Tech & Sourcing @ Morgan Lewis


The US Supreme Court is set to hear a case regarding fair use as it pertains to a photo of the universally known music artist, Prince. The nation’s highest court will hopefully clarify when and how artists can make use of the work of others.

The US Copyright Act’s Fair Use Doctrine permits the use of copyrighted material without having to obtain permission or a license from the copyright holder. Courts considers the following four elements when determining if a work can satisfy the Fair Use Doctrine:

  1. The purpose and character of the use
  2. The nature of the copyrighted work
  3. The amount or substantiality of the portion used
  4. The effect of the use on the potential market for or value of the work

The case in question, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith No. 21-869 (petition granted on March 28, 2022), stems from a dispute between the parties over a picture that a celebrity photographer took of Prince in 1981. In 1984, the photographer licensed one of the photographs to Vanity Fair for use as an artist reference. The photograph was given to Andy Warhol to use as a reference when creating a visual work commissioned by Vanity Fair. Warhol also produced 15 additional works while referencing the photo.

The US Supreme Court is set to hear a case regarding fair use as it pertains to a photo of Prince

Photo Credit: Petition for Writ of Certiorari filed on December 09, 2021 (page 62a)

When Prince passed away in 2016, the photographer was made aware of the 15 additional works produced by Warhol and threatened to file litigation. In response, the Warhol Foundation brought a claim for declaratory judgement to protect Warhol’s legacy and resolve the photographer’s claims. The Warhol Foundation claims that use of the photograph satisfies the doctrine of fair use because Warhol’s work is sufficiently “transformative” to constitute a new work. In 2019, a federal trial judge in New York agreed with this position.

The photographer appealed the case to the US Court of Appeals for the Second Circuit and in 2021 the court found that the work was not sufficiently transformative when evaluated under the four elements of the fair use doctrine. The Second Circuit specifically stated that there was no “new meaning or message” created by Warhol’s work and therefore, among other reasons, the work did not constitute fair use.   

As this is the first non-software-related fair use case in recent years, many will be waiting to see what guidance the Supreme Court offers as to what constitutes a work, that references or borrows from another, as being sufficiently “transformative.”