On May 18, 2023, the United States Supreme Court ruled in a 7-2 decision that the Andy Warhol Foundation infringed on the copyright of photographer Lynn Goldsmith when it licensed the painting Orange Prince to Condé Nast for a 2016 issue of Vanity Fair. Although this decision has raised concerns that fair use will be further limited for artists seeking to transform existing works for creative expression or social commentary, its narrow scope precludes application to all fair use factors in restricting fair use.
Lynn Goldsmith granted a license to Condé Nast to use her photograph of the artist Prince in a 1984 issue of Vanity Fair. Condé Nast commissioned Andy Warhol to create a painting in his signature style based on Goldsmith’s photograph. After Prince’s death in 2016, Condé Nast sought to re-publish the original painting by Warhol in a commemorative issue of Vanity Fair. Unbeknownst to Condé Nast and Goldsmith, Warhol created 15 paintings based on Goldsmith’s photograph. The Andy Warhol Foundation (AWF) suggested that another painting in Warhol’s secret series be used: Orange Prince. AWF then licensed Orange Prince to Condé Nast for use in this issue of Vanity Fair. Goldsmith discovered this and launched a copyright infringement suit.
The scope of the Court’s analysis in this case was limited to the first of the four fair use factors (the purpose and character of the use, including whether such use is of a commercial nature) to determine whether the Andy Warhol Foundation’s commercial licensing of Orange Prince to Condé Nast amounted to fair use.
The Court found that AWF’s commercial licensing of Orange Prince supplanted Goldsmith’s original photograph, and that the purpose and character of the licensing and use of Orange Prince for a special issue of Vanity Fair was substantially the same as Goldsmith’s original photograph; that is, for a special issue of Vanity Fair focused on Prince. Notably, Goldsmith licensed the original photograph to Condé Nast for a “one time” use for artistic reference. The artistic work was “to be published in Vanity Fair November 1984 issue. It can appear one time full page and one time under one quarter page. No other usage right granted.” However, because the purpose and character of AWF’s use of Goldsmith’s photograph for Orange Prince as commercially licensed was substantially similar to the purpose and character of the original photograph, the visual differences between the photograph and Orange Prince are insufficient to amount to fair use. AWF’s licensing of Orange Prince in 2016 violated this licensing agreement, and was found not to be fair use.
The dissent focuses almost exclusively on the visual impression of Orange Prince standing alone as a work of art, discussing at length the merits of Andy Warhol as a pop artist, while discounting the context of Orange Prince as an unapproved adaptation commercially licensed for use in Vanity Fair.
The most important takeaway from this case is that the language of licensing agreements must be specific, as licensing agreements can cause consequences decades after they are executed. Any licensing agreements for copyrighted works must explicitly define the particular uses for which the works are licensed, including the number of uses allowed and the manner in which the works may be in any way modified, adapted, or reproduced. Although the fair use analysis in this case – focused on judging the purpose and character of the use of licensed artistic works – may have limited relevance to some, this case highlights the importance of licensing agreements as safeguards against copyright infringement, and demonstrates that fair use is not a catch-all defense for unlicensed reproduction of copyrighted works.