COPYRIGHT FAIR USE, ANDY WARHOL, AND PRINCE. IS THE SUPREME COURT ABOUT TO DECLARE THAT THE TRANSFORMATIVE TEST’S 15 MINUTES ARE UP?
By Patrick T. Perkins
The following article has been updated since the May 18, 2023 decision and includes an addendum in light of that decision. Both the original article and the addendum are written by Patrick T. Perkins, an experienced intellectual property attorney who, most recently, was Chief IP Counsel at a major media company.
UPDATE! Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith
The Supreme Court Hands Down its Decision
On May 18, the U.S. Supreme Court handed down its decision in the Case. The 7-2 majority opinion written by Justice Sotomayor, affirms the court of appeals’ decision, finding that the first fair use factor—“the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes”—favored the photographer, Lynn Goldsmith. As a result, Conde Nast’s license of one of Warhol’s Prince silkscreens for a magazine cover without Goldsmith’s permission was not fair use.
Justice Sotomayor was joined by Justices Thomas, Alito, Gorsuch, Kavanaugh, Barrett, and Jackson. Justice Gorsuch also wrote a concurring opinion (an opinion that agrees with the majority but seeks to further clarify on certain points). Justice Kagan wrote a blistering dissent, in which she was joined by Chief Justice Roberts. Here are a few brief observations about this very important opinion:
The Tension Between The Existing Transformative Test And The Derivative Work Right Was A Decisive Factor. – As outlined in my article, at oral argument, all parties grappled with defining when transformation crosses over from being an unauthorized derivative work to an excusable fair use. The Court rejected the Warhol Foundation’s argument that the addition of any new meaning or message made a work transformative and the use fair because, such an approach “would swallow the copyright owner’s exclusive right to prepare derivative works.” According to the Court, examples of transformative derivative works that would not be fair uses included a commercial remix of Prince’s “Purple Rain” or the musical adaptation of Alice Walker’s “The Color Purple.” (Apparently Justice Sotomayor is a fan of purple.) However, some derivatives were identified as likely fair use, including 2Live Crew’s “Oh, Pretty Woman” (parody), “The Wind Done Gone” (a novel parody of Margaret Mitchell’s “Gone With The Wind”), and Warhol’s Soup Cans (commentary on consumerism).
The Transformative Test May Not Be Dead, But It’s Gone From A Starring Role To A Cameo – As mentioned in the body of my article, in fair use cases leading up to this one, the Transformative test had become a shorthand replacement for the first fair use factor. The Warhol Foundation claimed Warhol’s work was transformative because it conveyed a different meaning or message than the original. The Court rejected this and instead returned to the language of the first factor, looking to the purpose and character of the new work. While new meaning or message in a new work may be relevant to the first factor, the Court now clarifies that, in order to be transformative, the new work must have a different purpose and character. The Court found that both Goldsmith’s and Warhol’s works had the same purpose—they were both representations of Prince and used as illustrations for magazine stories. The Court teases that a different result might be reached if the second work were merely being shown in a museum. Because the Court moves the analysis back to the broader first factor, the term “transformative” becomes obsolete as a shorthand, and I predict that while the term may continue to be paid lip service, it will no longer have the same potency and will ultimately fade away in future opinions.
The Preamble Is Back On The Menu! – In explaining the meaning of the first factor, the Court explains that it “relates to the problem of substitution.” If the new work “achieve[s] a purpose that is the same as or highly similar to, that of the original work” it’s more likely to supplant it. The Court then looks to the “purposes” listed in the Preamble of the fair use section: “criticism, comment, news reporting, teaching . . ., scholarship, or research.” While this list is not meant to be exhaustive, it is meant to illustrative. The Court points to the nature of uses such as criticisms to illustrate the kinds of works that do not supersede or supplant a work. One consequence of the Court’s focus on the Preamble (as well as the repeated reminder that the 2Live Crew case involved a parody) may be that it will be much harder to establish fair use if the second work’s new material cannot be perceived as commenting on the original. While Warhol’s Prince silkscreen could be viewed as imbuing the underlying image with a new meaning or message, no argument was or could be made that Warhol was commenting on Goldsmith’s creative message or choices.
Why Does The Opinion Go On And On About The Warhol Campbell Soup Cans? – In its recent 2019 copyright fair use opinion regarding computer software, the Court made reference to Warhol’s Soup Cans in explaining “[a]n artistic painting might, for example, fall within the scope of fair use even though it precisely replicates a copyrighted advertising logo to make a comment about consumerism.” (Oops!) Indeed, the dissent makes much of the obvious—if Warhol’s faithful representations of the Campbell Soup Cans were fair use, then why isn’t his arguably more altered use of Goldsmith’s photographs also fair use? The majority returns to the “purpose” prong of the first factor—Warhol wasn’t using “Soup Cans” as a logo for soup whereas the two Prince images were being used for essentially the same purpose.
Justices Kagan And Sotomayor Seem Unlikely To Exchange Holiday Cards Anytime Soon – One of the notable features of the majority and dissenting opinions is what can only be described as fairly nasty sniping back and forth. The dissent’s argument boils down to the view that the majority approach is likely to stifle follow on works. However, for all of its eloquence, the dissent never really answers the question on derivative works. One cannot help but wonder whether the dissent would be as vehement (or exist at all), were the work at issue not by Andy Warhol.
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Was Andy Warhol a copyright infringer? “Dearly Beloved,” in a case that’s certain to change the copyright landscape, the US Supreme Court (“the Court”) “is gathered here today” to answer this question. Before the close of this session, the Court will decide The Andy Warhol Foundation For The Visual Arts, Inc. v. Lynn Goldsmith and Lynn Goldsmith Limited, Ltd., a dispute over portraits of the late music performer Prince by Andy Warhol. This case is likely to clarify the US Copyright Act’s fair use defense and its “transformative” doctrine.
What Copyright Protects and Its Fair Use Provision
To understand why this case is so important, a little background is needed. The US Copyright Act protects original works of authorship that are “fixed in any tangible medium of expression.” 17 U.S.C. sec. 102(a). These works of authorship run a spectrum from literary or musical works, to pictorial or sculptural works, to audiovisual works, to architectural works, and even databases and computer code. Owners of copyright have the following exclusive rights in their works:
(a) reproduction,
(b) derivative work creation (more on this later),
(c) distribution, and
(d) public performance or display.
The mandate for copyright protection finds its roots in the US Constitution’s delegation to Congress to make laws “[t]o promote the Progress of Science and useful Arts[.]” US Const., art. I, sec. 8, cl. 8. Copyright is viewed as an engine of free expression, granting authors a monopoly over their creations, thus providing the incentive to create. However, that monopoly is not unlimited—for example, copyrights expire, ideas are not protected (only their unique expression is), and some unauthorized copying, known in the law as “fair use,” is permitted. Fair use is the central issue in this case.
The fair use section of the Copyright Act is broken into two parts: an explanatory preamble and a series of factors to be weighed. The preamble states that unauthorized copying is permitted “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research….” In other words, fair use is designed to accommodate First Amendment concerns. The law then identifies the following four factors as among those to be weighed:
(1) “the purpose and character of the use” – until 1994, this factor focused almost exclusively on whether the new use was commercial or for non-profit educational purposes,
(2) “the nature of the copyrighted work” – typically, analysis of this factor centers on whether the copied work is closer to the core of copyright protection, e.g., fiction over non-fiction/fact-based works,
(3) “the amount and substantiality” of the copied work used—this focuses not just on the amount of the copied work taken, but on its value (i.e., whether the copier take the “best” or “most valuable” part), and
(4) “the effect of the use upon the market for or value of the copyrighted work.” Id. The Supreme Court has held that this last factor is supposed to be given the most weight.
Courts are expected to examine any claim of fair use through the lens of the stated free speech purposes above and then weigh and balance each of the four listed factors and any other factors the court deems relevant in its inquiry. The fair use test remained largely unchanged until the Supreme Court issued its decision in Campbell v. Acuff-Rose Music, Inc. in 1994. In that case, the owner of copyright in singer-songwriter Roy Orbison’s hit “Oh, Pretty Woman,” sued hip-hop group 2 Live Crew for its unauthorized version of the song.
Justice Souter for the majority held that 2 Live Crew’s version was a fair use parody. In so doing, he introduced a new element into the analysis of the “purpose and character of the use” factor. Up to that point, the factor centered on whether the unauthorized copy was either commercial (and weighed against a finding of fair use) or non-profit/educational (favoring fair use). However, relying upon a law review article written by an influential U.S. District Judge, the Court stated that the “purpose and character” analysis should also look to whether the copied 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; it asks, in other words, whether and to what extent the new work is ‘transformative.’” The opinion goes on to state that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”
Once the Court found 2 Live Crew’s version of “Oh, Pretty Woman” to be a transformative parody, it then viewed this factor to be more important than the others, including those that weighed against a finding of fair use. The Court’s adoption of the “transformative” test has been interpreted by subsequent courts and has resulted in unintended and negative consequences.
First, notwithstanding the Court’s careful discussion of its “transformative” concept—that a work could be more or less transformative and that all of the fair use factors still should be weighed—subsequent courts have reduced the inquiry to a binary Rorschach-type test that disregards the First Amendment framework in the section’s preamble and pays only lip service to the statutory factors. Indeed, a study of fair use court of appeals decisions conducted by a member of BYU’s law school faculty found that in the 152 fair use opinions between 1991 and 2017 in which the courts found the secondary uses to be transformative, 91% also found them to be fair. Clark D. Asay et al. Is Transformative Use Eating the World?, 61 B.C. L. Rev. 905, 941 (2020). Five circuits had rates of 100%. Id.
Two cases from 2013 are often mentioned as emblematic of the transformative test having an outsized influence in fair use analysis. The first is a suit between artist/illustrator Derek Gray and the pop punk band Green Day. In that case, Green Day created a video backdrop for a concert tour, with different images for each of the 32 songs on the band’s set list. For the song “East Jesus Nowhere,” Green Day included a selection of images that was dominated by a modified version of a work by Seltzer entitled “Scream Icon.”
From left: “Scream Icon” by Derek Seltzer and Green Day Use
Both images as reproduced from US Court of Appeals Decision.
The US Court of Appeals for the Ninth Circuit (California) found that Green Day’s use was transformative even though it “ma[de] few physical changes to” and “fail[ed] to comment on the original.” The fact that Seltzer’s image was used as “raw material” in the construction of the video and that the meaning of his work was not clear to begin with, was enough to qualify Green Day’s use as fair.
The second case was between photographer Patrick Cariou and appropriation artist Richard Prince. In 2000, Cariou published a book entitled Yes Rasta featuring classical portraits and landscape photos taken while he lived among Rastafarians in Jamaica. Prince discovered Cariou’s book and created works comprised of 59 photographs torn out of the book and altered in various degrees. Such alterations included painting “lozenges” over the subjects’ facial features, affixing head shots from Cariou’s photos on other appropriated images, and the like. The lower court found for Cariou and rejected Prince’s fair use defense, but the Court of Appeals for the 2nd Circuit (New York) reversed, finding that all but five of Prince’s works were fair use. The appeals court found Prince’s works to be transformative because they “incorporate[d] color, feature[d] distorted human and other forms and settings,” and were larger than the original photos they incorporated. Among other things, the court in the Cariou case did not identify any direct commentary by Prince on Cariou’s works.
Richard Prince’s Canal Zone as included in the court file.
Aside from the binary manner in which courts have treated the transformative test, the test itself presents a conflict with the law’s guarantee to copyright owners of the exclusive right to create a “derivative work.” The Copyright Act defines a derivative work as “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted….” (Emphasis added.) We confront derivative works every day in media when we see movie sequels, TV spin-offs, remakes, or adaptations of plays or books into audiovisual works. The tension posed by the transformative test with the derivative work right is that there is no clear line for when a transformed work crosses the bridge from being an infringing derivative work to being a permissible fair use.
With that somewhat lengthy wind-up, now to the facts of the case currently before the Court.
What Is the Case About?
Lynn Goldsmith is a successful commercial photographer who has photographed, among other subjects, musicians and performers. Andy Warhol was, well, Andy Warhol. His works and legacy are managed by the Andy Warhol Foundation. In 1981, on assignment from Newsweek magazine, Goldsmith photographed the performer Prince both in concert and in her New York City studio. In the studio she chose to shoot him in black and white in front of a simple white background. Goldsmith later stated that the resulting photos showed Prince as “not a comfortable person” and as a “vulnerable human being.”
In 1984, in connection with a story it was running about Prince entitled “Purple Fame,” Vanity Fair licensed one of Goldsmith’s photos of Prince “for use as an artist’s reference in connection with an article….” Vanity Fair then commissioned Andy Warhol to create an illustration. Warhol created a full-color illustration of Prince that accompanied the article and went on to create the “Prince Series” comprised of 16 images of Prince, all derived from Goldsmith’s photo. Below are side by side, Goldsmith’s photo and one of Warhol’s works as included in a number of court filings.
Goldsmith did not discover that Warhol had created a series of works based on her photo until 2016, when, shortly after Prince’s death, Vanity Fair republished Warhol’s work in a commemorative issue. Goldsmith then contacted the Warhol Foundation and claimed copyright infringement. In response, the Warhol Foundation initiated suit in the US District Court for the Southern District of New York, seeking a declaration that Warhol’s works were not infringing and, even if they were, that they were permissible fair use.
The district court, feeling largely bound by the Cariou decision discussed above, found Wahol’s works to be fair uses. The critical finding by the court was that Warhol’s works were transformative because, whereas Goldsmith’s works depicted Prince as “not a comfortable person” and a “vulnerable human being,” the court viewed Warhol’s depiction as portraying Prince as an “iconic, larger-than-life” figure. Once it held Warhol’s work to be transformative, the other fair use factors fell like dominoes and were held either as “neutral” or favoring Warhol; this notwithstanding the facts that Warhol’s use was commercial, that Goldsmith’s photo was a creative work, that Warhol used the heart of the photo, and that Goldsmith had established a secondary licensing market for her works.
The Court of Appeals for the Second Circuit reversed the lower court’s ruling and found that Warhol’s work was not transformative in the sense intended in the fair use analysis. Rather, to be transformative, the work needed to do more than just add a new aesthetic or expression to its source material but needed to be used for “‘fundamentally different and new’ artistic purpose and character…” and not simply impose the second artist’s style on the first artist’s work. The appeals court went on to hold that “the overarching purpose and function of the two works at issue here is 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.” The court went on to find that all of the factors favored Goldsmith and that Warhol’s work was not a fair use.
The Warhol foundation appealed to the Supreme Court, but solely on the question of whether Warhol’s work was transformative. The Court agreed to take the case, and briefing and argument were completed in October of last year. A decision is due imminently.
Not surprisingly, in briefing, and later at oral argument, all parties paid close attention to the tension between the transformative test on the one hand and the derivative work right on the other. For example, the Warhol Foundation reads the Court’s decision in the “Oh, Pretty Woman” parody case to hold that if a second work conveys a new expression, meaning, or message different from the original, then it is transformative. Period. Conversely, Goldsmith and certain friends of the Court point out that virtually any derivative work, traditionally created with permission from the owner of the first work, meets this test. For example, in its brief, the Motion Picture Association (“MPA”)1 explained “[i]n most instances a derivative work will alter the meaning or message of the original work….” As an example, the MPA pointed to “the 2019 film The Joker—a spinoff of the Batman franchise—[which] transformed the titular character from a campy caricature into a dark, brooding figure plagued with life-altering mental health issues, a portrait that itself was a commentary on the plight of those who experience mental illness.”
The Warhol Foundation sought to resolve the tension between the transformative test and the derivative work right by arguing “[a]n adaptation of a novel into a movie is typically not considered fair use precisely because it does not change the meaning or message of the original.” At oral argument, counsel for the Warhol Foundation spent much of his allotted time responding to hypotheticals from the Justices regarding uses that would be both transformative and derivative works and would normally require permission, but seemed conceptually very similar to the current case. At one point, Justice Amy Coney Barrett asked the Foundation’s counsel why, under the test urged by the Warhol Foundation, one would have needed a license from the Tolkien estate to create the Lord of the Rings movies. The Foundation’s counsel initially responded that the films were not fundamentally different from Tolkien’s novels. When confronted with the Justice’s incredulous response, counsel backed off, confessing to not having read the books or being familiar with the films.
Why the Case Is Important and What’s Likely to Happen
One of the important purposes of the law is to provide predictability. The critically important fair use defense has become less predictable as a result of the transformative test as it has evolved. In many ways, the amusing exchange mentioned above between Justice Coney Barrett and counsel for the Warhol Foundation proves this point. Do the Lord of the Rings films add a new meaning or message to the Tolkien novels or don’t they? I suppose reasonable minds can differ. Similarly, while the Warhol Prince images certainly have a different aesthetic than Goldsmith’s photos, who can definitively pronounce such changes a new meaning or message? Does the current fair use analysis force judges into being art or literary critics, and is that an appropriate role? And what about so called “appropriation artists” like Richard Prince and Warhol? Is there a fair use space for them?
As evidenced by oral argument, it is clear that the Court recognizes that something needs to change, but what is likely to happen? The answer is far from clear. On the one hand, conventional wisdom is that the Supreme Court typically does not take up a case simply to affirm the lower court. However, copyright nerds point out that this is the second copyright fair use case the Court has taken up in the last couple of years, the previous case involving computer software between Oracle and Google. However, that case was not ideal to address the transformative test. Conversely, this case is an opportunity to course-correct the current test if the Court sees fit.
The other reason to expect a change to the transformative test is that Justices Gorsuch and Kavanaugh were both clerking for Justice Anthony Kennedy when the “Oh, Pretty Woman” opinion was issued. (Judicial clerks research and often help draft opinions by Court justices.) Justice Kennedy issued a concurring opinion in that case and made a couple of important points. For example, he wrote “[i]t is not enough that the parody use the original in a humorous fashion, however creative the humor may be. The parody must target the original, and not just its general style, the genre of art to which it belongs, or society as a whole…” Some subsequent fair use cases have moved away from the notion that a fair use must comment upon the prior work. Secondly, in his only mention of transformation in the concurrence, Justice Kennedy wrote “[i]f we allow any weak transformation to qualify as parody, however, we weaken the protection of copyright…[which] disserves the goals of copyright just as much as overprotection, by reducing the financial incentive to create.” I have always read Justice Kennedy’s concurrence as tacit criticism of the transformative test and it would not be a stretch to believe that Justices Gorsuch and Kavanaugh retain a similar view to that of their mentor.
In sum, something is going to happen. In the event the transformative test is retired, creators (and their lawyers) will likely need to recalibrate their fair use calculators. For example, they may be required to justify their incorporation of a pre-existing work by focusing more intently on the First Amendment contours set out in the provision’s preamble and give more attention to the four factors from the text of the statute. Simply having the new work be “different” whether aesthetically or in message, will likely not be enough.
On the other hand, the Court may just attempt to clarify the transformative test in order to protect creators’ exclusive right to create derivative works. Perhaps they will articulate the formula to distinguish a transformative work from a derivative work. At the end of the day, whether what the Court does will be better or worse than the current state of the law is anyone’s guess. In the meantime, if you’re considering relying on fair use in creating your own work, it would be wise to wait for this opinion to issue. Oh, and seek the advice of counsel.
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1 As full disclosure, in my former role at Warner Bros., I participated in the preparation of the MPA Amicus Brief referenced here.