The U.S. Supreme Court will face the challenge of crafting objective guidance for answering a subjective question about fair use as it weighs whether an Andy Warhol print infringes a photo of Prince.
Whatever the justices decide will have far-reaching implications not just for photographers and conceptual artists in Warhol’s mold but for creators of all stripes. The court’s first non-software fair use decision since 1994 could shape copyright case law for decades, indicating just how far secondary users must go to feel secure that they sufficiently altered an existing work they used.
Attorneys and academics hope for direction leading to more predictable analysis of whether a new work sufficiently alters the nature of an old one to be fair use. But as with the district and circuit court rulings in the case, their philosophies vary on fundamental levels, opening a range of possible outcomes—a menu with something unnerving for everyone.
The U.S. Court of Appeals for the Second Circuit opinion chided a lower court that found Warhol’s print fair use for playing “art critic.” Yet courts have long grappled for objective rules for delineating between a creator’s derivative rights and transformative fair use, which inherently involves evaluating art, attorneys say.
Transformative use of a work is generally considered fair use. It’s defined as a creator adding “new expression, meaning or message” not found in the original work, according to the 1994 Supreme Court precedent in Campbell v. Acuff-Rose Music Inc.
Judges realize they’re not art critics, but still have to analyze the works, intellectual property attorney Dorothy R. Auth of Cadwalader, Wickersham & Taft LLP said.
“It’s harder to determine a fundamentally different new art purpose without becoming an art critic,” Auth said. “A new test is needed. Reading the Second Circuit decision, it’s clear that the courts are all over the place with this. I think something more objective would be welcome.”
The Supreme Court’s 1994 decision found rap group 2 Live Crew’s parody of “Pretty Woman” didn’t infringe because it transformed the Roy Orbison song. A 2013 case in the Second Circuit added that a work could transform without parody or commentary on the original.
Before codification, the legislative history of fair use made clear that Congress delegated application to the courts, intellectual property law professor Shyamkrishna Balganesh of Columbia University said. But he also said given the current textualist bent of the high court, it may explore a quirk in the legal framework: The Copyright Act’s definition of “derivative” includes works “recast, transformed, or adapted” from an original, to which the original artist has rights.
The court could say “transform” means different things in different contexts, but the statutory analysis could still impact the result, Balganesh said.
“I don’t think there will be a problem with the existence of it,” Balganesh said of transformative fair use. “The question is its scope. It might be circumscribed in terms that make clear where it is not overlapping with” the statutory protection of derivatives.
Beyond Conceptual Art
Before reversal, the U.S. District Court for the Southern District of New York deemed use of Warhol’s colorized print of Lynn Goldsmith’s 1981 photo on a 2016 Vanity Fair cover fair use.
The court said most of the protectable elements of the photograph, such as background and lighting, didn’t appear in Warhol’s work, while the simple pose and Prince’s facial features aren’t protectable. The court also said Warhol transformed Prince’s vulnerable expression to portray a larger-than-life icon.
The Second Circuit found Warhol’s alteration of the photo didn’t transform the work and that it cut into Goldsmith’s licensing market and derivative right. How the high court decides that transformation question should be evaluated could heavily impact not just so-called “appropriation art” and photography, but several other media.
“The disagreement between the district court and the Second Circuit was pretty profound. It’s not fighting on the edges, it’s at the heart of the case,” intellectual property law professor Jason Schultz of New York University, who signed onto a friend-of-the-court brief backing the Warhol Foundation’s Supreme Court bid, said. “What does it mean to adapt or transform a prior work of art?”
Intellectual property attorney Dunstan H. Barnes of McAndrews, Held & Malloy Ltd. wondered if a Warhol victory could mean something like putting a photo through a strong Instagram filter would transform it. He said that while Warhol’s work may have involved substantial creativity, “nowadays you can probably press a button and get a ‘Warhol Effect.’”
He also raised the issue of sampling, where artists “tend to” pay licenses for musical work building blocks that they borrow from another work. Given the creative choices Goldsmith put into her photo “there’s something that doesn’t quite seem fair about” letting Warhol use a clear copy as the foundation for his own portrait.
While some argue art regularly involves making existing building blocks into something new, Barnes said nothing prevents musicians or artists from creating their own beat or portrait.
Most copyright attorneys don’t expect the court to dramatically shift fair use boundaries or reverse the creation of the transformative work doctrine by the unanimous Campbell court. But any new guidance could have a massive impact on gray-area cases that attorneys say aren’t handled consistently, and the court may struggle to create objective guidance in a subjective environment.
Other than clarity on how to evaluate fair use, attorneys and academics generally were unsure what to expect. Intellectual property law professor Mark Lemley of Stanford University noted that the late Justice Ruth Bader Ginsberg’s death and Justice Stephen Breyer’s imminent retirement removed the two justices most interested in copyright law. That “may make everything a little more of a crapshoot,” he said.
Lemley, who joined a brief backing the Warhol Foundation in the Second Circuit, said he could see the court delivering a decision in a way that de-emphasizes transformativeness. If so that could strike at the heart of conceptual art in a way that would “make a lot of people really nervous about the status of their works.”
“The Second Circuit said a court shouldn’t be in the business of judging art, but somebody’s got to decide if this Andy Warhol art is new and transformative,” Lemley said. “And the Supreme Court said in Google v. Oracle that’s something that a judge decides rather than a jury.”
Latham & Watkins LLP represents the foundation. Williams & Connolly LLP represents Goldsmith.
The case is Andy Warhol Found. for the Visual Arts Inc. v. Goldsmith, U.S., No. 21-869.