Darraby Glib Notes™ Andy Warhol Foundation Supreme Court Opinion: Highlights and Sound Bites

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

DARRABY GLIB NOTES™1 Andy Warhol Foundation Supreme Court Opinion: Highlights And Sound Bites

Alexandra Darraby

Art Law Firm

The U.S. Supreme Court in May 2023 affirmed the Second Circuit's determination that the Andy Warhol Foundation's licensing one Warhol image from the Warhol Prince series to a magazine commemorating the musician Prince was not fair use of defendant Goldberg's copyrighted original photograph that she licensed to magazines for the same purpose.²The following are selected FAQs.

FAIR USE IS ABOUT USE, NOT USERS—IT'S NOT WHO COPIES BUT HOW THE COPYING IS USED

Fair use analysis is based on the particular use complained of, and a comparison of the particular use at issue by the copyright owner and the secondary user, and not the comparison of the users themselves or their oeuvres, or their relative public standing or where the respective works are positioned in art history.³The Warhol Court agreed with this author who argued in this journal that the body of work of the secondary user—or a court's art critique of that artwork—should not tilt the judicial barometer on fair use or weigh in favor of the copier on the first factor. "Lynne Goldsmith's original works... like those of other photographers, are entitled to copyright protection, even against famous artists."⁴

In Warhol, the use at issue was commercial licensing of musician Prince's portrait on magazines featuring his life, career, and death, a use which both copyright owner and secondary user were actively engaged in and from which they both acquired revenue. There is "no material dispute that both Goldsmith and AWF have sought to license (and indeed have successfully licensed) their respective depictions of Prince to popular print magazines."⁵

Takeaway: Section 107 "fair use" is about use, specifically the challenged use. Uses and users are legally distinguishable for fair use analysis. The "sky is falling" histrionics of museums and institutions, as well as other assorted claims in amici briefs, to the effect that if use were deemed unfair then creative innovation would shut down and public access to art would terminate are not only out

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of pitch but are irrelevant to this case. The Court emphasized it is not opining on use of original works, works in museums, Warhol's works, or even Warhol's Prince series, individually or as a whole.⁶

"IT'S NOT YOU—IT'S ME"7

Fair use is not about the biography or the chops of the secondary user. The Section 106 exclusive rights of the original creator are critical to fair use determination, notably the copyright owner's me-rights for original creators authorized under Section 106 exclusive rights, including derivative rights. The primary creator, as this author argued in this journal 2021 and 2022, is the one whose me-factor in the original work is as integral to "public benefit" of copyright law as secondary use. The Warhol Court echoed this author that public benefit requires recognition, noting the secondary user "has a desire to reproduce [the original work]" based on [the] creative contribution of the original creator.⁸

Takeaway: Fair use jurisprudence is not a competition, or a popularity contest based on ratings and "stats" of secondary users and copyright creators. The smaller stature of Davids compared to secondary-user Goliaths in the judicial arena does not undercut Section 106 exclusive me-rights in the original copyrighted work, including derivatives, subject to exception.⁹

"WHATCHA SEE IS WHATCHA GET"10—"OBJECTIVE PERCEPTION"

To determine use, objective perception replaces artistic intent and external exposition—whether sourced to testimony, affidavits, or declarations from galleries, art critics, artists or opinions of judges themselves—as to what a work means. The reasonably perceptive meaning of purpose and character of use is "an objective inquiry." The Court stated that "the meaning of a secondary work, as reasonably can be perceived, should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original."¹¹

Takeaway: Objectivity in fair use analysis is still aspirational, but as such is a welcome judicial edging to the unbounded fair use territory. The Court has finally acknowledged that after-the-fact expressions of artistic intention or meaning by artists or their supporters—self-serving or otherwise—are no longer the Save keys for fair use or the Undo keys of infringement. This alone is a notable breakthrough. The expressed goal of objectivity coupled with the Court's tailoring of transformative use should reduce judicial dithering on the meaning of art—a message, alas, unheeded.¹²

"NOTHING IS NEW UNDER THE SUN"13—NEWNESS IS NO LONGER THE OPEN GATEWAY TO TRANSFORMATION

The Warhol opinion stands for the important proposition that newness on its own does not transform secondary works. "Even though [Warhol Prince] adds new expression to Goldsmith's photography...in the context of the challenged use, the first fair use factor still favors Goldsmith."¹⁴Newness alone does not change the purpose and character of the use, "although new expression may be relevant to whether a copying use has a sufficiently distinct purpose or character, it is not, without more, dispositive of the first factor."¹⁵

The Court acknowledges that the original creator has made a contribution so valuable that the secondary user decides to use it for free, "desir[ing] to reproduce [the original work]" based on [the] creative contribution of the original.¹⁶ "The conundrum of reliance on transformation...as a talisman of fair use is that the primary creator's work is equally transformative and is as new and different as the assertion of newness...to validate free [fair] use."¹⁷

Takeaway: Newness is the old law and the old saw of transformation. Newness is not the one-stop override to fair use. But for the creation of the copyright author as constitutional originator—who enjoys and is entitled to benefits under the Constitution and Title 17—there would be no secondary use.

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IT'S NOT THE USER'S CLAIM THAT USE IS TRANSFORMATIVE, IT'S WHAT IS REASONABLY AND VISIBLY APPARENT

Artistic intent—proactively or retrospectively—as stated by the artist or critic or by commentary or judicial interpretation "cannot" be the only basis for determining transformative use.¹⁸ "Nothing in the copyright statute calls on judges to speculate about the purpose an artist may have in mind when working on a particular project."¹⁹ The Court did not strip transformative use so much as tailor it to first factor analysis. The Court did make clear that "the subjective intent of the user (or the subjective interpretation of a court) does not determine fair use"²⁰ nor do such user claims alter the objective purpose and character of the use.

Takeaway: Even though the Court closed the door to transformative use on newness alone, the Court did not actually seal off the entrance. However, testimony on intent ex post facto is no longer the I-beam of fair use. If the claim is the dog ate your homework, produce the dog and proffer the slavered paper. Objectivity is the goal.²¹ Clever lawyering to coach witnesses on what the art really means or how to testify as to...