Andy Warhol’s adaptation of Lynn Goldsmith’s 1981 photograph of musician Prince was copyright infringement and not fair use, according to the Supreme Court in its May 2023 opinion authored by Justice Sotomayor.

A quick summary of copyright fair use: Fair use is an affirmative defense to copyright infringement, designed to protect free speech interests by allowing creators to utilize copyrighted works in ways that would otherwise be infringing. Courts apply a four-factor balancing test to determine whether an accused work satisfies fair use—taking into account, among other factors, the “purpose and character” of the accused work.

What does the “purpose and character” of a work mean? On this, even the U.S. Supreme Court justices do not agree. When asked to weigh in on the issue, the Supreme Court in Warhol v. Goldsmith issued three different opinions, with 5 in the majority, 2 concurring with the majority but with different reasoning, and 2 dissenting. The full case name is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, and you can read the ruling here.

Summary of the Case

Goldsmith originally published her photo of Prince in Newsweek. A few years later, in 1984, Goldsmith licensed the photo to Vanity Fair for the limited purpose of permitting the magazine to print a purple Warhol adaptation of Goldsmith’s photograph. However, unbeknownst to Goldsmith, Warhol also created a series of other, variously colored adaptations, including an orange silkscreen print (“Orange Prince”). Years later in 2016 when Prince died, the Andy Warhol Foundation licensed Orange Prince for publication on the cover of a special edition magazine commemorating the famed musician.

Original Prince Photo by Goldsmith

Original Prince Photo by Goldsmith

Orange Prince in The Genius of Prince

Orange Prince in The Genius of Prince

In the resulting copyright infringement lawsuit, the trial court ruled that Orange Prince was protected under fair use. Goldsmith appealed, and the Second Circuit Court of Appeals disagreed that fair use applied. The Andy Warhol Foundation appealed to the U.S. Supreme Court, challenging only the Second Circuit’s finding that Orange Prince’s “purpose and character” weighed against fair use. The Supreme Court affirmed the Second Circuit, resulting in an ultimate loss for Warhol.

How did the Court arrive at this conclusion? In evaluating purpose/character, courts in the past have applied a transformativeness inquiry where a new work that has a different meaning or message from the original is likely to be protected as fair use (while still taking into account the other three factors). The recent Warhol ruling, however, expressed concern that overreliance on this “meaning or message standard” expands fair use too broadly and exceeds what the purpose/character factor truly stands for.

What the Court Said

The problem with the “meaning or message” standard, the Court said, is that pretty much any creator who changes someone else’s work, even a little bit, can argue that the new work has a different meaning or message. In some instances, even exact copies of a work can be argued to assume a different meaning or message by virtue of a change in medium or context.

Importantly, copyright law expressly protects copyright owners’ exclusive right to create derivative works: sequels, book-to-film adaptations, etc.  These types of derivative works are undeniably different from the original—that is the whole point. But applying the “meaning or message standard,” these types of derivative works risk being wrongly categorized as fair use such that copyright owners could no longer protect or control them.

Addressing this problem head-on, the Supreme Court emphasized that an accused work that has different presentation, appearance, meaning, or message does not necessarily serve a different purpose from the original. That is not to say that the presentation, appearance, meaning, or message of an accused work are irrelevant. These could still be evidence of fair use, but only if these differences also contribute to a purpose that is different from the original.

What the Court Meant

My reading of the Warhol opinion is that “meaning or message” captures how the author’s creativity is expressed, whereas “purpose/character” captures why the author was motivated to express in the first place. Sometimes, but not always, the second work might have a new meaning or message because of its different purpose. For example, in another famous Warhol copyright infringement case, Warhol recreated a Campbell’s soup can as a painting. Though the soup can in the painting was identical to the actual Campbell’s soup can, the painting had a different purpose/character from the can. Whereas the real-life soup can was literally designed to promote the soup as a product, Warhol’s painting expressed commentary on consumerism as a byproduct of its non-promotional purpose.

But in the Warhol case, as the Court explained, both Warhol and the original photographer intended their works for the same purpose: as an illustration of Prince in magazine articles about him. Though Warhol is obviously a revered artist who made stylistic changes to the original photo, that alone was not enough to offset the fact that both versions of the photo served the same broader purpose of journalism illustration related to a particular celebrity.

The ruling is not surprising given that as of late, copyright decisions from the lower courts have cautioned that fair use does not necessarily exist just because the accused infringer utilized the original work creatively or in an entertaining way. The cases routinely highlight that parody, the classic example of fair use, requires true criticism or commentary on the original work rather than simply using the original as a jumping-off point for unrelated (though perhaps creative) expression. (For a discussion of one of these cases, involving a Star Trek-Dr. Seuss mash-up novel, you can see my article here.)

What This All Means for Copyright Pursuers and Potential Fair Users

A potential consequence of the Warhol ruling is that the “purpose and character” factor might largely converge with a separate fair use factor that evaluates whether the accused work harms the market for the original. To ostensibly allay this concern, the Court offers just one hypothetical counterexample—that educational uses could be a market substitute of the original work yet still have a distinct purpose under the purpose/character factor. No specific examples are provided of the converse, where an accused work that shares the original’s purpose/character does not impinge on the market for the original.

The Court acknowledges the “positive association” between these two factors, which is perfectly acceptable and has long been the case. However, the point of having separate purpose/character and market harm factors is the potential for the two factors to come out differently in at least some scenarios—otherwise, why have two factors. The Court seems to have difficulty contemplating instances where the two factors would come out differently aside from the limited uses specified in the Copyright Act (nonprofit educational use, criticism, comment, news reporting, etc.).

If that is the case, the Warhol ruling might in practice restrict application of the “purpose and character” factor more narrowly to just those purposes expressly stated in the Copyright Act. While I agree that a more discerning approach to purpose/character may be appropriate, the new ruling could risk disrupting the long-lauded flexibility of the fair use multi-factor test, as dissenting Justices Kagan and Roberts contend.

Only time will tell whether the ruling adds ‘something good’ to the law of copyright fair use.

P.S.: As a musical theater enthusiast, I was amused to see both the majority and dissenting opinions allude to lyrics from Rodgers and Hammerstein’s “Something Good” from one of my favorite musicals, The Sound of Music. I assume all the justices can at least agree that the song references are fair use. (As much as I love Rodgers & Hammerstein, I’m siding with the Justices on this one!)