(L-R)Andrew Costa(L) and Nicole D. Galli(R) of ND Galli Law. Courtesy photos

Introduction

Many (including us) were waiting with bated breath for the U.S. Supreme Court's opinion deciding whether Andy Warhol Foundation's (AWF) licensing of Warhol's iconic "Orange Prince" was a fair use of Lynn Goldsmith's source photo (spoiler alert—it was not). Many (including us) had expected the court to use this opportunity to clarify the transformative fair use defense to copyright infringement under 17 U.S.C. Section 107—or, in other words, clarify the degree of "new expression, meaning or message" necessary for an unauthorized use of a copyrighted work to qualify as fair use. Certainly the disagreement between the lower and appellate court opinions made it seem likely that the Supreme Court would attempt to reconcile these competing analyses into a more coherent rule.

As so often happens with long-awaited Supreme Court rulings, especially in intellectual property cases, we were disappointed. Instead of answering these thorny questions, the court took a different approach focusing, not on Warhol's original use of Goldsmith's photo in creating Orange Prince, but rather on the specific challenged use of the AWF's licensing of the work to Condé Nast in 2016. The result is an 87-page opinion (technically, multiple opinions—a majority, a concurrence and a vehement dissent) that is both enigmatic, narrow, and highly fact dependent. Its future application is anything but clear and clarification of the parameters of transformative fair use is left open for another day.

In our December article, we discussed the factual and procedural history of the dispute and provided highlights from the Oct. 12, 2022, oral argument before the Supreme Court. Here, we summarize key elements of the majority's reasoning, highlighting some of the analytical conundrums and open questions it leaves behind.