Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, Docket No. 21-869 (Supreme Court 2022)
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021)
Context: There may be significant changes coming to fair use law. The 2nd Circuit is very influential in the field of copyright law, and this case is no exception. That the Supreme Court has chosen to weigh in on where the lines are drawn with respect to the nature of transformative use suggests that changes are on the way for fair use.
Procedural History: Goldsmith originally took a set of iconic photographic portraits of Prince in 1981, which were subsequently licensed to the magazine Vanity Fair for use as an artist reference. This meant that a work of art could be created based on the photographs. The license further specified that the illustration could only be published a single time, in Vanity Fair. Vanity Fair subsequently commissioned Warhol to create the illustration. However, Warhol created an addition 15 works based on the photographs, collectively known as the “Prince Series”. However, it was only in 2016 that Goldsmith became aware of the existence of the Prince Series, and after registering the original photographs with the U.S. Copyright Office, Goldsmith sued. The Andy Warhol Foundation (“AWF”) sued for declarative judgement of non-infringement and won on summary judgement at the district court level, but this was overturned at the 2nd Circuit. The Supreme Court has now granted cert to review the case.
As a primer, the copyright infringement defense of fair use is codified under 17 U.S.C. §107, which reads as follows:
Notwithstanding the provisions of sections 106 and 106A, the 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.
This multi-factor analysis is used in most fair use cases. However, increasingly, the determining factor in fair use has been the question of whether a given use is “transformative” or not, with more transformative works being more likely to be considered fair use.
In many ways, the Warhol case in the 2nd Circuit could be seen as a counterpart to the earlier Cariou case (Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013)) which also involved the creation of artistic works based on photographs. In Cariou, the 2nd Circuit held that the artistic works, there highly modified paintings and collages based on photographs of Rastafarians, were so different from the original pieces that, despite not commenting on the original artist or work, fair use still came into play.
However, in this case, the 2nd Circuit felt compelled to draw a line bounding transformative use in light of Cariou. Although the 2nd Circuit declined to modify its ruling that commenting on the original work was not necessary for finding fair use, the court clarified that Cariou, and the previous line of fair use cases, held for the proposition that “where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created”, “the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material”.
In light of the above holding, the 2nd Circuit ultimately ruled that the Prince Series did not reasonably convey enough of an entirely distinct artistic purpose from the original photographs to be fair use. The 2nd Circuit also turned away from subjective intent-based analysis here. Instead, the court noted that “whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic — or for that matter, a judge — draws from the work” since “judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective”. The fear being that “[w]ere it otherwise, the law may well ‘recogniz[e] any alteration as transformative.’” Instead, “the secondary work's transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist's style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material.”
Interestingly enough, in its petition to the Supreme Court, AWF has now framed the present issue as “[w]hether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as the Supreme Court, U.S. Court of Appeals for the 9th Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the U.S. Court of Appeals for the 2nd Circuit has held).” AWF has thus suggested a circuit split headed by the 2nd Circuit, a claim denied by Goldsmith in their reply.
A couple of big takeaways here. First, there is some indication that SCOTUS is redrawing the lines in the fair use sphere. After not touching fair use for almost 3 decades, SCOTUS just last year, in Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021), touched on fair use. Taking up another case on fair use so quickly may suggest that SCOTUS is ready to make fundamental changes in this area. Second, although Google v. Oracle involved very different issues having to do with technology and the copying of lines of computer code, that case may not read favorably for Goldsmith here. The 2nd Circuit went to great pains to reject subject intent on the part of the artist, but the SCOTUS, it could be argued, put a fair amount of weight on the intent of Google in copying the Java API for use in Android in that case. Finally, if SCOTUS does indeed overturn the 2nd Circuit here, then where are the new lines drawn for fair use? As asserted by the 2nd Circuit, there is indeed a reasonable fear that the idea of “transformativeness” could swallow the rule if left unchecked.