Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023), is a U.S. Supreme Court case dealing with transformative use, a component of fair use, under U.S. copyright law. At issue was the Prince Series created by Andy Warhol based on a photograph of the musician Prince by Lynn Goldsmith. It held Warhol's changes were insufficiently transformative to fall within fair use for commercial purposes, resolving an issue arising from a split between the Second and Ninth circuits among others.
Goldsmith had taken her photograph in 1981 on assignment for Newsweek and retained copyright on it afterwards; it was not published. Three years later, Vanity Fair licensed the image for Andy Warhol to use as a reference for a silkscreen illustration of Prince to be published, by agreement with Goldsmith, only once, with her credited. But Warhol used the image as the basis for his Prince Series without asking or notifying Goldsmith; she only learned of the images' existence when Vanity Fairs publisher, Condé Nast, used one as the cover image, with no attribution, for a special tribute magazine to Prince after his death in 2016, which was licensed by the Andy Warhol Foundation (AWF). Litigation ensued in federal court between Goldsmith and the Warhol Foundation, which has administered the artist's works since his death, over whether Warhol's reuse of the image had infringed her copyright. The Southern District of New York sided with the foundation in 2019, but was reversed by the Second Circuit two years later.
The Second Circuit's reversal relied in part on a "clarification" of its 2013 holding in the very similar case of Cariou v. Prince (the photographer Patrick Cariou versus the painter Richard Prince), to the effect that a secondary work was not necessarily transformative of the original just because it was aesthetically different; it must also serve a distinguishably different artistic purpose, which Warhol's work, when used on a magazine cover to depict Prince, did not. Legal commentators, including Nimmer on Copyright and another appellate circuit, had criticized Cariou in particular and the Second Circuit in general as giving too great a weight to transformative use in determining fair use.
In May 2023, the Court ruled 7–2 that AWF's use of Goldsmith's photographs was not protected by fair use. Justice Sonia Sotomayor wrote for the majority that the works shared a similar purpose in the depiction of Prince in magazine articles, emphasizing the commercial nature of the product. Her opinion contained many footnotes disparaging Justice Elena Kagan's combative dissent, which was equally harsh on the majority as she defended the value of transformation in art. Commentators in the art world feared for the future of appropriation art, popular with artists inspired by Warhol like Richard Prince and Jeff Koons, if artists were to be deterred from creating works by fears of litigation or prohibitive license fees.
Background
Fair use
Fair use, the unlicensed use of material copyrighted by others in secondary works, was long accepted under English common law, but not well defined. Within U.S. copyright law, federal judge Joseph Story, later a Supreme Court justice, identified three aspects of fair use to be judged by a court in an 1841 case, Folsom v. Marsh, holding that the republication of some of George Washington's letters by a second writer was infringing: the "nature and objects of the selections made", the "quantity and value of the materials used", and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work" After over a century of remaining in case law, Congress codified fair use in the Copyright Act of 1976. Story's three factors became four, with the second split into the nature of the original work, and the amount of it reused. In 1985 the Supreme Court gave courts guidance on how to apply them in Harper & Row v. Nation Enterprises, a case stemming from the unauthorized publication of the leaked memoirs of former president Gerald R. Ford. The Court held that fair use did not apply to this use of copyrighted material, maintaining that the public's right to know about matters of considerable historical import, such as Ford's decision to pardon his predecessor, was in this case insufficient to supersede the copyright.
Transformative use
Courts remained uncertain enough that five years later, another federal judge, Pierre Leval, then sitting on the Southern District of New York (SDNY), which hears many copyright cases, wrote a Harvard Law Review article, "Toward a Fair Use Standard", outlining more specific ideas. He reviewed cases considering fair use to date, Harper & Row included but also cases the Southern District and the Second Circuit Court of Appeals, which has appellate jurisdiction over it, had considered. In considering the first factor, the purpose of the secondary work, Leval said courts should strongly consider whether it was "transformative" of the original:
He cautioned that such use would not suffice to establish fair use by itself; it could easily be offset by other factors that might weigh in the copyright owner's favor.
Four years later the Supreme Court accepted the concept, citing Leval in Campbell v. Acuff-Rose Music, Inc., a case that settled a longstanding question over whether parody constituted fair use. In holding that rap group 2 Live Crew's parody of Roy Orbison's "Oh, Pretty Woman", which the publisher had refused to license to them, was not an infringement, the Court held transformative use to be something judges could consider in assessing the first factor. "Although such transformative use is not absolutely necessary for a finding of fair use," wrote Justice David Souter for a unanimous Court, "the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright."
Appropriation art and copyright
In the latter decades of the 20th century, pop artists like Andy Warhol and Robert Rauschenberg reacted to consumer culture and the increasing amount of mass-produced imagery in the media, particularly advertising, by using those images in their own art, sometimes as their own, a practice termed "appropriation art". In two instances this led to lawsuits. Warhol settled a 1966 claim brought by the photographer whose image he had used as the basis of his Flowers Series. Fourteen years later Rauschenberg similarly settled with a photographer whose work he had used; until then he had argued fair use with arguments similar to those now accepted as transformative use.
Jeff Koons and Richard Prince became prominent in the art scene during the 1980s, both relying on repurposing the work of others, likewise drawing suit. A sculpture recreating a postcard that Koons had found and torn the copyright notice off was held not to be fair use by the Second Circuit Court of Appeals in Rogers v. Koons, since it was so similar to the original as to make it "difficult to discern" the parody Koons claimed his work was. He lost at trial the next year over his unauthorized use of Odie from the Garfield comic strip. Neither case considered transformative use; they were decided after Leval's paper but before Campbell.
But 12 years later, with transformative use more clearly established, Koons prevailed when fashion photographer Andrea Blanch alleged his use of part of a photograph she had taken infringed her copyright. Since he had used merely the woman's lower legs and shoes from Blanch's work, changed their angle and put them on a different background with three other sets of women's lower legs from other images as part of a collage, the Second Circuit held that Koons had more than sufficiently transformed Blanch's image to claim fair use. The Supreme Court's test in Campbell, it said, "almost perfectly describes" what Koons had done.
Cariou v. Prince
Photographer Patrick Cariou sued Richard Prince in 2008 over the latter's Canal Zone exhibit, which repurposed 30 images from Cariou's 2000 book Yes, Rasta into 28 paintings, some minimally altered from their originals while others were used in collages. The case attracted considerable attention in the art world since the Southern District held in Cariou's favor and issued an injunction calling for the most severe remedy available under copyright law: the confiscation and/or destruction of any of Prince's unsold copies of his work, and the exhibition catalogs., hereafter Cariou I, hereafter Cariou II It was feared the verdict would have a chilling effect on appropriation art. Trial judge Deborah Batts ruled that Prince had not sufficiently transformed most of Cariou's photos, since in his testimony he had eschewed any intended comment on them. She also found Prince and the Gagosian Gallery, which exhibited Canal Zone, acted in bad faith since it had sold Prince's work without investigating the permission status of the original work despite being aware he regularly used others' work and Cariou's contact information and copyright notice being readily available in his book.Cariou I, at 349–52
On appeal, the Second Circuit reversed. The panel held that Batts had erred by requiring that transformative use be seen as commenting on the original work, or something greater; it was enough that his alterations had changed the mood of the images. Judge Barrington D. Parker Jr. wrote for the panel:Cariou II, at 707
The court held 25 of the 30 images transformative and remanded the other five to the district court to assess them under its standard, vacating the injunction until that decision could be made, a decision hailed by the arts community. In 2014 Cariou and Prince settled the case before that could happen.
Cariou was criticized for expanding the role of transformative use to the point that it alone might become dispositive of the entire fair use inquiry. The following year, in Kienitz v. Sconnie Nation, while affirming a finding of transformative use of a photograph of a local official used on a T-shirt making fun of him, Judge Frank Easterbrook of the Seventh Circuit wrote:
"[A] finding of transformativeness shifts the analysis of the other factors so as to render them insignificant" wrote copyright lawyer Kim Landsman two years after Cariou, drawing on earlier research showing that courts had increasingly minimized the question of commercial reuse in favor of transformativeness since 2005. "It would seem that the pendulum has swung too far in the direction of recognizing any alteration as transformative, such that this doctrine now threatens to swallow fair use", wrote Nimmer on Copyright, a widely cited guide to the law in that area, after the case, calling for a "correction",Nimmer § 13.05[B], at 13.224.20 a comment the Second Circuit itself acknowledged in a 2016 case even as it called Cariou a "high-water mark" for transformative use in its case law.
Underlying dispute
In 1981 photographer Lynn Goldsmith took a series of photographs of Prince at the start of his musical career. Following the release of Prince's Purple Rain in 1984, the magazine Vanity Fair, a Condé Nast publication, licensed one of those photos, a single black and white full length portrait photograph (previously unpublished), for a planned feature; It was agreed the photograph would be used as an "artistic reference" for an illustration that would be used only once. The magazine then commissioned pop-art artist Andy Warhol to create a highly colorized silkscreen using just Prince's head from the photograph, illustrating the feature, "Purple Fame". Goldsmith shared credit.; hereafter Foundation I