Let’s Go Hazy: Making Sense of Fair Use After WarholMay 24, 2023 – Article
The Supreme Court has spoken, and if content is king, then purpose is . . . Princely? In a 7-2 decision, the Court ruled that the commercial licensing of Andy Warhol’s “Orange Prince” to Condé Nast to illustrate a story about the late musician shared “substantially the same purpose” as the original Lynn Goldsmith photo on which Warhol’s silkscreen was based, and therefore weighed against fair use. The majority opinion was penned by Justice Sotomayor, who matched Justice Kagan’s eloquent yet heated dissent footnote for footnote over the course of an 87-page exchange. Maybe this is what it sounds like when doves cry?
Andy Warhol Foundation v. Goldsmith (“Warhol“) is that relatively rare fair use case in which both the original and follow-on works were more or less directly competing in the same market. More typically, two works aren’t market substitutes, which means that determining whether a secondary use is justified is more difficult. But if you were looking for the Court to provide an easy-to-apply standard for future fair use cases—or any standard at all, really—you won’t find it. Instead, we’re taught that “[w]hether the use of a copyrighted work has a further purpose or different character” is a “matter of degree.” In other words, it’s a good time to be a copyright lawyer.
Some may take solace in the fact that the Court’s actual holding in Warholis fairly narrow, owing in large part to the odd procedural posture in which the case came to the Court. The Andy Warhol Foundation (AWF), successor to Warhol’s rights in the artist’s “Prince Series,” asked the Court to review just one portion of the multi-factor fair use test. Meanwhile, by the time the case reached the Court, photographer Lynn Goldsmith had limited her challenge to AWF’s act of licensing Warhol’s work to Condé Nast for use in a magazine commemorating Prince’s death. Contrary to early reporting from the likes of NPR and The New York Times, the Court did not decide that Warhol infringed Goldsmith’s copyright when he created the Prince Series in the first place. The Court’s limited ruling also means that museums displaying the artwork don’t need to worry that they’ll be served with injunction papers any time soon.
But make no mistake, Warhol v. Goldsmith will be parsed and picked apart for years to come. After all, this is the first time the Court has considered fair use in the creative works context in nearly thirty years. For better or worse, Warhol is now the de facto fair use opinion going forward as lawyers and lower court judges work through its many unresolved questions: How should the “purpose” of a use be determined? How is the “degree of difference” in purpose between two uses measured? What qualifies as a “compelling justification” when a secondary work is used for a similar purpose as the original? Answers are left for other days and other opinions. Until then, here are my five biggest takeaways from the Court’s Warhol decision and what it might mean for fair use going forward.
1. The First Fair Use Factor Focuses On The Justification For A Secondary Use, Not Merely Its Meaning And Message
By now, you’re probably familiar with the facts of Warhol v. Goldsmith. A lot of ink has been spilled (mine included, if you need a refresher) on litigation that ultimately boiled down to whether it was fair use for AWF to license the right to publish Warhol’s artwork based on Goldsmith’s Prince photo.
AWF argued that Warhol’s Prince Series was “transformative” (and therefore served a different “purpose and character” than Goldsmith’s original photo under the first fair use factor) because Warhol’s work conveyed a different “meaning or message.” But the Supreme Court rejected a test that would look solely at whether Warhol’s work could be perceived as having a different aesthetic or new expression when compared to the original. The Court instead focused on AWF’s justification for licensing Warhol’s work to Condé Nast in a magazine commemorating the life of Prince. Put another way, it ain’t what you do, it’s the way that you do it.
For the majority, what was important was that “[b]oth Goldsmith and AWF sold images of Prince (AWF’s copying Goldsmith’s) to magazines to illustrate stories about the celebrity, which is the typical use made of Goldsmith’s photographs.” The Court concluded that “[i]f an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.” Because AWF offered “no persuasive justification for its unauthorized use,” the first fair use factor weighed in Goldsmith’s favor.
“[T]he first fair use factor . . . focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism.”Andy Warhol Foundation For Visual Arts, Inc. v. Goldsmith
The Court’s formulation is a departure from how both of the lower courts in Warhol viewed the case. The district court below found that the Prince Series was transformative because, while Goldsmith’s photo portrays Prince as “not a comfortable person” and a “vulnerable human being,” the Prince Series portrays the musician as an “iconic, larger-than-life figure.” While the Second Circuit disputed this characterization, its first factor assessment still focused on the content of the work, as that court found that “the Prince Series retains the essential elements of the Goldsmith Photograph without significantly adding to or altering those elements.”
Indeed, for years, judges and lawyers involved in fair use cases have trained their arguments on the content of a particular work, often performing feats of verbal gymnastics to explain a proffered meaning and message. As a result of the Court’s opinion in Warhol, much of that effort will now shift to arguments about whether or not the purpose of a particular secondary use is different enough to justify copying. In most cases, a new use doesn’t serve precisely the same role as the original, which means that fair use battles will simply shift to new battlefields.
And just like “meaning and message” before it, “justification” is malleable. Look no further than the Warhol majority opinion itself, which distinguished AWF’s use of Warhol’s Orange Prince from Warhol’s near-verbatim copying of Campbell’s soup can labels. The latter was justified as a “comment about consumerism,” even though Warhol could have achieved a similar comment by copying one of a thousand other product labels, and even though Warhol wasn’t really targeting the underlying Campbell’s artwork as much as he was its subject matter. Still, having already designated Warhol’s “Soup Cans” a paradigmatic example of transformative use just two terms ago in Google v. Oracle, the Court didn’t have much choice but to hold its ground.
2. Each Particular Use Needs To Be Considered On Its Own
A focus on the justification for a secondary use means that whether a follow-on work is fair or not can’t be considered in a vacuum. Instead, according to the Court, each particular use needs to be considered on its own: “The same copying may be fair when used for one purpose but not another.”
Here, Goldsmith’s photo of Prince was used in multiple ways: Andy Warhol used it to create an illustration for a Vanity Fair article. Vanity Fair used it (pursuant to a license) to publish Warhol’s illustration in 1984. Warhol used it to create the other Prince Series works. And AWF used it to license an image of Warhol’s Orange Prince to Condé Nast in 2016.
The Supreme Court limited its analysis to the last of those uses, expressing “no opinion as to the creation, display, or sale of any of the original Prince Series works.” In the context of the Condé Nast license, the Court found that the purpose of Warhol’s image was substantially the same as that of Goldsmith’s photo: “Both are portraits of Prince used in magazines to illustrate stories about Prince.”
The Court’s purpose-driven inquiry means that, going forward, it won’t be enough to ask whether a follow-on work is “fair” at the time of its creation. For example, had AWF licensed “Orange Prince” for use in a magazine to illustrate a story about Warhol instead of Prince, the first factor outcome would likely be different. However, as Justice Kagan noted in dissent, “No man but a blockhead ever wrote but for money”—meaning that an artist may not be inclined to create art in the first place if he can’t commercialize it.
3. Factor One Continues To Swallow Factor Four
When the Supreme Court first decided to consider the Warhol case, I wrote an article that discussed how, in the past 30 years, transformative use has all too often become the end-all, be-all of the fair use inquiry. I suggested that the Supreme Court had an opportunity to restore equilibrium to the fair use doctrine by finding that Andy Warhol’s Prince Series did, in fact, use Lynn Goldsmith’s photo for a new, different, and “transformative” purpose, but that, on balance, the negative effect on Goldsmith’s licensing market weighed against fair use.
The effect on the market is the stuff of the fourth use factor, but the Court ultimately decided to limit its decision in Warhol to the first factor, deciding only the narrow question presented in AWF’s cert petition. That said, in ruling that the first factor weighed against fair use, the Court focused on the fact that because Goldsmith and AWF both served the same licensing markets with their works, Warhol’s “Orange Prince” was effectively a market substitute for Goldsmith’s original. This looks an awful lot like the fourth factor analysis the Court declined to consider. After all, we’ve long been taught that factor four focuses on whether an unauthorized copy brings to the marketplace a “competing substitute for the original, or its derivative, so as to deprive the rights holder of significant revenues because of the likelihood that potential purchasers may opt to acquire the copy in preference to the original.”
While it’s true that economics—particularly the commercial nature of a use—is properly considered in a “purpose and character” determination, it’s hard to read a fair use opinion nowadays without concluding that factor one hasn’t completely taken over the entire the fair use landscape. Unfortunately, I think this trend is only going to continue post-Warhol.
4. Transformative Use Is Still Alive
So where does the Court’s emphasis on purpose and commerciality leave meaning and message? Like much of the Warhol opinion, it’s not entirely clear. On one hand, the Court did acknowledge that the first fair use factor properly considers whether a secondary use “adds something new” to the original, but cautioned that a new meaning or message “alone is not enough for the first factor to favor fair use.” This suggests that a secondary use will require a new and different purpose in addition to a new message, at least in situations in which the secondary use is sufficiently “commercial.”
However, as a practical matter, most uses of another copyrighted work for a new purpose will necessarily also have a new meaning or message. For example, a parody adds a new message for the purpose of poking fun at an original work, while at the same time retaining enough of the original to be recognizable. Likewise, the use of a video clip in a documentary may have a transformative purpose when used to explain the clip’s context, but not if it merely serves the same intrinsic entertainment value as the original work. Therefore, while “transformative purpose” may well replace “transformative use” as the term of choice in the lexicon of copyright opinions, Warhol likely won’t spur a sea change in the actual outcome of most fair use cases.
5. Winners And Losers Post-Warhol
While it’s too early to know how lower courts will decide future fair use cases in the wake of Warhol v. Goldsmith, the Court’s opinion does offer a few indications of the types of secondary uses that are likely to fare better and worse under a “purpose first” regime.
For example, the Court doubled down on the parody vs. satire distinction from its 1994 “Oh, Pretty Woman” decision, Campbell v. Acuff-Rose, a dichotomy that has been criticized by some commentators as arbitrary and artificial. While parody “cannot function unless it conjures up the original,” satire, according to the Court, “can stand on its own two feet” and therefore requires justification for borrowing. This doesn’t mean that satire can’t qualify as fair use, but it does require greater justification.
In an aside that no doubt made the MPA smile, the Court also confirmed that unauthorized derivative works, like book-to-film adaptations, won’t pass muster under the first fair use inquiry merely because they have a different aesthetic than the works they borrow. The Court likely thought it was necessary to clarify this point given that the word “transformative” has been used, not only in the fair use context, but also to define a derivative work (a work that is “recast, transformed, or adapted” from a pre-existing work), which in the absence of fair use is reserved to the copyright owner.
Meanwhile, the Court’s opinion is a pretty clear blow to appropriation art, notwithstanding the core holding, which was ostensibly limited to the licensing context. The Second Circuit’s 2013 opinion in Cariou v. Prince (no relation to the artist formerly known as), may well go down in history as the high water mark for the solicitude given to appropriation artists. Justice Kagan’s dissent notwithstanding, the pendulum has now swung against a perceived elitist approach to fair use in which courts seemingly go out of their way to ascribe meaning and message to the works of famous artists in an effort to protect them as transformative uses.
Finally, what would a copyright blog in 2023 be without a reference to AI-generated content? The impact of Warhol v. Goldsmith on the use of copyrighted works to train AI models is unclear; this is where copyright lawyers will earn their chops. Within an hour of the Supreme Court’s ruling, the Recording Association of America applauded the Court’s opinion, declaring: “We hope those who have relied on distorted—and now discredited—claims of ‘transformative use,’ such as those who use copyrighted works to train artificial intelligence systems without authorization, will revisit their practices in light of this important ruling.” But proponents of training-data-as-fair-use will no doubt point to the fact that the Warhol opinion cited, with approval, the Second Circuit’s decision in the Authors Guild v. Google case, which found that Google’s wholesale scanning of millions of books to create its Google Book Search tool served a transformative purpose that qualified as fair use.
As always, I’d love to hear what you think about the Supreme Court’s Warhol ruling. Drop me a note on copyrightlately.com or @copyrightlately on social media. And be sure to follow our page on LinkedIn. In the meantime, if the de-elevator tries to bring you down, try going up the stairs.