May 23, 2023
On Thursday, the U.S. Supreme Court shifted the boundaries of fair use analysis under copyright law when it published its opinion in the anticipated Andy Warhol case, Warhol Foundation v. Goldsmith. The Court held that the differences in aesthetics and message conveyed in “Orange Prince,” as compared to the underlying photograph, do not automatically tip the first fair use factor in Warhol’s favor.
Photographer Lynn Goldsmith was commissioned by Newsweek in 1981 to photograph Prince for an article. Then, in 1986, Goldsmith licensed one of her copyrighted Prince photos to Vanity Fair for a single use as “an artist reference for an illustration.” What resulted was Andy Warhol’s purple silkscreen portrait of Prince.
Unbeknownst to Goldsmith, Warhol subsequently created a collection of Prince silkscreens with different colors and pencil drawings (the “Prince Series”). Fast forward to 2016: Prince died, and Vanity Fair’s parent company approached the Andy Warhol Foundation (AWF) seeking a license to use the 1986 Prince portrait for a commemorative magazine, ultimately selecting “Orange Prince,” a different work from Warhol’s Prince Series collection. When Orange Prince was included in the magazine, Goldsmith became aware of Warhol’s Prince Series collection, and sent a letter to the AWF alleging infringement. In response, AWF sued Goldsmith seeking declaratory judgment as to non-infringement, or in the alternative, fair use. The District court rendered summary judgment in favor of AWF on its fair use claim, but the Court of Appeals reversed.
The case represents two competing copyright interests—that of the original content creator and the right to enjoy the fruits of his or her labor vs the interest of artists who look for inspiration from an original work to create a secondary one. A ruling that Warhol’s work constitutes fair use, could be chilling on the film, music, and photography industries, while a decision against fair use could have a chilling effect on the artistic process generally.
Fair use analysis requires consideration of four statutory factors: (1) the purpose and character of the use, including whether it is commercial, transformative, and non-expressive, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used in relation to full copyrighted work, and (4) the effect of use on the potential market for or value of the copyrighted work. Each factor is supposed to be weighed equally.
In 1994, the Supreme Court seemingly unbalanced this analysis in the “Pretty Woman” case (Campbell v. Acuff Rose) where it held that 2 Live Crew’s version of Roy Orbison’s “Oh, Pretty Woman” was fair use. The Court found the song version was transformative since it "add[ed] something new, with a further purpose or different character, altering the first with new expression, meaning or message."
Since then, courts have heavily relied on the transformative nature of works under the first factor when considering fair use. With certain creative works, determining the transformative nature of the work generally takes courts out of the realm of legal analysis into the realm of art critic, which of course, is an entirely subjective endeavor. So perhaps it is unsurprising that the crux of the Warhol case focused on the allegedly transformative nature of Warhol’s work when compared with the underlying work.
The Supreme Court’s Warhol opinion, written by Justice Sotomayor, has the effect of reeling in the increased focus on transformation that followed the Pretty Woman case. For instance, the Court acknowledged that transformation under the first factor “must be weighed against other considerations, like commercialism.” The Court explicitly stated, “[a]lthough new expression, 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 the first factor.”
The Supreme Court found that Orange Prince’s inclusion in the 2016 magazine is a commercial use that competes with Goldsmith’s original photograph. As a result, the first fair use factor favored Goldsmith even though Orange Prince may be transformative.
The context here is everything. The Court did not conclude that Orange Prince itself is infringing, but rather commercial exploitation of the work in a way that directly competes with the original work was infringing. This means a different analysis is required, and potentially a different result may be reached based on different exploitations of a given work. For instance, would the Court have reached a different conclusion if Orange Prince prints were sold to art collectors?
It should be appreciated that the Court probably also engaged in some degree of subjective art analysis when it determined that the differences in aesthetics and message conveyed by Orange Prince were insufficient to outweigh the commercial aspects of the specific use. Chief Justice Roberts’s and Justice Kagan’s dissenting opinion seized on this fact, likening the majority’s analysis of Warhol’s work to “an Instagram filter, and a simple one at that (e.g., sepia-tinting).” The dissent accuses the majority of “[i]gnoring reams of expert evidence—explaining, as every art historian could explain, exactly what the fuss is about,” and “plant[ing] itself firmly in the ‘I could paint that’ school of art criticism.” Justice Kagan notes the incongruity of the majority’s opinion given that this Court “used Warhol paintings as the perfect exemplar of a ‘copying use that adds something new and important’—of a use that is ‘transformative’” in its own 2021 Google LLC v. Oracle America opinion. The dissent argues that the majority does not appreciate how much Warhol added, or even care in the face of an underlying commercial purpose.
It will be interesting to see how courts treat this opinion moving forward, but it is clear that transformation is no longer a “get out of jail free” card for artists, and the nature of any potential commercialization of these works must be analyzed under factor one.