Internet & Social Media Law Blog
On May 18, 2023, the U.S. Supreme Court found that the purpose and character of the use of “Orange Prince” by the Andy Warhol Foundation for the Visual Arts (AWF) weighed against a finding of fair use of Lynn Goldsmith’s photograph of the artist known as Prince.
The decision’s implications go far beyond Warhol, Goldsmith and Prince, with the potential to impact stakeholders across industries, including fine art, film, software, music, publishing, fashion, and all other industries affected by copyright.
Background
In 1981, photographer Lynn Goldsmith photographed Prince in her studio on assignment from Newsweek magazine. In 1984, Vanity Fair paid for the right to use one of those photographs as an “artistic reference” for an illustration, and to choose the illustrator. Unbeknownst to Goldsmith, Vanity Fair chose Andy Warhol. Warhol used Goldsmith’s photograph as an artistic reference for an illustration that appeared in a 1984 Vanity Fair article, “Purple Fame.”
In 1984, Warhol decided to make not just one, but 16 works based on Goldsmith’s photograph (the “Prince Series”), each imbued with Warhol’s unique artistic style.
Years later, after Prince’s death in 2016, the Andy Warhol Foundation (now owner of the Prince Series copyrights) licensed the unpublished “Orange Prince” work to Condé Nast for $10,000. Goldsmith became aware of “Orange Prince” when it appeared in Condé Nast’s 2016 commemorative Prince magazine, and objected to same, causing AWF to sue Goldsmith for a declaratory judgment of noninfringement in the U.S. District Court for the Southern District of New York. Goldsmith counterclaimed for infringement, and AWF asserted a fair use defense.
Section 107 of Title 17 sets forth types of copying that “courts and Congress most commonly ha[ve] found to be fair uses,” Campbell v. Acuff-Rose, 510 U. S., at 577–578, e.g., “criticism” and “news reporting,” and a four-factor fair use test that requires courts to consider:
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
The District Court and Second Circuit Decisions
The district court granted summary judgment for AWF on its fair use defense, finding that “Orange Prince” was “transformative”—a term that appears nowhere in the copyright statute, but which the Supreme Court first adopted in Campbell v. Acuff-Rose, where the Court found 2LiveCrew’s parody of Roy Orbison’s Pretty Woman was fair use. Though it was not parody, because “Orange Prince” could reasonably be perceived to convey a different message from Goldsmith’s photograph, the district court found, such work was transformative. Specifically, the district court found that Goldsmith’s work portrays Prince as “[un]comfortable” and “vulnerable,” whereas “Orange Prince” portrays Prince as a “larger-than-life” figure, i.e., by removing his torso and using “loud, unnatural colors.” Per the district court, such changes made “Orange Prince” “immediately recognizable as a ‘Warhol’ rather than as a photograph of Prince.”
On appeal, the U.S. Court of Appeals for the Second Circuit reversed, finding that AWF’s use of “Orange Prince” was not transformative of Goldsmith’s photograph because “the overarching purpose” of both works was to portray Prince and, despite certain alterations, the Goldsmith photograph is the “recognizable foundation” for the Prince Series. In doing so, the Second Circuit reasoned that “Orange Prince” and the Prince Series works are more like derivative works of Goldsmith’s photograph than transformative uses of it. The Second Circuit also held that neither a bare assertion of a “higher or different artistic use,” nor the “imposition of another artist’s style on the primary work” can render a use transformative, and discounted the fact that “Orange Prince” was “immediately recognizable as a ‘Warhol’,” declining to create “a celebrity-plagiarist privilege.”
The Supreme Court Decision
The U.S. Supreme Court granted certiorari to address the narrow question of “whether the court below correctly held that the first factor … weighs in Goldsmith’s favor.” The Court, in a majority opinion penned by Justice Sotomayor, affirmed the Second Circuit’s finding for Goldsmith, and Justice Kagan authored a dissenting opinion joined by Chief Justice Roberts.
The Court held that whether a work is transformative “is a matter of degree” and must be weighed against the commercial character of the use in question. The Court also circumscribed its ruling to AWF’s license to Condé Nast, i.e., “AWF’s copying use,” and expressly declined to consider whether Warhol’s creation of “Orange Prince” was transformative. Through that narrower lens, the Court found that such use did not deserve fair use protection because the commerciality of AWF’s copying use outweighed any comment on celebrity that such use might convey on the cover of Condé Nast’s commemorative magazine. The Court found that any such commentary necessarily falls at “Campbell’s lowest ebb” because, much “[l]ike satire that does not target an original work,” “Orange Prince” has no “critical bearing” on Goldsmith’s photo.
The dissent rejects the majority’s first-factor analysis, concluding that the Court’s decision leaves that inquiry “in shambles.” Per the dissent, after Warhol, “all the creativity in the world could not save” an artist with a commercial purpose. This, the dissent contends, is a “doctrinal shift” away from the primacy of transformative use in the fair use analysis, which “ill serves copyright’s core purpose.” The dissent goes on to describe the work of Andy Warhol and the significance of his alterations to Goldsmith’s photograph as borne out in the record, claiming that the majority reduces Warhol to “an Instagram filter”; “plants itself firmly in the ‘I could paint that’ school of art criticism”; and “belittl[es]” Warhol’s creative contributions.
Takeaways
There are several discernable takeaways from the Supreme Court’s Warhol decision. First, copyists are unlikely to succeed in raising a fair use defense based solely on the subjective intent of the user, or the subjective interpretation of an art critic or judge. Rather, successful fair use defenses are likely to be based on valid claims of parody, non-commercial use, technical repurposing of content to create an entirely new functionality (e.g., Google’s use of portions of the Java API to create the Android platform), and/or other copying that has a “compelling justification.” Second, courts are likely to pay closer attention to the nature of the specific challenged use, rather than the secondary work as a whole. In Warhol, the majority relies heavily on the notion that AWF’s licensing of “Orange Prince” for a Condé Nast magazine cover is not transformative, and expressly declines to consider whether the creation of “Orange Prince” was transformative. As copyright owners often challenge specific uses (e.g., sales) that occur after an allegedly infringing work has already been created, courts may seek to avoid more difficult questions about a work’s intrinsic transformative value by taking this narrower approach.
That said, the Warhol decision also leaves many questions unanswered. For example, has Warhol altered the broader fair use analysis by deemphasizing transformative use, or is Warhol simply an outlier, e.g., because Warhol neither chose the original work (Vanity Fair did) nor made the challenged use (AWF/Condé Nast did)? Can courts truly consider the meaning of a secondary work (as the Court instructs) without “attempt[ing] to evaluate the artistic significance of a particular work” (which the Court prohibits)? What role, if any, should celebrity and fame play in the fair use analysis, especially where (as here) the challenged use is as much the result of the copyist’s fame as it is the aesthetic qualities of the copyist’s work?
While the Court’s decision leaves these questions unanswered, they have been left to percolate through the courts, and it may not be long before the Supreme Court is asked to yet again clarify the notoriously unpredictable doctrine of copyright fair use.
The case is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 21-869 (May 18, 2023). Opinion at https://www.supremecourt.gov/opinions/22pdf/21-869_87ad.pdf.