Practice Areas

Print PDF

SCOTUS rejects fair use defense in Warhol copyright case

October 1, 2023
October / November 2023 IP Newsletter

The U.S. Supreme Court has issued its much-anticipated ruling in a case that drew attention partly because it involved two widely renowned artists: the musician Prince and the visual artist Andy Warhol. More importantly, though, the high court weighed in on some of the limits of the fair use defense to copyright infringement.

Setting the scene

The case stems from a 1981 photograph of Prince taken by Lynn Goldsmith, a professional photographer. Years later, she licensed the photo to a magazine to use once as an “artist reference” — the basis for an illustration that an unnamed artist would create and the magazine would publish. That artist turned out to be Warhol.

Going beyond the assignment, Warhol created additional works that became known as the “Prince Series.” Works in the series were sold to third parties or sent to the Warhol Museum.

Goldsmith learned of the series after Prince’s death in 2016 when she saw one of the works on a magazine cover. She notified the Andy Warhol Foundation (AWF), which had licensed the use to the magazine, of the perceived copyright infringement.

AWF then sued Goldsmith, seeking a declaratory judgment that the “Prince Series” represented a fair use of her photo. The trial court ruled for AWF and dismissed Goldsmith’s counterclaim for infringement. On appeal, the U.S. Court of Appeals for the Second Circuit reversed, finding that all four of the fair use factors favored the photographer. The case subsequently landed at the Supreme Court.

Framing the issue

AWF challenged only the first of the fair use factors: “the purpose and character of the use, including whether such use is of a commercial nature or is for educational nonprofit purposes.” As the Court explained, the factor considers the reasons for, and nature of, the copier’s use of an original work.

The central question is whether the use adds something new to the original work, with a further purpose or different character — and, if so, to what extent the use has a purpose or character different from the original. The larger the difference, the more likely this factor favors fair use.

AWF argued that the “Prince Series” works were transformative because they conveyed a different meaning or message than Goldsmith’s photograph, portraying him as iconic and larger than life. The Court, however, said that wasn’t enough. While new expression, meaning or message may be relevant to whether a copying use has a sufficiently distinct purpose or character, it doesn’t answer the question on its own.

Finding purpose

The copying use at issue here was AWF’s licensing of one of the works to a magazine publisher. The court found that, as portraits of Prince used to depict him in magazine stories about Prince, the original photo and the copying use shared substantially the same purpose.

The Supreme Court clarified that the first factor relates to the justification for the copying use. In a broad sense, it said, a use with a distinct purpose is justified because it furthers the goal of copyright (promoting progress without diminishing the incentive to create). More narrowly, a use may be justified because copying is reasonably necessary to achieve the user’s new purpose, as in parody.

An independent justification is particularly relevant when, as here, the original work and the copying use share the same, or highly similar, purposes. The Court found no such independent justification, though.

Further, AWF’s use was of a commercial nature. Like a new expression, meaning or message, the commercial nature of a use is relevant but not decisive. It’s weighed against the degree to which the copying use has a further purpose or different character. A use’s “transformativeness” may outweigh its commercial nature, the court acknowledged. (See “Not every Warhol work,” below.) In this case, both the copying use and the commercial character of that use pointed against fair use.

A narrow focus

Critically, the Supreme Court’s ruling addressed AWF’s licensing of the copying work, not Warhol’s creation of the “Prince Series” from Goldsmith’s photo. It didn’t assess whether the works in the series infringed her copyright, only whether the fair use defense applied.

Sidebar:   Not every Warhol work

The majority opinion in Warhol stressed that not all the artist’s works, nor all uses of them, would give rise to the same fair use analysis. To illustrate, it cited Warhol’s famous “Soup Can series” that used the Campbell’s soup logo.

The purpose of the original logo, the Court said, is to advertise soup. Warhol, however, used Campbell’s copyrighted work for an artistic commentary on consumerism — “a purpose that is orthogonal to advertising soup.”

The Court also found that a further justification for his use of the logo was apparent because the series targeted the logo; the very nature of that well-known logo enabled the commentary. But the Andy Warhol Foundation’s use of the Prince photo didn’t target the photo or have any other compelling justification.

The situation might be different, the Supreme Court noted, if the foundation licensed the series to a soup business to serve as its logo. Such a use would share much the same purpose as the Campbell’s logo does.

© 2023

View Document(s):