The </em> Post-Warhol </em> Challenge of Implementing The Fair-Use Doctrine

In 2023, the Supreme Court affirmed in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith that the Foundation’s use of Goldsmith’s photo did not constitute fair use. This blog presents the impact of a narrow application of the fair-use doctrine on artists who routinely build artworks upon copyrighted photos

Modern artists have discovered a plethora of innovative methods to further the use of artistic creation for editorial purposes, including the use of copyrighted photographs as a basis for creation. Complex legal implications often ensue when such uses fail to protect the interests of the original creator. Among this group of artists is the Andy Warhol Foundation (AWF), which produced the Prince series, a set of silkscreen portraits created using Goldsmith’s photograph of musician Prince Rogers Nelson. Goldsmith licensed the Price photograph to Vanity Fair for use as a one-time artist reference. AWF was hired to produce that very illustration to be published with Vanity Fair’s article about Prince. Unbeknownst to Goldsmith, AWF produced sixteen different versions of the Prince illustration. After the death of Prince, AWF licensed a different version to its parent company Condé Nast for publication on a special edition magazine. When Goldsmith learned of the existence of the Prince series, she informed AWF of her belief that it had infringed her copyright, and AWF took the case to court.

After a lengthy litigation, in August 2023, the Supreme Court affirmed the Second Circuit’s decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith that the Foundation’s use of the photo in the Condé Nast publication does not constitute fair use under the Copyright Act. The Court came to this conclusion by analyzing factor one of the fair use test, which determines “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” Despite the seemingly straightforward language in the text of the Act, courts have struggled over time to properly apply this test when deciding whether a secondary use–a third-party use of creations already publicly available–has infringed the copyright of the original creator.

Factor one can be analyzed in two ways when it comes to commercial secondary uses. A court can strictly stick to the text like the Second Circuit and the Supreme Court in Warhol, which leads to a narrower reading of the test dismissing fair use whenever the original and the secondary use serve similar purposes and both uses are commercial. A court can also apply this doctrine more flexibly like the Ninth Circuit in Seltzer v. Green Day, Inc. In that case, Green Day used a modified version of Seltzer’s illustration, the Scream Icon, as their video backdrop for their concerts. The Ninth Circuit held that Green Day’s use of the illustration satisfied the first factor because it sent a different message than that intended by the original creator.

The Ninth Circuit weighs more heavily on whether the message and meaning has changed in the secondary use in addition to any changes the borrower made to the original. There is little difference between the uses in Warhol and Seltzer. In both cases, the secondary user modified the original and used the modified creation in a different commercial context than what the original intended, and both secondary uses looked very similar to their respective originals. The message and meaning changed in both cases as well. In Warhol, the Prince series was to depict the “dehumanizing nature” of Prince as any other celebrities depicted in Warhol’s illustrations that was unportrayable through Goldsmith’s photograph. Even without a critical bearing on Goldsmith’s photograph, with a new meaning embedded therein, the secondary use is less likely to supersede the original. Therefore, Warhol would probably have passed factor one under the Ninth Circuit’s flexible approach.

While a narrower approach used by the Warhol courts when applying the fair-use test draws a brighter line to determine the proper degree of borrowing, it can result in difficulties that may shut off those artists who routinely use readily available works to send a different message to their audience. The narrower approach relies heavily on commerciality in determining the transformativeness of the secondary use, which ponders the question of degree: “whether and to what extent” the secondary use has a purpose or character different from the original. Throughout time, the purpose served by the secondary use seems to play a greater role than the character of that very work in factor one analyses of fair-use cases, among which more than 80% of the lower court dismissed fair use due to the secondary use’s commercial nature. In Warhol, the Supreme Court applied the parodical secondary use framework of music in Campbell  v. Acuff-Rose Music, Inc. to stress the importance of the commercial component in the first fair use factor. However, unlike music production, which rarely depends entirely on the use of readily available music in a commercial setting, modern illustrators like Andy Warhol often develop their style upon readily available photographs by professional photographers. If the narrower approach continues to dominate fair-use analyses of editorial illustrations, artists like Andy Warhol will face more obstacles in preserving their styles.

It is often conceded that, in the creative industries, creators cannot eschew borrowing from other artists during the process of creation. In the world of illustration, where artworks have mostly been created for commercial purposes, artists often have to refer to photographs to ensure credibility and properly transmit their messages to the intended audience. Courts should consider the message and meaning of the secondary use in factor one analysis because the fair-use doctrine was created to allow for flexibility to borrow in order to encourage artistic development. With the Supreme Court siding with the Second Circuit, artists like Andy Warhol will likely feel obliged to create new works from scratch in the future to avoid copyright issues and risk losing their unique characteristics derived from reproduction. The narrower approach as such to the fair-use test would ultimately stifle the goal of copyright to “promote the progress of science and the arts, without diminishing the incentive to create.” This effect will become more apparent in the long run as the courts continue applying and possibly tightening Warhol’s standard in assessing fair use. As such, more challenges will follow for zealous advocates of the artistic development.