McFarlin on “Infringing Uses” After Warhol

Christopher J. Sprigman

In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith,¹ the Supreme Court considered whether the licensing of one of Andy Warhol’s Prince Series works for the purpose of illustrating a magazine story about the musician Prince, was a fair use of the Lynn Goldsmith photograph on which the Warhol work was based. In that opinion, the Court made two important interventions into the law of fair use.

First, the Court held that “[t]he fair-use provision, and the first statutory factor in particular, requires an analysis of the specific use of a copyrighted work that is alleged to be an infringement.”² “The same copying may be fair,” the Court said, “when used for one purpose but not another.”³ Accordingly, the Court focused on the challenged use—the license to Vanity Fair to illustrate a cover story about Prince’s life—and did not rule on whether the particular Warhol work licensed, Orange Prince, or any of the other Warhol Prince Series works, or any other conceivable use of Orange Prince, was or was not fair use.

As all copyright lawyers know, since the Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc.,⁴ the question of transformativeness has become a critical element of the fair use analysis, with works deemed transformative significantly more likely to be fair use. The Warhol Court’s second intervention was to make clear that a defendant’s use of a plaintiff’s work is not necessarily transformative just because that use contains a new meaning or message. Something more is required—the defendant’s use must have a different purpose than the plaintiff’s.⁵

That different purpose, the Court held, was lacking. Of particular significance to the majority, both Goldsmith’s photograph and Warhol’s Orange Prince artwork had been used to illustrate magazine stories about Prince. The particular challenged use—the Warhol Foundation’s licensing of Orange Prince to Vanity Fair—was the same as a principal use of the Goldsmith photograph. The use was therefore a potential substitute for the licensing of Goldsmith’s work.⁶

Tim McFarlin’s new piece in the South Carolina Law Review, titled Infringing Uses, Not Works, explores the consequences of the Warhol Court’s first intervention—i.e., its focus on the particular use made by the defendant of the plaintiff’s copyrighted work. In McFarlin’s telling, that intervention will re-shape how courts handle infringement lawsuits. In particular, McFarlin argues that Warhol’s use-focus is likely to transform how courts fashion injunctions in copyright infringement cases. The reason to expect this transformation, McFarlin explains, is rooted in the logic of the Warhol opinion itself, which strongly suggested that while the Warhol Foundation’s particular use might compete with the plaintiff’s work, and therefore fail to qualify as a fair use, other uses that we might ordinarily expect the Foundation to make of the Prince Series works would be unlikely to compete, and therefore much more likely to qualify as fair:

First, though Justice Sotomayor could have refrained (due to Goldsmith’s narrowing of her claim) from discussing other uses of Orange Prince, she did discuss them. And she did so in a way that highlighted their likely noninfringing nature: the Court’s own reproduction, public display, and distribution of both Orange Prince and Goldsmith’s photo within its opinions was covered by fair use, Sotomayor noted, just as that doctrine would likely cover using Orange Prince for the purpose of teaching.

Second, Justice Sotomayor also discussed the difference between an infringing and noninfringing use of Warhol’s iconic Campbell’s Soup Cans. Reproducing, publicly displaying, and distributing the “Campbell’s Soup” logo in a series of paintings for collectors and museums was likely noninfringing, Sotomayor posited, while licensing the work to a competing soup business to be reproduced, publicly displayed, and distributed in grocery stores likely would be infringing. (P. 112 (internal citations omitted).)

Warhol’s “use focus”, McFarlin argues, means that fair use is no longer a categorical analysis—in the ordinary case, a work is likely to be neither wholly inside or outside of the scope of fair use, but rather partly on both sides of the line, with different uses either qualifying or failing to qualify as fair. In a forthcoming article, I argue that the Warhol Court’s focus on the competitive consequences of defendant’s particular use is more likely, over time, to expand the scope of fair use than it is to contract it.⁷ McFarlin focuses on copyright infringement remedies to make a related point—Warhol’s use focus should, if it is heeded, reduce the scope of injunctive relief as well as impoundment and destruction orders in many copyright infringement cases.

To launch his argument, McFarlin refers to the injunction granted in a recent case, Tolkien Tr. v. Polychron.⁸ There, Judge Stephen V. Wilson of the Central District of California issued both (1) a worldwide injunction against the further publication of the Fellowship of the King, a work of fanfiction written without the Tolkien Estate’s consent, as well as (2) an Order that the writer, Demetrious Polychron, “[p]ermanently destroy all physical and electronic copies of the Infringing Work.” (P. 114 (internal citations omitted).) McFarlin says that an injunction that respects Warhol’s use focus would have been much narrower:

[F]irst, whether a derivative work, like the Fellowship of the King, infringes copyright must be judged use by use, per Warhol. The sharing of the Fellowship of the King for free and within a fanfiction community would present a strong case for a fair (and therefore noninfringing) use. The retention of a copy for Polychron’s own private, personal joy would pose yet a stronger case. So the injunction should have targeted only the commercial sale of Fellowship of the King, the sole use litigated in the case.

Second, it appears that the infringed works may now be out of copyright in New Zealand, where the Lord of the Rings copyrights apparently expired on January 1, 2024. So the injunction, issued by a U.S. court and applying only U.S. copyright law, should not have been worldwide in scope.

Third, even in the U.S., the infringed works’ copyrights will expire: likely in 2046 for the Fellowship of the Ring, 2049 for The Two Towers, and 2050 for the Return of the King. So the court should not have ordered the destruction of all copies of the work, given that at some point all uses—even commercially competitive ones—will be noninfringing. (P. 116-17.)

I’ll leave the remainder of McFarlin’s valuable article for your reading—including the parts where he argues how best to reconcile Warhol’s use focus with 17 U.S.C. § 103(a)’s seemingly categorical rule regarding the uncopyrightability of infringing derivative works, as well as his predictions regarding the impact of Warhol’s use focus on generative AI—but suffice now to say that McFarlin’s article is a valuable early entry in what will be a lengthy period in which the implications of the Warhol Court’s two big holdings are digested (or not) by the law.

1. 598 U.S. 508 (2023).
2. 598 U.S. at 533 (internal quotation marks omitted) (emphasis added).
3. Id.
4. 510 U.S. 569 (1994).
5. Id. at 529.
6. Id. at 556 (Gorsuch, J., concurring) (“[H]ere, the undisputed facts reveal that the Foundation sought to use its image as a commercial substitute for Ms. Goldsmith’s photograph”); see also id. at 578 (Kagan, J., dissenting) (“[T]he majority conducts a kind of market analysis: Warhol, the majority says, licensed his portrait of Prince to a magazine that Goldsmith could have licensed her photo to—and so may have caused her economic harm.”).
7. Christopher J. Sprigman, Copyright, Meet Antitrust: The Supreme Court’s Warhol Decision and the Rise of Competition Analysis in Fair Use, 134 Yale L.J.F. 298 (2025).
8. No. 2:23-cv-04300-SVW-E, 2023 U.S. Dist. LEXIS 226135, at *34 (C.D. Cal. Dec. 14, 2023).