May 22, 2023Client Alert

Supreme Court Rules that Warhol Portrait of Prince Does Not Qualify as Fair Use

On Thursday, May 18, 2023, the Supreme Court decided Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith, a copyright case involving a silkscreen portrait the artist Andy Warhol derived from a copyrighted photograph of the musician Prince taken by Lynn Goldsmith.  In a 7-2 decision, the Court affirmed a Second Circuit ruling that Warhol’s portrait does not qualify for the fair use defense from copyright infringement.  The case could have important effects on the applicability of the fair use defense in copyright infringement cases.

As background, in 1981, Goldsmith, an award-winning professional photographer, took a copyrighted photograph of Prince as part of a commission by Newsweek regarding the then up-and-coming musician.  Goldsmith subsequently granted Vanity Fair magazine a limited license for a “one time” use of the photo as an “artist reference for an illustration.”  To create the illustration, Vanity Fair commissioned Warhol, who crafted a series of 16 silkscreen portraits from the Goldsmith photo (the Prince Series), including a purple silkscreen portrait that was published in Vanity Fair in 1984. After Prince’s death, Condé Nast (Vanity Fair’s parent company) inquired with the Andy Warhol Foundation (AWF) about using the 1984 Vanity Fair image for a special edition commemorating Prince.  Condé Nast then learned about Warhol’s other Prince series images and decided to publish Warhol’s orange silkscreen portrait (“Orange Prince”) on the cover of the special edition.  At that point, Goldsmith learned of Warhol’s Prince Series, and copyright infringement litigation ensued.  AWF prevailed before the district court at summary judgment by successfully invoking a fair use defense to infringement, but the Second Circuit reversed.

The fair use doctrine allows certain limited uses of copyrighted works without the copyright holder’s permission.  Common examples of fair use include limited use of a copyrighted work for criticism, comment, parody, news reporting, teaching, scholarship, or research.  Applying the statutory framework for fair use in 17 U.S.C. § 107, courts conduct a fact-specific inquiry to determine whether a specific use is “fair,” consisting of four factors:

  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 value of the copyrighted work.

In Andy Warhol Foundation for Visual Arts, the Supreme Court decided the sole question of whether the first fair use factor – “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes” – weighed in favor of AWF’s 2016 licensing of the silkscreen image to Condé Nast.  The Court found that it did not, because the new work derived from the original work shared the same purpose as the original Goldsmith work, i.e., both were “portraits of Prince used to depict Prince in magazine stories about Prince.”  In so doing, the Court rejected AWF’s contention that the Prince Series constituted “transformative” works conveying a different message than Goldsmith’s photograph. 

The Court explained that the first fair use factor focuses on whether and to what extent an allegedly infringing use has a “further purpose or different character,” and that the degree of difference must be weighed against other considerations such as whether the use has a commercial purpose or is otherwise dissimilar to the purpose of the original work.  New expression, meaning, or message can be relevant to this factor, but it is not necessarily dispositive.  Here, Warhol’s portraits shared the substantially same purpose as Goldsmith’s original, and AWF used the portraits commercially.  As a result, even with the new expression conveyed by Orange Prince to depict Prince as iconic rather than photorealistic, the Court found the first fair use factor favored Goldsmith. 

The decision helps delineate the line between when a work violates copyright holders’ exclusive right to create “derivative works” based on their copyrighted works under 17 U.S.C. § 106 and when a work qualifies as a “transformative” fair use by emphasizing the analysis of the respective purposes of the original and new works.  Parody is a classic example of a transformative work that may qualify as fair use, even when for a commercial purpose, because a parody creates a new work by commenting on or criticizing an earlier work, and parody requires a certain amount of mimicry to convey its point.  New uses with different purposes from the original works may be deemed to further the U.S. Constitution’s goal of promoting the progress of science and the arts via copyright law.

Significantly, the Court limited its decision to AWF’s commercial licensing of the Orange Prince image to Condé Nast and did not address the creation or sale of Warhol’s original Prince Series works as standalone art pieces.  The Court also cautioned that not all of Warhol’s derivative works may give rise to the same fair use analysis.  Moreover, the Court emphasized that the four fair use factors must all be weighed together rather than in isolation, but since AWF only challenged the Second Circuit’s decision on the first factor, the Court limited its ruling accordingly.

Through its holding addressing the degree to which a work must convey a distinct purpose or character from an original work to qualify as a transformative fair use, the Court’s ruling potentially limits the ability of artists to lawfully repurpose photographs under fair use doctrine by adding new meaning or aesthetics.  Whether a use is transformative might be relegated to secondary importance relative to whether and to what extent the use’s purpose is distinct from the original, and whether the use is commercial or not.  This approach ultimately might pose greater challenges for visual artists to successfully invoke a fair use defense to defeat an infringement claim, while offering stronger protection to copyright holders.

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