Introduction

In May, the Supreme Court issued an unusually contentious 7-2 decision concerning the fair use defense available to alleged copyright infringers. The majority decision in The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith found that a 2016 license from the Andy Warhol Foundation (“AWF”) to Condé Nast for use of a silk-screened image of Prince did not constitute fair use, since AWF did not have permission from the photographer whose picture Andy Warhol used to create the image. In so holding, the Supreme Court affirmed the Second Circuit Court of Appeals’ decision, which we discussed when it issued.

Writing for the majority and dissent respectively, Justices Sotomayor and Kagan spend an inordinate amount of time battling it out with one another their decisions, each employing an antagonistic tenor atypical of the usual allies. In defending the transformative nature of Andy Warhol’s art, Justice Kagan writes in her dissent that “[t]here is precious little evidence in today’s opinion that the majority has actually looked at these images, much less that it has engaged with the expert views of their aesthetics and meaning,” and that, instead, “the majority plants itself firmly in the ‘I could paint that’ school of art criticism.” Justice Kagan fears that this decision will “stifle creativity of every sort,” “thwart the expression of new ideas and attainment of new knowledge,” and “make our world poorer.”

In her majority opinion, Justice Sotomayor accuses Justice Kagan of a “series of misstatement and exaggerations, from the dissent’s “very first sentence… to its very last.” Justice Sotomayor states that the dissent’s “claims will not age well. It will not impoverish our world to require AWF to pay Goldsmith a fraction of the proceeds from its reuse of her copyrighted work. Recall, payments like these are incentives for artists to create original works in the first place. Nor will the Court’s decision, which is consistent with longstanding principles of fair use, snuff out the light of Western civilization, returning us to the Dark Ages of a world without Titian, Shakespeare, or Richard Rodgers.”

While the decision provides a rare look into the internal dynamic of the Justices and raises interesting existential questions about the transformative nature of art, the reality is that this decision should not have the drastic impact on artistic creativity that the dissent fears. This is because the majority’s holding does not pertain to the creation of art or even the copying of art as inspiration for new work. The majority is careful to explain that it is not evaluating the artistic significance of any work. Instead, the majority is focused exclusively on the one particular “use” that Goldsmith alleges infringer her copyright: the 2016 license to Condé Nast (and not Warhol’s original creation of the image).

Background

Celebrity photographer Lynn Goldsmith photographed Prince in 1981. Goldsmith’s photos of Prince appeared on the cover of numerous magazines between 1981 and 2016. In 1984, Goldsmith licensed one of her photos of Prince to Vanity Fair magazine for one-time use as an artist reference (the creation of a visual work based on the photograph). Warhol, the “artist” in the artist reference, created an image for Vanity Fair, but he also created a series of additional prints which were not covered under the license. AWF came to own the copyright in the 16 prints that Warhol created based on Goldsmith’s photograph.

One of the 16 prints in Warhol’s series is known as “Orange Prince.” Shortly after Prince’s death in 2016, AWF licensed Orange Prince to Condé Nast for use as one image of many in its article about Prince. It is this specific license, and only this license, that is the focus of the court’s opinion. Crucially, the court’s opinion focused exclusively on AWF’s license of Orange Prince to Condé Nast and not Warhol’s original creation of the work.

The Supreme Court’s decision

The only question before the Court was: does “the first fair use factor, ‘the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes,’ [17 USC] § 107(1), weigh[] in favor of AWF’s recent commercial licensing to Condé Nast”? The majority said “no.”

By way of brief background, “fair use” is a defense to alleged copyright infringement. The Copyright Act sets out four factors to consider when determining whether a particular use is “fair.” Specifically, one should consider (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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.

The first fair use factor considers whether the new work would supersede the original or instead adds something new, with a further purpose or difference character, i.e. a transformative use. If the new work supersedes the original, it is less likely to be considered fair use. In this regard, determining the proper “use” in question is critical to the analysis.

Here, Justices Sotomayor and Kagan strongly disagreed on which “use” should be considered, with the majority defining “use” to be the license from AWF to Condé Nast and the dissent defining “use” to be the original creation of the artwork by Warhol.

Influencing the majority’s decision was the commercial use of not just Orange Prince, but also of Goldsmith’s images of Prince. Generally, a commercial use is less likely to constitute fair use. And the fact that Goldsmith’s images of Prince had been licensed to various magazines over the years indicated that the two uses were the same such that AWF’s use, by licensing, superseded Goldsmith’s use. In short, there was nothing transformative about licensing an image of Prince for use in a magazine.

The dissent would have found transformation because Warhol took the original image of Prince and made it his own; an undertaking for which Warhol deserves. The majority would actually agree with this analysis and certainly believes that Warhol deserves credit for creating Orange Prince. However, because the “use” in question was a license for printing in a magazine article about Prince, and Goldsmith’s image of Prince could have equally served the same purpose, the use was not transformative.

Conclusion

The Court’s decision was narrow and will likely not have any sweeping ramifications on the creation of art and the artistic process. Going forward, both artists and copyright attorneys will have to carefully consider the “use” of any particular work is when determining the availably of a fair use defense. Artists, however, should feel comfortable creating art as they always have, relying on existing works to influence their own, as the artist makes something decidedly unique and their own, just as Warhol did with Orange Prince.