WARHOL WHIPLASH ON FAIR USE IN U.S. COPYRIGHT LAW

U.S. Supreme Court knocks down famous creators in its recent decision:Andy Warhol Foundation for the Visual Arts Inc., v. Goldsmith

In another U.S. Supreme Court decision backtracking on established precedent, the Warhol decision rolls back case law in U.S. copyright law.  In a 7-2 decision, the Supreme Court found that when deciding whether an allegedly infringing use of an artistic work is fair use, the Court ultimately values the commercial use of the artistic work at issue over its transformative purpose and nature.

Takeaways:

• The Warhol decision limits the fair use defense to copyright infringement.

• This decision aligns with the later Jack Daniel’s decision prioritizing commercial use over expressive value.

• Creators building off of a third party’s copyright protected work in the commercial marketplace may face an increased likelihood of copyright infringement liability.

Summary of Facts

• 1981: Musician Prince hired Lynn Goldsmith to take a series of photographs of him.

• 1984: Vanity Fair Magazine licensed one of Goldsmith’s photographs in black and white and hired Andy Warhol to create a silk screen print using the photograph for a single upcoming feature.

• 1984-1987: Despite being commissioned to make only one, Warhol makes 16 total silkscreen prints (the “Prince Series”).

• 2016: Vanity Fair Magazine published the entire Prince Series to commemorate the late singer. Goldsmith discovered the Series’ existence in this publication and informed the Andy Warhol Foundation (“The Foundation”), whom Vanity Fair credited as the creator and current owner of the Series, of her intent to file a copyright infringement lawsuit against Vanity Fair. Goldsmith alleged she licensed the one photograph, and therefore only authorized the creation of the initial 1984 feature, not the rest of the Series. 

Procedure 

• 2016-2019: The Foundation filed a preemptive declaratory judgment of noninfringement in the U.S. District Court for the Southern District of New York against Goldsmith, alleging a “shakedown.” Goldsmith responded with a counterclaim for copyright infringement. 

• 2019: The Foundation then filed a motion seeking to block Goldsmith from further litigation, which U.S. District Court Federal Judge Koeltl granted.

• 2021: Goldsmith appealed Judge Koeltl’s decision to the Court of Appeals for the Second Circuit. The Court of Appeals overturned Judge Koeltl’s decision in favor of Goldsmith and allowed the case to proceed against the Foundation, stating that a copyright fair use defense fails because Warhol’s work incorporated the same essential elements as Goldsmith’s photograph and was therefore not transformative. The Foundation petitioned for certiorari to the U.S. Supreme Court. 

The present U.S. Supreme Court decision under Warhol alters the fair use defense to copyright infringement.  A U.S. copyright is infringed if an infringer violates one of the copyright owner's exclusive rights, as enumerated in 17 U.S.C. §106. A defense to such infringement is fair use, which excuses the infringer’s conduct if the use itself is deemed “fair” based on four distinct factors. The Court in the Warhol decision clarified a quintessential core of fair use—whether a work making creative and artistic changes to another existing work is a sufficiently transformative use. Under the facts of the Warhol case, the Court determined it was not enough. 

In a 7-2 decision, the Supreme Court found in favor of the photographer Goldsmith. The Court determined that, while Goldsmith had authorized the first use of the one photograph back in 1984, the approval did not extend to the 15 additional images used by Warhol. Justice Sotomayor emphasized Goldsmith’s works were entitled to the same level of copyright protection as any other. The fame and status of the opposing artist (Warhol) did not shield an infringing use from copyright protection nor automatically render his use transformative. Instead, Justice Sotomayor found Warhol’s Series and Goldsmith’s photos had the same purpose, both of which were “of a commercial nature.” Therefore, based on the Court’s analysis, Warhol’s Series prints infringed Goldsmith’s copyrights in her photographs.

The Court’s ruling is a definitive shift in the fair use defense to copyright infringement, limiting the availability of fair use for certain works when such works are created for a commercial use. When deciding whether an allegedly infringing use is fair use, the Court’s decision ultimately values the commercial use of the artistic works at issue over the transformative purpose and nature of such works—despite several decades of precedent shifting away from this position.