Supreme Court Finds That First Fair Use Factor Weighs Against Andy Warhol Foundation's Commercial Licensing Of 'Orange Prince' To Condé Nast

• Jurisdiction: United States,Federal
• Law Firm: Baker Botts
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Licensing & Syndication, Trials & Appeals & Compensation
• Author: Mr Julie Albert and Meghna Prasad
• Published date: 31 May 2023

The Supreme Court yesterday issued a 7-2 ruling in The Andy Warhol Foundation v. Goldsmith, No. 21-869, finding that the first fair use factor, namely the "purpose and character" of the Andy Warhol Foundation's (the "Foundation") commercial licensing of Warhol's "Orange Prince" to publishing giant Condé Nast weighed against the Foundation. As the opinion did not consider the remaining fair use factors, this opinion affirmed the Second Circuit's finding that the Foundation's use was not a fair one. Slip Op. at 2.

Writing for the majority, Justice Sotomayor wrote that "the first fair use factor... focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism." Slip Op. at 12. Justice Sotomayor went on to explain that new expression is not in itself dispositive of the first fair use factor, and that accordingly, Goldsmith's photograph and the Foundation's copying use of the photograph share the substantially same purpose in their use in magazine stories; further, the use by the Foundation of "Orange Prince" was commercial in nature. Slip Op. at 12. Even though "Orange Prince" adds new expression to the photograph, therefore, the first fair use factor favors Goldsmith. Slip Op. at 13.

The case dates back to 1984, when a professional photographer named Lynn Goldsmith granted the magazine Vanity Fair a limited license for a one-time use of her photograph of Prince for Andy Warhol to use in creating an illustration for a story they were running about Prince. Slip Op. at 3-4. In 2016, following Prince's death, Vanity Fair's parent company Condé Nast sought permission from the Foundation to reuse the 1984 illustration, and instead elected to use another image from Warhol's Prince Series images, rendered in the color orange. Goldsmith only learned about the existence of the Prince Series in 2016 when she saw "Orange Prince" on the cover of Vanity Fair that year. Slip Op. at 5. After asserting her rights, the Foundation sued Goldsmith in the Southern District of New York for declaratory judgment of noninfringement or, in the alternative, fair use. Goldsmith counterclaimed copyright infringement.

The District Court granted the Foundation summary judgment on its fair use defense. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312 (S.D.N.Y. 2019). In 2021, on appeal, the Second Circuit...