Supreme Court Rules Against Fair Use of Andy Warhol Silkscreen
The Daily Journal
May 23, 2023
Douglas L. Johnson and Daniel B. Lifschitz
For nearly three decades, the Supreme Court's decision in Campbell v. Acuff-Rose Music, Inc. served as copyright practitioners' north star for evaluating fair use claims. In Campbell, Justice Souter explained that when examining “the purpose and character of the [purported infringer's] use” of a copyrighted work, the salient inquiry is “whether the new work merely ‘supersede[s] the objects' of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.'” Campbell, 510 U.S. 569, 579 (1994) (internal citations omitted).
Until last week, this exegesis assumed such primacy in lower court opinions that many worried it had effectively consigned the other fair use factors delineated in 17 U.S.C. § 107 to irrelevance. See, e.g., TCA TV Corp. v. McCollum, 839 F.3d 168, 181 (2d Cir. 2016) (acknowledging criticism of courts using ”transformativeness as substitute for the statutory factors” to such a degree “that this doctrine now threatens to swallow fair use”). The Supreme Court has now provided a course correction to the consensus interpretation of Campbell through its opinion in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, which instructs courts to give greater consideration as to whether a work is functionally transformative in its exploitation (as opposed to inherently transformative by its existence).
The case concerned a silkscreen portrait of the musician Prince created by pop artist Andy Warhol, which his namesake foundation posthumously licensed to Condé Nast in 2016 for a magazine cover celebrating Prince's life. Problematically, the silkscreen was wholly derived from a single portrait photograph of Prince taken by Lynn Goldsmith in 1981, who had not given her blessing to Condé Nast's use. Sensing legal rumblings afoot, the foundation preemptively sued Goldsmith for a declaration of fair use and received one from the Southern District of New York in 2019 (382 F. Supp. 3d 312), only to have its victory stripped away by the 2nd U.S. Circuit Court of Appeals in 2021 (11 F.4th 26). That denial of a fair use finding has now been affirmed in a 7-2 decision penned by Justice Sotomayor.
As explained by the 2nd Circuit and cosigned by the Supreme Court, the purpose and character of a use is “closely linked” with "whether, if the challenged use becomes widespread, it will adversely affect the potential market for the copyrighted work." Warhol, 11 F.4th at 48 (citation omitted). This is because "the more the copying is done to achieve a purpose that differs from the purpose of the original, the less likely it is that the copy will serve as a satisfactory substitute for the original." Id. (citations omitted). Here, the silkscreen and photograph both functioned as visual representations of Prince's visage, with both the Warhol Foundation and Goldsmith competing in the licensing market for images of Prince. As Justice Sotomayor explained, that meant they served “substantially the same purpose” irrespective of any differences in their artistic styles.
This observation was driven home in a concurring opinion by Justice Gorsuch, who keys in on the fact that the statutory text instructs courts to examine the purpose and character of a work's use, not simply the nature of the resultant work itself. While Warhol's silkscreen may have “transformed” Prince from the “vulnerable, uncomfortable person” depicted in Goldsmith's photograph into “an iconic, larger-than-life figure,” the purpose and character of the silkscreen's use was to supplant a licensing opportunity that might otherwise have been afforded to Goldsmith's original portrait photograph. This construction, Gorsuch posits, anchors the inquiry in an objective context and avoids “call[ing] on judges to speculate about the purpose an artist may have in mind when working on a particular project.”
The most significant effect of the Supreme Court's decision in Warhol is to breathe new life into the first fair use factor's second clause, which instructs courts to examine, as part of purpose and character, “whether [the] use is of a commercial nature or is for nonprofit educational purposes.” In the wake of Campbell, many courts were inclined to let the first clause overshadow the second, holding that “the Supreme Court has made clear that where the work is transformative — that is, the first factor otherwise favors a finding of fair use — the fact that the work is also commercial is of less importance.” Lombardo v. Dr. Seuss Enters., L.P., 279 F. Supp. 3d 497, 510 (S.D.N.Y. 2017). Warhol clarifies that this inquiry runs in both directions, meaning that the more commercial a use is, the more important it is to have an “independent justification” for copying the original work, such as parody, to more effectively gatekeep against purportedly “transformative” uses that operate as derivative substitutions.
At bottom, Warhol does not replace Campbell, but offers a complementary analysis that limits the potential abuse of the transformativeness inquiry. Courts are still instructed to analyze the purpose and character of a copier's use, but now with greater emphasis on use in the market instead of use in creation. Where such use serves primarily the same purpose as the original and is commercial in nature, there is a presumption against fair use absent some other justification for the copying, which calls on the court to examine favored categories of fair use as exemplified in § 107's preamble (“criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research”).
To be sure, how the Warhol decision balances a fair user's right to transform original works and a copyright owner's right to authorize derivative works is sure to draw some consternation from the artistic community. Indeed, it inspired an uncharacteristically fiery dissent from fellow liberal Justice Kagan (with responsive barbs from Sotomayor) that underscores the ideological idiosyncrasy of copyright law. However, the majority clearly state that Warhol addresses but one element of a dense, contextual, multifactor test. All it has done, in the parlance of copyright scholar David Nimmer, is allow the pendulum of transformativeness to swing back towards the middle.
Douglas L. Johnson is managing partner at Johnson & Johnson LLP in Beverly Hills, CA, practicing entertainment and intellectual property litigation. Daniel B. Lifschitz is a senior associate at Johnson & Johnson LLP, whose practice focuses on copyright litigation.