by Callie Mobley, Associate Member, University of Cincinnati Law Review Vol. 93
I. Introduction
When a photographer sued the Andy Warhol Foundation (AWF) for the late artist’s unauthorized use of her photo as the base for a silkscreen print, the art world waited with bated breath.[1] The case presented a long-awaited opportunity for the Supreme Court to clarify the issue of fair use, and, more specifically, transformative use, as a defense to a copyright infringement claim. While Andy Warhol Foundation v. Goldsmith was the perfect opportunity to clarify fair use exceptions to copyright protections, the Court went in a surprising new direction and left many artists with more questions than answers.[2]
Part II of this article will provide an overview of the development of the fair use doctrine and transformative use as an important element of fair use. It will then summarize the holding in Andy Warhol Foundation v. Goldsmith. Part III will discuss the future of transformative use and propose that legislation be created to clarify the fair use doctrine. Part IV will conclude by summarizing the current state of transformative use.
II. Background
Article I, Section Eight of the United States Constitution gives Congress the authority to “promote the Progress of Science and useful Arts, by securing for limited times to authors and inventors the exclusive Right to their respective Writings and Discoveries.”[3] This section of the Constitution reflects the belief that art and science flourish when there is an economic incentive to create original works and flexibility for the free exchange of ideas.[4] Congress has attempted to balance these interests through copyright law, which grants creators certain exclusive rights to their work.[5] These rights include distributing copies of their creation and development of derivative works based on their original creation.[6]
The two elements necessary to establish copyright infringement are ownership of a valid copyright and copying of an original.[7] To qualify for copyright protection and to fulfill the first element, a work must be original.[8] The Supreme Court has defined a copyrightable work as “founded in the creative powers of the mind” and “the fruits of intellectual labor.”[9] If a work is protected by copyright, a court must determine if the allegedly infringing work is similar enough to the original to warrant such a finding.[10] This element is tricky, as Congress has not passed legislation on what constitutes copying, and the Supreme Court has never ruled on the matter.[11] In 1946, the Court of Appeals for the Second Circuit ruled that in a copyright infringement case, the plaintiff must prove both that the defendant copied from the plaintiff’s copyrighted work and that the original and allegedly infringing works are “substantially similar” enough to warrant a finding of infringement.[12] If the new work is similar enough to the original, the creator of the new work may then assert a defense of fair use, a doctrine that has developed as an important counterbalance to the monopoly given to copyright holders.[13]
1. The Fair Use Doctrine and Transformative Use
The fair use doctrine was developed through common law and codified in the Copyright Act of 1976.[14] When a litigant raises a fair use defense in a copyright infringement case, the court must examine four factors: “(1) the purpose and character of the allegedly infringing 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 allegedly infringing use upon the potential market for or value of the copyrighted work.”[15]
The first factor, purpose and character, is perhaps the most vital element in current fair use jurisprudence.[16] In deciding the purpose and character factor of fair use, courts have long evaluated whether the allegedly infringing work is “transformative” of the original work.[17] In 1994, the Supreme Court considered transformative use as a part of copyright’s fair use analysis for the first time.[18] The Court held that a new work is transformative if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”[19] In Campbell, the court considered a parody of Roy Orbison’s song “Oh Pretty Woman” created by the rap group 2 Live Crew.[20] The Court held that even though both songs were commercial in nature, this was outweighed by the fact that 2 Live Crew’s version of the song was a parody that created new meaning by commenting on the original song.[21]
Over the next few decades, the Supreme Court was largely silent on issues of fair use and transformation, leading appellate courts to split in applying a transformative use analysis to the fair use doctrine.[22] One series of appellate decisions widely adopted transformative use as evidence of fair use, generally broadening the fair use defense to copyright infringement.[23] However, another series of decisions expressed skepticism about the usefulness of the transformative use analysis and attempted to narrow the scope of the fair use doctrine.[24]
In 2021, the Supreme Court finally had the opportunity to resolve this disparity in Google v. Oracle.[25] This case involved Google copying thousands of lines of code from the copyrighted computer program Java to create a new operating system.[26] The Court reasoned that Google’s use of the code was transformative, and therefore fair use as a matter of law. The Google ruling seemed to support the broader approach to fair use, although the Court did specify that the decision was specific to the context of computer programming.[27] Ultimately, Google did not give the wider artistic community much clarity on transformative use.[28]
2. Andy Warhol Foundation v. Goldsmith
In 1981, Newsweek commissioned Lynn Goldsmith to photograph the musician, Prince.[29] A few years later, Goldsmith granted a limited license to Vanity Fair for use of one of her Prince photos as a reference for illustration.[30] Andy Warhol then created a purple silkscreen print of the image, which Vanity Fair published in 1984.[31] When Prince died in 2016, Conde Nast, the parent company of Vanity Fair, inquired with the Andy Warhol Foundation (AWF) about reprinting the image.[32] The AWF informed Conde Nast that Warhol made a total of sixteen works based on Goldsmith’s photo. Conde Nast chose and printed “Orange Prince.”[33] Goldsmith, who was only aware of the purple silkscreen used in 1984, learned of Warhol’s additional fifteen works based on her photo only when she saw the magazine cover in 2016.[34] She notified the AWF that Warhol’s use of her photo constituted copyright infringement.[35]
The AWF sued for declaratory judgment of non-infringement, or, in the alternative, fair use.[36] In their motion for summary judgment, the AWF argued that Warhol’s works in the Prince series were not substantially similar to Goldsmith’s original image, and furthermore, that they were protected by the fair use doctrine.[37] The district court opted to forgo the substantial similarities analysis and granted the AWF’s motion for summary judgment because the Warhol images were clearly covered by fair use.[38]
On the first factor, purpose and character of the infringing use, the district court found that Warhol’s works were sufficiently transformative of the original because they “have a different character, give Goldsmith’s photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.”[39] In particular, the district court found that the Warhol images “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.”[40]
Goldsmith appealed the decision, and the Court of Appeals for the Second Circuit reversed.[41] Like the district court, the court of appeals declined to analyze substantial similarity between the works in this case, finding them substantially similar as a matter of law.[42] However, this court’s analysis of the first fair use factor differed greatly from the district court’s, focusing not on the differences in the message of the copyrighted and the secondary work, but rather on “whether the secondary work’s use of its source material is in service of a fundamentally different and new artistic purpose and character.”[43] Rather than engage with the message of the art, the court focused on whether the allegedly infringing material harmed the market for the original.[44]
The AWF asked the Supreme Court to decide only one issue: whether a work of art is “transformative” when it conveys a different meaning or message from its source material, as the district court held, or whether a court is forbidden from considering the meaning of the accused work if it is recognizably derived from the original, as the court of appeals held.[45] In a 7-2 decision, the Court affirmed the Second Circuit’s decision and found that “[a]lthough new expression, meaning, or message may be relevant to whether a copying use has a sufficiently distinct purpose or character, it is not, without more, dispositive of the first factor.”[46] While the majority did not entirely refuse to engage in interpreting the infringing art, they stressed the importance of other factors, writing, “if an original work and secondary use share the same or highly similar purposes, and the secondary use is commercial, the first fair use factor is likely to weigh against fair use, absent some other justification for copying.”[47] In this case, copying the photo because doing so was “merely helpful” to conveying a new message was not a particularly compelling justification.[48]
Justice Kagan wrote an impassioned dissent in Goldsmith, chastising the majority for being unwilling to engage with the message of art when determining transformation. She wrote, “[t]here is precious little evidence in today’s opinion that the majority has actually looked at these images, much less that it has engaged with expert views of their aesthetics and meaning.”[49] Furthermore, the dissent notes, that the majority seemed to forget the “character” portion of the purpose and character factor.[50]
III. Discussion
The Goldsmith decision can be interpreted as generally narrowing the applicability of the fair use doctrine in favor of the copyright holder’s monopoly, but it does not provide any sort of bright-line guidance on analyzing the purpose and character factor of the fair use analysis.[51] Instead, it introduced a new element to the concept of transformation – transformation of purpose.[52] Precedent would have allowed the Court to find that while Warhol’s work was transformative, that transformation was outweighed when balanced with the other three fair use factors.[53] Instead, the Court found that Warhol’s work simply was not transformative, implying that “Warhol’s Orange Prince, at least when used for a magazine cover, was no more transformative than an exact, mechanically or digitally re-created copy of Goldsmith’s black-and-white photograph.”[54] In doing so, the Court solidified the importance of a transformation of purpose to the first factor of fair use analysis, especially when the purpose of both the original and allegedly infringing work is commercial.[55]
1. Creating Predictability Around Fair Use
Copyright law exists to foster creativity and innovation. Artists are incentivized to create when they can reasonably expect their work to be protected. However, the ability to reexamine, reinterpret, and build on existing art also fosters creativity. Above all, to be productive, artists need to know how to legally carry out their work. There is some concern that artists may feel the need to seek a license for any type of appropriation art and that artists simply will not create works that might raise a copyright challenge.[56] This would be especially damaging to artists who can’t afford legal battles to settle uncertainties.[57] In effect, the Goldsmith decision could stifle creativity and free speech by causing both individuals and institutions to self-censor their use of existing copyrighted material.[58] As one artist explains, “I’m not interested in making unethical work, but I see immense value in appropriation as a way to communicate critical insights about how the world is, by pointing to exactly how the world is through re-presenting elements of the world in my own work.”[59]
A. Reinvigorating the Substantial Similarity Analysis
Some argue that the Court skipped a step in its analysis in Goldsmith and that a fair use defense must be applied only after a determination that the new work is substantially similar enough to the copyrighted work to be an infringement.[60] Moving straight to a fair use analysis seems to be a growing trend in copyright infringement cases.[61] This approach unfairly relieves the complaining creator of the burden of showing that the challenged work is similar enough to the original to constitute copyright infringement. It may be that courts are tempted to skip the substantial similarity analysis, in part, to avoid engaging in the difficult task of determining what makes a work substantially similar to another.[62] This hesitancy to engage with artistic meaning and purpose may also inform the Court’s adoption of an approach to character and purpose that is less about what the work of art means and much more about what it is used for. However, it is typically impossible to resolve a copyright dispute without engaging in the aesthetics of the work.[63] Skipping the substantial similarity analysis only harms fairness and clarity by not establishing the proper record for trial and possible appeals.
B. Expanding on AWF v. Goldsmith
While some may see the Goldsmith majority’s focus on the commercial purpose of art as contrary to art itself, others embrace the practicality of the Court’s approach. One example of this is Goldsmith’s applicability to social media. Copyright and fair use policy has not caught up to the ease and speed with which original works can be appropriated online. One scholar has suggested that Goldsmith be used to create a framework for analyzing fair use online.[64] Under this framework, noncommercial content from a private account is presumed to be fair use.[65] However, as the account grows it will increasingly compete with the original and begin to require a higher degree of transformation to qualify as fair use. On the opposite end of the spectrum is monetized content, where transformation must be great to qualify as fair use.
Lower courts will no doubt continue to split in their transformative use analysis, causing uncertainties for creators and collectors of all kinds. Instead of letting the confusion continue until the Supreme Court issues clear guidance on transformative use, legislators should create statutes that foster predictability and fairness in fair use cases. Congress has traditionally given courts the responsibility of renegotiating fair use standards, which is generally wise. However, the courts are divided in their application of the transformative use doctrine and creativity will suffer while creators await more clarity. Instead, legislation should include the official codification of transformative use, along with the preferred approach or balance of approaches seen throughout Goldsmith’s procedural history.[66] By establishing the validity of the transformative use doctrine and providing guidance on its application, Congress can continue to find the balance between incentivizing art and sharing ideas.
IV. Conclusion
The Goldsmith ruling surprised some, but it should come as no surprise that courts are struggling to keep up with the ever-changing and rapidly growing world of art. The Court has created the skeleton of a transformative use analysis that balances commercial and creative interests. Congress should codify the developments in fair use and transformative use so that artists can better understand how to avoid infringing on copyright.
[1] See John Fritze, How a Supreme Court Case About Andy Warhol’s Images of Prince Could Change the Face of Art, USA Today (Oct. 11, 2022), https://www.usatoday.com/story/news/politics/2022/10/11/supreme-court-andy-warhol-prince-copyright-goldsmith/8189591001/?gnt-cfr=1&gca-cat=p.
[2] See Glynn S. Lunney, Transforming Fair Use, NYU J. of Intell. Prop. & Ent. L. (forthcoming, 2025) (manuscript at 1) (available at: https://ssrn.com/abstract=4727801).
[3] U.S. Const. art. I, § 3.
[4] See Bob Anderson, Commerciality & Originality: Andy Warhol’s Impact on Analyzing Fair Use on Social Media, 31 J. Intell. Prop. L. 230, 233 (2024).
[5] Id.
[6] Id. at 232.
[7] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 362 (1991).
[8] Id.
[9] In re Trade-Mark Cases, 100 U.S. 82, 94 (1879).
[10] Sandra M. Aistars, Copyright’s Lost Art of Substantial Similarity, 26 Vand. J. Ent. & Tech. L. 109,125 (2023).
[11] Id.
[12] Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946)
[13] See Aistars, supra note 10, at 130.
[14] Anderson, supra note 4, at 234.
[15]17 U.S. Code §107.
[16] Haley A. Palmer, The “Orange Prince” of Copyright: Warhol’s Prince Series & Transformative Fair Use, 38 Notre Dame J.L. Ethics & Pub. Pol’y 409 (2024).
[17] Id.
[18] Lunney, supra note 2, at 1.
[19] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).
[20] Id. at 572.
[21] Id. at 579.
[22] Lunney, supra note 2.
[23] Id.
[24] Id.
[25] Id. at 2.
[26] Google LLC v. Oracle America, Inc., 593 U.S. 1 (2021).
[27] Lunney, supra note 2, at 2.
[28] Id.
[29] Andy Warhol Found. For the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023).
[30] Id.
[31] Id.
[32] Id.
[33] Id.
[34] Id.
[35] Id.
[36] Id.
[37] Id.
[38] Id.
[39] Id. at 326.
[40] Id.
[41] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021).
[42] Id. at 122.
[43] Andy Warhol Found. For the Visual Arts, Inc., 598 U.S. at 523.
[44] See Id. at 549.
[45] Lunney, supra note 2, at 18.
[46] Andy Warhol Found. For the Visual Arts, Inc., 598 U.S. at 508.
[47] Id. at 510.
[48] Id. at 512.
[49] Id. at 573.
[50] Id. at 576.
[51] See Lunney, supra note 2.
[52] Id. at 52.
[53] Id. at 3.
[54] Id.
[55] Id. at 54.
[56] Blake Gopnik, Ruling Against Warhol Shouldn’t Hurt Artists. But It Might., N.Y. Times (May 19, 2023) https://www.nytimes.com/2023/05/19/arts/design/warhol-prince-supreme-court-copyright.html.
[57] Id.
[58] Id.
[59]Amy Adler et al., Roundtable on Warhol v. Goldsmith: An Introduction to Warhol v. Goldsmith, Grey Room (Jan 1, 2024), https://direct.mit.edu/grey/article/doi/10.1162/grey_a_00397/119002/Roundtable-on-Warhol-v-Goldsmith-An-Introduction.
[60] See Id.; Aistars, supra note 10.
[61] See Aistars, supra note 10.
[62] Id. at 135.
[63] Id. at 134.
[64] Anderson, supra note 4, at 248.
[65] Id. at 249.
[66] Daniel T. Dodaro, Lassoing Transformativeness: Taking Court-Approved Chaos and Grounding it in Congressional Orde, 48 Seton Hall J. Legislation Pub. Pol. 300, 323 (2024).
Cover Photo by RhondaK Native Florida Folk Artist on Unsplash.
