The U.S. Supreme Court will again confront the concept of “transformativeness” and how broadly it should be interpreted in the context of fair use analyses for copyright infringement actions. On March 28, 2022, the Supreme Court granted certiorari in Andy Warhol Foundation v. Goldsmith, a case concerning whether Andy Warhol’s use of Lynn Goldsmith’s photograph of Prince (the musician) to create illustrations in his classic pop art style was fair use.

Procedural History

In 1984, Vanity Fair was writing an article about Prince and wanted to use a photograph that Goldsmith took of him as an artist reference to create an illustration for the article. Goldsmith’s licensing agency granted the magazine a one-time license to use the photograph for this limited purpose. Vanity Fair in turn commissioned Andy Warhol to create an illustration for the article and gave him the Goldsmith photograph as source material. When the article was published, it included Warhol’s artwork together with an attribution to Goldsmith. Unbeknownst to anyone, Warhol also created 15 additional works based on the Goldsmith photograph, known together with the Vanity Fair image as the “Prince Series.”

After Prince died in 2016, Vanity Fair was preparing to publish a special issue about Prince and contacted the Andy Warhol Foundation (AWF) to reuse the print from the 1984 article. But when it learned that there were additional works in the Prince Series, Vanity Fair licensed a different Prince Series image for the tribute magazine cover. When the magazine was published, Goldsmith was not given any credit or attribution. This is when Goldsmith became aware of the Prince Series and contacted AWF about the apparent, unauthorized use of the photograph. About a year later, in April 2017, AWF sued Goldsmith and her licensing agency for a declaratory judgment of non-infringement or, in the alternative, fair use. Goldsmith countersued for copyright infringement.

Warhol comes to the Supreme Court from the U.S. Court of Appeals for the Second Circuit, which reversed the district court finding that Andy Warhol’s paintings (the Prince Series) were a transformative fair use of Goldsmith’s photograph. The district court reasoned that the Prince Series “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” Additionally, the district court found that the Prince Series works “are not market substitutes that have harmed—or have the potential to harm—Goldsmith.”

The Second Circuit reversed, holding that “whether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic—or for that matter, a judge—draws from the work.” Instead, a court should view “the works side-by-side” to determine whether the secondary work has a fundamentally different and new artistic purpose and stands apart from the source material. When the Second Circuit performed that analysis, it found that the Prince Series “retains the essential elements of its source material” and “the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.” Even though the Second Circuit instructed district judges not to act as art critics, it seemed to act contrary to its own instruction and make an aesthetic judgment. It was also persuaded by the fact that “the overarching purpose and function of the two works at issue here is identical, not merely in the broad sense that they are created as works of visual art, but also in the narrow but essential sense that they are portraits of the same person.”

Potential Analyses by the Supreme Court

As the Supreme Court considers this case, it will be guided by two important precedents: Campbell v. Acuff-Rose Music, decided in 1994, in which the Court ruled that a rap, parody version of Roy Orbison’s “Oh, Pretty Woman” is fair use because it added new meaning to the original song, as well as the recent and long-awaited opinion in Google v. Oracle. We previously covered this decision, which concerned Google’s copying 11,500 lines of functional software code from Oracle’s Java APIs to build the Android operating system. The Court held that this was fair use because Google’s purpose in the use—to build a mobile operating system—was transformative. The Court explained that even exact copying of computer code can be considered fair use where the purpose and character of the use are transformative.

Although Google helped to clarify a few points regarding fair use, there are still a lot of questions left for the Supreme Court to address in Warhol, the most important of which will be: can transformativeness, i.e., whether a secondary work has a new meaning or message, be assessed solely on visual similarity without considering intent and audience? Most commentators believe that the Second Circuit’s opinion is in stark contrast to GoogleCampbell, and other circuits’ broad interpretation of “transformativeness.”

Another key question will be: how far-reaching is Google? The opinion repeatedly stated that the case is about “declaring code” and even drew a distinction between that and implementing code. This way, the opinion focused solely on the more functional code—which is entitled a “thinner” level of protection—rather than the more expressive code. The Supreme Court in Warhol therefore could state that Google is limited to functional works such as APIs and is not applicable to creative works. Alternatively, the Supreme Court could rule that Google is another in the line of cases broadly interpreting transformativeness.

Still another question will be whether unrealized licensing opportunities are to be considered an effect on the market for the copyrighted work. Justice Thomas’s dissent in Google emphasized that this is the most important factor in the fair use analysis, and he was persuaded by the fact that before Android, companies paid Oracle’s predecessor millions of dollars for licenses to embed the Java platform in their software, but after Google released its cost-free Android, those licenses were renegotiated at an over 95% discount.

While the Google majority was not influenced by this, and cautioned against considering theoretical licensing markets, the Supreme Court in Warhol may decide differently when it comes to individual artists who have previously licensed their work. For a lot of artists, licensing is how they make money, and copyright law is intended to protect their ability to benefit from their works.

Regardless of the Supreme Court’s decision, Warhol will almost certainly have an impact beyond Andy Warhol. Already, multiple groups of artists—including documentary filmmakers, appropriation artists, and fan artists—have filed amici briefs arguing that adopting the Second Circuit’s interpretation would chill their artistic expression. All of these groups often directly copy from a copyrighted work, but they believe it is fair use because they do so with a unique purpose that transforms the work. For instance, a documentary may present clips sourced from other works. When comparing those clips to the original works side by side, they will look identical. However, if one looks at the documentary holistically with the context and new perspective that the documentary provides, it alters the character of the clip and brings about a new meaning.

This case could also implicate software, specifically creative and expressive software. The APIs at issue in Google were relatively unoriginal, functional and close to mathematics, which cannot be copyrighted. But not all software is like that. The Supreme Court itself in Google pointed out that implementing code is “creative expression,” and that type of software could be affected by the decision in Warhol.

Conclusion

It is difficult for potential users of copyrighted material to know definitively if their use will be considered fair use because each case is decided in a fact-specific way, using a balancing of factors that often provides only limited guidance beyond that case. This is all the more problematic when the interpretation and application of the factors themselves remain unsettled. But with each Supreme Court case concerning fair use, there is hopefully more clarity and less risk. We will be tracking Warhol and posting updates on any developments.