In a case that pitted an artists’ foundation against a photographer who deposited her work, the United States Supreme Court ruled today (May 18) that to avoid copyright infringement, a second artist who bases a new work on a previous one must have a compelling rationale for using the first image when the two works have a very similar commercial use.
The decision ends the dispute over whether the Andy Warhol Foundation for the Visual Arts (AWF) infringed the copyright held by famed photographer Lynn Goldsmith when it licensed an image Warhol created from of Goldsmith’s portrait of the musician Prince. The foundation’s 2016 license to Condé Nast, to be used as an illustration for an article about Prince after his death, came years after Goldsmith granted a one-time use license to vanity lounge to use his portrait as an artist’s reference for an illustration for a 1984 article, also about Prince.
Previously licensed by Goldsmith to vanity loungeWarhol created the Prince Seriesa number of works based on his photography, including a purple portrait of Prince (purple prince) which appeared with the vanity lounge article. Goldsmith learned Prince Series in 2016, when she saw Warhol’s orange portrait of Prince (orange prince) on the cover of Condé Nast magazine.
The case has drawn attention because of its implications for potentially lost licensing revenue for creators like photographers who license their works, and for artists who appropriate or rework existing works.
The court’s 7-2 opinion, written by Judge Sonya Sotomayor, echoes concerns raised by the U.S. government and some judges during pleadings in the case in October 2022, pointing out the very similar commercial use – illustrating a magazine article about Prince – to which both images have been put.
In the lawsuit, AWF claimed copyright in the Prince Series and asked the Court to reverse the decision of the Second Circuit Court of Appeals denial of his copyright claim. Warhol had changed the “meaning or message” of Goldsmith’s image enough for his works to qualify for fair use as “transformative” under U.S. copyright law, the report said. AWF, but the Court of Appeal erroneously ruled out any “change in meaning or message” from being considered in the evaluation of the transformation. But rather than overturning the decision below, the Court upheld it, adding clarification on the extent and type of transformation needed to protect secondary works as non-infringing fair use.
The Court said that in applying the transformation test – the only fair use test at issue in the appeal and the first of the four fair use factors set out in federal copyright law – the question is whether the secondary use “has some other different purpose or character, which is a matter of degree, and the degree of difference must be weighed against the commercial nature of the use”. If the two works “share the same or very similar purposes, and that the second use is of a commercial nature”, the criterion of transformation is likely to weigh against fair use, “in the absence of another justification for the copy”. lower court found that AWF failed all four tests of fair use, so the court’s decision leaves the overall assessment of fair use unchanged.
The Court limited its analysis to AWF’s specific commercial license to Condé Nast of orange princeone of the Prince Series images, and stated that the purpose of orange prince was much the same as Goldsmith’s original. “Both are portraits of Prince used in magazines to illustrate stories about Prince,” the court notice read. The AWF’s use was also commercial in nature, and taken together, the two elements “herein advise against fair use.”
The Court said it saw an “unsolvable problem” in AWF’s reliance on a “meaning or message” test: when previous Supreme Court decisions had referred to a new “meaning or message” in consideration of processing, this does not mean that copyright law favors any use. that adds a new meaning or message. “Because AWF’s commercial use of Goldsmith’s photograph to illustrate a magazine about Prince is so similar to the typical use of the photograph, a particularly compelling rationale is needed” for the copy. “Yet AWF offers no independent, even less cogent justification” other than to convey a new meaning or message, and “this alone is not enough for the first factor to favor fair use.”
The majority disagreed with a point made in Justice Elena Kagan’s dissent that restrictions on copying can hinder subsequent work. “It will not impoverish our word to require AWF to pay Goldsmith a fraction of the proceeds from its reuse of its copyrighted work,” Majority wrote.
In a statement, Goldsmith said she was “delighted with today’s decision and grateful to the Court for hearing our side of the story. It’s a great day for photographers and other artists who make a living by licensing their art.
AWF President Joel Wachs said in a statement that the foundation “respectfully disagrees[s] with the Court’s decision that the 2016 license of orange prince was not protected by the doctrine of fair use. At the same time, we welcome the Court’s clarification that its decision is limited to this sole license and does not question the legality of Andy Warhol’s creation of the Prince Series in 1984. Going forward, we will continue to uphold the rights of artists to create transformative works under the Copyright Act and the First Amendment.
