Putting The "Use" Back In Fair Use: The Supreme Court Decides Andy Warhol Foundation For The Visual Arts, Inc. V. Goldsmith

• Published date: 31 May 2023
• Subject Matter: Media, Telecoms, IT, Entertainment, Music and the Arts
• Law Firm: Jenner & Block
• Author: Mr Steven Englund, Susan J. Kohlmann, Julie Ann Shepard, Jacob Lincoln Tracer, Isabel Farhi and Zachary Marino

The Supreme Court's recent and much-anticipated decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith redefines the contours of the fair use defense to copyright infringement. The Court ruled in favor of respondent Lynn Goldsmith, holding that the licensing to a magazine of an Andy Warhol print depicting the recording artist Prince did not constitute fair use of Goldsmith's photograph on which the print was based. The Court's analysis was limited to the first of the four statutory fair use factors and emphasized that any fair use analysis must focus on the specific use at issue. While the decision was 7-2, the majority and dissenting opinions are highly charged and replete with pointed, contentious rejoinders throughout.

Background

This case arose out of the licensing of a Warhol silkscreen print by the Andy Warhol Foundation for the Visual Arts ("AWF") to a magazine. In 1984, rock-and-roll photographer Goldsmith licensed her photograph of Prince in her studio to Vanity Fair for a single use as an "artist reference for an illustration" that the magazine commissioned Warhol to create.¹ Later, Warhol used the photograph to create the "Prince Series" consisting of "13 silkscreen prints and two pencil drawings."² After Prince's death in 2015, AWF licensed one image from the Prince Series (the "Orange Prince") to Condé Nast (Vanity Fair's parent company) to use in a Vanity Fair commemorative edition celebrating Prince.³ Goldsmith notified AWF that she believed that image violated her copyright, and AWF sued Goldsmith and her agency seeking a declaratory judgment of noninfringement or, in the alternative, fair use.⁴ Goldsmith counterclaimed for infringement.⁵

The district court granted summary judgment in favor of AWF, holding that the Prince Series works were fair uses of Goldsmith's photograph based on the four factors enumerated in 17 U.S.C. ' 107.⁶ The Second Circuit reversed, holding that "all four fair use factors favored Goldsmith."⁷ AWF sought and the Supreme Court granted certiorari on the narrow question of whether the first of the four fair use factors-"the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes"⁸ -weighed in Goldsmith's favor.

The Court's Decisions

The Court affirmed the Second Circuit's decision. The opinion is a reminder that fair use is a defense to allegations that specific conduct is infringing, and that the statutory provisions addressing fair use reference that specific "use." Consequently, "the same copying may be fair when used for one purpose but not another."⁹

Writing for the majority, Justice Sotomayor summarized the first fair use factor as considering:

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. If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.¹⁰

Applying this standard, the Court's analysis asks how to characterize the "use" of a work, focusing on "the specific 'use' of a copyrighted work that is alleged to be 'an infringement.'"¹¹ Here, the Court expressly limited its analysis to AWF's licensing of the photograph to Condé Nast, rather than other uses like Warhol's creation of the Prince Series or display of the Prince Series in museums.¹²

The Court explained that this narrow consideration of the specific use alleged to be infringing is required because the first fair use factor asks a "central" question regarding the use at issue: "whether the new work merely 'supersedes the objects' of the original creation . . . ('supplanting' the original), or instead adds something new, with a further purpose or different character."¹³ This concept is often referred to as "transformative use," a term drawn from the Supreme Court's 1994 decision in Campbell v. Acuff-Rose Music. The Court noted that determining whether "a use shares the purpose or character of an original work" will not always be "clear cut," as that inquiry is "a matter of degree."¹⁴ However, the "larger the difference" in purpose and character between the original work and secondary use, "the more likely the first factor weighs in favor of fair use."¹⁵ Here, because...