Last week, the Supreme Court issued a long-awaited copyright fair use decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al. In short, the Supreme Court looked at whether it was fair use under the copyright law for the Andy Warhol Foundation to license a print (known as Orange Prince) to Condé Nast when such print was based on a 1981 photo that photographer Lynn Goldsmith took of Prince in 1981. The 7-2 decision, featuring extremely sharp and contrasting views from common allies, Justice Sotomayor in the majority and Justice Kagan in the dissent, illustrates the complexities and murkiness of copyright fair use precedent. In the end, the majority held that Warhol’s Orange Prince did not constitute fair use of Goldsmith’s copyrighted photograph of Prince, based upon “the purpose and character of the use,” which is the first factor in the four-factor fair use test.
In sum, the fair use defense is a defense to a copyright infringement claim. There are four factors courts must consider, and each of the four need not be given equal weight, something that can make analyzing risk challenging. For years, relying on a fair use defense has been and, after this recent decision, will continue to be, very risky, and likely even more so than in the past. The factors are:
- The Purpose and Character of the Use
- The Nature of the Copyrighted Work
- The Amount or Substantiality of the Portion Used
- The Effect of the Use on the Potential Market for or Value of the Work
In recent years, courts have been putting great weight on the first factor, “the purpose and character of the use,” and declaring many allegedly infringing works to be “transformative” under this factor. “Transformative” means that the allegedly infringing work adds “new expression, meaning, or message” to the original work. And after a run of court decisions finding allegedly infringing works to be transformative and therefore fair use, many were pushing the envelope based on the perceived transformative nature of their work. Even more recent cases have been putting considerable weight on the fourth factor, whether there is a licensing market and whether such licensing fees were displaced by the creation of the allegedly infringing work.
Here, though, in a decision centered on the first fair use factor—“the purpose and character of the use”—the majority of the Supreme Court held that the Warhol Foundation’s licensing of Orange Prince did not have a purpose that was sufficiently different from the Goldsmith photo on which it was built. The Court noted that both were “portraits of Prince used in magazines to illustrate stories about Prince.” The Court added that a transformative work must have a sufficiently different purpose than the original and noted that “new expression may be relevant” but on its own is not dispositive.
The Court concluded that both works had substantially the same simple purpose: to depict Prince in a magazine story. And, therefore, “the first fair use factor is likely to weigh against fair use, absent some other justification for copying.”
The Court noted that where the purpose was for a commercial use so similar to the typical use of the original photograph, the justification needs to be particularly compelling and that copying the photograph to convey a new meaning or message is not enough.
Interestingly, the Court departed from prior precedent, focusing only on the use of Orange Prince on the magazine cover, and noted that “the same copying may be fair when used for one purpose but not another.”
Justice Sotomayor, who wrote for the majority, and Justice Kagan, who wrote for the dissent, often agree on issues before the Court. However, the two were clearly divided on the issue and wrote fiery characterizations of each other’s opinions. This divide underscores how murky the issue of fair use has been and may still be.
In her dissent, Justice Kagan called out “the majority’s lack of appreciation for the way [Warhol’s] works differ in both aesthetics and message from the original templates,” when it described Orange Prince as a “modest alteration.” Justice Kagan said the Supreme Court that issued the Google v. Oracle decision, which very recently described Warhol paintings as the perfect exemplar of a “transformative,” “would have told this one to go back to school.” According to Justice Kagan, the majority’s opinion “leaves the first-factor inquiry in shambles.”
In response, Justice Sotomayor described the dissent as “a series of misstatements and exaggerations, from the dissent’s very first sentence . . . to its very last” and likened the dissent’s lack of focus on the specific use at issue to “a sleight of hand.”
Ultimately, the Supreme Court’s majority decision appears to have made the already risky fair use defense even riskier, now that the Court has declined to hold new works transformative when their purpose is similar to that of the original work. The inability of Justices Sotomayor and Kagan to see the issue through anything like the same lens underscores the caution with which creators of new works should proceed before declaring with confidence that their new work is truly a fair use of the original work.