Taking a Picture of the Fair Use Doctrine

Mitchell Schuster

What is the connection between Andy Warhol, Prince, and the 90’s rap group, 2 Live Crew? Together, their art has dramatically changed the landscape of the modern system of fair use under U.S. Copyright law, most recently with the landmark case of Andy Warhol Foundation for the Visual Arts, Inc v. Goldsmith.[1] The Court’s 2023 decision substantially limited the capacity for the fair use doctrine to protect derivative works based on existing art, and it has the potential to fundamentally alter the art world, photograph licensing practices, and the emerging AI field.[2]

The doctrine of fair use, or a limited use of a copyrighted material used without the permission of the original creator, has been a staple of English Common law for centuries because it encourages artists to generate new work based on existing pieces of art.[3] The concept of fair use was solidified in the United States with the decision in Folsom v. March,[4] eventually codified as 17 U.S.C. § 107.[5] The statute outlines a four factor standard for evaluating fair use claims by assessing the purpose and character of the work’s use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and the effect of the use upon the potential market for or value of the copyrighted work.[6]

The 1994 Supreme Court decision Campbell v. Acuff-Rose Music, Inc., later clarified the standard for assessing the purpose and character of a work’s use.[7] This case centered on 2 Live Crew’s 1989 song “Pretty Woman” which parodied and incorporated many elements of Roy Orbison’s 1964 hit song “Oh, Pretty Woman”.[8] The Court here formulated a test to differentiate fair use from infringement.[9] The Court’s analysis centered on whether the new work merely supersedes the objects of the original creation, or whether and to what extent it is “transformative,” altering the original with new expression, meaning, or message.[10] This test was seen as a net positive in the art world because it encouraged adaptations of existing work and promotes progress of science and the arts, the stated goal of copyright generally.[11]

However, this standard still raised several questions about the ability for artists to profit off work heavily based on another artist’s copyrighted material, which the Court addressed in the Warhol case.[12] The conflict at issue in this case began in 1981, when photographer Lynn Goldsmith conducted a photoshoot with Prince, who was largely unknown at the time.[13] After the release of Prince’s Purple Rain album, Vanity Fair magazine licensed one of Goldsmith’s photos for use as an “artistic reference” for a planned feature story on Prince.[14] Unbeknownst to Goldsmith, the artist using the work as a reference was Andy Warhol.[15] After completing the Vanity Fair feature, Warhol allegedly used the reference photo to create 15 additional works in his signature colorized silkscreen style, known as the Prince Series.[16] The conflict truly began in 2016 after Prince’s death, when Conde Nast (the parent company of Vanity Fair) published a commemorative magazine celebrating his life, and paid the Andy Warhol Foundation $10,000 to reproduce an image from the Prince Series as the cover of the magazine, without crediting Goldsmith or paying her any royalties.[17] After discovering the publication, Goldsmith notified the Andy Warhol Foundation (“AWF”) of her belief that her copyright was infringed upon. The AWF then preemptively sued Goldsmith and her agency for a declaratory judgement of noninfringement or fair use.[18]

Throughout the case’s journey to the Supreme Court, the lower courts generally ruled in continuity with the Campbell case.[19] The Second Circuit Court of Appeals ruled that Conde Naste had infringed on Goldsmith’s copyright and defined a “transformative” use not as “any secondary work that adds a new aesthetic or new expression to its source material,” but rather, one that uses “its source material . . . in service of a ‘fundamentally different and new’ artistic purpose and character.”[20]  

In a 7-2 decision, Justice Sotomayor affirmed the decision of the Second Circuit but clarified that she felt the use of the photo by Conde Nast was not transformative because the work and its use by the Andy Warhol Foundation “share substantially the same purpose.”[21] She explained that an analysis of the purpose and character of a piece of art’s use must weigh “whether such use is of a commercial nature or is for nonprofit educational purposes” and while commercial use does not automatically render a derivative work unfair, it weighs in favor of the original artist.[22] Sotomayor applied this new method of assessing fair use claim to AWF’s picture and ruled that since new meaning or expression alone is insufficient to render a work transformative, the AWF’s use of the photo did not constitute fair use and Goldsmith was entitled to compensation.[23] She supported her ruling by arguing that assessing commercial potential as an element of fair use would protect the exclusive right of a copyright’s owner to prepare derivative works for sale.[24] Sotomayor’s opinion has generally been interpreted throughout the art world as stating that 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 without an alternative justification.[25]

The most apparent consequence of this decision are the new risks associated with creating art based on derivative works for profit, which is suddenly a much more challenging prospect with the potential to incur a lawsuit, particularly since the specifics of how a transformative work suddenly becomes an infringement based on how its displayed, sold, or licensed for reproduction are not fully defined.[26] Additionally, this decision will likely make it much more challenging for photographers to license their work to artists seeking to create derivative works that utilize reference photographs, a major source of income for the photography community.[27] However, there may be positive outcomes from this decision as well. One of the key reasons that generative AI has become so powerful and sophisticated over the last several years has been its use of copyrighted materials for training purposes under fair use grounds.[28] While the Supreme Court has not directly applied their decision to AI models, it could be a strong step towards protecting the work of countless artists from AI models seeking to profit off their efforts.[29]

[1] 598 U.S. 508 (2023).

[2] Amy Adler, The Supreme Court’s Warhol Decision Just Changed the Future of Art, Art in America, (May 26, 2023, 10:47 AM), https://www.artnews.com/art-in-america/columns/supreme-court-andy-warhol-decision-appropriation-artists-impact-1234669718/.

[3] Bruce Boyden, The Surprisingly Confused History of Fair Use: Is It a Limit or a Defense or Both?, Marquette Univ. Law School Faculty Blog (Oct. 9, 2022), https://law.marquette.edu/facultyblog/2022/10/the-surprisingly-confused-history-of-fair-use-is-it-a-limit-or-a-defense-or-both/.

[4] Folsom v. Marsh, 9 F. Cas. 342 (No. 4,901) (CCD Mass. 1841).

[5] Id.  

[6] Id.

[7] Id.

[8] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 571 (1994).

[9] Id.

[10] Id. at 594.

[11] Michael D. Murray, Copyright Transformative Fair Use After Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 24 Wake Forest J. Bus. & Intell. Prop. L. 21, 23 (2024).

[12] Id.

[13] Bruce Haring, Andy Warhol Silkscreens Of Rocker Prince Ruled ‘Not Fair Use’ By Appeals Court, Deadline (Mar. 27, 2021), https://deadline.com/2021/03/andy-warhol-silkscreens-of-rocker-prince-1234723152/.

[14] Id.

[15] Id.

[16] Id.

[17] Adler, supra note 2.

[18] Leading Case, Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith, 137 Harv. L. Rev. 410, 412 (2023).

[19] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99, 109 (2d Cir. 2021) aff'd sub nom. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 509 (2023).

[20] Id. at 114.

[21] Harvard, supra note 18.  

[22] Id.

[23] Id.

[24] Id.

[25] Caroline O’Keefe, The Aftermath of Warhol v. Goldsmith: Understanding The Fair Use Doctrine Amidst A Generative AI Renaissance, Fordham Intell. Prop., Media, & Ent. Law J. Blog (Nov. 16, 2023), http://www.fordhamiplj.org/2023/11/16/the-aftermath-of-warhol-v-goldsmith-understanding-the-fair-use-doctrine-amidst-a-generative-ai-renaissance/.

[26] Marjorie Heins, Why the Supreme Court’s Decision in the Andy Warhol Copyright Case Shows the Dangers of a Sympathy Vote, ArtNet (May 24, 2023), https://news.artnet.com/art-world-archives/warhol-v-goldsmith-marjorie-heins-2308822.

[27] O’Keefe, supra note 24.

[28] Id.

[29] Id.