Keeping “Fair Use” Fair: SCOTUS Says First Fair Use Factor Should Be Interpreted Narrowly to Protect Copyright Holders

BACKGROUND

In 1984, Vanity Fair licensed a photograph of the famous musician Prince taken by Lynn Goldsmith for use as an “artist reference for an illustration.” Andy Warhol, the artist hired by Vanity Fair to create the illustration, used Goldsmith’s black and white photograph to create a silkscreen portrait that appeared alongside an article about Prince in the November 1984 issue. Pursuant to the license, which also stipulated that the photograph be used “one time” only, Goldsmith received a $400 fee and was credited for her “source photograph.”

Warhol thereafter created a series of 15 works all based on Goldsmith’s photograph (the Prince Series). Goldsmith was unaware of Warhol’s additional works until 2016, when, upon Prince’s death, Vanity Fair’s parent company licensed one of Warhol’s additional works (referred to as Orange Prince) from The Andy Warhol Foundation for the Visual Arts, Inc. (AWF) for use with an article commemorating Prince’s life. Goldsmith did not enter into a new license, nor did she receive payment or attribution. AWF received $10,000.

When Goldsmith contacted AWF regarding the suspected copyright infringement, AWF sued for declaratory judgment of noninfringement or, alternatively, fair use. The district court granted summary judgment for AWF, finding Orange Prince was protected fair use as the work transformed Goldsmith’s photograph. The district court explained that “the works ‘can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure,’ such that ‘each Prince Series work is immediately recognizable as a ‘Warhol’ rather than as a photograph of Prince.’”

The Second Circuit, however, reversed and remanded, finding that all four fair use factors favored Goldsmith and noting with respect to the first fair use factor (the purpose and character of the work) that “transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work.” AWF appealed.

OPINION OF THE SUPREME COURT

The Supreme Court considered only whether Warhol’s Orange Prince made “fair use” of Goldsmith’s photograph. AWF did not appeal the Second Circuit’s finding that Warhol’s Prince Series works were substantially similar to Goldsmith’s photograph, nor did it challenge the Second Circuit’s findings with respect to the other fair use factors. Instead, the limited question presented was “whether the first fair use factor, ‘the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,’ [17 U.S.C.] §107(1), weighs in favor of AWF’s recent commercial licensing to [Vanity Fair’s parent company].”

The Copyright Act sets forth four factors to consider when evaluating fair use:

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
4. The effect of the use upon the potential market for or value of the copyrighted work.

AWF argued that the Prince Series is transformative and the first fair use factor should weigh in its favor given that Warhol’s work conveys a different message than Goldsmith’s photograph, namely, one on the “dehumanizing nature of celebrity” and showing Prince as “an iconic, larger-than-life figure.” The Supreme Court, however, stressed that the first factor “considers the reasons for, and nature of, the copier’s use of an original work. The ‘central’ question it asks is ‘whether the new work merely ‘supersede[s] the objects’ of the original creation . . . (‘supplanting’ the original), or instead adds something new, with a further purpose or different character.”

In this case, the Supreme Court explained that Goldsmith’s photograph and AWF’s Orange Prince share the same purpose because they are both “portraits of Prince used to depict Prince in magazine stories about Prince.” Acknowledging that the works convey different messages or meanings, the Supreme Court reasoned that “[a]lthough new expression may be relevant to whether a copying use has a sufficiently distinct purpose or character, it is not, without more, dispositive of the first factor.”

The Supreme Court warned that an “overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to create derivate works,” effectively constricting the rights afforded to copyright owners in favor of a more expansive view of fair use.

The first fair use factor must assess the use of the allegedly infringing work: “If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.” In this case, the infringing use was the commercial licensing of Orange Prince. However, the Supreme Court explicitly left open the idea that had Orange Prince (or any works in the Prince Series) been used for a different purpose (e.g., “solely for teaching purposes”), the analysis would have been different. Likewise, the Supreme Court stressed that there is little to no justification for the copying because Warhol’s work does not comment on Goldsmith’s photograph and any such justification in this case is easily outweighed by the commercial nature of AWF’s use.

CONCURRENCE

Justice Gorsuch, joined by Justice Jackson, authored a concurring opinion, stressing that the focus of the first factor should be to assess the purpose and character of the challenged use, not of the work itself or the artist’s intentions: “Nothing in the copyright statute calls on judges to speculate about the purpose an artist may have in mind when working on a particular project. Nothing in the law requires judges to try their hand at art criticism and assess the aesthetic character of the resulting work.” This distinction is important because, as also highlighted by the majority, “[t]o hold otherwise would risk making a nonsense of the statutory scheme – suggesting that transformative uses of originals belong to the copyright holder (under §106) but that others may simultaneously claim those transformative uses for themselves (under §107).”

DISSENT

Justice Kagan, joined by Chief Justice Roberts, authored a fiery dissent, criticizing the majority as “hamper[ing] the creative progress and undermin[ing] creative freedom.” The dissent is particularly disheartened by (what it perceives as) the majority’s dismissal of Warhol’s “artistry and social commentary.” The dissent agrees that the effect Warhol’s work has on Goldsmith’s ability to license her photograph is relevant to the fair use analysis, just not in connection with the first factor:

That issue is no doubt important in the fair use inquiry. But it is the stuff of factor 4: how Warhol’s use affected the “value of” or “market for” Goldsmith’s photo. Factor 1 focuses on the other side of the equation: the new expression, meaning, or message that may come from someone else using the original.

The dissent further disagreed with the majority’s take on the effect this decision will have on future creative works. The majority reasons that this decision will protect copyright owners’ rights to derivative works and, therefore, incentivize the creation of new artistic works. The dissent, however, disagrees, highlighting that most—if not all—new creations in some way borrow from those of the past, and the right to use those prior works (or portions thereof) must be protected so as not to stifle creativity. The dissent’s position, as characterized by the majority, is that “Nothing comes from nothing . . . nothing ever could. . . . So somewhere in the copyright statute, there must be an ‘escape valve’ to create something good.”

Practice Note: This decision arguably narrows the scope of the fair use defense and cautions that the purpose of the secondary user’s work, particularly where such use is definitively commercial, controls the first fair use factor. This Supreme Court decision will no doubt affect future fair use inquiries as copyright-protected works continue to be used in connection with novel technologies such as artificial intelligence-generated works and non-fungible tokens, among others.