The Supreme Court of the US (SCOTUS) has rejected the fair use defence of the Andy Warhol Foundation (AWF) in favour of photographer Lynn Goldsmith in a closely watched copyright case over a photo of music icon Prince.

In the 7-2 opinion Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith issued on 18 May, SCOTUS found that the pop art pioneer Andy Warhol infringed the copyright of prominent rock photographer Lynn Goldsmith’s photo of Prince in his silkscreens of the music artist.

The dispute centres on two images of Prince – a copyrighted photograph taken in 1981 by respondent Goldsmith and an orange silkscreen portrait ‘Orange Prince’ created by Warhol using Goldsmith’s photo for a magazine cover celebrating the legendary artist.

In 1984, the magazine Vanity Fair had asked to use the Goldsmith photo, and, to make the cover, hired Warhol who made a silkscreen using Goldsmith’s photo. The magazine credited Goldsmith for the ‘source photograph’, and it paid her $400 for this one off use.

In the majority opinion, the justices noted that Warhol, however, did not stop there. From Goldsmith’s photograph, he derived 15 additional works. Later, the AWF licensed one of those works to Condé Nast, again for the purpose of illustrating a magazine story about Prince. AWF came away with $10,000. Goldsmith received nothing. When Goldsmith informed AWF that she believed its use of her photograph infringed her copyright, AWF sued her.

US copyright law contains a fair use doctrine that promotes freedom of expression by permitting the unlicensed use of copyright protected works in certain circumstances. The law calls for the consideration of four factors to evaluating a question for use.

The district court considered all four factors, granting summary judgment for AWF on its assertion that Warhol’s use of the image was ‘fair use’. The Court of Appeals for the Second Circuit reversed, finding that all four fair use factors favoured Goldsmith.

The sole question presented to SCOTUS was whether the first fair use factor – ‘the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes’ – weighed in favour of AWF’s recent commercial licensing to Condé Nast. On this narrow issue, it agreed with the Second Circuit favouring Goldsmith and not AWF.

The justices said: “AWF contends that the Prince Series works are ‘transformative’ and that the first fair use factor thus weighs in AWF’s favour, because the works convey a different meaning or message than the photograph.”

But, the justices continued, portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and AWF’s copying use of it, share substantially the same purpose. Moreover, AWF’s use is of a commercial nature. “Even though Orange Prince adds new expression to Goldsmith’s photograph, in the context of the challenged use, the first fair use factor still favours Goldsmith,” the justices said.

Commenting on the case, Nicole Haff, a New York-based counsel at Michelman & Robinson, said: “Based on the questions asked by the justices at oral argument, I am not at all surprised by the result. If this conduct was ruled to be ‘fair use’, it would essentially cut Lynn Goldsmith out of her opportunity to earn money by licensing her photograph or otherwise creating derivative works of the photograph. This would not support the purpose of the Copyright Act which is to promote the progress of science and useful arts.”

She added: "The case will be remanded back to the district court for further proceedings.  Notably, the issue of fair use has already been determined (the Andy Warhol Foundation’s use of the Goldsmith photograph was not fair) and the Prince Series works are substantially similar to the Goldsmith photograph.  In practicality, the case is being remanded back to the district court to determine damages.”

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