The Legal
| Citation | Vol. 29 No. 1 Pg. 0014 |
| Publication year | 2023 |
| Pages | 0014 |
GBJ| The Legal
Supreme Court Toughens Requirements for an Accused Work to Be Deemed "Transformative" for Copyright Fair Use Defense Purposes
Given the shifted fair use legal landscape, a secondary work creator trying to decide whether to take a copyright license would do well to consult an experienced copyright attorney to obtain a fair use opinion.
BY MICHAEL A. CICERO
During his life and now posthumously, Prince proved significant not only as a legendary musical artist, but also as a celebrity involved in matters that continue to shape U.S. copyright law.
On May 18, 2023, the U.S. Supreme Court decided the copyright case Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith,[1] which clarified standards for determining whether "something new" can be deemed "transformative," for purposes of weighing toward a finding of "fair use" that would defeat a copyright infringement claim. Times are changing as we witness the proverbial pendulum now swinging toward copyright owners when analyzing a significant fair use factor.
The Court limited its review to a single "fair use" defense factor analyzed by the U.S. Court of Appeals for the Second Circuit, which had held that that the Foundation's licensing to Conde Nast magazine of rights to a W arhol work that, in turn, had been derived from Goldsmith's copyrighted photograph of Prince, was not "fair use" under all four factors recited in § 107 of the Copyright Act.[2] Affirming the Second Circuit’s conclusion that the reviewed factor favored Goldsmith, not the Foundation, the Supreme Court tightened criteria under which an accused work could be deemed “transformative,” thereby increasing the difficulty of prevailing on a “fair use” defense against a charge of copyright infringement.
A brief review of copyright law fundamentals underlying Warhol will promote a clearer understanding of the context surrounding the Court’s “transformative” analysis.
Copyright Law Fundamentals Underlying Warhol
What is a copyright?
A copyright is “a bundle of exclusive rights”[3] bestowed upon a copyright owner to take certain actions concerning a copyrighted work, including but not limited to: “(1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; [and] (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending."[
4
] "[U]nlike patents, which protect novel and useful ideas, copyrights protect 'expression' but not the 'ideas' that lie behind it."[5]What Is a "Derivative Work?"
Prince helped to answer the question. Regarding exclusive right (2), above, the U.S. Copyright Office paraphrased the statutory (17 U.S.C. § 101) definition of a "derivative work" as: "a work based on or derived from one or more already existing works," such as "[a] musical arrangement of a preexisting musical work."[6] As stated by the U.S. District Court for the Northern District of Georgia: "To qualify for a copyright separate from the underlying work, the derivative work must (1) not unlawfully use the preexisting material (the underlying material upon which the derivative work is based) and (2) be sufficiently original."[7] Put another way: "Such a work"”if it is non-infringing and sufficiently original"”qualifies for a separate copyright, although this copyright does not protect the preexisting material employed in the derivative work."[8] The Seventh Circuit in Pickett v. Prince[9] discussed the "non-infringing" requirement (requirement (1) above). There, a maker of a guitar that emulated the shape of Prince's copyrighted symbol (Figure 1, below) was held not to be entitled to own a derivative work copyright for that guitar because Prince never authorized the guitar maker to create any derivative works based upon his symbol.[10]
A fair use determination "is a mixed question of law and fact:" an ultimate conclusion as to whether an accused use was fair is a question of law, but that conclusion may (and usually does) involve "subsidiary factual questions."
What Is "Fair Use?"
"Fair use was traditionally defined as 'a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.'"[11] As codified in 17 U.S.C. § 107, the fair use doctrine comprises four factors courts must consider in evaluating whether an accused act of infringement was "fair:" (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
"Congress 'eschewed a rigid, bright-line approach to fair use.' A court is to apply an 'equitable rule of reason' analysis, guided by [the § 107] factors."[12] A fair use determination "is a mixed question of law and fact:" an ultimate conclusion as to whether an accused use was fair is a question of law, but that conclusion may (and usually does) involve "subsidiary factual questions."[13]
Fair Use Factor 1 and the "Transformative" Inquiry
"[T]he first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use."[14] Absent some other justification for copying, highly similar purposes between respective uses of a copyrighted work and a secondary work, plus a finding that the secondary use was of a commercial nature, will likely cause factor 1 to weigh against a finding of fair use.[15]
In Campbell v. Acuff-Rose Music, Inc. (1994), the Supreme Court introduced the concept of determining whether an accused work is "transformative:"
The central purpose of [factor 1] is to see ... whether the new work merely "supersede[s] the objects" of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is "transformative." Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright, and the more transformative the new work, the less will be the significance of other factors, like commercialism that may weigh against a finding of fair use.[16]
In Google v. Oracle (2021), the Supreme Court extended the "transformative" concept beyond its characterization in Campbell:
Commentators have put the matter more broadly, asking whether the copier's use "fulfill[s] the objective of copyright law to stimulate creativity for public illumination." In answering this question, we...
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