This article was first published with the ABA, Section of Litigation, Intellectual Property Committee, at this link.
In May 2023, the U.S. Supreme Court’s decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith[1] reshaped the understanding of the primacy of “transformative” use in copyright law. The case centered on whether Andy Warhol’s orange silkscreen artistic adaptation of Lynn Goldsmith’s photograph of Prince was sufficiently transformative to favor application of the fair use defense.
The Supreme Court ruled that Warhol’s use, although transformative in some ways, did not dictate that the purpose and character of Warhol’s use favored the defense. Rather, because Warhol’s purpose was substantially similar to Goldsmith’s original purpose—both were commercial in nature—the first fair use factor did not favor Warhol despite his expression. The Supreme Court thus clarified that transformation by adding expression or meaning is not necessarily dispositive of the first fair use element as some courts had held or implied.
Since the Goldsmith decision, appellate courts have focused more closely on whether a new work truly has a further purpose or different character, as well as the purpose and nature of the use (especially if it is commercial). These early decisions show that courts are seemingly hesitant to find that the first fair use factor favors the defense.
Philpot v. Independent Journal Review[2]
The Fourth Circuit was the first federal appellate court to apply Goldsmith in depth. In its Philpot opinion, the Fourth Circuit addressed whether the use of a photograph of musician Ted Nugent in a news article constituted fair use. The court applied the Goldsmith ruling and reversed the district court’s grant of summary judgment to the defendant. In doing so, the court highlighted that the defendant “did not alter or add new expression to the Nugent Photo beyond cropping the negative space,” which was “less of a case for ‘transformative use’ than the Andy Warhol Foundation [had].” In addition, both the original photograph and its new use in the defendant’s article served the same commercial purpose: “to depict ‘The Nuge’” for profit. Thus, the first fair use element did not favor the defense.
Griner v. King[3]and Designworks Homes, Inc. v. Columbia House of Brokers Realty, Inc.[4]
Shortly after Philpot, the Eighth Circuit applied Goldsmith to a case involving use of the “Success Kid” meme in an advertisement for now-former Congressman Steve King (IA-4). King’s Committee had posted a version of the meme on his website and social media accounts when seeking donations. The Eighth Circuit discussed Goldsmith in depth and affirmed the jury’s determination that the fair use defense did not apply. In particular, the Eighth Circuit emphasized that it was undisputed the Committee’s use was “purely commercial” because the use solicited campaign donations. This commercial purpose was similar to the purpose in copyrighting the image of “Success Kid,” and the Committee’s use did not have a further purpose or different character. Thus, the first factor did not weigh in favor of fair use.
Subsequently, the Eighth Circuit issued a decision in Designworks Homes, affirming summary judgment in favor of real estate agents and associated defendants who included copyrighted floorplans in resale listings that such use constituted fair use. In contrast to King, the defendants in Designworks Homes used the floorplans for informational purposes for potential buyers, whereas the designs themselves had been originally purposed on facilitating construction of the homes that later went up for resale. “Use of the designs thus yielded end products with functional and aesthetic benefits, while use of the floorplans identified and advertised those products and benefits.” Although both uses had a connection to commerce, the subsequent floorplan uses did not displace the original designs or any derivative works in the market. Thus, the Eighth Circuit agreed that the first fair use factor favored the defense.
Hachette Book Group, Inc. v. Internet Archive[5]
Following King, the Second Circuit affirmed summary judgment that the Internet Archive’s simple conversion of print books to digital formats was copyright infringement and not fair use. The court held that the conversion—which did not provide criticism, commentary, or new features or information—did not qualify as transformative, citing the Goldsmith decision. The Second Circuit explained that merely shifting a work to a new format is not transformative. Mere repackaging does not equate to a distinctly new, let alone transformative, character and purpose. However, the Second Circuit departed from the district court and held that the Internet Archive’s use was not commercial because the archive distributes digital books for free as a nonprofit entity and did not profit directly from any such use. Although the Internet Archive generally collects donations on its site, the connection between the use at issue and the donations was too attenuated. Still, the absence of any transformation showed the first factor did not favor fair use.
Keck v. Mix Creative Learning Center, L.L.C.[6]
After Hatchette Book Group, and in a slightly different application of Goldsmith, the Fifth Circuit affirmed summary judgment for the defendant that the sale of art kits teaching children to recreate certain artists’ works was transformative and entitled to a fair use defense. The court emphasized that while the kits had some commercial purpose, their educational function significantly altered the context in which the original works were copied; “the art kits had educational objectives, while the original works had aesthetic or decorative objectives.” This case highlights that when the new work serves a distinct and non-commercial purpose—such as education—it may still be considered transformative, even if it generates profit.
CONCLUSION
As these cases show, the Goldsmith decision appears to have narrowed the role that transformation plays in the fair use analysis. Courts will now scrutinize whether the new work serves a purpose similar to the original, in addition to whether it introduces new meaning or expression. Creators may face greater challenges in arguing that their adaptations qualify as fair use, particularly when the new work serves a commercial purpose.
[1] 598 U.S.C. 508 (2023).
[2] 92 F.4th 252 (4th Cir. 2024).
[3] 104 F.4th 1, 10 (8th Cir. 2024).
[4] 126 F.4th 589 (8th Cir. 2025).
[5] 115 F.4th 163 (2d Cir. 2024).
[6] 116 F.4th 448 (5th Cir. 2024).
