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Fair Use and Warhol’s Prince Silkscreens

May 24, 2023

Last week, the Supreme Court decided an important copyright case on the question of fair use in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 2023 WL 3511534.

After Andy Warhol’s death, the Andy Warhol Foundation licensed one of the artist’s works, a silkscreen image of the musician Prince (“Orange Prince”), to Condé Nast for the cover of a commemorative magazine celebrating the musician. The image was based on a photograph by the prominent rock musician photographer, Lynn Goldsmith. Goldsmith had licensed the photograph to Vanity Fair some years earlier, on a single-use basis, as an artist’s reference for a contemplated “illustration” of Prince to go along with an article on the musician. Warhol was hired to do the artwork and used the photograph to make a silkscreen image to accompany the article. After Goldsmith found out about Orange Prince (there was no further license to use the photograph), and that Warhol had in fact made a series of silkscreens based on the photograph, the parties ended up in court litigating the question of whether the Foundation’s licensing of Orange Prince was fair use. (The original photograph, the licensed Prince silkscreen appearing in Vanity Fair, and Orange Prince can be seen in the Supreme Court’s opinion on pages 4-6.)

The Copyright Act grants certain exclusive rights to creators of “works of authorship” (literary, pictorial, musical, dramatic, cinematic) to incentivize the act of creation and thereby increase the trove of creative works. While the Copyright Act is an undeniable economic engine for creativity and the entertainment industry more generally, Congress recognized that the progress of the arts and sciences is built on access to prior works and that the lock of exclusive rights must be balanced with certain access that ensures that growth. The Act, accordingly, creates limitations on, and carveouts to, these exclusive rights to be sure that the works eventually fall into the public domain, and that even during the period of exclusive rights, the public can have socially valuable uses without paying fees.

Perhaps the most notable of these carveouts is “fair use.” Under the Copyright Act, use of a copyrighted work “for purposes such as criticism, comment, news reporting, teaching. . ., scholarship, or research” may be “fair use” depending on four factors: (i) the “purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educa­tional purpose,” (ii) “the nature of the copyrighted work,” (iii) “the amount and sub­stantiality of the portion used in relation to the copyrighted work as a whole,” and, (iv) “the effect of the use upon the potential market for or value of the copy­righted work.”

The Andy Warhol Foundation case as it came to the Supreme Court involved the first of these four factors, relating to the purpose and character of use.  The case is important because in treating this first factor, it more generally presents the question of how far open the door is to borrow from other artists’ works.

In general, if the second work is “transformative” of the copyrighted work, the first factor may tend to weigh in favor of the creator of the second work, and thus towards fair use (all four factors have to be weighed). The district court considered the Prince silkscreen works “transformative” because looking at them and the photo­graph “side-by-side,” they “have a different character, give Goldsmith’s photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” Whereas the Goldsmith photograph was an intimate and “human” photographic portrait, the Warhol silkscreen flattened the image, eliminated photographic gradations, and substituted bright “electric” coloring for grey tones so that the work conveyed a sense of Prince as a celebrity and commodity – arguably commenting on celebrity culture generally. The United States Court of Appeals for the Second Circuit rejected this reasoning and reversed the district court.

In an opinion authored by Justice Sotomayor, the majority of the Supreme Court sided with the Second Circuit, holding that factor 1 favored Goldsmith because the work was not particularly transformative and the uses were commercial. Justice Gorsuch filed a separate concurring opinion. Justice Kagan, joined by Justice Roberts, filed a very heated dissent.

In this case, the key point of difference was the significance of artistic meaning and messaging in the determination of the degree to which a work is transformative. In line with the district court’s side-by-side analysis of the photograph and Orange Prince, Justice Kagan in dissent argued (calling out to powerful expert testimony) that the intimate human photograph of Prince presented a radically different aesthetic and meaning than Orange Prince which presented Prince as an icon of celebritized culture. That difference in the side-by-side comparison was largely sufficient, according to the dissent, for a finding in favor of the Foundation that Orange Prince was transformative and therefore for a finding in its favor on Factor 1.

Very importantly for fair use analysis going forward, Justice Sotomayor and the majority took a very different approach. For them, such side-by-side comparisons are relevant, but in no way dispositive on factor 1. For the majority, whether a use is transformative relates not so much to the aesthetic differentiation (or a side-by-side comparison) as to the difference in actual use, and to whether such uses are commercial. Goldsmith placed many of her photographs, including a photograph of Prince, in magazines. Accordingly, Justice Sotomayor determined that factor 1 favored Goldsmith because the Foundation’s use in the Condé Nast commemorative magazine was essentially the same as Goldsmith’s uses, and because the Foundation’s use was commercial.

To emphasize the importance of “use” (as opposed to the aesthetic presentation), both Justice Sotomayor and Justice Gorsuch emphasized that whether a use is problematic can be context dependent; if the Foundation had sought, for example, to publish Orange Prince in an art magazine or book or to display it in a museum, the result, they said, might have been different.

The Court’s decision in the Andy Warhol case suggests that a creator of a derivative work, even if that work is remote in meaning and aesthetic to the original work, will face an uphill battle on factor 1 if the use of the derivative work is similar to that of the original work, especially in a commercial context. For artists and other creators who felt they may have had some room to breathe in creation, the decision, as Justice Kagan suggests in very forceful terms, is likely to induce a bit of caution.

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