Warhol Ruling Vague About How It Tightens Copyright ‘Fair Use’

The US Supreme Court’s decision against the Andy Warhol Foundation in a dispute over an image of the musician Prince failed to provide guidance on how judges should trim subjectivity when analyzing fair use under copyright law, attorneys said.

The case arose when the foundation licensed a Warhol-colorized version of Lynn Goldsmith’s photo of Prince to Vanity Fair magazine without Goldsmith’s permission. Warhol’s version didn’t qualify as fair use because it didn’t meaningfully transform the photo’s purpose as a portrait of Prince, Justice Sonia Sotomayor wrote in the 7-2 opinion.

The majority reiterated a familiar warning against judges playing “art critic” to find new expression that would escape copyright liability, lest it would “swallow” an artist’s right to create and benefit from derivative works that also often add new expression. It also pushed back on what it characterized as judges over-reading the phrase “new expression, meaning or message” from the high court’s last non-software fair use case nearly 30 years ago. Although that measure of transformativeness should remain part of a multi-factor fair use analysis, it shouldn’t overrun the rest, Sotomayor said.

Some legal observers praised the ruling as protecting the rights of photographers and other artists whose works can be exploited instead of being used as starting points for something truly new. Others endorsed a dissent from Justice Elena Kagan, joined by Chief Justice John Roberts, that the ruling “turns its back on how creativity works,” “will stifle creativity of every sort,” “impede new art,” and “make our world poorer.”

But attorneys generally agreed that the nominally narrow holding will still be influential and broadly applied.

“They avoided the elephant in the room by staying away from the creative elements and focusing entirely on the fact that it was used as a magazine cover,” IP attorney David S. Gold of Cole Schotz P.C. said. “Here we had a chance to be given guardrails on the transformativeness analysis and we were driven off the road.”

The opinion cabins its holding to the circumstances in the case, stating that even the print in question may be fair use elsewhere, such as a museum or book about art.

“They left the door open” that something sufficiently transformative could overcome a use’s commercial character, Gold said, adding: “It would have been nice if they said when that would be the case.”

But others saw the majority as tamping down a tendency of courts to too easily see the secondary work as having transformed the original—effectively allowing transformativeness alone to lead to a fair use finding.

“I think that the court saw that transformative use was going way too far. And it said ‘we need to stop this,’” IP law professor Philippa Loengard of Columbia University said. “We’re backing away from that idea and saying it’s a more holistic picture. And the transformativeness has to be somewhat greater than this.”

Everyone’s a Critic?

A fair use analysis considers four statutory factors: nature of the use of the original, nature of the original, how much of the original work was used, and the effect on the market for the original work and derivative. The first factor considers the use’s “purpose and character” including whether it’s commercial, nonprofit, or educational. The Warhol Foundation appealed only the US Court of Appeals for the Second Circuit’s finding on the first factor.

The high court’s last non-software fair use decision, 1994’s Campbell v. Acuff-Rose Inc., deemed rap group 2 Live Crew’s “Pretty Woman” a transformative “parody” that was a fair use of Roy Orbison’s original song. It said the new work added new meaning and message.

Courts have long struggled with that language and sometimes over-applied its importance, IP attorney Nicholas M. O’Donnell of Sullivan & Worcester LLP said. Sotomayor cited Campbell approvingly, but emphasized that its language on transformativeness merely was directed at one aspect of one factor.

“One of the things this decision does is remind the reader that fair use is a four-factor analysis,” O’Donnell said. “If you say transformative use is a fair use, and that any work with a new meaning or message is transformative, there’s no longer such thing as infringement. Anything could be read as having a new meaning or message.”

Sotomayor said the Second Circuit was “partially correct” when it said the district judge that sided with Warhol “should not assume the role of art critic and seek to ascertain” Warhol’s intent or meaning.

She said meaning, “as reasonably can be perceived, should be considered” to determine whether the purpose of the use is distinct, or if it comments or criticizes the original. She said transformation was a matter of degree, and should be weighed against commercialism as well as the other factors.

Sotomayor found Warhol’s distinctive colorizing of the photo taken by Goldsmith—a “trailblazer” who “shot to the top” of a male-dominated field with her “award-winning concert and portrait images” of rock stars—insufficient to transform it.

But, Gold said, Sotomayor did little to show her work so judges could divine a threshold for transformation—aside from it falling somewhere between 2Live Crew’s fair-use song and Warhol’s infringing print.

Instead, Sotomayor focused on the commercial nature of licensing a portrait to a magazine commemorating Prince’s career. The dissent criticized her for not considering whether publisher Conde Naste would want the photo or the Warhol print, while Sotomayor said any derivative could be more or less appealing even if they serve the same purpose.

“No one wants fair use to be a get out of jail free card, but unfortunately we still don’t know where that comes into play,” Gold said. “They’re basically saying fair use is not in play if it’s an identical use.”

‘Incredibly Malleable’

While Sotomayor tried to rein in judges’ internal art critic, any fair use analysis will require some level of subjectivity, attorneys said.

O’Donnell said “there’s no getting around” the fact that when you ask the purpose of a work, there’s an “unavoidable” subjective aspect.

“What the court was trying to say is that trying to determine purpose is less subjective than determining meaning or message,” O’Donnell said. “There’s a little bit of ‘Guys, we know what really happened here. People wanted a picture of a famous guy for their articles. They turned to someone whose image was a derivative of someone else’s copyrighted image.’”

IP law professor Cathay Smith of the University of Montana said the opinion “decreases the power of fair use” and will chill art that builds on prior works in ways that would benefit society.

Smith also agreed that the high court tried to excise subjectivity. Sotomayor said courts seek “an objective inquiry into what a user does with an original work,” not a judge or art critic’s assessment. But the majority rightly “left open parody” and “more transformative work as they should have,” Smith said.

“To draw that line there’s still going to be some subjective inquiry, and there’s no guidance” in the opinion on how, she said.

Clients in the digital art world are “certainly nervous” about the ruling, IP attorney Preetha Chakrabarti of Crowell Moring LLP said.

She said “fears are probably a bit overblown” because of how case-specific the opinion is. But the narrowness of the opinion means “it will need to be sliced and diced and analyzed for every specific instance of potential application,” she said, highlighting the tension between transformative and derivative and how to differentiate them.

“Some of the anxieties are justified” given how a judge could read the opinion, Chakrabarti said. “I don’t think it’s meant to be that black-and-white, but I think that’s what’s alarming the dissent.”

But that subjective, still loosely delineated nature of fair use still allows judge’s flexibility in applying it, attorneys generally acknowledged. Judges inclined to find a work particularly transformative still have room to do so. That finding can still trickle into the fourth-factor—effects on the market—by finding the transformed market distinct from that of derivatives.

“I don’t think fair use law was just upended,” Loengard said.

Despite the inevitable impact of Thursday’s decision, one cornerstone of fair use law remains.

“The standard is going to remain incredibly malleable with a lot of moving parts,” Gold said.

The case is Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, U.S., No. 21-869, opinion 5/18/23.