goldsmith, Warhol also created fifteen other works based on the photograph, including Orange Prince.
In 2016, Vanity Fair licensed Orange Prince from AWF for the cover of their commemorative issue about Prince. Goldsmith was not paid or credited for this use. When Goldsmith issued a cease and desist letter claiming copyright infringement, AWF brought a declaratory judgment action asserting that its use of Goldsmith’s photograph in Orange Prince was protected under the Copyright Act’s fair use doctrine. While the District Court ruled in favor of AWF holding that the minimal modifications to the original Goldsmith photograph were transformative, the Second Circuit reversed. The Second Circuit held that the fair use factors under Section 107 of the Copyright Act weighed in favor of Goldsmith, stating “the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material. . . . While we cannot, nor do we attempt to, catalog all of the ways in which an artist may achieve that end, we note that the works that have done so thus far have themselves been distinct works of art that draw from numerous sources, rather than works that simply alter or recast a single work with a new aesthetic.” Following the Supreme Court’s decision in 2021 in Google LLC v. Oracle America, the Second Circuit withdrew its opinion and issued a slightly amended opinion. The Supreme Court granted certiorari in March 28, 2022, presenting the question of whether a work of art is “transformative” for purposes of a fair use defense under the Copyright Act (17 U.S.C. § 107), “when it conveys a different meaning or message from its source material. . . .”
How the Court’s Decision Impacts the Application of the Copyright Fair Use Defense
Fair use is a statutory defense to copyright infringement that allows one to use copyrighted materials without the permission of the rightsholder under certain limited circumstances. Section 107 of the Copyright Act provides that “fair use of a copyrighted work … for purposes such as criticism, comment, news reporting, teaching … scholarship, or research is not an infringement of copyright.” The statute sets forth the following four factors for courts to weigh in determining whether a use of a protected work constitutes a fair use:
- The purpose and character of the use, including whether the use is commercial in nature.
- The nature of the copyrighted work.
- The amount and substantiality of the portion used in relation to the copyrighted work.
- The effect upon the potential market for or value of the copyrighted work.
In the Warhol case, the Court focused only on the first factor and whether AWF’s copying of the Goldsmith photograph was of a different purpose and character of use, including whether the use was commercial in nature.
Since the Supreme Court’s decision in Campbell v. Acuff-Rose Music, the test for determining the first factor is whether the new use of the original work “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message” or “transforms” the original work. The more transformative a work is, the more likely it is to be considered fair use.
AWF argued that its use of Orange Prince was transformative because Warhol conveyed a different meaning or message than Goldsmith’s photograph. In particular, AWF contended that Goldsmith’s photograph was intended to highlight Prince’s vulnerability, while Warhol’s piece depicted Prince as an iconic, larger-than-life character.
However, the Supreme Court rejected these arguments, holding that when an original work and secondary use share the same or highly similar purposes, and the secondary use is commercial, the first fair use factor is likely to weigh against application of the fair use defense. In this case, Goldsmith’s original photograph and the AWF’s allegedly infringing use shared the same purpose — both illustrate a Vanity Fair magazine story about Prince. AWF’s use was commercial because AWF licensed the artwork for a fee. Justice Sotomayor noted that Campbell v. Acuff-Rose Music could not be interpreted to mean that fair use defense could be applied to works so broadly as to include works that share substantially the same purpose and use, including the commercial nature. “Otherwise, ‘transformative use’ would swallow the copyright owner’s exclusive right to prepare derivative works, as many derivative works that ‘recast, transfor[m] or adap[t]’ the original, add new expression of some kind.” The Court held, as a result, that this first “fair use” factor weighed in favor of Goldsmith and affirmed the Second Circuit’s ruling.
In an acrimonious dissent, Justice Kagan and Chief Justice Roberts criticized the majority’s “lack of appreciation” for the way Warhol’s works differed from Goldsmith’s photograph and noted that: “In a recent decision, this Court used Warhol paintings as the perfect exemplar of a ‘copying use that adds something new and important’—of a use that is ‘transformative,’ and thus points toward a finding of fair use.” The dissent further accused the seven-Justice majority of inhibiting the ability of writers and artists to draw upon prior works and warned that the decision “will stifle creativity of every sort. It will impede new art, music and literature. It will thwart the expression of new ideas and the attainment of new knowledge. It will make our world poorer.”
There is no doubt that appropriation artists and content creators will need to take the Court’s decision in the Warhol case into account when assessing whether a proposed use of an existing protected work constitutes a fair use. Creators and clearance counsel will need to look beyond the question as to whether the secondary use is transformative and conveys a new meaning or message, and consider each of the fair use factors, including whether the intended use has the same or similar purpose to that of that of the original and whether such use is commercial in nature.
Still, it is important to note that the Supreme Court was careful to limit its decision to the specific context of AWF’s commercial use of “Orange Prince” by licensing it to Vanity Fair for a fee. This means that the first fair use factor is not dispositive and that creators can still argue that a work is transformative to the extent a new and creative use differs from that of the original work.