Whether Purple or Orange, It’s Not Fair Use

In Brief:  The case of the Andy Warhol Foundation and Lynn Goldsmith regarding photos of Prince has been kicking around the courts and this blog for 4 years. The Supreme Court has spoken holding that there was no fair use.

Here’s What Happened:

The facts are convoluted but important. Lynn Goldsmith took some photos of Prince for Newsweek Magazine. Lynn gave Vanity Fair the license to use one of her photos. Vanity Fair hired Andy Warhol to create an illustration using the photo. Warhol created 16 silk prints washing the photo in different colors, including purple and orange (the “Prince Series”). After Prince died, Conde Nast, who now owned Vanity Fair, approached Warhol’s estate, Andy Warhol Foundation (“AWF”) about reusing the orange version in the Prince Series. At this point, Lynn first learned of the Prince Series. Lynn sent a notice of infringement to AWF. AWF brought a declaratory judgment action. AWF won at the trial court on the basis of fair use. The decision was reversed on appeal to the Ninth Circuit Court of Appeals. AWF appealed to the US Supreme Court.

The Supreme Court, Justice Sotomayor writing for the majority, concentrated on the first factor of fair use which the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. AWF argued that the use was transformative. Even though Lynn’s original photograph and the “Orange Photo” are substantially similar, they convey a different message. The Supreme Court rejected this argument. The Supreme Court acknowledged that the Orange Prince added something new to Lynn’s original photograph. Instead the Supreme Court focused on the commercial nature of the use by both Lynn and Warhol.

The opinion focused solely on the fact that both Lynn and AWF licensed the works. Calling it the “bête noir” of copyright, the issue is one of substitution. In other words, does the new work supplant the original work? The substitution analysis generally falls under the fourth factor of fair use which is whether there’s a market affect because the use supplants the original. This alone may make the decision difficult to rely upon in the future.

The opinion carefully skirted around the level of transformation that would qualify for fair use. The concern appeared to be that if transformative use is used too much, it would supplant the ability of an owner to challenge fair use.

Justice Kagan wrote a dissenting opinion with a concurrence from Chief Judge Roberts. Justice Kagan’s dissent noted that “the majority opinion is trained on this dissent in a way majority opinions seldom are” through “pages of commentary and fistfuls of come-back footnotes.” Justice Kagan disputed the majority’s analysis of transformative use. Justice Kagan pulled no punches stating that the majority needed a refresher course in transformative use. “For it is not just that the majority does not realize how much Warhol added; it is that the majority does not care.”

Why You Should Know This:  Reading the opinion, one could get the impression that the Court wanted to reach its state conclusion: “Lynn Goldsmith’s original works, like those of other photographers, are entitled to copyright protection, even against famous artists.” And then the Court worked backward from there. So what does that mean when it comes to evaluating the first factor of fair use? Will commercial use of the work outweigh the transformative nature of the use? If so, will this have a chilling effect on parodies which require substantial use of the original to carry their message? Justice Sotomayor’s opinion brought up two examples of how transformative use is not being “killed” by her opinion. The first was the Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S. Ct. 1164 (1994) , where the Supreme Court held that 2 Live Crew’s parody of Roy Orbison’s “Pretty Woman” was sufficiently transformative to be considered fair use. The other was Andy Warhol’s “Campbell’s Soup Cans” pictures. Although the pictures reproduced the cans in their entirety, Warhol’s use was to comment on a symbol of an everyday item that was used for mass consumption.

Case Information: Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, ___ U.S. ____ (May 18, 2023).