The First Fair Use Factor and the Purpose of the Use

The U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. Scott Hervey and Tara Sattler talk about this decision on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

Cases Discussed:

• Andy Warhol Foundation v. Goldsmith
• Campbell v. Acuff-Rose Music

Show Notes:

Scott:
In a closely watched copyright case, the U.S. Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that Andy Warhol’s portrait of music legend Prince did not qualify as fair use under copyright law. The decision affirms a previous ruling by the Second Circuit, which found that Warhol’s artwork shared the same commercial purpose as the original photograph taken by photographer Lynn Goldsmith. The Supreme Court seemed to make a great effort to state that its analysis was limited to the specific use alleged to be infringing – the foundation’s licensing of Warhol Prince portrait to Conde Nast – and stated that the court is not expressing an opinion as to the creation, display or sale of the original series of Warhol Prince portraits, and the case itself presents the unique situation of the two works actually competing in the same marketplace. However, this opinion is now the go-to for determining fair use, and it will have a very wide impact. We are going to talk about the impact of this case in this installment of the briefing by Weintraub Tobin.

Scott:
These are the underlying facts. In 1981 Lynn Goldsmith was commissioned by Newsweek to photograph a then “up and coming” musician named Prince Rogers Nelson. Newsweek later published one of Goldsmith’s photos along with an article about Prince. Years later, Goldsmith granted a limited license to Conde Nast publication – Vanity Fair, for use of one of her Prince photos as an “artist reference for an illustration.” The terms of the license included that the use would be for “one time” only. Vanity Fair then hired Andy Warhol to create the illustration, and Warhol used Goldsmith’s photo to create a purple silkscreen portrait of Prince, which appeared with an article about Prince in Vanity Fair’s November 1984 issue. The magazine credited Goldsmith for the “source photograph” and paid her $400.

Tara:
After Prince died in 2016, Condé Nast contacted the foundation about reusing the 1984 Vanity Fair image for a special edition magazine that would commemorate Prince.  Condé Nast learned about a series of orange silkscreen portraits of Prince created by Warhol. This Orange Prince image is one of 16 works that Warhol derived from Goldsmith’s photograph. When Condé Nast learned about the Orange Prince Series images, it opted instead to purchase a license from the foundation to publish it instead. Apparently, Goldsmith was unaware of the orange prince Series until 2016, when she saw it on the cover of Condé Nast’s magazine. And from there, this lawsuit commenced.

Scott:
The sole issue on appeal to the Supreme Court was whether the first fair use factor, the purpose, and the character of the use weighed in favor of the foundation. Prior to this case, the focus has been on the transformative nature of the work itself. The Supreme Court in Campbell v. Acuff-Rose Music established this transformative use analysis when it said that the first fair use factor is an inquiry into whether   “the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[,]. . . in other words, whether and to what extent the new work is transformative. . .”

Tara:
This transformative use analysis took on great importance and often eclipsed the other fair use factors. If the work was transformative, it was almost always found to be fair use.

Scott:
Agreed. Prior to this case, the focus has been on whether the second work had a different aesthetic or conveyed a different meaning. According to the Second Circuit in the Cariou v. Prince case, the second work did not need to comment on or parody the original work, and the creator of the second work did not need to articulate a transformative intent for one to be found. In response to the Foundation’s argument that the first fair use factor weighs in its favor because the works convey a different meaning or message than Goldsmith’s photograph, the majority of the Court said that this, without more, is not dispositive of the first fact. Rather, the majority focused on the specific use of the infringing work…the licensing to third parties. The majority said, “As portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and the Foundation’s copying use of it share substantially the same purpose.”  The majority went on to say that even though the Foundation’s work adds new expression to the original photograph, in the context of the challenged use, the first fair use factor favors Goldsmith.

Tara:
So, the focus of the first fair use factor…the purpose and character of the use …has seemingly shifted from a content-based analysis…an examination of the works themselves…to purpose-based analysis….is the purpose of the use of the second work different enough from the first to justify copying.

Scott:
That’s right. And as you know, this is quite a shift in how the first fair use factor has been analyzed.

Tara:
That’s true. So, with the first fair use factor now taken into account…and probably being heavily influenced by….the purpose of the use, the cases following this are likely going to delve into when copying is justified. We know from the majority that where the original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the copying is not justified, but that’s it.

Scott:
Correct. Also, we now need to look at the purpose of each intended use. While one intended use of the second work may justify copying, another may not.

Tara:
Scott, how do you think this opinion affects appropriation artists and their work? Artists like Andy Warhol, Roy Lichtenstein, Richard Prince, and Jeff Koons.

Scott:
This opinion will certainly cause some challenges for that category of art and artists. While artwork that appropriates the image of a Campbell’s soup can would probably constitute fair use for a wide variety of commercial purposes, artwork based on a photograph probably would have greater limitations, including possibly the sale of the original artwork itself.

Tara:
This will also have an impact on the pending copyright infringement cases related to the use of copyright-protected material in the training of AI models. Prior to Warhol, the AI technology companies contended that the use would fall within the established bounds of fair use, but this seems to be an overgeneralization as Warhol will require a detailed analysis of the facts of each case.