Andy Warhol Foundation for the Visual Arts v. Goldsmith: Expanding the Degree of Similarity—trimming Transformative Use

• Jurisdiction: United States,Federal
• Author: Alexandra Darraby
• Citation: Vol. 48 No. 3
• Publication year: 2023

ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS V. GOLDSMITH: Expanding the Degree of Similarity1—Trimming Transformative Use

Alexandra Darraby

Art Law Firm

PROCEDURAL SUMMARY OF ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC. V. GOLDSMITH

Justice Sotomayor delivered the majority opinion of the U.S. Supreme Court in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith [Warhol], Justices Gorsuch and Jackson concurred, and Justices Kagan and Roberts dissented.² The Court affirmed the Second Circuit's judgment that the Foundation's use of a 1981 photograph of Prince taken by Lynn Goldsmith was not fair under Section 107 of Title 17 of the U.S. Code.³ Both the Foundation and Goldsmith licensed the photograph—her copyrighted original and the Foundation's unauthorized image from the Prince Series—for magazine covers posthumously memorializing the musician's life and career.⁴

The detailed procedural history of this case is recited elsewhere.⁵ In short, Plaintiff Foundation in 2019 sought and received from the district court a declaratory summary judgment that its licensing of a Warhol-altered image (Orange Prince) from his Prince Series, admittedly sourced to the copyrighted photograph, was fair use. The Second Circuit reversed and remanded, and after rehearing, concluded that the four factors weighed in favor of Goldsmith. The Foundation then petitioned the Supreme Court for certiorari. Certiorari was granted only on the first fair use factor because Petitioner did not challenge that the other three factors weighed in Goldsmith's favor. The Court affirmed the Second Circuit, addressing only the first factor of fair use—purpose and character.⁶ Ironically, as explained below, the opinion is decided more on elements—and merits—of the fourth factor (market effect) than on first factor attributes. This article is integrated and intended to be read with the Opinion Highlights and Sound Bites that offer easy to remember concepts extracted from a long and discursive opinion.

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KEY THEMES

Degree

The Court repeatedly invokes "degree of similarity" as the judicial measure for everything in fair use: factors, elements, and just about everything else, reciting degree more than twenty times in the majority opinion alone. Degree is hardly an objective marker as one person's degree is another's tipping point. The use of degree is not of the Court's own invention and has been relied on by the federal judiciary in prior fair use opinions for more than three decades, most notably in the major Supreme Court music case deciding whether 2 Live Crew's rap version of Roy Orbison's pop ballad was fair use in Campbell v. Acuff Rose Music, Inc.⁷ That Court decided the difference between the musical genres and the copier's twist on the lyrics constituted a parodic use that satisfied the preamble of Section 107, firmly establishing parody within comment and criticism.

Campbell v. Acuff Rose Music, Inc.

Since 1994 the Campbell case has been exhaustively and comprehensively analyzed, commented, cited, relied on, quoted, discussed, and evaluated to such an extent that online legal search results exceed limits. A reasonable conclusion is that little about Campbell remains unsaid, and a reasonable question is why Campbell is sub-headed here under Key Themes. The answer is that the Court in Warhol cites, quotes, discusses, and re-affirms Campbell more than 77 times.

The excessiveness is puzzling in that parodic use is not at issue in Warhol. In the absence of distinguishing Campbell or creating new law around it (which the Court does not do), the Court doth protest too much.⁸ Given that the Court affirms the Second Circuit, and has already upheld and opined on fair use in Google v. Oracle,⁹ it is unclear why the Court granted certiorari in Warhol. The Court could and should have opined concisely. Instead potential valuable guidance and clarity is lost amid digressions, deviations, too lengthy to be included here.¹⁰

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Transformative Use

Aside from reinvesting the well-settled judicial balancing and degree in analyzing fair use, the Court could have used Campbell to distinguish transformative use from its parodic context and musical considerations. What Warhol can be cited for is that newness alone is not enough transformation to support first factor fair use.¹¹ This does not put judicial brakes on transformative use but is a signal that a celebrity guest list and cropping copyrighted works may undoubtedly be new but no longer sufficiently legally transformative.¹² Whether this will take on more or less resonance when the market variations of copyrighted work and copied work are distinct, namely first factor nonprofit and commercial, remains to be tested based on specific facts and circumstances.

Compelling Justification

Transformation may be a narrower road forward but the Court provides copiers a major off-ramp if the secondary use has compelling justification, even when the copy supplants, substitutes and supersedes the original in the copyright owner's derivative markets.¹³ This stunning exclusion ought to pacify and even embolden secondary users.

Objective Perception

The biggest takeaway from the opinion of the Court, and the biggest credit to the Court, are its statements that meaning of purpose and character is to be measured by a "reasonable perception," a more objective standard than the often self-serving statements that infringing defendants and supporting witnesses and parties assert.¹⁴

AUTHOR OPINION

In the opinion of the author, that very nexus and correlation of the first and fourth factors of fair use would have given the Warhol opinion legal legs, and provided direction for the public and judiciary that could have been a significant contribution to fair use jurisprudence.¹⁵ The economics and the markets are a substantial and substantive part of the Warhol majority opinion, notwithstanding the Court's self-imposed express limitation on first factor analysis.¹⁶

The Court declined to connect the dots between first and fourth factors, but first factor fair use in the Warhol case—indeed, fair use under Section 107—cannot be fully evaluated, as if in a vacuum, without acknowledging market effects and understanding market functions. For example, Section 106 derivatives are exclusive rights that correlate to Section 107 market effects. Directly addressing how and to what degree fourth factor economic vectors relate to first factor elements of purpose, character, commercialism/non-profit under the particular facts and circumstances are of major import, but unstated in this case.¹⁷

The Court's most significant contribution is injecting an aspirational level of objectivity into evaluating use on the apparent facts based on "reasonable perceptibility."¹⁸ The Court attempts—with varying success—to remove the persona of the user out of fair use in lieu of focusing on the actual challenged use at issue.¹⁹ The "reasonable perceptibility" of the work is important—and hopefully becomes a standard—because it relates not only to mitigating subjective interpretations of the secondary use, but also facilitates relocating fair use analysis on use, not users.²⁰ The Court formally disposes of the judicial role of art critic and interpreter of meaning, but nonetheless issues its own artistic pronouncements as well as a lively but digressive colloquy with the dissent.²¹

Unfortunately, the Court continues to adhere to an outdated construct of transformative use based on a 20th century law review. Transformation is not in the congressional legislation on fair use nor was it enacted in Section 107 in 1976 or thereafter.²²Transformative use is an obsolete judicial construct confoundingly relied on by a Court that sits in a 21st century technological world and decides issues on software, coding, artificial intelligence, web.3, social media, and more.²³ In 2023, the Court has tweaked

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transformative newness as selective rather than dispositive, which can be interpreted as something new enough and sufficiently removed from derivative markets of the copyright holder to bestow a first factor different purpose and character.

The Court tailored transformative use but did not dispose of it, allowing newness so long as it is not the only criterion nor a dispositive landing place. The narrowed result is a welcome tuck rather than a hoped-for trimmer re-design.

The preemptive effect of declaratory relief filed against those seeking licensing fees for unauthorized use is a concern discussed by this author in this journal that remains...