Supreme Court Finds Andy Warhol’s Use of a Photograph of the Musician Prince was not “Fair Use” Under Copyright Laws
By J.W. Beverly, Attorney/Shareholder
In what will likely be a consequential and controversial decision on the “fair use” doctrine, the United States Supreme Court recently held that the unauthorized licensing of Andy Warhol’s silkscreen image of the musician Prince, which was derived from rock and roll photographer Lynn Goldsmith’s earlier photograph, infringed her copyright. The facts are fairly straightforward. The legal analysis, however, may keep artists and their attorneys busy arguing for decades.
In 1984, Vanity Fair paid Goldsmith a license fee of $400 to use her photograph of Prince as an “artistic reference for an illustration” that it hired Warhol to create. As is common in the industry, the license was for a one-time use. Warhol created a silkscreen from the photo which was then used for an article about Prince. Vanity Fair credited Goldsmith for the source photograph.
Years Later: Goldsmith sues Claiming Warhol’s “Orange Prince” Infringed her Copyright
The problem was not with the 1984 licensed use of the Goldsmith photograph. Copyright infringement was potentially triggered when Warhol created an additional 15 works based on the photo without her permission including one known as “Orange Prince.” After Warhol’s death, the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) owned the copyright to the Prince series even though the physical works had been sold to museums and collectors. After Prince’s death, AWF licensed Orange Prince to Conde Nast for a special magazine commemorating the rock legend’s life and music. Conde Nast paid AWF $10,000, but Goldsmith received nothing. When Goldsmith informed AWF that she believed they had infringed on her copyright, AWF sued seeking a declaration based on its claim that Warhol had made fair use of the image such that licensing was not required. Goldsmith counterclaimed for infringement. Notably, Goldsmith had licensed her Prince photos for use in several other magazines.
At trial, AWF won. But on appeal, the Second Court of Appeals held that licensing Warhol’s subsequent work for use by Conde Nast was not a fair use of Goldsmith’s copyrighted photograph.
What is “Fair Use”?
“Fair use” of another person’s creation is permitted under federal copyright law even if such use infringes the copyrighted work. The copyright laws provide that the “fair use of a copyrighted work, . . . for purposes such as criticism, comment, news reporting, teaching … scholarship, or is research, is not an infringement” as an affirmative defense to copyright infringement.
In determining whether a use is fair, a court (relying on well-established copyright law) is directed to consider four factors: (1) the purpose and character of the later use, including whether the use is for commercial or nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copying of the original work; and (4) the effect of the later use on the market for or value of the original work. The Court of Appeals found that all four factors weighed in favor of Goldsmith.
AWF sought review in the Supreme Court which agreed to review whether the first factor of the fair use test (the purpose and character of the use) weighed in Warhol’s favor such that licensing of Orange Prince did not infringe Goldsmith’s copyright.
The Supreme Court Finds Copyright Infringement
In a 7-2 decision written by Justice Sotomayor, the Court found that the first factor weighed in Goldsmith’s favor and affirmed the lower court’s finding that Warhol’s unlicensed use of her photo infringed on her copyright. The analysis largely focused on the reasons for and nature of Warhol’s use of the original work. In that regard, Sotomayor looked to whether Orange Prince was “transformative” in having a use that had a different purpose or character. The more that the appropriator’s use of the copied material is for new, transformative purposes, the more it serves copyright’s goal of “enriching public knowledge” and less likely that it merely supplants or substitutes for the original work. But because Orange Prince shared the same purpose as Goldsmith’s photo – use in magazine stories about Prince – Warhol’s work functioned as a substitute even though Warhol had indisputably changed the original work. The fact that AWF was paid a licensing fee clearly indicated that the use was commercial – which although not dispositive, tended to weigh against a finding of fair use. These two factors – that Goldsmith’s photo and AWF’s licensing of Orange Prince shared the same purpose and that AWF’s used the photo for a commercial purpose – weighed against a finding of fair use absent some other justification for copying.
Sotomayor goes on to differentiate Warhol’s famous Campbell’s Soup Can series from Orange Prince in noting that some derivative works borrowing heavily from an original can be fair use. According to Sotomayor, the purpose of the Campbell’s logo is to advertise soup. Warhol’s use of that copyrighted image functioned as an artistic commentary on consumerism – a purpose directly opposed to advertising soup. Thus, for Sotomayor, the critical factor regarding Warhol’s use of Goldsmith’s photo was the commercial licensing of Orange Prince for use in a magazine which did not embody a “distinct artistic purpose” or convey a “a new meaning or message separate from its source material.” Notably, Sotomayor fails to address the numerous earlier uses of Warhol’s Prince series which are included in many museum collections. Would those images also violate Goldsmith’s copyright?
Confused? Justice Kagan certainly thinks so. In a lengthy dissent, Kagan describes Warhol as the “avatar of transformative copying” and goes into detail regarding his career, artistic processes and other works (particularly his Marilyn Monroe series) based on copying. Kagan also looks to the important role of artists copying and transforming previous works throughout history. Kagan criticizes the majority for treating “creativity as a trifling part of the fair-use inquiry” and failing to recognize Warhol’s role as a “towering figure in modern art” based primarily on his transformative copying.
Bottom Line: A Licensing Dispute that Impacts the Fair Use Doctrine
The bottom line is that at heart his was a licensing dispute. If AWF had simply paid Goldsmith a licensing fee, this case would not have reached our highest court and resulted in what may be a “transformative” (pun intended) iteration of the fair use doctrine. Artists on both sides (those creating original images and those using such images to create new works) will be affected by this decision as will persons licensing such images. There is undoubtably more to follow.