Sequential Uses of Copyrighted Materials: Transforming the Transformative Use Doctrine in Andy Warhol Foundation v. Lynn Goldsmith

Article Source: Michigan State Law Review, 2022, forthcoming
Publication Date:
Time to Read: 4 minute read
Written By:



The case of Andy Warhol Foundation v. Lynn Goldsmith arose when one artist’s copyrighted work was used to create a second artist’s work. The key factor is the effect of the alleged infringement on the value of the first work.


Policy Relevance:

The copyright owner of the original work should receive the fair market value of her contribution.


Key Takeaways:
  • Lynn Goldsmith granted Vanity Fair a license to use her photograph to inspire one new work of art; Andy Warhol used the photograph to create a silkscreen, adding his own elements to the image.
    • Warhol violated the license by copying the photograph.
    • Warhol created fifteen other unlicensed silkscreens using the photograph.
  • The Supreme Court will consider whether Warhol’s work is a transformative “fair use” of the photo, or another kind of fair use; courts use a complex four-factor balancing test rather than a bright-line rule to identify a fair use, and such complex tests can lead to errors.
  • In Google v. Oracle, the Court incorrectly ruled that Google’s use of computer code copied from Oracle was a transformative fair use.
    • The Court should have considered the value of the code that Google copied from Oracle.
    • The error means that code gets a different level of protection depending on whether it is patented or copyrighted, as patent law has no fair use defense, and copyright does.
  • The fair use test asks for courts to consider the effect of the use upon the potential market for or value of the copyrighted work; this concern is the salient factor in Google v. Oracle and Warhol v. Goldsmith.
  • The fair use test creates a false dichotomy between transformative uses (“fair use”) and derivative uses (not “fair use”); many works of art are both transformative and derivative.
  • In considering how copyright law should treat works of art that are derivative and transformative, courts should look first to consensual solutions, that is, licensing; in art law, there are no difficult coordination problems or market failures, and the licensing market is vibrant.
  • In negotiating a license, negotiating artists consider spillover effects, that is, whether the derivative work will increase or decrease the value of the original work.
    • Courts may fairly approximate damages by allowing damages of the same magnitude as the original license price.
    • In copyright cases, courts could use a method for measuring damages analogous to the royalty method used in patent cases.
    • Warhol could also pay a bonus royalty to Goldsmith to compensate for willful infringement.
  • If all cases were resolved by using consensual negotiations as a benchmark, a fair use defense would not be needed; however, in core cases of fair use such as criticism, satire, and parody, courts cannot require consent, as the original content creator will be reluctant to give it.
    • Warhol’s work is a commentary on celebrity culture, not a criticism of Goldsmith’s work.
    • Warhol’s work does not require classification as a fair use, as would a parody.
  • Many real property and intellectual property rules maximize joint gains when voluntary negotiations are difficult.
    • In some copyright cases, reciprocal restrictions on both parties’ right to copy can compensate each side, as both are left better off.
    • In Warhol v. Goldsmith, there is no reciprocity, as the artist used the photo, but the photographer did not use the artist’s work.
  • In Warhol v. Goldsmith, both sides insist that copyright and constitutional principles require the court to give full protection or no protection; either result would be wrong.
  • When a second work could not have been created without the first, courts should seek a middle path.
    • Requiring the second artist to obtain a license from the first will reduce the pressure on courts.
    • The downstream artist should get the lion’s share of the second work’s value, as this is what would have happened if the license had been negotiated.
  • First Amendment rights of free speech should not be interpreted to allow violations of property rights; the First Amendment is a call to balance the rights of both parties.
    • The original copyright owner should recover the fair market value of her contribution.
    • Goldsmith should not acquire all the rights to Warhol’s work, or the right to destroy it.
    • Warhol’s rights should not be protected without considering the effect on Goldsmith.



Richard Epstein

About Richard Epstein

Richard A. Epstein is the Laurence A. Tisch Professor of Law at NYU Law School. Prior to his joining the faculty, he was a visiting law professor at NYU from 2007 through 2009, while he was the James Parker Hall Distinguished Service Professor of Law at the University of Chicago, the institution where he had taught since 1972 and served as Interim Dean in 2001. He has also been the Peter and Kirstin Bedford Senior Fellow at the Hoover Institution since 2000.