Yesterday, the Supreme Court held 7-2 that a specific use of Andy Warhol’s “Orange Prince” silk screen—based on a copyrighted photograph of Prince—was not fair use. In doing so the Court focused not solely on the “transformative use” aspect of the first factor of a four-part fair use analysis, but on the entire first factor regarding the “purpose and character” of the allegedly infringing use. The first factor did not apply to Warhol’s image as published in Condé Nast in 2016, so that specific use was not fair use.

Lynn Goldsmith, a rock-and-roll photographer, took a photograph of Prince in 1981 that was published in a Newsweek article. In 1984, Goldsmith licensed the copyrighted photograph for $400—for publication “one time”—to Vanity Fair, who hired Andy Warhol to make a purple silk screen image based on the photograph, which Vanity Fair published in an article about Prince. Unbeknownst to Goldsmith, Warhol created 13 additional silk screens, in different colors, from Goldsmith’s photograph. In 2016, the Andy Warhol Foundation (“AWF”), holding the rights to the Prince silk screens, licensed Orange Prince to Condé Nast (Vanity Fair’s parent company) for $10,000, without Goldsmith’s permission. Goldsmith alleged copyright infringement after seeing Orange Prince in Condé Nast’s article. AWF sued Goldsmith for declaratory judgment, including on fair use grounds, and Goldsmith countersued for copyright infringement.

The district court granted summary judgment on the fair use defense, holding three of the four fair-use factors favored AWF with one being “of limited importance”: (1) Orange Prince was “transformative,” (2) the nature of Goldsmith’s photograph was “of limited importance” because Orange Prince was transformative, (3) Orange Prince did not use a substantial portion of the photograph, and (4) Orange Prince is not a market substitute for Goldsmith’s photograph. The Second Circuit reversed, holding instead that all four factors favored Goldsmith.

The only question presented to the Supreme Court was whether the Second Circuit correctly applied the first fair-use factor in 17 U.S.C. § 107(1): “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” The “transformative use” analysis is part of this factor, but not the whole factor: “Although new expression 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.” Thus, being licensed for different magazine articles, “the original photograph and AWF’s copying use of it share substantially the same purpose . . . 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 favors Goldsmith.”

The Court noted that the “bundle of exclusive rights” granted to a copyright holder includes rights to produce “derivative works.” And “an overbroad concept of transformative use, one that includes any further purpose or any different character, would narrow the copyright owner’s exclusive right to create derivative works.” Thus, to “preserve” the right to derivative works, a “transformative” fair use must “go beyond that required to qualify as a derivative.” For example, the Court referred to its decision in the 1994 case about 2 Live Crew’s parody of Roy Orbison’s “Oh, Pretty Woman” song: “parody has an obvious claim to transformative value.”

Justice Kagan dissented (joined by Chief Justice Roberts) beginning with: “Today, the Court declares that Andy Warhol’s eye-popping silkscreen of Prince . . . is (in copyright lingo) not ‘transformative.’” But the Court limited its holding to Orange Prince only, and only to AWF’s “commercial licensing” of that image to Condé Nast. “In particular, the Court expresses no opinion as to the creation, display or sale of any” of the Warhol-Prince images. This means that it’s possible other uses of the Warhol images could be considered fair use. The majority described the dissent, including the statement above, as “a series of misstatements and exaggerations, from the dissent’s very first sentence . . . to its very last.” The stark disagreement among the Justices underscores the polarized nature of this dispute.