A Bridge Too Far (for Copyright Fair Use)

In Andy Warhol Foundation for the Visual Arts v. Goldsmith et al.,[1] the United States Supreme Court [the Court] affirmed the U. S Court of Appeals for the Second Circuit’s holding that the Foundation’s licensing of an Andy Warhol print did not comprise fair use.[2]^,[3]

The litigation evolved from the license between Ms. Goldsmith and the Foundation by which Andrew Warhol would exclusively create (i) one print of her photograph of the musician Prince (ii) for the magazine Vanity Fair.  Ms. Goldsmith subsequently discovered the Foundation had licensed Mr. Warhol’s print to another publication outside the Vanity Fair license. There was also no credit to by this second magazine and no payment to Ms. Goldsmith. When Ms. Goldsmith contacted the Foundation about her Prince photograph, the Foundation filed a lawsuit seeking a declaratory judgment of non-infringement or copyright fair use. Ms. Goldsmith counterclaimed for copyright infringement, but the district court concluded there was fair use of her photograph. However, the Second Circuit disagreed and consequently the Foundation appeared before the Court.

Of the four fair use factors, the Court exclusively evaluated the transformative use criterion which asks:

• Was there a different purpose and character of the Foundation’s use of the print, compared to Ms. Goldsmith’s use and character of her photograph, and
• Was the Foundation’s use commercial, or was the use for non-profit educational purposes?

The Court concluded (i) Ms. Goldsmith’s photograph and the Warhol print shared the same purpose, i.e., licensing to publications, and so (ii) the Warhol print also served a commercial purpose.  Although the Foundation contended there was a different message of the print based upon the asserted Prince’s altered facial appearance, the Court disagreed that this change was legally insufficient:  If transformative use was achieved by any and  all different purposes or messages, this broad scope would narrow the  copyright owner’s exclusive right to create derivative works.[4]  As legitimate examples of transformative use the Court relied upon statutory examples such as criticism, comment, news reporting, teaching, scholarship and  research.[5]

Here, the Foundation licensed the Warhol print to another magazine for $10,000.00. There was also no message or purpose which would distinguish the print from a derivative work by Ms. Goldsmith as the exclusive copyright owner. For these reasons, there was no transformative use and therefore no fair use by the Foundation.

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[1] 143 S. Ct. 1258 (2023).

[2] The Warhol print was almost visually identical to Ms. Lynn Goldsmith’s photograph of Prince.

[3] Fair use of another’s U.S. copyright registered work requires evaluation of four criteria: (i) purpose and character of the work; (ii) nature of the copyright registered work; (iii) amount and substantiality of the portion taken of the copyright owner’s work; and (iv) the effect of the use upon the copyright owner’s potential market. 17 U.S.C. section 107.

[4] See 17 U.S.C. sections 101 and 106(2).

[5] 17 U.S.C. 107.