The Andy Warhol Foundation (AWF) learned that it is not a good idea to rely on the fair-use defense in a copyright infringement case on May 18, 2023, when the Supreme Court issued its decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. ___ (2023). The case centered around three artists: Andy Warhol, Lynn Goldsmith and Prince. Specifically, around a photographic portrait that Ms. Goldsmith took of the now deceased artist Prince in 1981 for Newsweek magazine.

Vanity Fair licensed the photograph from Ms. Goldsmith in 1984 for the limited purpose of having Andy Warhol prepare a purple silkscreen of the photograph for a cover for its magazine. The license was limited to “one time” only.

After Prince died in 2016, Vanity Fair contacted the AWF to see whether they could re-use the purple silkscreen. However, Vanity Fair learned that Andy Warhol, who is also deceased, prepared a whole series of silkscreened images of Prince and selected an orange silkscreened image that was based on Ms. Goldsmith’s photograph.

Ms. Goldsmith learned of the “Orange Prince” image and asserted her copyright against the AWF. The AWF actually initiated litigation by filing a declaratory judgment action, which included a fair-use defense.

The district court ruled in favor of the AWF and tossed the case out on a summary judgment. However, Ms. Goldsmith appealed and won at the circuit-court level. The Supreme Court reviewed that opinion to determine whether the circuit court correctly applied the first factor of the fair-use test.

An analysis of fair use involves four factors: “(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”. 17 U.S.C. § 107.

The factors do not need to be given equal weight. Further, the application of fair use is considered on a case-by-case basis, so it can be difficult to predict whether a court will hold that a particular use constitutes fair use. For these reasons, an accused infringer often relies on fair use at his or her peril.

In this particular case, the Court took an extended look at the first factor, which is not as straightforward as it seems because the first factor may favor an accused infringer when the use is “transformative,” even though the use is commercial in nature. A use that has a further purpose or different character is said to be “transformative.” See Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 579 (1994).

Exemplary “uses” that can constitute transformative uses include criticism, comment, news reporting, teaching, scholarship or research. See 17 U.S.C. § 107. However, deciding whether use falls within the scope of one of the exemplary categories of transformative use or with the scope of commercial endeavor can hinge on a “matter of degree.” See Andy Warhol Foundation, slip op. at 25-26 (“In sum, the first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use”).

The AWF contended that the work was transformative because it conveyed a different message or meaning from the original photograph. Specifically, the AWF contended that the silkscreened image portrayed Prince in an iconic fashion, while Ms. Goldsmith’s images were intended to be a more realistic portrayal of Prince. The AWF also noted that Andy Warhol liked to comment on the “dehumanizing nature” and the “effects” of celebrity.

The Court focused on the fact that the purpose of both works were substantially the same. Specifically, the Court noted that both works “are portraits of Prince used in magazines to illustrate stories about Prince.” Andy Warhol Foundation, slip op. at 22-23.