U.S. Supreme Court holds that first factor in fair use analysis, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” does not support fair use defense for Andy Warhol Foundation’s licensing of silkscreen print of pop icon Prince that was based on black-and-white photograph, because original photograph and AWF’s use had substantially similar purposes, and use was commercial.
Vanity Fair hired Andy Warhol, by then already a leading figure in the pop art movement, to create the magazine illustration. From Goldsmith’s photograph, Warhol created a purple silkscreen portrait of Prince (Purple Prince). Purple Prince appeared alongside an article about the musician in the November 1984 issue of Vanity Fair. Unbeknownst to Goldsmith, Warhol also created 15 other works based on Goldsmith’s photograph, which came to be called the “Prince Series.” Among the series of works was an orange silkscreen portrait of Prince (Orange Prince). When Warhol died in 1987, the Prince Series, including Orange Prince, passed to the Andy Warhol Foundation for the Visual Arts Inc. (AWF).
After Prince’s death in 2016, Condé Nast contacted AWF about reusing Purple Prince for a special edition magazine to commemorate Prince. AWF informed Condé Nast about the other Prince Series images, including Orange Prince, and granted Condé Nast a license to publish Orange Prince in exchange for a $10,000 fee. Orange Prince appeared on the cover of the commemorative magazine, which was published that same year. When Goldsmith saw Orange Prince on the cover of the magazine, she notified AWF that she believed it had committed copyright infringement. AWF then brought suit against Goldsmith seeking a declaratory judgment of noninfringement, and Goldsmith counterclaimed for copyright infringement.
The district court granted summary judgment to AWF on the basis that the Prince Series works constituted fair use. With respect to the first factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” the district court held that Orange Prince was “transformative” because it “transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” (Read our summary of the district court’s decision here.)
On appeal, the Second Circuit reversed, holding all four fair use factors favored Goldsmith. As to the first factor, it stated that transformative use should not turn upon a court’s subjective evaluation of the works’ “underlying artistic message.” Nor, the court held, is it sufficient for the new work to simply reflect “another artistic style” while retaining the essential elements of its source material, as Warhol’s Prince Series did here. Instead, it held, courts “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.” In the court’s view, here, “the overarching purpose and function of the two works at issue . . . is identical.” (Read our summary of the Second Circuit’s decision here.)
The U.S. Supreme Court granted certiorari solely on the issue of whether the first factor weighed in favor of a finding that AWF’s licensing of Orange Prince to Condé Nast in 2016 constituted fair use. The Court did not consider any other uses beyond that license, such as Warhol’s creation of Orange Prince or the other Prince Series works, or the display or sale of those works. In what is the Supreme Court’s first extended treatment of the doctrine of fair use in the context of creative works since its 1994 decision in Campbell v. Acuff-Rose Music, Inc., the Court held that the first factor did not weigh in favor of AWF’s fair use defense.
Writing for a seven-member majority, Justice Sotomayor explained that when analyzing the first fair use factor, a court must first consider the degree to which an allegedly infringing use has a further purpose or different character as compared to the original work, and then weigh the degree of difference against the commercial nature of the use.
As to purpose and character, the “central” question from Campbell is whether the new work merely supersedes the objects of the original creation, supplanting the original—in which case the use should be deemed infringing—or instead adds something new, with a further purpose or different character. The use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work is more likely to substitute for, or supplant, the original. The court pointed to the purposes listed in the preamble to Section 107 of the Copyright Act as illustrative: “criticism, comment, news reporting, teaching . . . , scholarship or research” all contemplate the use of an original work for a manifestly different purpose and may guide the first factor inquiry.
The Court emphasized that the question of further purpose or different character is a “matter of degree.” Many secondary works add something new, but “[t]hat alone does not render such uses fair,” the Court explained. The larger the difference, the more likely the first factor weighs in favor of fair use. A use that has a further purpose or different character is often said to be “transformative,” the Court acknowledged. But this too is a matter of degree, and an overbroad concept of “transformativeness” risks narrowing a copyright owner’s exclusive right to prepare derivative works. To preserve an owner’s right to derivative works (defined in Section 101 of the Copyright Act to include “any other form in which a work may be . . . transformed”), the degree of transformation required to make the use of an original work “transformative” for purposes of fair use “must go beyond that required to qualify as a derivative,” the Court explained.
Further commenting on the notion of purpose and character, the Court explained that the first factor relates to the “justification” for the secondary use. For example, a secondary use may be justified because copying is reasonably necessary to achieve the user’s new purpose—such as in the case of a parody, which needs to mimic an original to make its point, or other commentary or criticism that targets the original. Critically: “An independent justification like this is particularly relevant to assessing fair use where an original work and copying use share the same or highly similar purposes, or where wide dissemination of a secondary work would otherwise run the risk of substitution for the original or licensed derivatives of it.”
Against this backdrop, the Court held that the sole use by AWF at issue—the licensing of Orange Prince to Condé Nast in 2016—served substantially the same purpose as Goldsmith’s original photograph: both were portraits of Prince used in magazines to illustrate stories about Prince.
As to whether AWF’s licensing use was commercial in nature, the Court held that it indisputably was, given the $10,000 licensing fee paid to AWF. Where, as here, the secondary use has a commercial character, it “tends to weigh against a finding of fair use.” Accordingly, both the purpose and character of the use and its commercial character “point in the same direction”—against AWF.
The Court was careful to clarify that not all of Warhol’s works, nor all uses of them, give rise to this same fair use analysis. It used Warhol’s Campbell’s soup can works as an example: The purpose of the Campbell’s logo is to advertise soup, whereas Warhol’s art used Campbell’s copyrighted work for an artistic commentary on consumerism, and on the logo itself as a symbol of mass consumption. That secondary use, the Court explained, does not supersede the objects of the advertising logo. By contrast, AWF’s licensing use of Goldsmith’s photograph did not comment on the photograph in such a manner, the Court noted.
The Court rejected AWF’s two counterarguments. AWF argued, and the district court held based in part on Campbell, that Orange Prince was sufficiently transformative because it has a different meaning or message than Goldsmith’s original, portraying Prince as “an iconic, larger-than-life figure.” The Court acknowledged that its opinion in Campbell did describe a transformative use as one that “alter[s] the first [work] with new expression, meaning, or message.” But Campbell cannot be read to mean that the first factor weighs in favor of any use that adds some new expression, meaning or message, the Court clarified. If it were to accept that argument, the Court reasoned, fair use would swallow a copyright owner’s exclusive right to derivative works, and a range of commercial copying of photographs would be permitted by any user making modest alterations to the original. Instead, meaning or message is simply one thing to be considered in determining whether the new use serves a purpose distinct from the original.
AWF also argued that Orange Prince served the distinct purpose of commenting on the “dehumanizing nature” and “effects” of celebrity. But that commentary “had no critical bearing” on the photograph in the way that a parody of the photograph might. In other words, using Goldsmith’s photograph was not necessary to comment on celebrity culture. While copying Goldsmith’s photograph might have been helpful in conveying that new meaning or message, that did not suffice to satisfy the first factor, in the Court’s view. Were it sufficient, any number of would-be infringers would be free to use copyrighted works where helpful—e.g., a musician who finds it helpful to sample another artist’s song to make his own, a playwright who finds it helpful to adapt a novel, or a filmmaker who would prefer to create a sequel or spinoff. Especially when weighed against the commercial nature of the use, AWF’s asserted purpose of commentary was unavailing.
In a concurring opinion, Justice Gorsuch, with whom Justice Jackson joined, wrote to highlight that the arguments advanced by AWF would require courts to focus on “the purpose the creator had in mind” (e.g., what new aesthetic Warhol intended to apply), as opposed to the objective “purpose and character of the challenged use” (e.g., the licensing of Orange Prince to a magazine). Justice Gorsuch defended the “challenged use” approach as more judicially administrable and consistent with the text of the Copyright Act.
In a lengthy dissent, Justice Kagan, with whom Chief Justice Roberts joined, wrote that the majority had understated Warhol’s “transformative” and “dramatic alter[ation]” of Goldsmith’s photograph. Justice Kagan argued that the majority opinion’s allegedly narrow focus on AWF’s commercial licensing of Orange Prince “leaves our first-factor inquiry in a shambles” by ignoring “how different the Warhol is from the original photo.”
Summary prepared by Frank D’Angelo and Keane Barger