- The Supreme Court found that Warhol’s adaptation of Goldsmith’s photograph was not a fair use by applying the Court’s latest interpretation of the first factor: if 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 fair use, absent some other justification for copying.
- Writing for the majority, Justice Sotomayor held that the underlying photograph and Warhol’s illustration “share substantially the same purpose,” because both images were used to depict Prince in magazine stories about Prince. But the Court cautioned that this analysis would be different for a different secondary use of Warhol’s illustration, reinforcing that fair use continues to be a case-by-case analysis.
- It is no longer sufficient under the first factor merely to show that there is a “new expression, meaning, or message” intended by a second use. A court will consider a defendant’s subjective intent or intended message only to the extent necessary to determine whether the purpose of the use is distinct from the original. Whether the secondary use is commercial in nature will likely continue to be of significant importance.
The Bottom Line
In the first copyright decision from the Supreme Court in nearly 30 years to consider the boundaries of fair use as it pertains to a creative work, the Court held in a 7-2 decision that Andy Warhol’s images of the musician Prince were not a “fair use” of the photograph taken by respondent Lynn Goldsmith on which the images were originally sourced. The case is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al., No. 21-869. This dispute has been closely watched for its impact on the art world and, more generally, the use of preexisting materials in creative works.
Pop artist Andy Warhol used a photograph by respondent Lynn Goldsmith as source material for his portraits of the musician Prince. In 1984, Vanity Fair licensed a photograph taken by Goldsmith of the musician Prince for use as an “artist reference.” Goldsmith granted the license for one time only, and Warhol used Goldsmith’s photograph to make a silkscreen illustration of Prince to accompany a story about the musician. Warhol then used that underlying photograph to make 15 more illustrations, which together came to be known as the Prince Series. Thirty years later, the Andy Warhol Foundation (AWF) licensed to Condé Nast a different illustration from the Prince Series – “Orange Prince” – without license from Goldsmith. AWF brought an action against Goldsmith seeking a declaratory judgment of noninfringement or, in the alternative, fair use, and Goldsmith counterclaimed for copyright infringement.
In 2019, the Southern District of New York granted summary judgment for AWF under the four fair use factors in the Copyright Act. The Second Circuit reversed and remanded, and held that all four fair use factors actually favored Goldsmith. AWF petitioned the Supreme Court for certiorari to resolve whether the first factor of the fair use test weighed in Goldsmith’s favor. That factor directs a court to examine “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1). After hearing oral arguments in October, the Supreme Court affirmed the Second Circuit’s decision, concluding that the first factor weighed against a finding of fair use.
Justice Sotomayor, writing for the majority, concluded that Warhol’s illustration and Goldsmith’s underlying photograph shared “substantially the same purpose,” and AWF’s “use is of a commercial nature,” and therefore, the first factor favored Goldsmith. AWF had argued that the Prince Series was “transformative” because the illustrations convey a different “meaning or message” than the photograph, pointing towards testimony that Goldsmith’s photograph showed Prince’s vulnerability, while Warhol’s silkscreens were intended to depict Prince as an “icon or totem” of celebrity. But the Supreme Court rejected that position, finding that the first factor is “an objective inquiry,” and a new meaning or message alone is insufficient. Thus, the key inquiry is whether the secondary work has a “purpose and character that is sufficiently distinct from the original.” Here, because both Goldsmith’s photograph and Warhol’s illustrations were used to depict Prince in magazine stories about Prince, the Court deemed the works to have substantially the same commercial purpose. As a practical matter, this inquiry minimizes – if not altogether negates – the subjective intent of the second author to convey a particular message or meaning. Moreover, the Court’s analysis reinforces that if the secondary use is commercial in nature, that weighs against a finding of fair use.
The Supreme Court also paid particular attention to the interplay between the fair use defense and the exclusive right of a copyright owner to create derivative works. Noting that the word “transform” appears in the provision of the Copyright Act defining derivative works, the Court wrote: “[t]o preserve that right, the degree of transformation required to make ‘transformative’ use of an original must go beyond that required to qualify as a derivative.” The Court noted that if it were to accept AWF’s arguments about “new expression, meaning, or message,” then “‘transformative use’ would swallow the copyright owner’s exclusive right to prepare derivative works.”
Justice Gorsuch filed a concurring opinion, joined by Justice Jackson. Justice Kagan filed a lengthy dissent, joined by Justice Roberts, in which she warns that the majority opinion will “stifle creativity of every sort.” The dissent takes issue with the majority opinion’s focus on the commercial purpose of AWF’s licensing, and argues that the majority overlooks the “undisputed change in meaning” between the images.
This opinion will undoubtedly be significant for content owners, content creators, and people in a wide range of creative industries, though its applicability to broader contexts will bear out over time. The opinion cautions that it “does not mean that all of Warhol’s derivative works, nor all uses of them, give rise to the same fair use analysis,” which reinforces the longstanding principle that fair use is, and continues to be, a case-by-case analysis. But going forward, in gauging a likelihood of success on the first factor of fair use – the purpose and character of the use – the focus will be whether the purpose of the second use is distinct from the original. In addition, courts will likely continue to give significant weight as to whether the secondary use is commercial in nature.
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