“Although some questioning by the Justices indicated that they may not be comfortable with the Second Circuit’s ruling…they still questioned Martinez on the proper inquiry on meaning or message for fair use factor one.”
The Supreme Court today heard oral arguments in The Andy Warhol Foundation v. Lynn Goldsmith, a case asking the nation’s highest court to determine whether Warhol’s unlicensed use of Goldsmith’s photographs of pop superstar Prince was a fair use of that copyright-protected photo. Many of the Supreme Court’s questions focused on the scope of the use at issue in the case, as well as the extent of the new meaning or message that a purportedly derivative work must take on before it is considered transformative under factor one of the four-factor fair use test.
Road to SCOTUS
The Andy Warhol Foundation (AWF) petitioned the Court last December, asking it to review a decision of the U.S. Court of Appeals for the Second Circuit that held Warhol’s Prince Series (pictured left) did not constitute fair use of Lynn Goldsmith’s photograph (pictured below right). The Second Circuit held in March 2021 that “the district court erred in its assessment and application of the fair-use factors and the works in question do not qualify as fair use.”
The court further concluded that the Prince Series works were substantially similar to the Goldsmith Photograph “as a matter of law.”
Warhol’s petition argued that “the Second Circuit’s decision…creates a circuit split and casts a cloud of legal uncertainty over an entire genre of visual art.”
In Goldsmith’s latest brief to the Supreme Court, she argued that Warhol was not entitled to use her work without compensation merely because of his reputation. “No one doubts Warhol’s artistic innovations,” said the brief. “But Warhol charged for his art and AWF will continue profiting, including by vigorously asserting Warhol’s copyrights. Fame is not a ticket to trample other artists’ copyrights.”
AWF countered in its September 7 reply brief that “if Warhol’s degree of creative transformation cannot even satisfy the first fair-use factor, little remains of the fair-use defense for artistic works.” It added that Goldsmith’s position “defies precedent and undercuts the First Amendment,” and that “Goldsmith offers her own personal theory of fair use—a copyright-maximalist fantasy never before hinted at in this Court’s precedent.”
The U.S. Government, meanwhile, is backing Goldsmith, arguing that this particular use was not fair because it “served the same purpose—depicting Prince in an article about him published by a popular magazine—for which Goldsmith’s photographs have frequently been used, including under the 1984 Vanity Fair license” and because “Petitioner’s commercial licensing of the Orange Prince image to a popular magazine undermines Goldsmith’s ability to license her photograph,” among other arguments.
AWF Says Warhol’s Artistic Intent ‘Puts Points on the Board’ for Factor One
The oral argument was lively and the Justices seemed engaged and interested in the subject matter. Bruce Ewing of Dorsey & Whitney, who followed the arguments live, told IPWatchdog that it’s “not every day that Supreme Court oral arguments include references to Lord of the Rings (both the books and the movies!), the Syracuse University athletic program, Mork and Mindy, All in the Family, Norman Lear (inaccurately characterized as having passed away, when he just celebrated his 100th birthday), the Mona Lisa (in a red dress, yet), photos of Abraham Lincoln and biographies of George Washington, but today’s oral argument in the case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith included all of that and plenty more.”
Arguing on behalf of AWF was Roman Martinez of Latham & Watkins, whose opening argument period was extended by several questions from the Justices of the Supreme Court. Martinez primarily contended that the transformative meaning of Warhol’s work, the dehumanization of celebrities in pop culture, “puts points on the board” for AWF on factor one of the fair use test, which looks at the purpose and character of the allegedly infringing use. Martinez argued that Supreme Court precedent requires consideration of an allegedly new meaning or message at factor one under Campbell v. Acuff-Rose Music (1994) and as re-affirmed by Google v. Oracle America (2021).
Although some questioning by the Justices indicated that they may not be comfortable with the Second Circuit’s ruling, which nullified any new meaning or message posed by Warhol’s silkscreen prints as transformative in light of the similarities with Goldsmith’s original photograph, they still questioned Martinez on the proper inquiry on meaning or message for factor one. Martinez responded that a new meaning or message in the accused work affects both the purpose and character of the use. In creating the Prince Series, Martinez argued that Warhol’s purpose was to create visual art intended for an audience, and that the work’s character was transformed by Warhol’s commentary on celebrity culture.
Justice Clarence Thomas posed a hypothetical to Martinez to test Martinez’s legal theories as if he were standing in Goldsmith’s shoes. Justice Thomas questioned whether AWF would sue if he took the Orange Prince photo, the particular Warhol work at issue in the 2016 license with Condé Nast that prompted Goldsmith’s lawsuit, and turned it into a banner for Syracuse University football and basketball games while merely adding the words “Go Orange.” Martinez distinguished that hypothetical by arguing that Warhol’s silkscreen process was substantially more creative.
Justice Sonia Sotomayor, who jokingly stepped in as Justice Thomas’ lawyer, noted that Justice Thomas’ banner would have a different commercial purpose than Warhol’s Prince works. She added that she saw the first factor as closely related to the fourth factor of fair use, which looks at the potential impact of the infringing use on the market for the original work and wondered why factor four didn’t completely undermine AWF’s defense as it was operating in Goldsmith’s market by licensing Prince images to magazines. Martinez countered that substantial evidence in the case showed that Warhol’s licensing audience was very different than Goldsmith’s licensing audience, which was seeking photorealistic images of Prince rather than a work with Warhol’s aesthetics.
Respondent Goldsmith Calls Out AWF’s Lack of Justification for Copying
Lisa Blatt of Williams & Connolly, arguing for the respondent Goldsmith, directed the Court several times to consider what she felt was the lack of an adequate justification by AWF to make use of Goldsmith’s work in creating the Prince series. Not only would a decision for AWF “drive a giant hole” through the derivative market for photographers, but Blatt argued it would turn Justice Story’s seminal fair use decision in Folsom v. Marsh (C.C.D.M. 1841) on its head. Blatt also pointed to the wide scope of derivative works in the television sitcom industry that bear little resemblance to the original works, like the All in the Family spin-off The Jeffersons that included very different characters and plot points.
Justices questioned Blatt about the role of expert testimony and other evidentiary showings of a new message or meaning in the accused work, but Blatt directed them to consider the use underlying the case. While Blatt noted that museum display of Warhol’s Prince series would still be protected from infringement liability under 17 U.S.C. § 109, factor four of the fair use test should weigh favorably for Goldsmith on her claim against Warhol’s license with Condé Nast. Blatt also pointed the Court to Justice Kennedy’s concurrence in Campbell, which discussed a targeting requirement for parody that Blatt argued AWF did not satisfy here.
U.S. Government Says That Underlying Work Must Be ‘Essential’ to Qualify as Fair Use
Yaira Dubin, Assistant to the Solicitor General arguing on behalf of the U.S. government, agreed with petitioner AWF that the new meaning or message of an accused work could be relevant in the determination of factor one of the fair use test. However, it was the position of the federal government that “using other artists’ work as a starting point to compete has never been considered fair.” Dubin agreed with Blatt that AWF had not provided adequate justification for its copying, and that AWF’s claim to Warhol’s creativity as transformative was not sufficient in light of famed creators from other creative industries, such as film directors Steven Spielberg and Martin Scorcese, who are required to take licenses from original creators despite any originality in their adaptations.
Justice Elena Kagan asked Dubin to explain the government’s difference with Goldsmith’s position on the necessity of the copying. Whereas Goldsmith’s position was that it must be necessary for Warhol to copy Goldsmith’s original work to reach Warhol’s societal commentary in order to make a fair use defense, Dubin represented that the government’s view was that a fair use defense could be met even if the use of the underlying work were only “highly useful.” Pressed by the Supreme Court Justices on the proper term for the level of necessity of the underlying work to the accused work, Dubin said that the term “essential” would provide the best forward clarity.
Ewing called the case “arguably the most important fair use case of all time,” which is “likely to settle two of the most vexing copyright issues that have bedeviled courts all over the country for decades: to what extent can an author take a prior copyrighted work and incorporate elements of that prior work into a new work under the doctrine of fair use, and what makes that use fair?” Ewing also said that if the Supreme Court decides in favor of AWF, “then the fair use defense is likely to be broadened significantly across a wide range of artistic categories and fact patterns.”
Here are some immediate expert takeaways on today’s arguments sent to IPWatchdog so far:
Dunstan Barnes, McAndrews, Held & Malloy
“The justices seemed keenly aware of the need to balance contemporary artists’ ability to use artistic references to create new creative works versus the rights of copyright holders, including the rights to create derivative works. Goldsmith’s counsel was looking at how a potential decision would impact copyright in areas outside of visual arts, such as movies and books. If potential infringers can broadly state that they are changing the purpose of the original art, there is a risk of gutting copyright protection for original creators.
Towards the end, Justice Gorsuch tried to nail down the government to state its test for fair use. If we side with you and write this opinion, what should ultimately be the test for using a copyrighted work? Should the use of a copyright work be necessary, essential, highly useful, or at least useful? Which one should be the test? After some back and forth, the government attorney settled on necessary or at least useful. However, these two terms seem very different in effect, so if this standard is adopted, it will be interesting to see how lower courts apply it.
The rebuttal argued that respondents had made key concessions and then refocused on the rights of the contemporary artist to be able to create. Will we have a fair answer in the end? It will be very interesting to see how this plays out.”
The Justices grappled with the meaty issues of this case all the while having some fun, with Justice Thomas even admitting that he can be a Prince fan on occasion. It was clear that the Court was seeking more guidance on how to understand a change in “meaning and message,” vis-à-vis the purpose of a piece of work, as contemplated under Factor 1 of the fair use analysis, particularly as to how this would impact artists and photographers, who could fall on either side of the case. It almost seemed as though the Court was considering some sort of spectrum of use, from derivative use that inures to the benefit of the copyright holder, to completely transformative use that is considered “fair,” and finding the gray space between those sides of the spectrum in need of greater clarity. It’s possible the Court may send the case back to the Second Circuit in search for this clarity. Either way, artists and creators of all stripes will be watching closely for this decision as it could impact everything from the mundane (licensing rights) to the sublime (who decides what “art” is).
Preetha Chakrabarti, Crowell & Moring
“The Justices grappled with the meaty issues of this case all the while having some fun, with Justice Thomas even admitting that he can be a Prince fan on occasion. It was clear that the Court was seeking more guidance on how to understand a change in ‘meaning and message,’ vis-à-vis the purpose of a piece of work, as contemplated under Factor 1 of the fair use analysis, particularly as to how this would impact artists and photographers, who could fall on either side of the case. It almost seemed as though the Court was considering some sort of spectrum of use, from derivative use that inures to the benefit of the copyright holder, to completely transformative use that is considered “fair,” and finding the gray space between those sides of the spectrum in need of greater clarity. It’s possible the Court may send the case back to the Second Circuit in search for this clarity. Either way, artists and creators of all stripes will be watching closely for this decision as it could impact everything from the mundane (licensing rights) to the sublime (who decides what ‘art’ is).”
Bruce Ewing, Dorsey & Whitney
“Several Justices asked what would or should happen if the Court ruled in favor of one side or the other on the first fair use factor, since none of the other three fair-use factors had been briefed. The Court gave no clear sense about what would happen next if it ruled for either side, although the prospect of a remand to the Second Circuit or the district court was brought up by a number of Justices, depending on how the case was decided.
The Court peppered the Foundation’s counsel with a wide range of questions, and at times expressed great concern that the test advocated by the Foundation for the first of the Section 107 fair use factors – the purpose and character of the use – cannot just focus on the ‘meaning or message’ of the new work without severely limiting the rights of original creators…. For her part, Goldsmith’s counsel attacked the Foundation’s position as putting the interests of copycats above the purposes of copyright.
The Supreme Court argument did not clarify whether the balance is likely to tip in favor of one right or the other, or how to demarcate the boundaries between a use that is infringing and a use that is fair. The decision, when it comes down, likely in 2023, will surely be an interesting and important read regardless of the outcome.”
“Oral argument in the case was vigorous, with each Justice asking multiple questions. It is, of course, impossible to reliably predict an outcome based on oral argument. But here, the court seems likely to find some middle ground, perhaps reversing and remanding with instruction to apply a slightly different standard than the Second Circuit applied.
Clarification of the standard could provide direction not only to artists and photographers, but also to writers, filmmakers, musicians, social media influencers, and technology companies – anyone who might use someone else’s work as a starting point for something else.
Three areas that seem ripe for clarification from the court are:
- Whether the transformational component of the first fair use factor applies to the specific use of the content or the content itself. Warhol may have intended some form of social commentary when his Prince Series was originally created, but that doesn’t mean the commercial use of one of the works in a magazine article about Prince serves a purpose other than depicting Prince – the same purpose of Goldsmith’s original. Accordingly, while the public display of Warhol’s works may be fair use in a museum, use in a magazine as an aesthetically pleasing depiction of prince may not be fair use.
- Whether the secondary user must have needed the original in order for the subsequent use to be fair use. For paradigmatic fair uses, such as criticism, commentary, education or parody, use of the original work is necessary to effectively achieve the fair purpose. However, Goldsmith argued her photograph was not necessary to Warhol. He was not commenting on her photograph specifically; he simply needed a photograph of Prince as a starting point.
- Whether and to what extent the artist’s intent matters, or whether the “meaning and message” should be evaluated from the perspective of an ordinary observer.”
Erik Kane, Hunton Andrews Kurth
“During oral arguments, the Justices struggled with reconciling the tensions between the statutory right to create derivative works vs. the statutory fair use right. What does it mean for a work to be transformative? Throughout the arguments, the Justices repeatedly made inquiries about the statutory text of the first prong of Section 107 of the Copyright Act that says a court must consider the ‘purpose and character of the use’ of the alleged infringing work. While courts have repeatedly treated that phrase together, the Justices delved into separate meanings for ‘purpose’ and ‘character’. The Petitioner argues that, in view of Campbell, the inquiry must be whether the work has new purpose or meaning. Justice Alito on more than one occasion, inquired into how a court or jury would determine a work’s purpose or meaning. While certain “purposes” like parody, news reporting, or commentary are self-evident, artistic judgment of the subtle differences in meanings between two artistic works is more complicated. While the courts may rely on expert testimony of art critics, even then it creates a slippery slope of what new meaning would justify fair use versus a derivative work that by its nature imposes some new qualitative elements to the original work. While the response may be to apply the fourth fair use factor of whether the secondary work subverts the copyright owner’s market for the original or derivative works, that does not solve the problems with the factor 1 inquiry. Justice Thomas’ Syracuse example of Orange Prince is a key example. Yes, his hypothetical serves a different purpose than Warhol’s original, namely cheering for a particular collegiate team, but is it ‘transformative’ enough to warrant a pass on factor 1? Perhaps where the Court is going is to separate out purpose and character so that whether a secondary work may easily justify a new purpose does not end the inquiry and requires a closer look at the character of the secondary work and whether its proposed use comports with the public policy of fostering creativity.”
Nicholas O’Donnell, Cultural Property and Heritage Law Committee of the International Bar Association and Sullivan & Worcester (see amicus brief here)
“It was an extremely active argument and I think the justices have a lot of ways they could go. My takeaways were that the broad ‘meaning or message’ test advocated by the Warhol Foundation troubled several members of the Court. I think the Court is still very much wrestling with how to articulate the standard going forward.”
Stephen Zralek, Spencer Fane Bone McAllester
“From listening to today’s oral argument, you can tell the justices obviously enjoy this case. For example, we learned that Justice Thomas is a fan of Prince — or, as he qualified it, he ‘was in the 1980s.’ But they also had fun asking hypotheticals involving wildly different mediums of art and creativity. They had hard questions for both sides but seemed especially skeptical about the junior user’s subjective purpose in creating the new work. The Court clearly sees this case as a vehicle in which to clarify one of the most difficult tensions in copyright law: is the junior work a derivative of the original — and thus infringement — or is it a transformative use, in which case it is fair use? This case will likely be the most important copyright case decided by the Supreme Court in almost 30 years, when it decided Campbell v. Acuff-Rose.”
For further analysis of the arguments, also see Sterne Kessler’s live Twitter feed.
Join the Discussion
2 comments so far.
AnonOctober 13, 2022 01:59 pm
What is art? (appears to be a ‘meta’ question, to which, an answer may well impact any “compromise” arrived at by the Justices)
BOctober 13, 2022 11:17 am
Great article. I’m inspired to listen to the oral arguments, and this is one of those borderline issues hotly debated in law school