A transformative decision on fair use?

“Art is anything you can get away with.”

– Andy Warhol (possibly borrowed from Marshall McLuhan)

Copyright fair-use decisions from the Supreme Court are like occasional meteors – brilliant events, streaking across the sky every few decades, striking fear, consternation, and occasionally some joy into the hearts of intellectual-property practitioners, media companies, and the creative class.

The Supreme Court’s latest foray into the hotly contested area of fair use came on May 18 when it handed down its decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (“Warhol”), 598 U.S. --- (2023). In finding that Warhol’s use of a photograph taken by another artist to create a subsequent artwork did not constitute fair use under 17 U.S.C. § 107, this decision appears to reframe the fair-use analysis. The decision is likely to shake up the received view of fair-use, which had previously been set out by the Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994), a case involving 2 Live Crew’s parody of Roy Orbison’s song “Pretty Woman,” and more recently in Google LLC v. Oracle America, Inc., 593 U.S. --- (2021). Specifically, the Warhol decision appears to pare back the somewhat expansive language in Campbell, which suggested that subsequent uses of original works that “transformed” the original work in some way would generally be deemed to be fair use. The decision involves a heated and fascinating dispute between Justice Sotomayor writing for the majority and Justice Kagan, who wrote a dissent joined by Justice Roberts. Their dispute went to the nature of originality in art, and what artistic choices should be deemed “transformative.”

I. Background

The original work at issue was a black-and-white photograph of the late musician Prince Rogers Nelson, who performed as “Prince,” taken by the celebrity photographer Lynn Goldsmith in 1981. In 1984, Vanity Fair licensed the photo from Goldsmith for use as an “artist reference for an illustration” in the magazine. Vanity Fair agreed to pay Goldsmith $400 and give her a source credit. Warhol, 598 U.S. ---, Slip Op. 2-9.

For the illustration, Vanity Fair hired Andy Warhol, who was already a well-known pop artist. Using Goldsmith’s photograph, Warhol produced a silkscreen portrait of Prince to accompany an article in the November 1984 issue of Vanity Fair. Goldsmith was paid the agreed-upon $400 and received credit in the magazine for her “source photograph.” Id.

Unbeknownst to Goldsmith, Warhol continued working with her photograph, and produced 15 additional works based on the photo – 13 silkscreen prints and two pencil drawings. This series of 15 works came to be known as the “Prince Series.” Id.

After Warhol’s death, the Prince Series passed to the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”). AWF licensed images from the series for various uses. Relevant to this dispute, after Prince’s death in 2016, AWF licensed one of these images, titled “Orange Prince” to Vanity Fair for the cover of a special edition of the magazine paying tribute to Prince that was published in 2016. Vanity Fair paid AWF $10,000 for this licensed use of “Orange Prince.” Goldsmith received no fee for this use and no source credit. Id.

When Goldsmith saw “Orange Prince” on the cover of Vanity Fair in 2016, she recognized the work. As described by the Supreme Court, in “Orange Prince,” Warhol “crops, flattens, and colors the photo, but otherwise does not alter it.” Id. at 8. Goldsmith notified AWF that she believed that AWF had infringed her copyright through this 2016 licensing agreement. AWF preemptively sued Goldsmith in federal district court seeking a declaratory judgment or noninfringement, or, in the alternative, fair use. Goldsmith countersued AWF for infringement. Id.

II. Decisions Below

The district court granted summary judgment for AWF, considering the four-factor fair-use test set out at 17 U.S.C. § 107. That test is set out in the statute in relevant part as follows:

[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Fair use is a type of safe harbor for works that draw or build on previously copyrighted works. If the secondary use satisfies the § 107 test, it is not infringing. Most relevantly for this discussion, on the first factor, which deals with the “purpose and character of the [secondary] use,” the district court found that Warhol’s subsequent use of the photograph was “transformative,” because looking at the “Prince Series” next to Goldsmith’s photograph, the court found that Warhol’s works “have a different character, give Goldsmith’s photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” Warhol, Slip Op. at 9 (cleaned up). Specifically, the district court found that Warhol’s works “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure,” and further found that “each Prince Series work is immediately recognizable as a ‘Warhol’ rather than as a photograph of Prince.” Id. at 9-10 (cleaned up).

The Court of Appeals for the Second Circuit reversed, with the crux of the discussion being focused on the first factor in the § 107 test. The Second Circuit “rejected the notion that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative.” Id. at 10 (cleaned up.). Instead, in the Second Circuit’s view, “the question was … whether the secondary work’s use of its source material is in service of a fundamentally different and new artistic purpose and character.” Id. That “transformative purpose and character, must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work.” Id. The court found that “the overarching purpose and function of the two works at issue … [are] identical, not merely in the broad sense that they are created as works of visual art, but also in the narrow but essential sense that they are portraits of the same person.” Id. The court specifically rejected the argument below that the “Prince Series” was transformative because the works were “immediately recognizable as … Warhol[s],” as that would “create a celebrity-plagiarist privilege.” Id. at 10-11 (cleaned up).

III. The Supreme Court’s Decision

On appeal to the Supreme Court, the sole question presented was whether the Second Circuit correctly held that the first § 107 factor, dealing with the purpose and character of the secondary use, weighed in Goldsmith’s favor. AWF argued that the “Prince Series” works were “transformative,” and that the first fair-use factor therefore weighed in its favor. Id. at 12. The majority opinion, written by Justice Sotomayor, affirmed the Second Circuit, and rejected AWF’s argument, holding that “the first fair use factor … focuses on whether the allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations like commercialism.” Id. at 12 (cleaned up).

IV. Purpose of the secondary use

The majority decision appeared to break up the first factor into two sections: purpose and use. In discussing the “purpose” of the secondary use, the majority decision noted that the “central question the first factor asks is whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character.” Id. at 15.

Regarding “add[ing] something new,” the majority decision addressed the “transformative” language from the Campbell decision, where 2 Live Crew’s parody of Roy Orbison’s “Pretty Woman” was found to be sufficiently “transformative” of the original work to meet the fair-use test. The majority noted that “the word ‘transform,’ though not included in § 107, appears elsewhere in the Copyright Act,” specifically in 17 U.S.C. § 101, which defines derivative works. Id. at 16 (cleaned up). The copyright holder in the original work has “the exclusive righ[t] to prepare, to include any other form in which a work may be recast, transformed, or adapted.” Id. at 16 (citing 17 U.S.C. § 101) (cleaned up). In distinguishing Campbell, the majority decision noted that there, the secondary use drew on the original work to parody the original work itself; here there was no suggestion that Warhol was commenting on Goldsmith’s photograph. Rather, the expert testimony in the district court was that Warhol, in his secondary works, was commenting on the nature of celebrity in American society. For that purpose, the suggestion seems to be, there was no particular need for Warhol to use Goldsmith’s photograph – unlike the situation in Campbell, where 2 Live Crew had to draw on “Pretty Woman” to produce their parody, which commented directly on the original work. Id. at 34.

This portion of the majority opinion discussion is significant, as the majority opinion appears to be paring back the somewhat expansive “transformative” test set out in Campbell, noting that such a reading is at odds with the structure of the Copyright Act itself, given that the right to produce derivative works of copyrighted materials belong to the copyright holder, even when the derivative work involves a “transformed” version of the original work. “[A]n overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to create derivative works.” Id. at 16. Notably, as to this point, the Second Circuit decision gave the example of a film adaptation of a novel. Such adaptations often drastically change the underlying work, including combined or eliminated characters, altered plot points, etc. Regardless, despite these significant transformations of the underlying work, film adaptations are generally identified as a paradigmatic example of derivative works.

The result of the majority’s examination of the structure of the statute and revisiting of Campbell seems to be that “transformative” fair use as set out in Campbell is significantly narrowed down, perhaps even to the case of parody – a secondary work commenting on an original work.

V. Use of the original work

The majority opinion’s discussion of the “use” portion of the first factor focused heavily on the AWF’s decision to commercially license “Orange Prince” to a magazine, and that Goldsmith’s portrait could’ve been similarly licensed. “A typical use of a celebrity photograph is to accompany stories about the celebrity, often in magazines.” Id. at 22. The fact that the secondary use was commercial was not dispositive, in the majority’s view, but given the specific context – Warhol’s subsequent work potentially supplanting Goldsmith’s original work on a magazine cover – the nature of the use weighed heavily against AWF. Id. at 24.

The Court returned to Campbell again in this discussion, noting that while 2 Live Crew’s parody had a “new meaning or message,” that was not in itself sufficient for the fair-use finding on the first factor; rather, “meaning or message was … relevant to whether the new use served a purpose distinct from the original, or instead superseded its objects.” Id. at 29 (cleaned up). The central issue on “use” for the majority opinion appears to have been that AWF used “Orange Prince” in much the same way that Goldsmith’s original photograph could’ve been used. Unlike 2 Live Crew’s parody, AWF did not make some entirely different “use” of the original work.

Having considered the “purpose” of the subsequent work and the specific type of “use” involved, the majority opinion offered some final words on the role of the judge in comparing original and subsequent works. “A court should not attempt to evaluate the artistic significance of a particular work … But the meaning of a secondary work, as reasonably can be perceived, should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original, for instance because the use comments on, criticizes, or provides otherwise unavailable information about the original.” Id. at 31-32 (cleaned up).

VI. Justice Kagan’s Dissent

Justice Kagan’s animated dissent, joined by Justice Roberts, deserves some comment. Justice Kagan’s primary refrain is that few things are truly original: almost all artists draw on the works of predecessors. She provides a loving description of Warhol’s silk-screen process of transforming photographs into his canvases, and a brief history of borrowing in art, going from Shakespeare to Nabokov to Robert Louis Stevenson to Stravinsky to Manet. Warhol, 598 U.S. ---, Slip Op. at 28-32 (Kagan, J., dissenting).

Justice Kagan seems shocked that the majority would not see the transformation produced by Warhol’s process and changes. Justice Kagan seems close to just saying “It’s Andy Warhol, for goodness’ sake!” And at times, it feels as if the dissent is accusing the majority of philistinism. Justice Kagan’s tone is foreboding. She foresees a great chilling effect created by the decision: “Inhibiting subsequent writers and artists from improving upon prior works—as the majority does today—will frustrate the very ends sought to be attained by copyright law. It will stifle creativity of every sort. It will impede new art and music and literature. It will thwart the expression of new ideas and the attainment of new knowledge. It will make our world poorer.” Id. at 36 (cleaned up). Notably, Justice Sotomayor, writing for the majority, addresses these dark pronouncements: “[The dissent’s] claims will not age well. It will not impoverish our world to require AWF to pay Goldsmith a fraction of the proceeds from its reuse of her copyrighted work. … Nor will the Court’s decision … snuff out the light of Western civilization, returning us to the Dark Ages of a world without Titian, Shakespeare, or Richard Rodgers.” Warhol, 598 U.S. ---, Slip Op. at 36.

VII. Conclusions

Maybe it’s too early to say, but the Warhol decision certainly feels like a turning point for fair use. The majority decision appears to take a step back from having judges act as art critics, trying to determine how “transformative” a secondary use is, in meaning, content, approach, style, message. Instead, the analysis seems to be focused on the statutory language – which, as the majority notes, does not include the term “transformative” in the fair-use test. The majority focuses on the examples of fair use in the statute and the nature of the secondary use and steer away from an involved analysis of how Warhol’s message was “transformative” of Goldsmith’s original photograph. The majority, perhaps in an attempt to keep judges in their lanes, seems to take a dim view of courts attempting to interpret the meaning and significance of various creative works. And as noted, much of the majority’s analysis is driven by the statutory scheme, and the awareness that an expansive reading of “transformative” fair use threatens to swallow the copyright holder’s rights to create or license derivative works.

Campbell is left, it seems, diminished in scope after Warhol, especially regarding whether simply arguing that a subsequent work is “transformative” of the original work, because of some added “meaning,” will allow the subsequent work to meet the fair-use test. Ultimately, it appears the majority saw that Goldsmith’s photograph was easily recognizable in Warhol’s subsequent work. Yes, Warhol had added colors, traced the photo, flattened and cropped it, but Goldsmith’s photo was, in the Court’s view, unmistakably at the core of Warhol’s subsequent work. Given that AWF didn’t argue that Warhol was commenting on Goldsmith’s photo and given that AWF was licensing the work for the same type of use Goldsmith’s celebrity portrait could’ve been used for, the Court appears to have concluded that there was simply no fair reason why Warhol had to copy Goldsmith’s photo in this way – as opposed to some other photo that he took or had licensed rights to use.

While the majority and concurrence emphasize that the decision is limited to the specific use here – AWF licensing “Orange Prince” to a magazine – the majority’s fair-use analysis and treatment of the “transformative” test seem likely to have a major – dare we say transformative – impact on fair-use decisions. Justice Kagan may be correct in predicting a sea change in fair use as a result. Was she right in suggesting that the light of artistic creativity in this country will be severely dimmed? Let’s hope not.