A Picture, A Painting, And A Prince: The Supreme Court Addresses The 'Fair Use' Doctrine

• Published date: 29 May 2023
• Subject Matter: Finance and Banking, Intellectual Property, Media, Telecoms, IT, Entertainment, Commodities/Derivatives/Stock Exchanges, Copyright, Music and the Arts
• Law Firm: Freeman Law
• Author: Cory Halliburton

On May 18, 2023, the U.S. Supreme Court issued its 43-page majority opinion in the case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869, 598 U.S. __ (May 18, 2023) (slip opinion linked here).

Facts. The facts of the case center around artistic creations of Andy Warhol and Lynn Goldsmith.

In the 1980s, Goldsmith, a photographer extraordinaire, captured images of many rock-n-roll stars, including Prince. In 1984, Goldsmith licensed to Vanity Fair magazine one of her photos of Prince for "one time" use as an "artist reference." Vanity Fair wanted to use the photo for the creation of illustrations to be included in an article about Prince. Vanity Fair engaged renowned artist, Andy Warhol, to prepare the illustrations. Goldsmith was credited for the source and was paid $400. But, Warhol went on to create additional works using Goldsmith's photo or the illustrations he created from it. In 2016, the Andy Warhol Foundation for the Visual Arts, Inc. (AWF) licensed one of those works to magazine publisher, Condé Nast, for illustrating another story about Prince. AWF received $10,000 for the license. Goldsmith received nothing.

Shown below are the three creative works in issue in the case:

Goldsmith, 598 U.S. __ (May 18, 2023) at pg. 4 (slip opinion)

Id. at pg. 5.

Id. at pg. 6.

Goldsmith informed AWF that the use of the photo in the Condé Nast magazine infringed her copyright in the photo she provided to Vanity Fair in 1984. In response, AWF sued her, claiming that AWF's use was "fair use" and thus, pursuant to 17 U.S.C. ' 107, was not an infringement on Goldsmith's copyright. Goldsmith counterclaimed for infringement.

The federal district court in New York ruled in favor of AWF. The Court of Appeals for the Second Circuit reversed, finding that all factors of the fair use doctrine favored Goldsmith. AWF petitioned the matter to the U.S. Supreme Court, focusing primarily on the first factor of the fair use doctrine, being "the purpose and character of the use." See 17 U.S.C. ' 107(1). AWF contended that the purpose and character of its use of Goldsmith's photograph weighed in favor of fair use because Warhol's silkscreen image of the photograph has a new meaning or message than the original photograph created by Goldsmith, i.e., AWF claimed that its use was "transformative" and thus protected fair use.

Issue. Whether the fair use factor - "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes," 17 U.S.C. ' 107(1)'weighed in favor of AWF's later commercial licensing.

Holding. No, AWF's use of Goldsmith's photograph was not fair use. Fair use, under section 107(1) of the Copyright Act, does not protect all use of a copyrighted work that might add some new expression, meaning, or message. Otherwise, "transformative use" would swallow the copyright owner's exclusive right to prepare derivative works from an original. The Court stated as follows:

Although the purpose could be more specifically described as illustrating a magazine about Prince with a portrait of Prince, one that portrays Prince somewhat differently from Goldsmith's photograph (yet has no critical bearing on her photograph), that degree of difference is not enough for the first factor to favor AWF, given the specific context of the use. To hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals. As long as the user somehow portrays the subject of the photograph differently, he could make modest alterations to the original, sell it to an outlet...