Ever since Marcel Duchamp put a urinal on the wall of an art gallery and titled it “Fountain,” we have known that context matters in the art world. From the “found object” art movement to Andy Warhol’s prints of the iconic Campbell’s Soup cans, artists have challenged their audiences to see certain objects or images in a new light by recontextualizing them in an artistic context. And while this movement in the art world has been around for more than a century, in the world of copyright law (and specifically the fair use defense analysis), context has traditionally not mattered much.
Whether the use of a preexisting work was infringing or a fair use was determined simply by looking at the two works side by side; it did not matter if the accused work was hanging in a museum or on a billboard. However, the Supreme Court’s recent decision in Andy Warhol Foundation v. Goldsmith (decided May 18, 2023) has changed that analysis significantly.
The Warhol case has a convoluted factual history. In 1984, Andy Warhol was commissioned to make an artistic print from one of esteemed rock and roll photographer Lynn Goldsmith’s photographs of the musician Prince. Goldsmith gave Warhol and Vanity Fair (who commissioned the work) a license to use the photo one time for the purpose of making a single print, which was featured in that magazine. Warhol, however, made not just one but a series of 16 prints of the image in different colors.
The licensed purple version was featured in Vanity Fair in 1984. Years later, in 2016, after Prince passed away, Conde Nast publishing put out a special magazine commemorating the life of Prince, and they licensed the orange version from the Prince series from the Warhol Foundation to use on the cover of that commemorative magazine. Goldsmith accused the Warhol Foundation of copyright infringement, and the Warhol Foundation asserted that the work was protected under the fair use doctrine.
When the matter reached the Supreme Court, there was only one question presented to the Court: whether the first fair use factor (purpose and character of the use) favors Warhol or Goldsmith. The fair use doctrine is a defense to copyright infringement liability. The doctrine is codified in section 107 of the Copyright Act and states that the use of a copyrighted work may be a fair use if the use is made “for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.”
In determining whether that is the case, courts are instructed to weigh four factors: “(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.” In the Warhol case, the Supreme Court was only analyzing the first of these four factors.
In recent years, courts’ application of the first fair use factor has largely hinged on the question of whether the use was “transformative,” in the sense that the new use has a different purpose or character from the initial work. One of the most obvious examples of a transformative use was in the Google Book Search case, where Google had scanned millions of books so they could be indexed and searched. There, the court held that Google’s copying was for the purpose of creating a searchable database, which was markedly different from the purpose of the books (which is to be read). In the Warhol case, the Court essentially agreed that Warhol’s Orange Prince print was a transformative use of Goldsmith’s original photograph, however, the Court still found that the first fair use factor was not satisfied.
In so doing, the Court focused on the context of the specific use that was raised in this case. The Court said that it should not be analyzing whether Orange Prince would be considered transformative if it was hanging on the wall of an art gallery. Rather, the Court was focused on the fact that, in 2016, Orange Prince was licensed by Conde Nast for use on the cover of a commemorative magazine about the life of Prince.
In contrast to a print in a gallery, the Court found that this magazine cover use was significantly more commercial in nature, which makes it less transformative. The Court focused on the fact that Goldsmith’s photograph of Prince might have been licensed for the same magazine cover, making the two works—in this context—market substitutes for one another. According to the Court, the commercial nature of the 2016 use and the fact that the two works were market substitutes in 2016 meant that the use of Orange Prince here was not transformative and therefore that the first fair use factor favored Goldsmith.
While there are many problems with other aspects of this decision, many of which are discussed in Justice Kagan’s blistering dissent, the takeaway from the Warhol case will endure: courts now must consider fair use in light of the specific context of the transaction at issue, rather than just comparing the two works side by side irrespective of context.
In its opinion, the Supreme Court essentially said that Orange Prince likely would have been a fair use if it was on the wall of an art gallery, but it is not if it is on the cover of a magazine about Prince. This should raise concerns for artists who are seeking to monetize their works. A painting or collage might be a fair use in a gallery, but it could be infringing if the artist wants to monetize the work by selling t-shirts or posters (depending on the nature of the original work and the context of the commercial sales of the second work). It will likely take many years for the lower courts to unpack and interpret the significance of the Warhol decision, but parties will certainly be far more aware of the context of the use when contemplating the fair use defense going forward.
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