U.S. Supreme Court Rules Against Warhol’s ‘Orange Prince’ in Copyright Infringement DisputeMay 22, 2023
On May 18, 2023, the Supreme Court issued a long-anticipated ruling in the on-going dispute about a painting of the late musician Prince, depicted by artist Andy Warhol on a distinctive orange-colored background, and published in 2016 on the cover of a magazine published by Condé Nast. Andy Warhol created the painting from a photo of Prince taken by Lynn Goldsmith (“Goldsmith”) in 1981. After the 2016 publication of the photo, the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) and the photographer, Goldsmith, became embroiled in a legal dispute over the breadth of a license granted by AWF for the use the orange silkscreen print (“Orange Prince”). Seven years later, in a 7-2 majority, the Supreme Court ruled in favor of Goldsmith, finding that the publication of Orange Prince in Condé Nast was not a fair use of her original photo but was instead an infringement of Goldsmith’s rights.
The Constitution empowers Congress to grant copyrights, a form of intellectual property that encourages the generation of creative and expressive works by granting to the authors of such works, for limited times, certain exclusive rights to their use. Those exclusive rights include the right to reproduce the work in copies, distribute copies to the public, publicly display or perform the work, and to prepare derivative works based on the work. Violations of these rights by third parties are known as copyright infringement. These exclusive rights are balanced against various limitations and defenses to infringement, the most well-known of which is fair use, providing that certain uses of copyrighted materials, such as criticism, comment, new reporting, teaching, scholarship, and research, do not necessarily constitute an infringement of copyright.
The Copyright Act does not clearly define fair use, but rather sets forth a non-exhaustive list of four factors courts must consider when determining whether a given use of another person’s copyrighted work is a fair use. Those factors are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. This framework is highly contextual and fact-specific, which makes the doctrine notoriously difficult to apply predictably.
The dispute between AWF and Goldsmith had its genesis in 1984, when Vanity Fair hired pop artist Andy Warhol to create an illustration of Prince Rogers Nelson, popularly known by the stage name “Prince,” for an article about the then-rising music star. Vanity Fair acquired from Goldsmith a “one use” limited license permitting Warhol to prepare the illustration based on a reference photo of Prince taken by Goldsmith in 1981. Unbeknownst to Goldsmith, Warhol created a series of sixteen illustrations from the reference photo, only one of which was ultimately used in the 1984 Vanity Fair article. After Prince’s death in 2016, Vanity Fair’s parent company, Condé Nast, asked AWF for a license to reuse the Prince illustration from the 1984 article, but, upon learning of the other illustrations, instead licensed and used a different illustration from the series: Orange Prince. Goldsmith first learned of the existence of Orange Prince when she saw the photo on the cover of Condé Nast’s magazine commemorating Prince in 2016, and informed AWF that Orange Prince infringed her copyright in the original reference photo. AWF filed suit, seeking a declaration of non-infringement, and Goldsmith counterclaimed for copyright infringement.
The trial court granted summary judgment in favor of AWF on grounds of fair use, but the Second Circuit reversed on appeal, finding that all four of the fair use factors weighed against fair use, and in favor of Goldsmith. AWF then sought review before the Supreme Court, arguing that the first fair use factor, the purpose and character of the use, weighs in favor of AWF, not Goldsmith as the Second Circuit held, because Warhol’s illustrations conveyed a different meaning or message than the original photo, and were thus highly transformative.
The Court's Decision
Reviewing the Second Circuit decision on the sole issue of the first fair use factor—the purpose and character of the use—the Supreme Court disagreed and ruled in favor of Goldsmith. Writing for the majority, Justice Sotomayor noted that “transformative” use is also an element of the derivative work right, which belongs exclusively to the copyright owner. Thus, she wrote, an “overbroad concept of transformative use … that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to creative derivative works” and so the “degree of transformation” required to qualify as fair use must “go beyond that required to qualify as a derivative.”
The majority noted that the use made by Condé Nast of Orange Prince, a magazine cover, is substantially the same purpose for which the Goldsmith photograph was taken in the first place: to depict Prince in editorial stories about Prince. Further, the use of Orange Prince was commercial in nature, and the transformative message or commentary claimed by AWF could stand on its own without the need to copy the Goldsmith photograph. Reflecting the highly contextual nature of the fair use framework, Justice Gorsuch observed in a concurring opinion that “while our interpretation of the first fair-use factor does not favor [AWF] in this case, it may in others. If, for example, [AWF] had sought to display [Orange Prince] in a nonprofit museum or a for-profit book commenting on 20th-century art, the purpose and character of that use might well point to fair use.” Justice Kagan and Chief Justice Roberts dissented, arguing that the work is clearly transformative and expressing reservations about the potential of the majority opinion to “stifle creativity of every sort.”
Copyright infringement and its various defenses are complex legal issues, and they are becoming increasingly important business assets due to the continuing emergence of new technologies like NFTs (non-fungible tokens), and AI-based content generation services like DALL-E and ChatGPT. The attorneys at Lewis Rice have extensive experience in protecting, defending, and licensing copyrights, as well as analyzing and applying the fair use factors in the face of uncertain new technologies. If you have questions about the United States Supreme Court’s ruling in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, and how it may affect your copyrights, or your ability to fairly use copyrighted materials, please reach out to a member of Lewis Rice’s Intellectual Property group.