Warhol decision strengthens and expands copyright protection

In a "transformative" decision that has reverberated around the art world, the U.S. Supreme Court ruled that works created by legendary artist Andy Warhol - based on an original photograph taken by another artist - did not qualify as transformative and thus could not benefit from the protection provided under the fair-use doctrine. The decision significantly strengthens and expands copyright protection by limiting the breadth and scope of the doctrine of fair-use.

The copyrighted work at the center of the dispute in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (2023) 143 S.Ct. 1258 (Warhol) concerned a photograph of the late music great Prince. The photo was taken by photographer Lynn Goldsmith in 1981 as the young Prince was on his way to fame. The photo was later provided to Vanity Fair for a story on Prince, under a license that allowed the magazine to use an artist to re-work the photo. The artist chosen by Vanity Fair for the re-work of the Goldsmith Photo was Andy Warhol, who is perhaps best known for his silkscreen images of contemporary celebrities like Marylin Monroe and the design of the Campbell soup can.

The seeds of the Warhol dispute were planted after the Vanity Fair project, when Warhol created a series of images (Prince Series) based on the Goldsmith Photo. The Prince Series was subsequently copyrighted by Warhol's foundation AWF, which was created after Warhol's death. In 2016, following Prince's death, Vanity Fair decided to devote an issue commemorating Prince's life and obtained a license to one of the Prince Series images from AWF for its cover. Goldsmith noticed the photo and contacted AWF to complain about infringement of her work. AWF responded to Goldsmith's complaint by filing a lawsuit in federal court, seeking a declaratory judgment of non-infringement and fair-use of the Goldsmith Photo. The district court granted summary judgment in favor of AWF on its fair-use defense, finding the Prince Series to be sufficiently different from the Goldsmith Photo to be considered transformative and thus not infringing the Goldsmith Photo. The district court decision explained that the Warhol re-work had changed the impression conveyed by the Goldsmith Photo from a "not comfortable" and "vulnerable" impression to an "iconic, larger-than-life figure." On appeal, the second circuit court of appeal reversed, finding Warhol's creation was closer to a derivative work, whose rights remained with the original creator, than a transformative work as the two works shared the same purpose and character. The Supreme Court granted review and affirmed the appeal decision.

The doctrine of fair-use is a defense to a claim of copyright infringement and permits certain uses of a copyrighted work without the original author's consent. The copyright statute sets for the following factors in determining whether a particular use qualifies as fair-use: 1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. According to the copyright office, transformative uses are more likely to be considered fair, explaining that transformative uses are those that add something new, with a further purpose or different character, and do not substitute for the original use of the work. In Warhol the Supreme Court limited its fair use analysis to the first factor, namely the purpose and character of AWF's use and its commercially focused use.

A subtle but key aspect of the high Court's fair-use analysis concerned the reference point from which any alleged transformation or change between the two works is to be evaluated under the copyright statute. AWF argued that the point of reference for that determination should be the purpose and character that Goldsmith had in mind at the time she created her work and that from that perspective Warhol intended for his unique "touch up" of Goldsmith's photo to transform Prince from the "vulnerable" and "uncomfortable person" depicted in the original work to "an iconic, larger-than-life figure." Goldsmith, on the other hand, argued that the statute requires that Warhol's re-work be the point of reference and that from that perspective, the purpose of the re-work was commercial use, such as licensing to a magazine, which is exactly the purpose sought by Goldsmith. The Supreme Court sided with Goldsmith on this point and found that this factor did not support Warhol's fair-use defense.

Another aspect of Warhol's fair-use analysis, noted by the concurring opinion, was the express language of the copyright statute, which recognizes copyright holder's exclusive right to create "derivative works" that "transform or adapt" the original work. §§ 101, 106(2). In other words, the statute itself clearly recognizes transformative rights in the work as remaining with the original author. The statue reflects a concern that a broad interpretation of transformative rights would authorize wide commercial copying of artwork to be used for purposes that are substantially the same as those of the originals.

The impact of the Supreme Court decision can't be underestimated. Under the new transformative standard set forth by the decision, to qualify as fair-use courts must look to 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 original work used to create it.

Conclusion

In Warhol, the Supreme Court set a new standard for determining fair-use based on the purpose and character of the use, under which the secondary work's use of its source material must be geared towards a "fundamentally different and new" artistic purpose and character, such that the secondary work stands apart from the original work used to create it.

Applying the new standard, the Supreme Court found that the character and purpose of Warhol's re-work was the same as that of Goldsmith's Photograph in that the two works were recognizably from the same origin and were created with the main purpose of commercial exploitation. The decision broadly rejects the notion that any secondary work that adds a new aesthetic or new expression to the original is necessarily transformative.