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The US Supreme Court has made its decision on whether the Andy Warhol Foundation (AWF) infringed the copyright of Lynn Goldsmith in a photograph she took of the late musician, Prince.

To briefly recap: AWF licensed to Condé Nast for $10,000 an image of Orange Prince – an orange silk screen portrait of Prince created by Andy Warhol – to appear on the cover of a magazine, commemorating Prince.

Orange Prince is one of 16 works now known as the Prince Series that Warhol derived from a copyrighted photograph taken in 1981 by Goldsmith, a professional photographer.

AWF claimed “fair use”, by way of defending the claim for breach of copyright against AWF by Goldsmith. AWF won in the District Court, lost in the Court of Appeals, and then made a final appeal to the Supreme Court of the United States.

In determining “fair use” US Judges consider four factors:

  1. The purpose and character of the use;
  2.  The nature of the copyright work;
  3. The amount and substantiality of the portion taken; and
  4. The effect of the use upon the potential market.

AWF appealed on factor 1 alone, the Court of Appeals having found that all four fair use factors favoured Goldsmith, and the entire Supreme Court Judgment reviews and concerns only whether factor 1 favoured AWF or Goldsmith. Warhol’s Counsel particularly hung his hat on AWF’s use being “transformative”.

In the words of the judgment – “a use that has a further purpose or different character [to the original] is said to be ‘transformative’, but that … is a matter of degree.”

The judgment further states that to preserve the copyright owner’s right to prepare derivative works, defined in Section 101 of the [US] Copyright Act to include “any other form in which a work may be recast, transformed or adapted”, the degree of transformation required to make “transformative” use of an original work must go beyond that required to qualify as a derivative [my italics].

Commercial use

Central in the US Supreme Court’s decision appears to the be the fact that AWF’s use of its image was “commercial as opposed to non-profit” which the court stated “is an additional element of the first fair use factor”.

However, the court further advised that “a use that has a distinct purpose is justified because it furthers the goal of copyright …” and “a use may be justified because copying is reasonably necessary to achieve the user’s new purpose”.

They went on to advise that the “fair use” provision, and the first factor in particular, requires an analysis of the specific “use” of a copyrighted work that is alleged to be “an infringement”, and that the same copying may be fair when used for one purpose but not another.

The judgment advises that:

The court limits its analysis to the specific use alleged to be infringing in this case – AWF’s commercial licensing of Orange Prince to Condé Nast.

And further:

In the context of Condé Nast’s special edition magazine commemorating Prince, the purpose of the Orange Prince image is substantially the same as that of Goldsmith’s original photograph. Both are portraits of Prince used in magazines to illustrate stories about Prince. The use also is of a commercial nature. Taken together, these two elements counsel against “fair use” here.

And further:

Although a use’s “transformativeness” may outweigh its commercial character, in this case both point in the same direction.

And finally:

Moreover, because AWF’s copying of Goldsmith’s photograph was for a commercial use so similar to the photographer’s typical use, a particularly compelling justification is needed. Copying the photograph because doing so was merely helpful to convey a new meaning or message is not justification enough.

As you will have guessed by now, the judgment went against AWF.

Copyright value

Although this case has had widespread publicity in the UK, and is interesting, the judgment and its phraseology (eg extensive use of the notion of “transformativeness”) is restricted to the US.

There has been some US commentary that this will make it harder for artists to “repurpose the works of others even with meaningful differences (and not just reproduce them), without their permission” but no doubt US artists – and photographers – who value the copyright in their work will welcome that.

It is also clear that some of Warhol’s other works, such as his images of Campbell’s soup tins, lie outside this ruling as the purpose of Warhol’s subsequent use was significantly different from the original work.

Milton Silverman is senior commercial dispute resolution partner at Streathers Solicitors LLP, London.