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Supreme Court Holds Andy Warhol Illustrations are Not Fair Use and Constitute Copyright Infringement

on Wednesday, 28 June 2023 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

On May 18, 2023, the United States Supreme Court held that portraits of the late musician, Prince, by Andy Warhol did not constitute “fair use” under copyright law and instead infringed on the original copyrighted photograph taken by Lynn Goldsmith. The 7-2 decision in Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith held that the fair use defense will not hold up if a secondary work and the copyrighted work share substantially the same or similar purpose, especially  between competing commercial uses.

Background Fueling the Dispute

This case revolves around two artists, Andy Warhol, a well-known pop culture painter, and Lynn Goldsmith, a lesser-known musician and concert photographer. In 1981, Goldsmith convinced Newsweek Magazine to hire her to photograph a then “up and coming” musician, Prince. It is this subsequent photo that is at the heart of the controversy. In 1984, Goldsmith agreed to license this photo to Vanity Fair to be published in the November 1984 issue, where importantly, this license was explicitly for a one-time use. She was compensated $400 and credited as the source creator.

Vanity Fair had hired Andy Warhol to create a reference illustration from the photograph as per the terms of the license, to be used in the November 1984 issue. Despite the license between Vanity Fair and Goldsmith allowing a one-time only use of her photograph, Warhol created 15 works based on the photograph. 13 silkscreen prints and 2 pencil drawings.

In 2016, following Prince’s death, Vanity Fair’s parent company Condé Nast, contacted the Andy Warhol Foundation for the Visual Arts (AWF) for Warhol’s “Orange Prince” silkscreen, one of the 15 created from Goldsmith’s photo. This photo was to be used in a special tribute magazine to commemorate the “Genius of Prince”. It was this 2016 use of “Orange Prince” that Goldsmith realized her photograph was being used without receiving compensation or credit, and discovered the existence of the 15 other Warhol works based on her 1981 photograph of Prince.

The Fair Use Doctrine and Defense

Section 107 of the Copyright Act (17 U.S.C.) codifies the fair use defense, which provides that the fair use of an original, copyrighted work is not copyright infringement if four factors can be satisfied. These factors are 1) the purpose and character of use, including whether use is of a commercial or nonprofit nature, 2) the nature of the copyrighted work, 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and 4) the effect of the use upon the potential market for or the value of the copyrighted work. 

Justice Sotomayor, delivering the 7-2 majority opinion, reiterated the caution from Campbell v. Acuff-Rose Music, Inc., that the four fair use factors may not be treated in isolation, but are to be explored and the results weighed together in the light of the purpose of copyright.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 578, 579, 114 S. Ct. 1164, 127 L.Ed.2d 500 (1994). However, the Court spent a significant portion of the opinion discussing the first fair use factor, whether Warhol’s “Orange Prince” was transformative (i.e. service a purpose different than that of the original work) of Goldsmith’s photograph.

The Supreme Court Decision

The Supreme Court agreed with the Second Circuit and sided with Goldsmith finding infringement of her photo in connection with the commercial purpose of using Warhol’s “Orange Prince” for the 2016 tribute issue. The Supreme Court rejected AWFs argument that the Warhol illustration transformed Goldsmith’s original photograph depicting Prince as a “larger-than-life-figure.”

The Court stated that for something to be transformative, it must alter the original with “new expression, meaning, or message” so as to not “swallow” the copyright holders’ exclusive right to prepare derivative works. Justice Sotomayor went on to opine that the degree of transformation required must “go beyond that required to qualify as derivative.”

The Court held that as both Goldsmith’s original and “Orange Prince” were used in a commercial nature and since Conde Nast did not use “Orange Prince” to create an opinion of the original, the usage was substantially the same as Goldsmith’s, to illustrate stories about Prince in commercial magazines, such as Vanity Fair, People, Rolling Stone, and Time. Therefore, the first factor of the Fair Use analysis favored Goldsmith.

Likewise, the other factors (2) nature of the copyrighted work, (3) the amount and substantially of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the potential market for or value of the copyrighted work, were found to be in favor of Goldsmith.

Significance and Implications

This decision will have significant implications in the context of fair use, and sheds more light on how the courts should analyze “transformation” in this context. There is an indication that the use of a copyrighted work must be substantially and objectively different in meaning or message, so as to not supplant or influence the value or marketability of the original.

While analysis of copyright infringement is done on a case-by-case basis, it seems the shield of fair use has been narrowed. If both the original and secondary work have the same or a similar commercial purpose and/or use, the first factor, and therefore defense of fair use, is more likely to fail. Ultimately, this decision highlights the importance of obtaining the appropriate licenses when using works known to be copyrighted in commercial instances.

AriAnna C. Goldstein
Nyla Khan,  Summer Associate

 

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