Bloomberg Law
Oct. 12, 2022, 7:03 PMUpdated: Oct. 12, 2022, 9:22 PM

Justices Probe Fair Use in Warhol-Prince Copyright Argument (1)

Kyle Jahner
Kyle Jahner
IP Reporter

Supreme Court justices drilled down on just how different the purpose of a follow-on work must be to tilt the analysis of an Andy Warhol print of a modified photo of Prince during oral arguments Wednesday in the first fair use case heard in decades.

The justices scrutinized both the Andy Warhol Foundation’s and photographer Lynn Goldsmith’s theories on how fundamentally different the works had to be for the print to qualify as transformative use, and the degree to which use of the particular original photograph was “essential” or “useful.” Hypothetical questions from the bench ranged from adapting a book into a film to selling signs featuring Warhol’s orange Prince print with the words “Go Orange” to wave at a Syracuse basketball game.

VIDEO: Prince, Andy Warhol, and Fair Use at the Supreme Court

The varying efforts to understand and prod both parties’ positions illustrated the complexity and controversy woven into a battle over what counts as fair use and what infringes creators’ derivative rights that has riled a wide range of creative industries. The questioning implied criticism of both a district court’s dismissiveness of the breadth of Goldsmith’s derivative rights and the reversing appeals court’s sparse analysis of the substantial differences between the works.

Warhol Foundation counsel Roman Martinez of Latham & Watkins LLLP outlined the foundation’s position that the new meaning and message imbued by Warhol into Goldsmith’s photo rendered it trasnformative fair use. Justice Sonia Sotomayor, though, after conceding differences in the message and meaning of the works should be considered—and that the Second Circuit didn’t do so—asked why that test wouldn’t apply to film adaptations of books.

Justice Samuel Alito reiterated the question.

“You’re suggesting that there’s nothing left for the original author for derivative works. If that’s not a derivative work, it’s hard to see what would be,” Alito said.

Martinez said weighing the first of four statutory fair use factors—character and purpose of the use—involves considering the degree of the change, which interplays with the fourth factor: the effect on the original’s market. Alito later pointed out that determining meaning “is not so simple,” but Martinez said the court doesn’t have to figure that out, just find that a different meaning and message can reasonably be perceived.

Alito also later grilled Goldsmith counsel Lisa S. Blatt of Williams & Connolly LLP, saying of the photo and the Warhol print, “If you put them side-by-side, the message is not the same.”

Blatt responded that artistic changes alone can’t automatically render a work transformative. She cited Stanley Kubrick’s 1980 adaptation of Steven King’s “The Shining,” and its treatment of the murderous Jack Torrance—whick King notoriously hated for cutting out parts of his story arc. Blatt said even such a fundamental change in the character woudln’t let Kubrick adapt King’s book without permission.

Level of Generality

Goldsmith sued the Andy Warhol Foundation after the foundation licensed the print—created using her 1981 photo under a license from Goldsmith that allowed use only in a 1984 magazine—for a 2016 cover of Vanity Fair after Prince’s death.

The US District Court for the Southern District of New York ruled it was fair use, as Warhol’s prints transformed the photo’s “character and purpose,” turning an image of vulnerability into one depicting a larger-than-life icon and commenting on the dehumanizing nature of celebrity. The US Court of Appeals for the Second Circuit reversed, criticizing the judge for playing art critic. The three-judge panel found that merely applying Warhol’s artistic style was insufficient to transform the work or justify use of the photo without Goldsmitth’s consent.

At the first non-software copyright oral argument at the high court in decades, the justices explored the level of generality that the first factor’s character and purpose inquiry was meant to consider.

“Both sell a photograph to a magazine to display different versions of Prince’s look. Why isn’t the higher level of generality what section one is looking at?” Justice Amy Coney Barrett asked Martinez.

Martinez argued the seminal 1994 Supreme Court fair use opinion finding 2 Live Crew’s version of Roy Orbison’s “Oh, Pretty Woman” transformative made clear that differences on lower levels of granularity could turn the first factor. He noted both Orbison and 2Live Crew songs involved “popular music commenting on sexual attraction” on a broad level. The artistic purpose differences also filtered into the fourth factor’s analysis of the market effect for Goldsmith’s work, he said, as Vanity Fair wasn’t looking for what Goldsmith’s photo depicted.

But Blatt countered that under that theory “photography can always be ripped to shreds,” and the idea of the court adopting it as the standard is why “multi-billion dollar industries of movies and music are horrified.” She said the Second Circuit weighed the artistic differences more than the Warhol Foundation credited, and left open a wide range of legitimate transformative purposes.

Anything But ‘New Message’

The justices also wrangled with whether Warhol’s use of Goldsmith’s particular photo needed to be essential, or at least useful, to his purpose to possibly qualify as transformative. Martinez said “an indispensibility requirement has no footing in any of the courts’ case law.” He argued that a work that conveys a new message or meaning than the original should be considered transformative.

Justices repeatedly challenged Blatt’s suggestion that the newer work must have needed to use the old, and Blatt eventually allowed that “we’re OK” with the lower bar of requiring use of the specific photo to be merely “useful.”

“We’re OK with anything except the ‘new message or meaning’ test” proposed by the Warhol Foundation, Blatt said. She argued that transformative use shouldn’t be met simply by saying, “I just want to make some money off some art.”

The case is Andy Warhol Foundation for the Visual Arts Inc. v. Lynn Goldsmith et al., U.S., No. 21-869, Oral argument 10/12/22.

(Updates with additional reporting.)

To contact the reporter on this story: Kyle Jahner in Washington at

To contact the editor responsible for this story: Adam M. Taylor at

Learn more about Bloomberg Law or Log In to keep reading:

Learn About Bloomberg Law

AI-powered legal analytics, workflow tools and premium legal & business news.

Already a subscriber?

Log in to keep reading or access research tools.