KF&C California Law Blog

January 23, 2023 | Entertainment & IP Litigation

Transforming Art: United States Supreme Court Set to Clarify What’s “Fair” for Fair Use


On October 12, 2022, the United States Supreme Court heard oral argument in a case that will shape the way artists across disciplines create and protect their copyrighted works.

The case, Visual Arts, Inc. v. Goldsmith, involves a 1981 portrait of Prince taken by renowned rock and roll photographer Lynn Goldsmith. In 1984, the late American visual artist, film director, and producer Andy Warhol “transformed” the portrait into a set of 16 silkscreens and sketches, referred to as the “Prince Series.” The Supreme Court will soon decide whether, for the purpose of determining whether an accused work is protected by the Copyright Act’s fair use defense, a work of art that conveys a different meaning or message from its source material is “transformative,” or whether courts can even consider the accused work’s meaning where it recognizably derives from its source material.

The Goldsmith Photograph

In 1981, Newsweek commissioned Goldsmith to photograph Prince. That December, Prince arrived in Goldsmith’s studio for the photoshoot wearing makeup and a white shirt. Prince then put on a black sash from Goldsmith’s clothing room while she applied lip gloss and additional eye shadow to the fledgling star. Goldsmith later said that she wanted to capture a “vulnerable human being” and that the photographs portray Prince as “fragile” and “not a comfortable person.” Below is the photo at issue (the “Goldsmith Photograph”):


Warhol’s “Prince Series”

In 1984, Vanity Fair commissioned Andy Warhol to create artwork depicting Prince for a story on his meteoric rise to fame. Vanity Fair obtained a license from Goldsmith to use the photograph above in its November 1984 issue as “an artist reference for an illustration to be published.” The license agreement further provided that the photo “can appear one time full page and one time under one quarter page,” but “no other usage right[s]” were granted. Warhol then created the following set of silkscreens, which have since been displayed in galleries, books, magazine, and other public locations the world over:


Condé Nast’s “The Genius of Prince”

After Prince died in April 2016, Condé Nast licensed one of the silkscreens from the Andy Warhol Foundation (“AWF”) to use on the cover of a commemorative issue titled “The Genius of Prince.”

Shortly after the Condé Nast piece was published, Goldsmith contacted AWF, claiming that the Prince Series infringed the copyright in her original photographs. AWF then sued Goldsmith in April 2017 for a declaratory judgment that (1) none of the Warhol works used copyrightable elements of Goldsmith’s 1981 photograph; and (2) the Warhol works are protected as fair use. Goldsmith counterclaimed for copyright infringement.

Lower Courts Clash Over First Fair Use Factor

The fair use defense is codified in Section 107 of the Copyright Act, which provides a non-exclusive list of four factors that courts must consider when evaluating whether the use of a copyrighted work is “fair” and, therefore, not infringing: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. In Campbell v. Acuff-Rose Music, Inc., the Supreme Court said that the first factor focuses on “whether and to what extent the new work is ‘transformative.’” 510 U.S. 569, 578-79 (1994).

In granting AWF’s motion for summary judgment, the district court found that the Prince Series was “transformative,” and therefore not infringing, because it depicted Prince as an “iconic, larger-than-life figure,” as opposed to the “vulnerable human being” portrayed in the Goldsmith Photograph. See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F.Supp.3d 312, 316 (S.D.N.Y. 2019).

The United States Court of Appeals for the Second Circuit reversed, finding that “the district court’s conclusion that the Prince Series works are transformative was [impermissibly] grounded in a subjective evaluation of the underlying artistic message of the works rather than an objective assessment of their purpose and character.” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 32 (2d Cir. 2021). After conducting its own analysis, the Second Circuit found “all four [fair use] factors favor Goldsmith and that the Prince Series are not fair use as a matter of law.” Id.

So, How Should Courts Determine What’s “Transformative”?

In its opening brief to the Supreme Court, AWF argued that a work should be considered “transformative,” and therefore satisfy the first fair use factor, if it “adds something new, with a further purpose or different character, altering the first work with new expression, meaning, or message.” Opening Brief at 2 (quoting Campbell, 510 U.S. at 579 ). AWF accused the Second Circuit of sharply breaking with Supreme Court precedent on this issue by rejecting a “transformativeness test” that considers the meaning or message of an artistic work as part of the fair use analysis—and instead “mandat[ing] an inquiry focused on the degree of visual similarity between the two works.” Id. at 2.

According to Goldsmith, however, the “transformative” inquiry does not stop at whether the work adds new meaning or message to the original. Instead, she argued that courts must also consider whether “copying is necessary to accomplish some distinct end, such that the new use stands on its own without substituting for the original.” Respondent’s Brief at 2. The problem with AWF’s test, she argued, is that it “would transform copyright law into all copying, no right.” Id. at 3.

During oral argument, the Supreme Court Justices appeared concerned by the rule AWF was proposing. For example, Justice Kagan noted that Hollywood typically pays authors to create movies based on their books, and that those movies typically add “new meaning and message.” “So why is it that we . . . can’t imagine that Hollywood could just take a book and make a movie out of it without paying” under the guise of fair use, she asked. Justice Alito also wondered how courts are to determine the purpose of meaning of works of art when critics and experts can differ dramatically over their meaning or message.

Goldsmith’s lawyers also saw the spirit of the late Andy Warhol being used against her, with Justice Kagan recalling that the Supreme Court’s decision in Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021) “uses Warhol as an example of how somebody can take an original work and make it be something entirely different and that that’s exactly what the fair use doctrine wants to protect.” Justice Roberts also noted that the Prince Series not only has a different style, but a different purpose than the Goldsmith Photograph, which would appear to constitute fair use.

What To Look Out For

Legal commentators appear to agree that AWF received tougher questioning than Goldsmith, but—as with any case—it is impossible to know definitively how that questioning will guide the Supreme Court’s ultimate decision and reasoning.

What we do know is that the case will have broad implications for content creators regardless of its outcome. If AWF’s “meaning and message test” is adopted, the burden of establishing fair use may become easier, which means original authors may lose lucrative licensing deals. On the other hand, if Goldsmith’s test is adopted, authors of derivative works will need to pay close attention to whether the “copying is necessary to accomplish some distinct end, such that the new use stands on its own without substituting for the original.” Such a ruling would put some power back in the hands of original authors, who could more easily challenge derivative works and will cause a shift in the way that such works are licensed. It is also possible the Supreme Court develops its own rule synthesizing the parties’ proposals.

Although fair use is a fact-intensive inquiry that is often not amenable to bright-line analyses, it is expected that this upcoming Supreme Court decision will provide actionable guidance for content creators so that they can further the public’s interest in “the creation and publication of free expression” with ease.

Watch out for updates on the Supreme Court’s decision in this case, which will be posted on the KF&C California Law Blog.

If you have questions or comments on the content of this post, please email Matt Cave at [email protected], Kevin Cammiso at [email protected] or Kevin Kroll at [email protected].

Matthew J. Cave

Founding Partner

(310) 409-0475

Kevin C. Kroll

Senior Associate

(310) 409-4679

Kevin J. Cammiso

Senior Associate

(310) 409-0476

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