Fair Use Under the U.S. Supreme Court’s Microscope 

This week, the U.S. Supreme Court rendered a decision of great importance in the world of copyright law in a case titled Andy Warhol Foundation for the VisualArts, Inc. v. Goldsmith et al. Michelman & Robinson, LLP reports.  

A Bit of Background  

Lynn Goldsmith is a professional photographer of notoriety who has photographed various musicians ranging from Led Zeppelin to James Brown. This case concerns Prince. 

In 1981, while on assignment for Newsweek, Goldsmith photographed Prince. At this point in his career, Prince was not the icon we think of today, but his star was certainly rising. Goldsmith took several pictures of him during the short photo session at her studio. All the while, according to Goldsmith’s testimony, Prince was “really uncomfortable.” Ultimately, none of Goldsmith’s photographs ran in Newsweek. 

Fast forward three years to 1984. “Little Red Corvette” was released earlier in the year—“When Doves Cry” as well—and Purple Rain topped both the box office and music charts. Vanity Fair wanted to publish an article, including an illustration, on the now extremely famous Prince. Toward that end, the magazine licensed Goldsmith’s work for a $400 licensing fee “for use as an artist’s reference in connection with an article to be published.” The license was limited and further stated, “no other usage rights granted.” Unbeknownst to Goldsmith, the artist that Vanity Fair commissioned was Andy Warhol.   

Warhol made not one, but 16 illustrations based on Goldsmith’s photos. This collection was referred to as the Prince series. Ultimately, in November 1984, Vanity Fair ran the article “Purple Fame” and used a Warhol illustration of Prince, depicted in purple. Goldsmith is credited in conjunction with the image.  

Thirty-two years later, in 2016, Prince tragically died. In the aftermath of his death, Condé Nast (Vanity Fair’s parent company) wanted to distribute a commemorative issue celebrating him. To do so, Condé Nast contacted the Andy Warhol Foundation to inquire into licensing Warhol’s illustration from 1984, only to learn of the Prince series. At that point, Condé Nast decided instead to license an illustration affectionally referred to as “Orange Prince.” That drawing ran on the commemorative magazine’s cover, without any credit to Goldsmith. In fact, neither Condé Nast nor the Andy Warhol Foundation paid Goldsmith for the use of Orange Prince.     

Procedural Posture 

Litigation ensued, with the Andy Warhol Foundation filing a declaratory judgement action seeking a ruling of noninfringement, or in the alternative, fair use. Goldsmith, in turn, countersued for copyright infringement.  

The Andy Warhol Foundation prevailed before the district court on summary judgment, which ruled that the fair use doctrine applied because Warhol’s work was “transformative” as it communicated a different meaning and message from Goldsmith’s photograph. 

That decision was reversed by the U.S. Court of Appeals for the Second Circuit. On appeal, the court held, “the Prince Series retains the essential elements of its source material, and Warhol’s modifications serve chiefly to magnify some elements of that material and minimize others . . . . While the cumulative effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.” 

Enter the Supreme Court 

The Second Circuit’s determination was challenged on appeal and the case made its way to the U.S. Supreme Court, which rendered a decision on May 18. In a 7-2 decision, the majority held that the Andy Warhol Foundation’s use of Goldsmith’s photography was not fair use. Specifically, the high court held, in instances where “an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first [fair use] factor is likely to weigh against fair use, absent some other justification for copying.” 

By way of background, the fair use doctrine permits the unlicensed use of copyright-protected works in certain circumstances, outlined in Section 107 in the Copyright Act. Stated differently, it is a defense to copyright infringement. Section 107 contains four factors, the first being the purpose and character of the work. While the term “transformative” is not actually used in Section 107, courts consider it when examining this factor. 

The U.S. Supreme Court rejected the Andy Warhol Foundation’s argument that its use was “transformative” and therefore fair. In doing so, the majority found that the first factor of the fair use analysis “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.” The court also ruled that because Orange Prince, “has no critical bearing on” Goldsmith’s photograph, any claims concerning the “fairness in borrowing” from Goldsmith’s photograph “diminishes accordingly (if it does not vanish).” 

Applying these standards, the U.S. Supreme Court ruled that the Andy Warhol Foundation’s use was not fair because it was commercial, and it shared the same purpose as Goldsmith’s original photograph – to illustrate stories about Prince in magazines. Further it was determined that modifications to Goldsmith’s photograph had little critical bearing on Goldsmith’s work, also weighing against a finding of fair use. 

The Takeaway 

In the wake of the U.S. Supreme Court’s decision in the Andy Warhol Foundationcase, the scope of the fair use defense to copyright infringement has been meaningfully limited. While new expression may be considered by courts conducting a fair use analysis, standing alone, this expression cannot be determinative of the first fair use factor. 

This blog post is not offered, and should not be relied on, as legal advice. You should consult an attorney for advice in specific situations.