Transforming Transformative Use: A Synopsis of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith

By KimberMarie Faircloth

On October 12, 2022, the Supreme Court heard oral arguments for The Andy Warhol Foundation for the Visual Arts, Inc.(AWF) vs. Lynn Goldsmith, et al.[1] The main issue revolves around “transformative” use under the Copyright Act[2] and how transformative the work must be to be protected by the doctrine of Fair Use and not infringe another’s copyright.[3] In 1994, the Supreme Court considered a case regarding transformative use, Campbell v. Acuff-Rose Music, Inc., in which the Court held that 2 Live Crew’s parody on Roy Orbison’s song, “Oh, Pretty Woman,” was protected under fair use and that the lower court erred in finding otherwise because they solely looked at the commercial nature without weighing the other fair use factors.[4] The Court also defined “transformative” as “add[ing] something new, with a further purpose or different character, altering the first with [a] new expression, meaning, or message.”[5] The more a work transforms the original, the less the other fair use factors will weigh in the analysis because transforming a work emphasizes “the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.”[6] Transformative use also came up in 2020 with Google LLC v. Oracle America, Inc., where the Court found Google’s use of a portion of code from the Sun Java API, a computer program using Java programming language, to be “new” and “transformative” enough to constitute fair use.[7]

The story of AWF begins in 1981, when the appellee and photographer, Lynn Goldsmith, took a portrait photograph of the beloved singer, Prince, for Newsweek, which never published it.[8] Three years later, Vanity Fair licensed Goldsmith’s photo of Prince to the renowned pop artist, Andy Warhol, known for his photographic silkscreen prints of everyday items and celebrities, to use as reference for a commissioned painting.[9] Ultimately, Warhol made a whole series of these silkscreen paintings, which would later be named his “Prince Series.”[10] Warhol’s image of Prince was printed in the November 1984 issue of Vanity Fair, which re-published after Prince’s death in 2017. That is allegedly when Goldsmith became aware of Warhol’s use of her image.[11]

Goldsmith notified AWF of the potential copyright infringement between the Vanity Fair/Warhol image of Prince and her photograph, which led AWF to file a declaratory judgment action seeking an order that the Warhol work did not infringe Goldsmith’s copyright in the work.[12] Goldsmith filed a counterclaim arguing the Warhol work is copyright infringement on her photograph.[13] Judge John G. Koeltl of the U.S. District Court for the Southern District of New York ruled in favor of AWF, finding under the first, third, and fourth fair use factors that Warhol’s use of Goldsmith’s image was fair with the second factor weighing in favor of neither party.[14] However, Goldsmith appealed to the U.S. Court of Appeals for the Second Circuit, where all judges unanimously agreed that Warhol’s work was not fair use and was “substantially similar” due to the “degree to which Goldsmith’s work remains recognizable within Warhol’s.”[15]  AWF appealed and the Supreme Court granted certiorari.[16]

Transformative use is found under the first factor of the Fair Use doctrine, which is a “legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances.”[17] The first factor considers the “purpose” and “character” of the derivative work, which naturally considers how much the derivative work changed the original, i.e., whether it is transformative or not.[18] The Copyright Office defines “transformative uses” as “those that add something new, with a further purpose or different character, and do not substitute for the original use of the work.”[19] The other three factors are (2) the nature of the copyrighted work, (3) amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) effect of the use upon the potential market for or value of the copyrighted work.[20]

The importance of this case is multifaceted: it’s been a while since the Supreme Court definitively addressed “transformative use” and within an already tricky doctrine at that.[21] Likewise, Andy Warhol claimed his fame by focusing his art on “re-using” images, some of his most famous works involved other celebrities, from Marilyn Monroe to Elvis Presley, and, of course, the iconic Campbell Soup Can.[22] In an interview with David Bourdon in 1962, Warhol even quipped: “[a]m I really doing anything new?”[23] So, what is a Supreme Court to do when determining whether the work of an artist, whose works and methods intentionally question originality, is transformative enough? Do they protect the economic rights of one artist, Goldsmith, in licensing her works out to others for derivative use, or do they protect the rights of other artists, such as Warhol, by finding that Warhol transformed Goldsmith’s image?

We appreciate receiving support from Intellectual Property section members, such as Copyright Committee chair Chris Thomas of Parker Poe, in providing guidance to our North Carolina law students.