SCOTUS to Warhol: “Orange Prince” Not Fair Use

In its first major assessment of the “fair use” exception in decades, the United States Supreme Court has ruled that an Andy Warhol silkscreen of the late pop star Prince infringed the original photographer’s copyright—a decision with potential implications for other artworks, including the expected wave of A.I.-generated images.

The Court’s 7-2 opinion in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, which included a pugnacious dissent, addressed whether Warhol’s silkscreen was sufficiently transformative of celebrity photographer Lynn Goldsmith’s original portrait to qualify as fair use under the Copyright Act. 

In 1984, Condé Nast hired Warhol to create a painting to accompany a story on Prince in Vanity Fair. Relying on a prior photograph by Goldsmith, Warhol created 16 silkscreen paintings, cropping and altering the color of the original. Condé Nast published a purple-toned image; it paid Goldsmith a $400 fee in exchange for a one-time license and credited her for the “source photograph.” Then, after Prince’s death in 2016, Condé Nast sought to use a different image from Warhol’s series, an orange silkscreen portrait based on the same photograph, referred to as “Orange Prince.” It paid the Andy Warhol Foundation (AWF) a $10,250 fee. But this time, Goldsmith received no payment or credit for the secondary use of her photograph.

When Goldsmith informed AWF that she believed “Orange Prince” infringed her copyright, AWF brought suit. The Southern District of New York granted summary judgment in favor of AWF, finding AWF had satisfied the Copyright Act’s four fair-use factors. The Second Circuit reversed, finding all four fair-use factors favored Goldsmith. The Supreme Court then granted certiorari on the first factor, which concerns “the purpose and character of the use, including whether such use is of a commercial nature.” 17 U.S.C. § 107. 

On the “purpose and character” factor, the SDNY had found that the subsequent Warhol works were “transformative” because they “have a different character, give Goldsmith’s photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” 382 F. Supp. 3d at 325-26. The Second Circuit, however, had found the question to be “whether the secondary work’s use of its source material is in service of a fundamentally different and new artistic purpose and character,” and in this instance, “the overarching purpose and function of the [orange and purple Prince portraits] is identical, not merely in the broad sense that they are created as works of visual art, but also in the narrow but essential sense that they are portraits of the same person.”

In a May 18, 2023 opinion authored by Justice Sotomayor, the Supreme Court held that the “purpose and character” factor weighed against the application of fair use. Stressing that this factor “focuses on whether an allegedly infringing use has a further purpose or different character,” the Court found that Goldsmith’s photograph and AWF’s “copying use of it share substantially the same purpose.” The Court also highlighted that the 2016 printing was for a commercial use, finding that “Goldsmith’s photograph and AWF’s 2016 licensing of Orange Prince share substantially the same purpose” because “AWF’s use of Goldsmith’s photo was of a commercial nature—[which] counsel[s] against fair use, absent some other justification for copying.” 

In reaching that conclusion, the Court rejected AWF’s argument that the Prince series of works were “transformative.” AWF argued that the first fair-use factor weighed in its favor because as transformative pieces, “the works convey a different meaning or message than the photograph.” Instead, the Court found 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 Court’s decision was its first major assessment of fair use since Campbell v. Acuff Rose Music, 510 U.S. 569 (1994). In Campbell, the Court held that 2 Live Crew’s version of Roy Orbison’s “Pretty Woman” constituted fair use because the second song was clearly a parody of the original. In her opinion, Justice Sotomayor upheld Campbell’s reasoning while distinguishing the specific circumstances of the case at hand. Sotomayor stressed that because the alternative version of “Pretty Woman” constituted a parody, the purpose and character of 2 Live Crew’s version was transformative of the original song. By contrast, her opinion cautioned that Warhol’s treatment of Goldsmith’s photograph, by merely adding a new aesthetic or expression, was insufficient to constitute “transformative” use. 

Although artists awaited the Court’s decision with trepidation, the opinion’s reasoning was relatively narrow and may not lead to major restrictions on art involving appropriation as a whole. The decision focused significantly on AWF’s failure to pay Goldsmith a subsequent licensing fee in 2016. The Court did not address whether artists should be restricted from creating derivative images altogether, explaining that it “expresses no opinion as to the creation, display, or sale of any of the original Prince Series works.”

Justice Kagan authored an unusually quarrelsome dissent, joined by Chief Justice Roberts, accusing the majority of failing to appreciate Warhol’s art. Justice Kagan argued that the holding “will stifle creativity of every sort” by “[i]nhibiting subsequent writers and artists from improving upon prior works.” The dissent argued that “licensors sometimes place stringent limits on follow-on uses…[a]nd licensors may charge fees that prevent many or most artists from gaining access to original works.” While the dissent expressed support for such restrictions for mere copying of original works, restrictions on transformative use “will impede new art and music and literature. It will thwart the expression of new ideas and the attainment of new knowledge. It will make our world poorer.”

The decision potentially impacts other applications of fair use, including A.I. art that relies on copyrighted works to train itself in order to create subsequent works. Lower courts will still need to determine whether a content creator, such as Goldsmith, would need to consent to use of their content in all derivative works (and thus limit applications like A.I.). If district courts read the Warhol decision narrowly, they may continue accepting fair-use defenses, provided the work in question is more transformative than the “Orange Prince” in Warhol.

The contours of the decision will undoubtedly be considered and pushed at the district court level. During oral argument, the Justices peppered advocates with hypotheticals about other speech claiming to be fair use, ranging from the making of Lord of the Rings books and movies, to using Warhol’s Orange Prince in a “Go Orange” sign to root for Syracuse University athletics. Given that the Court has now updated its approach to fair use, it will be critical to keep a close eye on how the lower courts apply the multitude of variations on fair use, just as the Justices asked advocates to address during oral argument. And, while the analysis of what constitutes a “transformative” creative work plays out in the lower courts, commercial users of copyrighted materials will want to carefully consider obtaining appropriate licenses.

This memorandum is a summary for general information and discussion only and may be considered an advertisement for certain purposes. It is not a full analysis of the matters presented, may not be relied upon as legal advice, and does not purport to represent the views of our clients or the Firm. Amy Siegel, an O'Melveny partner licensed to practice law in California, David R. Eberhart, an O'Melveny partner licensed to practice law in California and Ohio, Megan Smith, an O'Melveny partner licensed to practice law in California, Massachussetts, and New York, Scott W. Pink, an O'Melveny special counsel licensed to practice law in California, and Mike Rosenblatt, an O'Melveny associate licensed to practice law in the District of Columbia, contributed to the content of this newsletter. The views expressed in this newsletter are the views of the authors except as otherwise noted.

© 2023 O’Melveny & Myers LLP. All Rights Reserved. Portions of this communication may contain attorney advertising. Prior results do not guarantee a similar outcome. Please direct all inquiries regarding New York’s Rules of Professional Conduct to O’Melveny & Myers LLP, Times Square Tower, 7 Times Square, New York, NY, 10036, T: +1 212 326 2000.