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Assessing the Specific Challenged Use of Appropriation Art

Posted by James Juo | May 19, 2023 | 0 Comments

In a 7-2 decision, the U.S. Supreme Court affirmed in Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith, No. 21-869, __ U.S. __ (May 18, 2023), that the first fair use factor, namely, “the purpose and character of the use” under 17 U.S.C. § 107(1), favored the photographer over the artist who subsequently used her photograph as an “artist reference” in a silkscreen.

In 1984, Vanity Fair sought to license one of Lynn Goldsmith's portrait photographs of the musician Prince for use as an “artist reference” for a story about the musician. Goldsmith agreed, on the condition that the use of her photo be for “one time” only. Vanity Fair hired Andy Warhol to make a silkscreen that appropriated Goldsmith's photo, and Vanity Fair published the resulting image alongside an article about Prince. The magazine credited Goldsmith for the “source photograph,” and it paid her $400.

            Warhol, however, did not stop there. From Goldsmith's photograph, he derived 15 additional works. Later, the Andy Warhol Foundation for the Visual Arts, Inc. (AWF) licensed one of those works to Condé Nast, again for the purpose of illustrating a magazine story about Prince. AWF came away with $10,000. Goldsmith received nothing.

When Goldsmith informed AWF that she believed this infringed her copyright, AWF filed suit for a declaratory judgment of noninfringement or, in the alternative, fair use. The District Court granted summary judgment for AWF on its assertion of “fair use,” 17 U.S.C. § 107, but the Court of Appeals for the Second Circuit reversed.


The majority decision written by Justice Sotomayor noted that the sole question presented is whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” §107(1), weighs in favor of AWF's subsequent commercial licensing to Condé Nast. On that narrow issue, and limited to the challenged use, the Supreme Court agreed with the Second Circuit that the first factor favors Goldsmith, not AWF. The Court emphasized that the undisputed commercial character of AWF's use (that is, its licensing to Condé Nast), though not dispositive, tends to weigh against a finding of fair use.

The Supreme Court explicitly stated, however, that it “expresses no opinion as to the creation, display, or sale of any of the original Prince Series works” created by Warhol.

After noting that the two images (Goldsmith's photograph and Warhol's silkscreen) “were not perfect substitutes,” the Court in footnote 12 further stated:

In this way, the first factor relates to the fourth, market effect. . . . While the first factor considers whether and to what extent an original work and secondary use have substitutable purposes, the fourth factor focuses on actual or potential market substitution. Under both factors, the analysis here might be different if Orange Prince appeared in an art magazine alongside an article about Warhol.

* * *

A secondary use that is more different in purpose and character is less likely to usurp demand for the original work or its derivatives.

Indeed, the Court recognized that copying may be reasonably necessary to achieve a new purpose. Parody, commentary, or criticism may need to “conjure up” or “mimic” an original in order to make its point. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580–581 and 588. “An independent justification like this is particularly relevant to assessing fair use where an original work and copying use share the same or highly similar purposes, or where wide dissemination of a secondary work would otherwise run the risk of substitution for the original or licensed derivatives of it.” But the Court found no such “independent justification” for AWF.

The Court also cautioned that “an overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner's exclusive right to create derivative works.” Thus, the Court emphasized that “the degree of transformation required to make ‘transformative' use of an original must go beyond that required to qualify as a derivative.”

The first fair use factor (namely, “purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes”) did not favor finding fair use here because the Court concluded that Goldsmith's and Warhol's images “share substantially the same purpose, and the use is of a commercial nature.”


The strongly-worded dissent written by Justice Kagan argued that the Court's decision “will stifle creativity of every sort. It 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 concurring decision written by Justice Gorsuch characterized this dispute as a disagreement over “which ‘purpose' and ‘character' counts” under the first fair use factor.

AWF focused on the purpose the “creator” had in mind when producing the accused work. But Justice Gorsuch was concerned about his “competence” to tangle with aesthetic questions such as, “Does Mr. Warhol's image seek to depict Prince as a ‘larger-than-life' icon while Ms. Goldsmith's photograph attempts to cast him in a more ‘vulnerable' light?”

Goldsmith, on the other hand, wanted “to assess the purpose and character of the challenged use.” Here, AWF sought to license its image to a magazine looking for a depiction of Prince to accompany an article about Prince; which was exactly the kinds of buyers for licensing Goldsmith's copyrighted photograph.

Justice Gorsuch concluded that the law of fair use “trains our attention on the particular use under challenge. And it asks us to assess whether the purpose and character of that use is different from (and thus complements) or is the same as (and thus substitutes for) a copyrighted work. It's a comparatively modest inquiry focused on how and for what reason a person is using a copyrighted work in the world.”

His textualist concurrence relied on the fourth fair use factor under Section 107 regarding “the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4).

Reading §107 as a whole, then, it supplies courts with a sequential chain of questions about the particular challenged use—starting with its purpose and character (in the first factor) and ending with its effect (in the fourth).

Justice Gorsuch concludes that AWF's “effort to use its portrait as a commercial substitute for her own protected photograph in sales to magazines looking for images of Prince to accompany articles about the musician” was not fair use in this instance. But a fair-use defense may prevail in other circumstances. “If, for example, the Foundation had sought to display Mr. Warhol's image of 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.”

The attorneys at Thomas P. Howard, LLC litigate copyright cases nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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