The Supreme Court Strikes a New Chord in Andy Warhol Foundation v. Goldsmith

In a case involving a 1980’s rocker, an iconic figure in the pop art movement, and a celebrity photographer, the Supreme Court recently tweaked the four-part copyright fair use test in its decision in Andy Warhol Foundation v. Goldsmith. The shift in fair use, though subtle, may have profound implications for artists who build upon existing creative works—and, of course, businesses and persons who may want to use resulting copyrighted material.

Background

In 1981, celebrity photographer Lynn Goldsmith photographed the then up-and-coming musical artist, Prince. Goldsmith agreed to a “one time” license of her black and white portrait photo to Vanity Fair, which planned to publish a story about Prince. Vanity Fair then hired Andy Warhol, who used Goldsmith’s photo to produce a silkscreen entitled “Purple Prince,” which was published alongside Vanity Fair’s 1984 article about the musician. So far, so good.

However, unbeknownst to Goldsmith and despite the fact that Goldsmith’s license was for one time only, Warhol created fifteen additional works from her original source photograph. These works are collectively known as the Prince Series. One of these additional works, an orange silkscreen portrait, entitled “Orange Prince” is the subject of this lawsuit.

After Prince died in 2016, Conde Nast, a global mass media company, contacted the Andy Warhol Foundation (AWF) about the possibility of reusing Purple Prince for a commemorative magazine. AWF informed Conde Nast about the additional works in the Prince Series, and Conde Nast paid the Foundation $10,000 to license Orange Prince. Goldsmith received nothing, not even a source credit.

The central question in the ensuing lawsuit was whether Warhol’s Orange Prince infringed on Goldsmith’s copyright in her black and white photo, or whether Warhol’s silkscreen was fair use. The district court in the Southern District of New York initially sided with Warhol, holding that Warhol’s work was “transformative,” but the Second Circuit reversed and rejected the notion that the silkscreen was a transformative fair use.

The Four Notes of Fair Use

To determine whether a particular use is “fair,” the federal copyright statute sets out four factors that must be considered:

• the purpose and character of the use;
• the nature of the copyrighted work;
• the amount and substantiality of the portion used; and
• the effect of the use upon the potential market for the copyrighted work

On appeal to the Supreme Court, the only question for it to decide is whether the first fair use factor (purpose and character of the use) weighs in favor of AWF or Goldsmith. AWF contended that the first fair use factor weighs in its favor because Orange Prince was “transformative” inasmuch as it conveyed a different meaning or message than Goldsmith’s black and white photo. This dispute set the table nicely for the Supreme Court to provide some clarification on the issue of transformative use.

The Old Tune

The first fair use factor has always instructed courts to consider the “purpose and character of the use,” and the Supreme Court had previously explained in its 1994 decision in Campbell v. Acuff-Rose Music, Inc.,[1] that this analysis revolves around whether the new work supersedes or supplants the original, or whether it “adds something new, with a further purpose or different character.”

After Campbell, the lower Circuit Courts further developed the concept of “transformative use,” explaining that a new work is transformative when it alters the original work’s “expressive content or message,” when it “imbues it with a character, different from that for which it was created,” or when it “manifest[s] an entirely different aesthetic.”[2] Not all Circuits agreed, though, and the Seventh Circuit decided to march to the beat of a different drum when it warned that such an approach could override the four-part test.[3]

A New Spin on an Old Classic

In Andy Warhol Foundation v. Goldsmith, the majority opinion authored by Justice Sotomayor focuses not so much on the artist’s intention when creating the new work but rather on how that new work is actually being used. The Court reached back to Campbell to emphasize the problem that the first factor tries to weed out, namely when the new work could merely supplant the original work. The Court refers to this as the “problem of substitution.”

Applying this reasoning from Campbell, the Court does not concentrate on why Warhol created Orange Prince in 1984 or whether Warhol has given the old black and white photo a new expressive message. Rather, the Court looks to how Goldsmith’s photo was used in 1981 and how Warhol’s Orange Prince was used in 2016, and in this case the two works “share substantially the same purpose,” which is to illustrate magazine articles about Prince. Moreover, the Court notes that both uses are of a commercial nature. The majority opinion goes on to explain that the first factor does not simply weigh in favor of any use that adds new meaning because that would violate the copyright owner’s right to produce derivative works.

Therefore, the Court concluded that the purpose and character of Orange Prince was the same as Goldsmith’s photograph, and consequently the first fair use factor weighed in Goldsmith’s favor. In other words, the Court found that Warhol’s work was not fair use.

What’s Next in the Queue?

The impact of the holding in Andy Warhol Foundation v. Goldsmith is difficult to predict so soon after the decision. Will it mean a harsh and severe crackdown on artists who use the prior works of others to create new expressions? Probably not. After all, the Court’s decision presents itself as a faithful follower of Campbell, which validated a parody of a Roy Orbison classic. But on the other hand, the Court has undoubtedly sent the message that simply claiming transformative use is not a panacea for infringement. The fair use balancing and re-balancing debate is far from over, and the application of the subtle shift in transformative use likely will be closely watched in the lower Circuit Courts. Perhaps courts will apply the holding narrowly only to circumstances very similar to those in this case—after all, this case did involve two very similar uses, namely the illustration of magazine articles, and in many situations, the new work will be used in a more markedly different context. Alternatively, perhaps courts will attempt to apply the reasoning and doctrine more broadly. Much remains to be seen.

Bottom Line

A melody running throughout these articles on copyright and fair use is that outcomes are highly fact dependent and therefore difficult to forecast. In Andy Warhol Foundation v. Goldsmith, the Court has yet again reminded us that there are seldom bright lines in fair use. Business owners and those who use copyrighted materials should, as always, be aware of potential issues and try to avoid “gray areas” whenever possible. This decision may at least allow for additional arguments for, or against, infringement.

[1] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (holding that a parodic rap derivative of Roy Orbison’s song “Oh, Pretty Woman” was fair use).

[2] See Estate of Smith v. Graham, 799 F. App’x 36, 38 (2d Cir. 2020); Seltzer v. Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013); Cariou v. Prince, 714 F.3d 694, 699–701 (2d Cir. 2013).

[3] Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir. 2014).