The US Supreme Court issued its long-awaited decision in Andy Warhol Foundation for the Visual Arts v. Goldsmith, holding that the purpose and character of the Andy Warhol Foundation’s use of a copyrighted photograph of the artist known as Prince weighed against a finding of fair use.
The Court’s decision answers important questions — particularly, whether a new message or expression is enough on its own to weigh the “purpose and character of the use” factor in favor of fair use, to which the Court said no. The opinion also raises new questions about how to apply the factor — with implications for the visual arts and beyond, including software, literature, music, film, and all other works protected by copyright.
Disclaimer: Goodwin participated in this case by filing amicus briefs before the Supreme Court and the Second Circuit, most recently on behalf of the Robert Rauschenberg Foundation, the Roy Lichtenstein Foundation, the Joan Mitchell Foundation, the Brooklyn Museum, and the College Art Association.
In 1981, Lynn Goldsmith took a series of photos of the musician Prince. Goldsmith licensed one of the photos — a black-and-white portrait of the musician — to Vanity Fair for use as an “artist reference” for an illustration in an upcoming issue of the magazine. The magazine then hired pop artist Andy Warhol to create a silkscreen portrait based on the photo, which Vanity Fair published with an article about Prince. Separately, Warhol created 13 other silkscreen prints — including an orange silkscreen print — and two pencil drawings.
After Prince’s death in 2016, the Andy Warhol Foundation provided Condé Nast with a license to use the orange silkscreen print for a magazine issue commemorating Prince. When Goldsmith saw the orange print, she notified the Foundation that she believed the print infringed on her copyright of the black-and-white photo. The Foundation filed a declaratory judgment action against Goldsmith, seeking either a judgment that the Foundation did not infringe on Goldsmith’s copyright, or, in the alternative, that the orange print was protected under the Copyright Act’s fair use defense. The Foundation won on its fair use claim before the district court, but the Second Circuit reversed, holding that the Foundation failed to establish fair use.
The Copyright Act requires courts to consider four factors in deciding whether the use of a copyrighted work is a fair: (1) the purpose and character of the use, (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 for or value of the copyrighted work. 17 USC. § 107. The Supreme Court’s decision in Warhol concerns the first factor — the purpose and character of the use.
The Majority Opinion: Compare Uses, Not Expressions
Longstanding Supreme Court precedent holds that the “purpose and character of the use” factor is informed by “whether the copier’s use ‘adds something new, with a further purpose or different character, altering’ the copyrighted work ‘with new expression, meaning or message.’” Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1203 (2021) (quoting Campbell v. Acuff-Rose Music, Inc., 510 US 569, 578 (1994)).
The Warhol Court added an important clarification: the inquiry into the purpose and character asks not just whether the use at issue has a purpose or character different from the original, but also to what extent. The mere addition of “some new expression, meaning, or message,” the Court held, is not enough to tip the factor toward fair use. If it were sufficient, that would endanger the copyright holder’s exclusive right to create derivative works. The question is a matter of degree. Thus, where an original work and a secondary work have the same purpose, and the secondary use is commercial, some other “compelling justification” is needed to justify fair use.
Applying these principles, the Court determined that the first factor weighed against a finding of fair use. Critically, the Court limited its analysis to the Foundation’s commercial licensing of Andy Warhol’s orange silkscreen print to Condé Nast. The Court did not rule on whether Warhol’s creation of a silkscreen print based on a photograph was fair use. For the Court, the Foundation’s use was just like Goldsmith’s — the commercial licensing of an image for use in a magazine to illustrate a story about Prince. The Court failed to discern any “particularly compelling justification” for Warhol’s copying of Goldsmith’s photo. Based on this conclusion, the Court agreed with the Second Circuit and found that the first factor weighed against fair use.
The Court rejected the Foundation’s argument that the purpose and character of the use was transformative because Andy Warhol’s silkscreen rendering added a new meaning and message to the photo. In doing so, the Court held that courts must conduct an objective inquiry into how the accused infringer used the copyrighted work, and they must not inquire into the subjective intent of the user or into the meaning that an art critic or judge might discern from the work. Applying that approach, the Court determined that what matters is the context of the specific use at issue — the illustration of a magazine article about Prince with a portrait of Prince.
Justice Gorsuch, joined by Justice Jackson, wrote a concurrence confirming that the Court was not deciding “whether the Foundation’s image of Prince infringes on Ms. Goldsmith’s copyright,” and stressing that the focus of the first factor should be on the specific challenged use of the work.
Justice Kagan’s Dissent: Expression Matters for “Purpose and Character”
Justice Kagan, joined by Chief Justice Roberts, dissented, arguing that the majority opinion left the “first-factor inquiry in shambles.” She criticized the majority for adopting a standard under which expression is rendered meaningless, despite Campbell’s clear focus on “new expression, meaning, or message.” The Court’s decision, she posited, was not “faithful to [its] precedent” on fair use, including Google v. Oracle. Justice Kagan quipped that even Shakespeare “would not qualify for fair use” under the Court’s approach.
By focusing its decision on the Foundation’s license to Condé Nast, rather than on Andy Warhol’s creation of the orange silkscreen rendering of Prince, the Court avoided the difficult question of whether and to what extent Warhol’s artwork was transformative of Goldsmith’s photograph. The Court also provided clarity in holding that new meaning or message, as seen through the eyes of the artist or an art critic, is not enough to weigh the “purpose and character of the use” factor in favor of fair use.
But the decision presents at least several questions that may further complicate how courts analyze fair use.
First, the Court seems to establish a new standard — requiring a “compelling justification” where the original and secondary uses share a closely similar purpose and character — without articulating what such a “compelling justification” is. While the Court did note that the subjective intent of the accused infringer is not determinative and that courts should consider “objective indicia of the use’s purpose and character,” the Court provided little further guidance. Disagreements about what makes a particular justification “compelling” could result in protracted litigation.
Second, the Court leaves open the level of generality at which courts should discern the use. The Court distilled both parties’ uses down to “portraits of Prince used to depict Prince in magazine stories about Prince.” But not all use cases will be so clear cut. While the majority opinion states that courts should consider “the degree of difference” between uses, it leaves litigants with few tools on how to measure that difference.
Finally, Warhol leaves unanswered perhaps the most interesting question of the case: in creating artwork, how much leeway does an artist have to take from and use preexisting works? As Justice Gorsuch’s concurrence indicates, that is a question for another day.