A pair of copyright decisions issued in May, one involving the appropriation artist Richard Prince[1] and the other involving works portraying the musician known as Prince, explore and expand on the “fair use” defense to copyright infringement. On May 11, the U.S. District Court for the Southern District of New York denied Richard Prince’s request for summary judgment in two copyright infringement lawsuits brought against him, paving the way for a trial in Manhattan on the scope of fair use.[2] A week later, the U.S. Supreme Court affirmed the Second Circuit Court of Appeals’ holding that the Andy Warhol Foundation’s licensing of Warhol’s Orange Prince, a print based on a photograph of the late musician by defendant Lynn Goldsmith, did not constitute fair use of the Goldsmith photograph.[3]

Graham v. Prince

As previously discussed on this blog, in 2017 the district court denied Richard Prince’s motion to dismiss plaintiff Donald Graham’s copyright infringement claims over the use of one of Graham’s photographs, Rastafarian Smoking a Joint, concluding that it could not conduct the open-ended and context-sensitive fair use analysis so early in the proceeding. After discovery, on October 5, 2018, Prince filed a motion for summary judgment[4] to resolve Graham’s claims, along with those that photographer Eric McNatt brought over Prince’s use of McNatt’s photograph, Kim Gordon I.[5] Prince used both photographs in his New Portraits series, which featured works that Prince created by copying and magnifying posts from Instagram (including “likes” and user comments), then adding a comment of his own. Graham and McNatt also named the galleries that displayed the Prince works—the Gagosian Gallery and Blum & Poe, respectively—as defendants in their lawsuits.

On summary judgment, with a more complete record, the district court once again rejected Prince’s fair use defense.[6] District Judge Sidney Stein conducted the four-part fair use analysis:

  1. “[T]he purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes”: First, the court rejected Prince’s argument that, for fair use analysis, an infringing artwork should be transformative from the standpoint of an observer with a general appreciation of the arts, holding instead that it must be transformative from the standpoint of a reasonable observer looking at the artworks side-by-side.[7] Under this standard, a reasonable observer would recognize the original photographs, and believe that Prince modified but did not transform them.[8] Second, as to the works’ purpose, the court found that it was unclear whether Prince intended to create a parody of the original photographs, a satire of society’s use of social media, or neither, pointing out Prince’s own contradictory testimony on the question.[9] Third, because the works were not transformative, the court also found their “primarily commercial” nature weighed against fair use.[10]
  2. “Nature of the Copyrighted Work”: The court explained that it is easier to find fair use where a work is “factual or informational,” rather than “expressive or creative.”[11] This factor, too, weighed in plaintiffs’ favor, due to the careful artistic decisions they made.
  3. “Amount and Substantiality of Work Used”: Referring back to its decision on whether Prince’s use was “transformative,” the court found that his alterations were not enough to allow using almost the entirety of plaintiffs’ works.[12]
  4. “Effect of the Use on the Market Value for the Original”: The court found this factor weighed in Prince’s favor, since the photographs and prints were aimed at different markets.[13]

On May 25, 2023, Prince filed a motion seeking reconsideration of a portion of the court’s summary judgment order unrelated to the fair use analysis, a narrow issue concerning an express or implied license to Rastafarian under Facebook’s Terms of Use. The court denied that motion on July 6, 2023, ruling it had considered the license issue in the summary judgment order and Prince failed to provide a basis for a finding that he was granted an express license to Rastafarian. Regardless of this decision, we expect Prince to continue to assert his fair use defense.

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

Ruling in a case previously discussed on this blog, the U.S. Supreme Court’s latest fair use decision arose from petitioner Andy Warhol Foundation (“the Foundation”)’s license of a silkscreen portrait of the musician Prince. In 1984, photographer Lynn Goldsmith granted Vanity Fair a “one time” license to her photograph of the late musician as “an artist reference for an illustration,” and Warhol used Goldsmith’s photograph to make a silkscreen illustration for the magazine. However, Warhol also used the photo to create fifteen other works, which together are now known as the “Prince Series.” Goldsmith learned about the “Prince Series” in 2016 when, more than thirty years after she licensed the photograph to Vanity Fair and Warhol created the series, she saw Orange Prince on the cover of a special commemorative magazine following Prince’s death. In 2017, after Goldsmith notified the Foundation of her belief that it had infringed her copyright, the Foundation sued Goldsmith and her agency for a declaratory judgment that the Prince Series works are non-infringing or, in the alternative, that they constitute a fair use of the photograph. Goldsmith counterclaimed for copyright infringement.

In 2019, the U.S. District Court for the Southern District of New York granted summary judgment in favor of the Foundation under the Copyright Act’s four fair use factors.[14] The district court held that it “need not address” whether the works were substantially similar, “because it is plain that the Prince Series works are protected by fair use.”[15] The U.S. Court of Appeals for the Second Circuit reversed and remanded, finding that all four fair use factors favored Goldsmith.[16]

On December 9, 2021, the Foundation asked the U.S. Supreme Court to clarify the first fair use factor: “Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the Second Circuit has held).”[17]

On May 18, 2023, in a decision penned by Justice Sotomayor, the U.S. Supreme Court affirmed the Second Circuit’s ruling, finding that summary judgment should not have been granted because the first fair use factor weighs in Goldsmith’s favor.[18]

The Foundation contended that the “purpose and character” of Warhol’s use of Goldsmith’s photograph weighed in favor of fair use because the “Prince Series” works are “transformative,” in that they convey a new meaning or message.[19] The Court disagreed, holding: “[T]he first fair use factor instead focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism. Although new expression, meaning, or message 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.”[20] That is, whether the purpose and character of a use weighs in favor of fair use requires an “objective inquiry” into how an original work is used by an alleged infringer.[21]

As applied to this case, the Court found that the two works share substantially the same purpose—namely, both are portraits of Prince used to depict Prince in magazine stories about Prince—and the Foundation’s use in licensing the work for the commemorative magazine is of a commercial nature.[22]

The Court also clarified and arguably narrowed its decision in Campbell v. Acuff-Rose Music, specifically, its definition of a transformative use as one that “alter[s] the first [work] with new expression, meaning, or message.”[23] Justice Sotomayor noted that “Campbell cannot be read to mean that [the fair use defense] weighs in favor of any use that adds new expression, meaning, or message,” raising concerns that “‘transformative use’ would swallow the copyright owner’s exclusive right to prepare derivative works. Many derivative works . . . that ‘recast, transfor[m] or adap[t]’ the original, add new expression, meaning or message.”[24] The Court emphasized the degree of transformation “must go beyond that required to qualify as a derivative.”[25] “[T]he larger the difference, the more likely the first factor weighs in favor of fair use.”[26]

The Court further held that “the commercial character of a secondary use should be weighed against the extent to which the use is transformative or otherwise justified.”[27] In this case, the commercial character of the Foundation’s licensing of the work for a magazine commemorating Prince weighed against a finding of fair use under the first factor.[28] So, even though Orange Prince adds new expression to Goldsmith’s photograph, the majority affirmed the Second Circuit’s finding that, “in the context of the challenged use,” the first fair use factor favors Goldsmith.[29]

Justice Gorsuch filed a short concurrence, joined by Justice Jackson, that argues the first fair use factor is “a comparatively modest inquiry focused on how and for what reason a person is using a copyrighted work in the world, not on the moods of any artist or the aesthetic quality of any creation.”[30] Despite the outcome in this case, the concurrence emphasized that the Foundation’s use of the Orange Prince image elsewhere—for example, in “a nonprofit museum or a for-profit book commenting on 20th-century art”—could lead to a different result.[31]

In sharp dissent, Justice Kagan, joined by Chief Justice Roberts, warned that the majority’s decision will “stifle creativity of every sort” and leave the “first-factor inquiry in shambles.”[32] Justice Kagan noted that, in 2021, the Court drew attention to Warhol paintings as “the perfect exemplar of a ‘copying use that adds something new and important’—of a use that is ‘transformative,’ and thus point[ed] toward a finding of fair use.”[33] That Court, Justice Kagan argued, “would have told this one to go back to school.”[34] Justice Kagan emphatically disagreed with the majority’s approach to purpose and character and maintained that the majority cared only about Warhol’s commercial use of Goldsmith’s photograph, ignoring whether Warhol’s work was “transformative.”[35] The dissent concluded that Warhol’s work indeed “add[ed] something new, with a further purpose or different character” and “alter[ed] the first with new expression, meaning or message.”[36]

Looking Ahead

In view of the recent Graham and Goldsmith decisions, when courts are faced with claims of copyright infringement and the affirmative defense of fair use, they will have to continue to engage in highly fact-specific and objective analysis into the alleged infringer’s use of the original work. Transformative use must be weighed against the commercial character of the use and its purpose. If the two works share the same or similar purposes, and the secondary use is commercial, then a finding of fair use is unlikely, absent some other justification.

Many fear that the U.S. Supreme Court’s decision in Goldsmith will have radical implications for appropriative artistic practices. While it is too soon to tell if Justice Kagan’s warning about the decision’s chilling effect on creative freedom of artists will prove true, appropriation artists are on notice.

[1] “Appropriation art” is the practice of using existing elements, objects or images in a new work.

[2] Graham v. Prince and McNatt v. Prince, Nos. 15-CV-10160 (SHS), 16-CV-8896 (SHS) (S.D.N.Y.).

[3] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith et al., 598 U.S. (2023) (slip op., at 38).

[4] Graham, No. 15-CV-10160 (SHS), Dckt. 131 (S.D.N.Y. Oct. 5, 2018).

[5] Id. at 24-25.

[6] Graham, No. 15-CV-10160 (SHS), Dckt. 227 (S.D.N.Y. May 11, 2023).

[7] Id. at 15-16.

[8] Id. at 17.

[9] Id. at 20-21.

[10] Id. at 23.

[11] Id. at 24.

[12] Id. at 25-26.

[13] Id. at 27.

[14] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 316 (S.D.N.Y. 2019), rev’d and remanded, 992 F.3d 99 (2d Cir. 2021), opinion withdrawn and superseded on reh’g sub nom. Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).

[15] Goldsmith, 382 F. Supp. 3d at 324.

[16] Andy Warhol Found. for the Visual Arts v. Goldsmith, 992 F.3d 99 (2d Cir.), opinion withdrawn and superseded on reh’g sub nom. Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).

[17] Petition for a Writ of Certiorari, Andy Warhol Found. for the Visual Arts, Inc., v. Goldsmith at 1, Case No. 21-869 (Dec. 9, 2021).

[18] Goldsmith, 598 U.S. (2023) (slip op., at 12-13).

[19] Id.

[20] Id. at 12 (citing Campbell v. Acuff-Rose Music, Inc., 510 U. S. 569, 579 (1994)).

[21] Id. at 33.

[22] Id. at 24, 33.

[23] Id. at 28 (citing Campbell, 510 U.S. at 579).

[24] Id. at 28.

[25] Id. at 16.

[26] Id.

[27] Id. at 25-26 n.13.

[28] Id. at 18, 24.

[29] Id. at 13.

[30] Goldsmith, 598 U.S. (2023) (slip op., at 2) (Gorsuch, J., concurring).

[31] Id. at 6.

[32] Goldsmith, 598 U.S. (2023) (slip op., at 2, 36) (Kagan, J., dissenting).

[33] Id. at 2 (citing Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 593 U. S. (2021) (slip op., at 24–25)).

[34] Id.

[35] Id. at 18-20.

[36] Id. at 35 (citing Campbell, 510 U.S. at 579).