What Constitutes Fair Use? SCOTUS Poised to Clarify How Copyright Doctrine Applies to Warhol Art

The U.S. Supreme Court has agreed to consider a copyright infringement lawsuit involving paintings Andy Warhol made using photographs of rock star Prince.

The U.S. Supreme Court has agreed to consider a copyright infringement lawsuit involving paintings Andy Warhol made using photographs of rock star Prince. The specific issue before the Court in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith involves when a work of art is “transformative” for purposes of fair use under the Copyright Act.

Fair Use Doctrine

The Copyright Act grants the public the right to make “fair use” of certain copyrighted content. The rationale behind the fair use doctrine is that society can often benefit from the unauthorized use of copyrighted materials when the purpose of the use is to educate or inform the public.

The fair use statute requires the courts to consider the following factors in deciding whether the defense of fair use should defeat a claim of copyright infringement:

• The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
• The nature of the copyrighted work;
• The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• The effect of the use upon the potential market for or value of the copyrighted work.

While courts will evaluate all four factors, determining whether works are “transformative” under the first factor is often at the heart of the analysis. As the U.S. Supreme Court explained in Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), a work is “transformative” if it “adds something new” by “altering [the source material] with new expression, meaning, or message.”

Copyright Dispute Over Prince Series

The case centers on a series of silkscreen prints and pencil illustrations created by iconic visual artist Andy Warhol. Warhol’s works are based on a 1981 photograph of the musical artist Prince, which was taken by Lynn Goldsmith and in which she holds the copyright. In 1984, Goldsmith’s agency licensed the photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, that artist was Warhol, who went on to create an additional fifteen works, which together became known as the Prince Series.

Goldsmith first became aware of the Prince Series after Prince’s death in 2016. Soon thereafter, she notified The Andy Warhol Foundation for the Visual Arts, Inc. (AWF), successor to Warhol’s copyright in the Prince Series, of the perceived violation of her copyright in the photo. In 2017, AWF sought a declaratory judgment that the Prince Series works were non-infringing or, in the alternative, that they made fair use of Goldsmith’s photograph. Goldsmith countersued for infringement.

The United States District Court for the Southern District of New York granted summary judgment to AWF on its assertion of fair use, concluding that Warhol transformed Goldsmith’s portrayal of Prince as a “vulnerable human being” by depicting him as an “iconic, larger-than-life figure.” It also dismissed Goldsmith’s counterclaim with prejudice.

Second Circuit’s Decision on Transformative Use

The Second Circuit reversed, holding that the Prince Series was not transformative. It further found that the remaining fair use factors favored Goldsmith.

The Second Circuit acknowledged that Goldsmith’s photograph and Warhol’s Prince Series embodied different messages, noting that Goldsmith “portray[ed] Prince as a ‘vulnerable human being,’” while Warhol deliberately “strip[ped] Prince of that humanity and instead display[ed] him as a popular icon.” Nonetheless, it concluded that Warhol’s concededly different “meaning [and] message,” should not be a deciding factor.

According to the Second Circuit, “the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue.” Rather, the judge must examine whether the secondary work’s use of its source material is in service of a “fundamentally different and new” artistic purpose and character, such that the secondary work stands apart from the “raw material” used to create it.

“Although we do not hold that the primary work must be ‘barely recognizable’ within the secondary work…the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material,” the court explained.

Applying the above test, the Second Circuit concluded that the Prince Series was not “transformative” within the meaning of the first factor of the fair use doctrine. “[T]he Prince Series retains the essential elements of its source material, and Warhol’s modifications serve chiefly to magnify some elements of that material and minimize others,” the court wrote. “While the cumulative effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.”

Issues before the Supreme Court

In its petition for writ of certiorari, the Andy Warhol Foundation argued that the Second Circuit’s decision threatens a “sea-change” in the law of copyright, writing:

Under this Court’s precedent, the fair use inquiry requires ascertaining whether one creative work that draws from another conveys a different meaning or message from the original. A follow-on work that deploys preexisting content in the service of saying something new and distinct is much more likely to be fair use. The Second Circuit’s test, however, forbids ascertaining whether the follow-on work conveys a different meaning or message from the original, where both pieces are works of art that share a visual resemblance. Certiorari is warranted to prevent the untenable result that creative works of tremendous cultural significance could be lawful in one jurisdiction, and unlawful in another, depending on whether a court is permitted to ascertain the meaning of the new work.

On March 28, 2022, the Supreme Court granted certification. The justices specifically agreed to consider the following question: “Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the Second Circuit has held).”

Oral arguments in the closely-watched case will take place next term, which begins in October. Please check back for updates.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Ron Bienstock, Jill Michael, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.