By Joshua Schiller and Benjamin Margulis
At first blush, the U.S. Supreme Court decision on May 18 in Andy Warhol Foundation for Visual Arts Inc. v. Goldsmith seems to backtrack on nearly two decades of fair use precedent.
Upon closer consideration, however, although the majority certainly narrows the scope of what qualifies as fair use, the opinion does not close the door to appropriation art altogether because its holding applies with full force only in cases where the challenged work has been commercialized in the same way as the original.
The Warhol case concerns a series of artworks created by Andy Warhol based on a photograph of Prince taken by photographer Lynn Goldsmith. Goldsmith's photograph is a stark black-and-white portrait of the musician, which she licensed to a magazine for a story about Prince in 1984.
Warhol's work, like much of his art, adds visual elements and changes to the photograph, eliminates the musician's body and gives the whole composition a highly stylized look. After Prince passed away, the Andy Warhol Foundation for Visual Arts licensed one of the artworks in the series, referred to as "Orange Prince," for use on the cover of a magazine about Prince in 2016.
At its most basic conception, the fair use doctrine allows someone to use existing copyrighted works in new and creative ways. This has fostered a wide range of artistic expression while protecting the artists from infringement claims.
A determination of whether someone has made fair use of an existing work requires the application of a four-factor test, the first of which looks to the "purpose and character of the use, including whether such use is of a commercial nature." This first factor is all that was at issue in the Warhol case.
Since the Supreme Court's 1994 decision in Campbell v. Acuff-Rose Music Inc. holding that 2 Live Crew's parody of "Pretty Woman" by Roy Orbison was a protected fair use and thus not copyright infringement, the relevant test for this first factor has looked at whether a challenged work "transforms" the original into something new by adding new meanings, messages and aesthetics. The Supreme Court made clear that transformative works "lie at the heart of the fair use doctrine's guarantee of breathing space."
The decision on May 18 revisits this specific inquiry and shrinks the scope of what qualifies as a transformative work.
Specifically, the Supreme Court held that a transformative work must have a different purpose than the original or, if it does have the same or highly similar purpose, that there be a strong justification for using the existing work. Only by satisfying one of these scenarios can a new work be said to transform the original.
However, because the Supreme Court provided very little guidance on what, beyond parody or satire, could qualify as transformative, it leaves lower courts to chart a course forward on their own.
The decision's murky nature is further complicated by the Supreme Court's proclamation that "the same copying may be fair when used for one purpose but not another." In effect, the majority held that each separate kind of use must be analyzed separately, and that the context of the use weighed heavily on the outcome of the Supreme Court's purpose analysis.
In Warhol, for example, the majority explicitly stated that it considered the use of "Orange Prince" on the magazine cover only, as opposed to hanging in the gallery or in any other context. This is a radical departure from prior precedent, which deemed a fair use work to be fair use for every context.
Because "Orange Prince" was used to depict Prince for a magazine article just like Goldsmith's original photograph was used more than three decades earlier, the Court concluded that the two works have the same purpose in the context of being used for a magazine story: to depict Prince.
The majority then looked to whether Warhol had sufficient justification for using Goldsmith's photograph and found that it was not enough that Warhol used the photograph to convey different meanings, messages and aesthetics.
There is no doubt, of course, that the Warhol decision rolls back several decades of progress favoring more robust fair use protection, particularly for artists who borrow and transform existing works into original works of art and self-expression.
Worse, the decision will lead to inconsistent and unexpected outcomes created by an endless stream of cases related to the same work — even if it were considered a fair use in the first case, there is now basically no preclusive effect as it pertains to subsequent uses.
Still, the Supreme Court's application of the "specific use" test to focus on the use of "Orange Prince" for a magazine cover only — while representing a troubling break with precedent — may be appropriation art's saving grace. It allows lower courts — and advocates — to narrow the Supreme Court's ruling to highly commercial uses, like the one at issue in the decision itself.
That, in turn, means that artists still have room to argue that the addition of new messages, meanings and aesthetics change the purpose of the original work in other specific uses.
In the landmark 2013 case of Cariou v. Prince, for example, we noted in our argument for the appellee that adding new meaning, message or aesthetics could reasonably be perceived as using the original for a different purpose. It also does not supersede or supplant the original in such cases.
The majority seemed to acknowledge as much in discussing Warhol's own Soup Cans series, noting that the message presented by Warhol's work is entirely different from the purpose of the Campbell's logo, which in turn should lead to a finding of a different purpose. This aspect of the decision, if followed, would eliminate challenges to works that include appropriation where the second work is not clearly serving as a highly commercialized substitute for the original.
By extension, if there is sufficient new meaning or message in the challenged work — such that, for example, it no longer serves as a substitute for the original, despite being in the same medium — the specific use test should not diminish the artistic nature of the second work based on its commercial use, but should instead protect it as a fair use.
Thus, while the Andy Warhol Foundation may have lost its efforts to license a work in a manner that could substitute for the original work, in this one instance, that should not, and cannot, close the door on other uses or for other appropriation artists in general.
This article was first published by Law360 on May 19, 2023.