“If the Court adopts an overly expansive definition of ‘transformative,’ it risks encroaching on copyright holders’ right to create derivative works. However, if it adopts an overly narrow definition…the Court risks stymieing artistic creativity.”
While Prince might have written the song “Nothing Compares 2 U,” Sinéad O’Connor transformed the tune, made it her own and it became a mega hit. In a similar vein, photographer Lynn Goldsmith took a photograph of Prince in 1981 (below left) that artist Andy Warhol used as a basis for his 1984 “Prince Series” silkscreen prints (below right). Did Warhol infringe Goldsmith’s copyright by using her photograph as the basis for his prints or was his work sufficiently transformative to be protected as “fair use”? That is the question at the heart of the case that the United States Supreme Court will hear in its fall 2022 term. This case may prove to be the most significant Supreme Court fair use case to date.
To put the case in context, consider a hypothetical fictional example where a photographer takes a photograph of Mona Lisa (the person, not the painting; below left), which Leonardo da Vinci then uses as the basis to create a painting of Mona Lisa (below middle). Sometime later, Fernando Botero uses da Vinci’s painting as the basis to create his own painting of Mona Lisa (below right). Should da Vinci’s use of the photograph be considered fair use? Should Botero’s subsequent use of da Vinci’s painting be considered fair use?
When assessing whether another’s use of a copyrighted work is “fair,” courts look to the four statutory factors provided in 17 U.S.C. § 107:
- the purpose and character of the use,
- the nature of the copyrighted work,
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and
- the effect of the use upon the potential market for or value of the copyrighted work.
Let’s examine these factors in more detail.
1) The Purpose and Character of the Use
When assessing the purpose and character of the use, U.S. courts consider whether the use is for commercial or nonprofit education purposes. Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164,1171 (1994). Courts often consider how “transformative” the use is, even though that term does not appear in the statutory language. The more transformative a use is, the less significant it is that a use is commercial. When determining whether a use is transformative, courts will evaluate whether the new work “merely ‘supersede[s] the objects’ of the original creation . . . or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Id. Parodies—like 2 Live Crew’s song “Pretty Woman” at issue in Campbell—are examples of uses that are often considered sufficiently transformative to qualify as fair use, so long as the use may be reasonably perceived as commenting on the original.
In Campbell, the Supreme Court held that the rap group 2 Live Crew’s “Pretty Woman” parody of Roy Orbison’s song “Oh, Pretty Woman” was protected by fair use, even despite the commercial character of the use. The Court emphasized the parodic nature of 2 Live Crew’s song in evaluating the purpose and character of the use and the amount and substantiality of the portion of “Oh, Pretty Woman” used in relation to the work as a whole. The Court remanded for consideration of whether the amount and substantiality of the portion used was excessive in the context of its parodic purpose and transformative elements. The Court also instructed the district court to consider the potential effect of 2 Live Crew’s rap parody on the derivative market for rap versions of “Oh, Pretty Woman.”
2) The Nature of the Copyrighted Work
Because some works are closer to the intended purpose of copyright protection than others, courts will consider the nature of the copyrighted work when determining whether the use is fair. Cariou v. Prince, 714 F.3d 694,709 (2d Cir. 2013). Courts tend to accord a higher degree of copyright protection for creative works than factual ones, and a higher degree of copyright protection for unpublished works than those that have already been published.
3) The Amount and Substantiality of the Portion Used
When assessing the amount and substantiality of the portion used in relation to the copyrighted work as a whole, U.S. courts evaluate whether the quantity and value of what is copied is reasonable in relation to the purpose of the copying.
4) The Effect of the Use Upon the Potential Market for the Copyrighted Work
The concern with this fourth factor is whether the secondary use usurps the market of the original work and its potential derivatives. Courts have distinguished the proper inquiry from whether the secondary use suppresses or destroys the market. Id. The market for potential derivative uses consists only of those that the original creators would create or license to others to create. Id. at 708-709. Courts have found the market to be usurped when the new use has the same target audience and the same nature as the copyrighted work. Id. at 709. Typically, the more transformative a work is, the less likely it is to usurp the market for the original by functioning as a substitute, even though transformative works can suppress or destroy markets for the original. Id.
We will next examine several fair use cases.
Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992)
In Rogers v. Koons, the United States Court of Appeals for the Second Circuit affirmed the district court’s grant of summary judgment that Jeff Koons’ sculpture “String of Puppies” was not fair use of Art Rogers’ photograph “Puppies.” Koons used the black and white “Puppies” as inspiration for his colorful “String of Puppies.” The Court found that because parody fair use requires that the new work at least partially comment on the original, and not just on society, “String of Puppies” was not a parody for fair use purposes. Thus, the purpose and character of the work favored a finding against fair use. The Court also found the nature of the copyrighted work, amount and substantiality of the portion used, and the effect of the use on the market also favored a finding against fair use.
Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), holding modified by Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021)
In Cariou v. Prince, the Second Circuit found 25 of Richard Prince’s 30 paintings to be fair use of Patrick Cariou’s photographs from Yes Rasta, including James Brown Disco Ball (above). The Second Circuit found these 25 paintings transformative as a matter of law because they had entirely different aesthetics from the original photographs. The Second Circuit identified the “composition, presentation, scale, color palette, and media” as different between the 25 paintings and the original photographs. For the remaining five paintings, the Second Circuit remanded to the district court to determine if these paintings (Graduation, Meditation, Canal Zone (2008), Canal Zone (2007), and Charlie Company) were sufficiently transformative because the Second Circuit could not conclude whether they were transformative as a matter of law. For these five paintings, including Graduation (below), the Second Circuit viewed them as having only minimal alterations (such as additional blue tints and lozenges), thereby maintaining the same aesthetics as the original photographs.
Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021)
In Google v. Oracle, the Supreme Court extended its transformative use test to the realm of computer programs. The Court held that even though Google copied identical portions of the Sun Java API (which is owned by Oracle), Google’s copying was transformative because it used the Sun Java API to create new products. As such, the Court held that Google’s use constituted fair use. But, the Court noted that computer programs are unique in copyright law, because of their primarily functional nature.
Let’s turn to the current Warhol v. Goldsmith dispute.
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312 (S.D.N.Y. 2019)
The United States District Court for the Southern District of New York held that Andy Warhol’s print of Prince was protected by fair use and granted summary judgment to the Andy Warhol Foundation. The district court found Warhol’s print to be transformative because of its added expression and aesthetics. Because the district court found the print to be transformative, it found the nature of the work to be neutral and have little weight, but found the purpose and character of the use, amount and substantiality of the portion used, and the effect of the use on the potential market for the copyrighted work weighed in favor of fair use.
Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021), cert. granted, 142 S. Ct. 1412 (2022)
On appeal, the Second Circuit clarified its holding in Cariou v. Prince. The Second Circuit explained that “any secondary work that adds a new aesthetic or new expression to its source material is [not] necessarily transformative.” The Second Circuit asserted that the test for a work to be considered transformative is “[r]ather, the secondary work itself must reasonably be perceived as embodying a distinct artistic purpose, one that conveys a new meaning or message separate from its source material.”
The Second Circuit also focused on the Warhol’s work’s potential effect on the market for Goldsmith’s derivative works. Id. at 48-51. In particular, the existence of a licensing agreement between Goldsmith and Vanity Fair for the initial use of Goldsmith’s photograph of Prince indicates that the Andy Warhol Foundation has harmed the market for Goldsmith’s painting by continuing to license the Prince Series without paying or crediting Goldsmith. Id. at 50.
The Supreme Court’s decision will likely turn on whether or not it views Warhol’s work as transformative or not, and how much the Court believes the transformative character of the use impacts the other factors.
If the Court views Warhol’s print as transformative, then it will likely hold that the purpose and character of using Goldsmith’s photograph favors a finding of fair use. If the Court also believes the transformative character of the print impacts the other factors, then it will likely also hold that the amount and substantiality of the portion used, and the effect of the print on the potential market for the photograph favor a finding of fair use, and the nature of the work has little weight.
However, if the Court does not view Warhol’s print as transformative or if it does not believe the transformative character of a use impacts the other factors, then it will likely find Warhol’s use of Goldsmith’s photograph was not fair use.
If the Court adopts an overly expansive definition of “transformative,” it risks encroaching on copyright holders’ right to create derivative works. However, if it adopts an overly narrow definition of “transformative,” the Court risks stymieing artistic creativity, especially of those unable to pay licensing fees. The key appears to be finding a suitable balance as to what may be considered “transformative”.
Another aspect of this decision is whether Warhol’s celebrity status should impact the outcome. The Second Circuit explicitly rejected a “celebrity-plagiarist privilege” where the fact that the print was recognizable as a “Warhol” would impact the fair use analysis.
If the Court holds that Warhol’s use of Goldsmith’s photograph was fair use, is it then fair game for others to use Warhol’s print as the basis for preparing new works? For example, if one were to Botero-ize (i.e., apply a “chubby” filter) to Warhol’s work, and change the color, would that be sufficiently transformative? Perhaps and perhaps not, but then where should one draw the line?
However the Supreme Court decides the case, it should avoid an absurd result where, for example, Andy Warhol is freely allowed to use Goldsmith’s photograph as he sees fit, but another artist (applying the style of, say, Fernando Botero) is forbidden from using Andy Warhol’s work as the basis for this other artist’s work. What is considered fair use will—and should—depend on the specific facts involved. Ideally, the Supreme Court will not adopt an unduly restrictive rule.