IP Law Daily, COPYRIGHT—U.S.: Licensing of Warhol image based on Prince photo was not a new purpose supporting fair use finding, (May 18, 2023)

By Thomas Long, J.D.

Although new expression—such as an altered meaning or message—may be relevant to whether a copying use has a sufficiently distinct purpose or character, it is not, without more, dispositive of that fair use factor.

The commercial licensing of an Andy Warhol print derived from a photograph of the late musician Prince taken by prominent professional photographer Lynn Goldsmith did not support a fair use defense against Goldsmith’s copyright infringement claims, the U.S. Supreme Court has held in a 7-2 decision. An organization that manages commercial exploitation of the late pop artist’s works, the Andy Warhol Foundation for the Visual Arts, Inc., licensed the print to the publisher Condé Nast for use on the cover of an issue of Vanity Fair magazine. Although the Foundation asserted that Warhol’s work was a “transformative” use of the photograph, the fact that it conveyed a different meaning or message from the photo was not dispositive of the “purpose and character of the infringing use” factor of the fair use test. In the Court’s view, the Warhol print and the Goldsmith photo shared substantially the same purpose—as portraits of Prince used to depict the musician in magazine articles about him. Differences in the way Prince was depicted in the Warhol work were not enough for the “purpose and character” factor to favor the Foundation. The Court also found it relevant that the Foundation’s use was commercial in nature, and that deeming the Foundation’s use “fair” would authorize a wide range of commercial copying of photographs to be used for substantially the same purpose as the originals. The Court cautioned that its holding was based on the specific use at issue here, and it did not mean that all of Warhol’s derivative works, or all uses of them, would be subject to the same fair use analysis. The Court affirmed a decision by the U.S. Court of Appeals in New York City, which held that the Foundation’s use of Goldsmith’s photo could be infringing. Justice Gorsuch wrote a concurring opinion that was joined by Justice Jackson. This opinion, while calling the majority opinion “exactly right,” emphasizes the view that courts should not “speculate about the purpose an artist may have in mind when working on a particular project.” Justice Kagan dissented, joined by Chief Justice Roberts. In her view, the majority overemphasized the commercial transaction between the Foundation and Condé Nast, while failing to consider the creativity employed by Warhol in creating his Prince images (Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, May 18, 2023, Sotomayor, S.).

Goldsmith’s photo and Warhol’s “Prince Series.” Lynn Goldsmith—a professional photographer primarily focusing on celebrity portraits and rock concert photos—took a series of portrait photos of musician Prince Rogers Nelson, popularly known simply as “Prince,” in December 1981. In 1984, Goldsmith’s agency licensed the photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, the artist in question was famed contemporary artist Andy Warhol, who had been commissioned to create an image of Prince for the magazine. Also unbeknownst to Goldsmith, Warhol created 15 additional works (a combination of screenprints and pencil illustrations) based on the Goldsmith Photograph, referred to (along with the Vanity Fair image) as the “Prince Series.” After Warhol’s death, the Andy Warhol Foundation for the Visual Arts, Inc., acquired title to and copyright in the Prince Series. With the Foundation’s permission, Vanity Fair publisher Conde Nast used a different image from the series for the cover of a magazine issue paying tribute to the deceased musician. (This image was referred to as “Orange Prince.”) Goldsmith was not given any credit or attribution for the image, which was instead attributed solely to the Foundation. The Foundation also commercially licensed the images for use on mass-produced posters and other merchandise.

Goldsmith’s infringement suit. In July 2016, Goldsmith contacted the Foundation to advise that her copyright was being infringed. In April 2017, the Foundation filed an action against Goldsmith and her agency, seeking a declaratory judgment that the Prince Series did not infringe because the works qualified as fair use. Goldsmith countersued for copyright infringement. On July 1, 2019, the district court granted summary judgment in the Foundation’s favor, finding that the Foundation made fair use of Goldsmith’s photographs. The district court determined that the Prince Series was “transformative” because, while the Goldsmith Photograph portrayed Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrayed Prince as an “iconic, larger-than-life figure.” On March 26, 2021, the Second Circuit reversed, concluding that the district court erred in its application of the four fair use factors listed in Section 107 of the Copyright Act.

Fair use test and concept of “transformativeness.” Section 107 of the Copyright Act sets forth four nonexclusive factors for determining whether a use is “fair” and therefore not infringing: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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 value of the copyrighted work. Courts have often based their determinations regarding the first factor on the question of whether the challenged use is “transformative.”

The concept of transformation as indicative of fair use was explicated by the Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), a case involving a song parody. Writing for the majority, Justice David Souter said that the central inquiry under the first factor is whether the defendant’s work merely “supersedes the objects” of the copied work “or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’” A finding that a new work is transformative is not automatically determinative, but it can lessen the importance of the other factors.

Petition for review. The Foundation’s petition for certiorari posed the question:

Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the Second Circuit has held).

The Foundation asserted that the Second Circuit’s decision created a split with the Ninth Circuit, which held in Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013), that a secondary work is “typically viewed as transformative as long as new expressive content or message is apparent.” This test, according to the Foundation, had been adopted by the First, Fourth, Third, Sixth, and Federal Circuits.

Supreme Court’s holding on “purpose and character.” Justice Sotomayor delivered the opinion of the Court. She noted that the Foundation did not dispute the lower court’s holding that Warhol’s works and Goldsmith’s photo were substantially similar for copyright infringement purposes. Fair use was the only issue under consideration—and even then, the Foundation only contested the holding on the first Section 107 factor, purpose and character, arguing that the Warhol prints’ different meaning and message rendered them transformative, including the Orange Prince image licensed for the Vanity Fair cover.

“But the first fair use factor instead focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism,” Justice Sotomayor wrote. “Although new expression may be relevant to whether a copying use has a sufficiently distinct purpose or character, it is not, without more, dispositive of the first factor.”

Licensing use. In this case, Justice Sotomayor noted, the specific use of Goldsmith’s photograph at issue was the licensing of Orange Prince to Condé Nast. “Prince in magazine stories about Prince, the original photograph and [the Foundation’s] copying use of it share substantially the same purpose,” she wrote. “Moreover, the copying use is of a commercial nature. Even though Orange Prince adds new expression to Goldsmith’s photograph, as the District Court found, this Court agrees with the Court of Appeals that, in the context of the challenged use, the first fair use factor still favors Goldsmith.”

Justice Sotomayor explained that the Copyright Act reflected a balance of competing interests: encouragement and rewarding of creative work, versus promoting broad public availability of literature, music, and the other arts. The fair use defense codified in Section 107 is intended to assist in achieving the proper balance. With respect to the purpose and character factor, the question is whether the new use “supersedes” or “supplants” the copyrighted work, or whether it serves a distinct end. Section 107’s preamble lists several kinds of uses that are frequently considered different in purpose and therefore supportive of a fair use defense, including criticism, comment, news reporting, teaching, scholarship, and research. Not every case is clear cut, and the question of whether a challenged use has a further purpose or different character is a matter of degree.

“Many secondary works add something new,” said Justice Sotomayor. “That alone does not render such uses fair. Rather, the first factor (which is just one factor in a larger analysis) asks “whether and to what extent” the use at issue has a purpose or character different from the original. Campbell, 510 U.S., at 579 (emphasis added). The larger the difference, the more likely the first factor weighs in favor of fair use. The smaller the difference, the less likely.”

Transformativeness. In addition, the concept of transformativeness implicates another portion of the Copyright Act—the exclusive right granted to copyright owners in Section 106 to create derivative works. “The two are not mutually exclusive. But an overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to create derivative works,” Justice Sotomayor said. Accordingly, the degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative work.

In Campbell, Justice Sotomayor noted, the challenged work was a parody, and parodies “can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.” In that case, the Court explained that to be considered a parody, the challenged work must comment on the original work or criticize it, not just make use of the original work to state a point about some issue or matter of concern (which would instead be deemed “satire”). Furthermore, a parodic use may be justified because copying the original is necessary to make its point. “An independent justification like this is particularly relevant to assessing fair use where an original work and copying use share the same or highly similar purposes, or where wide dissemination of a secondary work would otherwise run the risk of substitution for the original or licensed derivatives of it,” Justice Sotomayor said.

To analyze a fair use defense requires consideration of the specific use of the copyrighted work that is alleged to be an infringement. Copying of a work for one purpose may be fair, while copying for another purpose may not. In this case, that use was not Warhol’s creation of Orange Prince or the earlier publication of a different image of the Prince Series in 1984, but rather the Foundation’s licensing of it in 2016. “In particular, the Court expresses no opinion as to the creation, display, or sale of any of the original Prince Series works,” Justice Sotomayor said for the majority.

“Other justification.” In the Court’s view, the 2016 licensing of Orange Prince served substantially the same purpose as Goldsmith’s original photo. Both images were portraits of Prince used to illustrate magazine articles about Prince. Moreover, the undisputed commercial nature of the use weighed against a fair use finding, absent some other justification for copying.

The Court found that no such justification existed. Justice Sotomayor brought up Warhol’s famous “Campbell’s Soup Cans” series of images, noting that the purpose of Campbell’s logo was to sell soup, whereas Warhol’s images did not serve 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,” Justice Sotomayor reasoned. “The use therefore does not supersede the objects of the advertising logo.” Moreover, use of the logo was justified as a means of delivering Warhol’s commentary, which targeted the logo itself. The Foundation’s use of the Orange Prince image was not analogous to the Soup Cans series because it did not “target” the photo, and the Foundation offered no other compelling justification for the use.

The Court specifically rejected the Foundation’s contention that the purportedly new meaning or message conveyed by Orange Prince compared to the Goldsmith photo made the new work transformative. In Justice Sotomayor’s view, “Campbell cannot be read to mean that §107(1) weighs in favor of any use that adds some new expression, meaning, or message. Otherwise, ‘transformative use’ would swallow the copyright owner’s exclusive right to prepare derivative works.” Meaning or message can be relevant, but not by themselves dispositive. Changes in meaning or message must serve a distinct purpose from that of the original in order to support a fair use determination. The inquiry is objective, according to the Court, and doesn’t depend on the defending artist’s subjective explanations as to how the new work should be interpreted. Even if the Orange Prince image made Prince appear “iconic,” whereas the original photo depicted him as vulnerable, the Foundation’s purpose in licensing Orange Prince was still to illustrate a magazine about Prince with a portrait of Prince.

“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 Sotomayor said. In addition, “Many photographs will be open to various interpretations. A subject as open to interpretation as the human face, for example, reasonably can be perceived as conveying several possible meanings. The application of an artist’s characteristic style to bring out a particular meaning that was available in the photograph is less likely to constitute a ‘further purpose’ as Campbell used the term.”

Accordingly, the Court affirmed the Second Circuit’s conclusion that the “purpose and character” factor did not support a finding of fair use.

Concurring opinion. Justice Gorsuch, joined by Justice Jackson, agreed with the holding of the majority but wrote separately to highlight his view that judges should not take on the role of art critics; rather than delving into the subjective intentions of the artist, they should assess only whether the purpose and character of the challenged use is the same as a protected use. He further explained that “while the Foundation may often have a fair-use defense for Mr. Warhol’s work, that does not mean it always will. Under the law Congress has given us, each challenged use must be assessed on its own terms.”

Dissenting opinion. Justice Kagan dissented, joined by Chief Justice Roberts, opining that the majority failed to consider the creativity that went into Warhol’s images, discounting “the distinctiveness and newness of Warhol’s portrait,” and incorrectly focused on the Foundation’s “marketing decision” to license the silkscreen for the Vanity Fair cover. In Justice Kagan’s view, “Warhol’s Prince series conveyed a fundamentally different idea, in a fundamentally different artistic style, than the photo he started from. In failing to give Warhol credit for that transformation, the majority distorts ultimate resolution of the fair-use question.” Justice Kagan argued that the majority’s holding will stifle creativity. “It will thwart the expression of new ideas and the attainment of new knowledge,” she wrote. “It will make our world poorer.”

Practitioner commentary. Morrison Foerster partner Joseph C. Gratz—who co-authored an amicus curiae brief on behalf of a group of art law professors—said in a statement to Wolters Kluwer, “The vigorous, spirited back-and-forth between Justice Sotomayor’s majority opinion and Justice Kagan’s dissent is a reminder of why we all care so much about copyright: because it forms the legal backdrop for creativity and culture.”

“The opinion clarifies that the meaning of a new work, as reasonably can be perceived, should be considered in the fair use analysis,” Gratz said. “But the subjective intent of the creator of that new work doesn’t matter.”

Gratz also highlighted the limited nature of the Court’s holding. “The court was careful to limit its holding to commercial uses like licensing transactions in competition with the copyright holder.” He added, “The court looked not at the purpose of the painting, but at the purpose of the licensing transaction.”

Roman A. Swoopes, also a partner at Morrison Foerster, explained, “The Court addressed the tension between case law holding that transformative uses might be fair and the definition of a derivative work under 17 U.S.C. § 101. The Court explained that to be protected by fair use, a secondary use must entail a greater degree of transformation than the amount required to qualify as a derivative work.”

Swoopes also shed light on the importance of how the Court framed the “use” under consideration. According to Swoopes, “The Court specifically limited its analysis to AWF's commercial licensing of Orange Prince and not to Andy Warhol’s original creation of the work,” Swoopes said. “This leaves room to argue that other uses of the same artwork may have been fair.”

As for the impact of the decision, Swoopes opined, “Based on the Court’s opinion, litigants in future cases will likely spend a fair amount of time arguing over whether copying was reasonably necessary to achieve a new user’s purpose.”

The case is No. 21-869.

Attorneys: Roman Martinez (Latham & Watkins LLP) for Andy Warhol Foundation for the Visual Arts, Inc. Lisa S. Blatt (Williams & Connolly LLP) for Lynn Goldsmith. Joseph C. Gratz and Roman A. Swoopes (Morrison & Foerster LLP).

Companies: Andy Warhol Foundation the Visual Arts, Inc.

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