Warhol Ruling Changes the Landscape of Fair Use Defense

On May 18th, 2023, the United States Supreme Court issued a landmark ruling, rejecting a “fair use” defense raised by the Andy Warhol Foundation regarding the use of a 1981 photo of Prince. The California Society of Entertainment Lawyers, a 501(c)(3) non-profit organization, directed by Steven Lowe, co-authored an Amicus Curiae brief with Scott Borroughs of Doniger & Burroughs in support of Goldsmith. The brief argued that the judicially-created “transformative” factor is directly at odds with the plain language of the Copyright Act, including the factors to be considered in section 107 of the Copyright Act and the “derivative work” provision in section 106.

In 2016, the Andy Warhol Foundation for the Visual Arts, Inc. (the “Warhol Foundation”) issued a license of an image entitled “Orange Prince” (an orange silk screen portrait of the musician Prince, created by Andy Warhol) to magazine giant Condé Nast for $10,000. “Orange Prince” is one of 16 works, now known as the “Prince Series,” created by Warhol, and Condé Nast licensed the print for use on the cover of a commemorative magazine issue.

“Orange Prince” (along with the other pieces in the “Prince Series”) is indisputably derived from a photograph taken in 1981 by professional photographer Lynn Goldsmith. The photograph was originally commissioned by Newsweek, but Goldsmith is and always has been the copyright owner. In 1984, Goldsmith granted Vanity Fair a limited, one-time-only, license to use her photograph as an “artist reference for an illustration.” Vanity Fair hired Andy Warhol to create the illustration, which appeared in the November 1984 issue, and credited Goldsmith for the “source photograph.”

However, in 2016, Goldsmith, who until then had not known about the “Prince Series,” saw the Condé Nast “Orange Prince” cover and informed the Warhol Foundation that she believed they had infringed her copyright. The Warhol Foundation then sued Goldsmith in the United States District Court for the Southern District of New York for a declaratory judgment of noninfringement or, in the alternative, fair use, and Goldsmith counterclaimed for copyright infringement.

The Southern District of New York granted the Warhol Foundation’s Motion for Summary Judgment, finding “fair use.” On appeal, the Second Circuit reversed, finding that the fair use analysis actually favored Goldsmith. The Supreme Court found that the first prong of a fair use analysis (“the purpose and character of the use, including whether such use is of a commercial nature”) did not support a finding of the Warhol Foundation’s fair use, reasoning that both works were “portraits of Prince used in magazines to illustrate stories about Prince.”

The Supreme Court was careful to limit its opinion. Justice Sotomayor, who wrote the majority opinion, was clear that the Court was only addressing the “narrow issue” of the first fair use factor, and whether it weighed in the Warhol Foundation’s favor. They determined that it did not. The Court expressed “no opinion as to the creation, display, or sale of any of the original Prince Series works,” acknowledging that under different circumstances a fair use analysis could have a different outcome. The Court Ruled that a new meaning or message in a subsequent work may be “relevant,” but not the end all, be all, in a fair use analysis.

While this case may make it more difficult for artists in the future to determine whether their works are “transformative” enough when working off of a reference photo, attorney Sartouk Moussavi commented that “a fair use defense is still ultimately a fact-driven analysis” which “must be considered on a case-by-case basis… This case does not change that.”

 

The Warhol Foundation was represented by Roman Martinez, Andrew Gass, Sarang Vijay Damle, Elana Nightingale Dawson, Samir Deger-Sen and Cherish A. Drain of Latham & Watkins, LLP.

Goldsmith was represented by Lisa S. Blatt, Thomas G. Hentoff, Sarah M. Harris, Kimberly Broecker, Aaron Roper, and Patrick Regan of Williams and Conolly, LLP.

Amicus, the United States, which filed a brief in support of Goldsmith, was represented by Elizabeth Prelogar, Brain M. Boynton, Malcolm L. Stewart, Yaira Dubin, and U.S. Department of Justice Attorneys Daniel Terry and Steven H. Hazel.

Amicus, the California Society of Entertainment Lawyers (“CSEL”), which filed a brief in support of Goldsmith, was represented by Steven Lowe of Lowe & Associates and Scott Burroughs of Doniger & Burroughs. This is CSEL’s third win as a friend of the court, following Petrella v. MGM, (2014) 572 US 663, and Unicolors v. H&M Hennes & Mauritz, L.P., (2022) 595 U.S. ____.

Amici, the Robert Rauschenberg Foundation, Roy Lichtenstein Foundation, and Brooklyn Museum, who filed a brief in support of the Warhol Foundation, were represented by William E. Evans, Jaime Santos, and Andrew Kim of Goodwin Proctor.

The case is The Andy Warhol Foundation v. Goldsmith, case number 21-869, in the Supreme Court of the United States.

* Lowe & Associates (“The Firm”) is a boutique entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving copyright infringement, having provided top-quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.

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