Bloomberg Law
Oct. 17, 2022, 9:20 AM

Justices Search for Middle Way in Warhol-Prince Fair Use Fight

Kyle Jahner
Kyle Jahner
IP Reporter

US Supreme Court justices invoked “The Shining” as they probed an Andy Warhol print based on a photograph of Prince, and signaled they’ll ponder significant new copyright fair use guidance even if they don’t take an ax to existing case law, attorneys predicted.

The justices last week probed conflicting views on how to weigh the purpose and character of a follow-on use in a dispute over Vanity Fair’s publication of Warhol’s print, which used a Lynn Goldsmith photograph of Prince as its reference. The US Court of Appeals for the Second Circuit previously found that the consideration, the first of four statutory fair use factors, favored Goldsmith, reversing a district court it said had improperly played art critic.

Goldsmith argued the district court holding would eviscerate copyright protections, especially in photography, by allowing free use of valuable creative source material if alterations merely—and subjectively—change the meaning from the original. The Andy Warhol Foundation countered that the Second Circuit incorrectly disregarded the change of meaning in its analysis, an approach that would at least threaten expensive litigation for any artist building new art from another work, chilling expression.

The justices generally didn’t seem sympathetic to the wholesale position of either lower court, and could issue an opinion that neither thrills or devastates either side, attorneys said. They “seemed to look for middle ground,” and there’s “at least a 50-50 chance” the case is remanded, intellectual property attorney Bruce Ewing of Dorsey & Whitney LLP said.

“The overarching point that struck me was that the court does not seem to know, at least as a group, what to do,” Ewing said. “I don’t see either side winning a complete victory based on the questions.”

A split decision could still leave a heavy impact, attorneys say. The justices probed issues including the level of granularity at which the different purposes should be considered and the degree to which a newer work required its use of the older piece for its purpose. Guidance on these questions could substantially affect fair use analyses across creative sectors.

“To me, far more important than who wins, and whether there’s a reversal or remand, is what guidance and clarification the court gives. And there’s a lot of room to do a lot of different things,” intellectual property attorney John Gray of Perkins Coie LLP said. “The court’s decision could and likely will have implications far beyond the industries of photography and fine art.”

“There are no bright lines in the evaluation of fair use and the Supreme Court could, at the very least, clarify how lower courts should apply the ‘transformative’ use analysis,” intellectual property attorney Stephanie Bunting Glaser of Patterson Belknap Webb & Tyler LLP said in an email.

New Meaning, New Purpose?

The Warhol Foundation’s Supreme Court appeal focused on the purpose-and-character factor. It argued that the Second Circuit didn’t properly analyze the new meaning and message imbued by Warhol into his print, a consideration spelled out in Campbell v. Acuff-Rose Music Inc., the high court’s 1994 ruling that rap group 2 Live Crew made fair use of Roy Orbison’s “Oh, Pretty Woman.”

The justices balked at the notion that adding new meaning, alone, could render a follow-on work fair use. They cited creative additions made in book-to-film adaptations like “The Shining” that almost no one suggests could be made without the original creator’s permission.

“The questioning seemed to push back a lot on the idea that fair use could be decided so simply as ‘Is there a new meaning and message?’” Gray said.

Despite the apparent rejection of the Warhol Foundation’s proposed standard, there was also “a lot of discomfort with restraint on creativity that’s inherent in copyright law,” said intellectual property law attorney Nicholas O’Donnell of Sullivan & Worcester LLP. O’Donnell and others noted that the justices echoed the foundation’s concerns that the Second Circuit erred by disregarding the claimed change in meaning, and could tell it to rerun the analysis.

“Nobody liked the Second Circuit opinion, from what I heard,” said O’Donnell, who wrote an amicus brief supporting Goldsmith on behalf of some copyright scholars and organizations. “I think they’re going to remand for something.”

Granularity and Necessity

The character-and-purpose factor typically examines both whether the new work’s purpose is commercial and whether it’s transformative. The Warhol Foundation argued Warhol’s new meaning and message altered the purpose from the original photograph. Goldsmith argued that “licensing an image of Prince to a magazine” represented an identical, commercial purpose, sufficient to tip the factor her way.

Attorneys said the court indicated it may clarify whether the key to transformativeness lies in the nature of its content, or in its use.

“Justices asked, ‘Isn’t there a difference between using both images on a magazine cover about Prince—where the purpose is to depict Prince for profit—versus maybe one of the Warhols hanging in a museum?’” Gray said. “I don’t know what the court is going to do, but it seems like an area ripe for clarification.”

The justices also probed the issue raised in Goldsmith’s brief, which said that a use was fair “only where copying was necessary.” That included an extensive back and forth asking the Goldsmith-backing Justice Department’s counsel what the standard should be, with quibbling over whether the copying should be “essential,” “necessary,” or “highly useful” to potentially qualify as fair use.

Observers noted that Goldsmith counsel Lisa S. Blatt of Williams & Connolly LLP’s position softened somewhat from her brief during oral arguments. She ceded some ground by saying that merely requiring use of the particular original to have been “useful” to the follow-on work could be an acceptable standard—as long as the court rejected the Warhol Foundation’s much lower “meaning-or-message” bar.

“The position taken in her argument was not quite as categorical as the one in her brief, which the foundation pointed out,” Ewing said. “There was a disconnect.”

Justices may attempt to clarify the point, but it will be important to avoid the confusion by failing to explain what a standard like “highly useful” actually means, Gray said. Intellectual property professor Jacob Noti-Victor of Cardozo Law School said the justices seemed “really confused about what adopting that standard would provide as guidance for lower court.”

“I hope the court rejects necessity,” Noti-Victor said.

‘Photography Makes Bad Law’

Noti-Victor said the nature of photography makes the case a potentially troublesome candidate for broad fair-use guidance that also applies to other media like art, music, and film.

“Photography makes bad law,” Noti-Victor said.

“It’s a thin copyright. So much of what makes a photo great are about the photographer’s artistic vision, but so much of it is about the factual world they are photographing, and that’s not protectable.”

With so much controversy about whether Warhol’s artistic choices transformed the work, some said the guidance could limit courts’ leeway to use subjective judgments to decide pivotal “character and purpose” questions on their own, leaving more for juries to tackle. But even that could frustrate the big-picture objectives of both sides, chilling expression while also making enforcing copyrights more expensive, O’Donnell said.

“The whole point is: give people a sense of what they can and can’t do. It would be catastrophic to say the only way to find out if you added a new message is to go to trial,” O’Donnell said.

“If it required expert testimony to determine the level to which meaning or message has been altered, in practical terms it’s impossible for people in real life who are creating visual art.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Adam M. Taylor at ataylor@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com