Author: Kevin Madigan

In part one of this blog, we looked at a number of photography and documentary film copyright cases that have been decided since the Andy Warhol Foundation v. Goldsmith opinion was handed down, explaining that some may have come out differently if they were decided before the Supreme Court reined in the transformative use doctrine. We now turn to examining additional post-Warhol cases involving software code, misappropriation artist Richard Prince, another tattoo case, and a few other unique disputes.

The Software Cases

A significant fair use decision in a long-running software infringement case was handed down just two months after Warhol, where a district court, applying the Supreme Court’s analysis, found that a commercial, non-transformative use of computer code weighed heavily against fair use. In Oracle v. Rimini Street (known as Rimini II), the United States District Court for the District of Nevada ruled that Rimini Street repeatedly infringed Oracle’s copyrights, and the court issued a permanent injunction requiring Rimini to immediately and permanently discontinue various support programs and tools that were developed by copying Oracle’s enterprise software.

Assessing the purpose and character of Rimini’s use, the court found that Rimini copied Oracle’s code for the commercial purpose of developing competing products and was done “to save significant time, money, and effort.” Further, the court found that because Rimini’s tools were written to perform the same software-updating tasks that Oracle’s software was used for, the use could not be considered transformative. While the court determined that factor one weighed heavily against fair use, it continued with a thorough analysis of the other fair use factors before concluding that none of them weighed in favor of fair use. The decision is a testament to Warhol’s instruction that whether something is transformative or not does not control a fair use analysis, and that commerciality looms large.

In another software infringement case, Teradyne v. Astronics, a judge in the Central District of California recently granted the defendant’s motion for summary judgment, finding Astronics’ unauthorized use of Teradyne’s automated test equipment (ATE) computer code qualified as fair use. Quoting the Warhol decision, the court explains that “transformativeness is a matter of degree,” and while it found that Astronics’ use of Teradyne’s code was “less than ‘modestly transformative,’” it concluded that the first factor was “in equipoise, with just a slight lean towards fair use.” It’s important to note that the court recognized Warhol’s principle teaching that transformativeness—whether a use be highly or minimally transformative—is not the controlling factor in a factor-one or full fair use analysis. Ultimately, the court weighed the fair use factors appropriately, treating its transformative determination as just one step in its overall fair use analysis.

The Misappropriation Art Cases

One of the most noteworthy post-Warhol developments in fair use jurisprudence came in early 2024 when the notorious appropriation artist, Richard Prince, abruptly agreed to judgments against him in two cases in which he had earlier claimed his unauthorized use of the plaintiff photographers’ works was (among other things) transformative. If you’re not familiar with Richard Prince, suffice it to say that he’s made a career out of appropriating the work of others and often successfully invoking fair use defenses when sued.

In Graham v. Prince, photographer Donald Graham sued Prince in 2015 over the unauthorized use of Graham’s photograph, Rastafarian Smoking a Joint, in a portrait that was featured in a catalog, compilation work, and billboard. In McNatt v. Prince, photographer Eric McNatt sued Prince in 2016 over the unauthorized use of McNatt’s photograph in a portrait that was featured in an exhibition and a book. The district court, which noted the then-pending Supreme Court case, held in favor of the photographers in both cases in May 2023, denying Prince’s and co-defendant art galleries’ motions for summary judgment and finding that the fair use exception did not excuse the infringement.

While that order likely gave Prince and his attorneys pause, the Warhol opinion was handed down just one week later and sent shockwaves through the copyright world. Whatever hope Prince may have had for a decision that would help his case was clearly lost, and the once-reliable but misguided transformative fair use strategy that he and others relied on in the past was now highly tenuous. 

Then, on January 25, 2024, on the eve of the Graham trial, the district court for the Southern District of New York issued final judgments against Prince in both the Graham and McNatt cases. As part of the judgment, Prince was held liable for willful infringement of the photographs and relinquished all defenses, including the fair use defense. This was a remarkable and significant departure from Prince’s history of fighting and prevailing in copyright infringement lawsuits on the basis of fair use, marking a new era in fair use jurisprudence in the wake of Warhol. In both Graham and McNatt, Prince was liable for damages in an amount equal to five times the respective retail prices of the infringing portraits in addition to other costs incurred by the plaintiffs. No doubt the Warhol decision influenced Prince to forego a fair use defense, and the outcome of the cases provide insights into how Warhol will impact future copyright cases involving fair use.

The Other Tattoo Case

Moving on to the other tattoo case—this one where the tattoo artist was the defendant—we have a situation where the court correctly applied portions of the Warhol decision at the summary judgment stage, but nonetheless sent the case to a jury that then came to a questionable fair use conclusion. In Sedlik v. Von Drachenberg, a copyright infringement suit was brought by photographer Jeff Sedlik in 2021 for the unauthorized use of his photo of Miles Davis in the preparation, promotion, and creation of a Miles Davis tattoo. The parties moved for summary judgment in 2022, with Von Drachenberg (“Von D”) arguing (among other things) that the tattoo she based on Sedlik’s photo was “highly transformative” because “it is imbued with a ‘new expression, meaning or message’ that is particular to [the tattoo’s recipient].”

Sedlik submitted a motion for reconsideration soon after the Warhol decision was handed down, and the court—applying the Supreme Court’s analysis—found that Von D’s use was unequivocally not transformative. The order explained that Warhol directs courts to examine the purpose of each use, rather than simply the aesthetic character of the resulting work. Importantly, when considering the creation of the tattoo, the court quotes from Warhol to make clear that “the degree of transformation required to make ‘transformative’ [fair] use of an original must go beyond that required to qualify as a derivative.” It then concluded that Von D’s use did not go beyond that required standard and that “[t]he evidence Defendants previously relied on to meet their burden no longer shows a transformative purpose after Warhol, and there is now an absence of evidence on the issue.”

Despite the clear blow to Von D’s fair use defense, the court (correctly) noted that transformativeness is merely one consideration under the first fair use factor and that triable issues of fact remained for a jury to decide. Unfortunately, the jury—which appeared sympathetic to Von D and undoubtedly had a loose grasp on copyright legal standards—found that the tattoo and some social media posts promoting Von D and her business were not substantially similar to Sedlik’s photograph and that Von D’s uses was not infringing.  

While the outcome is disappointing, especially because of the objective similarities between the works (see comparison below), it was not completely unexpected due to the problems with the jury. However, the courts analysis and application of Warhol was a welcome development, and Sedlik has indicated that he will appeal the decision to the Ninth Circuit.

YouTube Icons, Standards Incorporated into Law, and the “Bad Art Friend” 

Another noteworthy case that has applied Warhol is Stebbins v. Google, a dispute involving the unauthorized use of a YouTube video frame that was found to qualify as fair use. In Stebbins, a YouTuber and Twitch streamer brought infringement claims against another YouTuber who used one video frame (from a four-hour video) on the plaintiff’s YouTube channel as the icon for defendant’s own YouTube channel, which was critical of the plaintiff.

Considering the defendant’s motion to dismiss on fair use grounds, the court conducted a first-factor analysis that relied heavily on Warhol’s “central question” of whether a work merely supersedes the original works or instead add something new, with a further purpose or different character. Determining that the defendant’s use of the video frame was for the clear purpose of criticizing the plaintiff, the court then quotes from Warhol:

Criticism of a work, for instance, ordinarily does not supersede the objects of, or supplant, the work. Rather, it uses the work to serve a distinct end.

As to factor one, the court found that the defendant’s “criticism falls squarely into transformative use, as it serves a different purpose than Plaintiff’s livestream video.” The court went on to find that all four of the fair use factors favored the defendant and dismissed the copyright claims with prejudice. 

Moving to a unique case involving the copying and distribution of privately developed safety standards that were subsequently incorporated into local laws, the U.S. Court of Appeals for the District of Columbia recently affirmed a district court decision that the non-commercial dissemination of such standards constitutes fair use. American Society of Testing Materials (ASTM) v. PublicResource.org (PRO)is a case that’s been winding its way through courts for the better part of a decade after the defendants were sued for copying ASTM’s copyrighted technical standards and displaying them online.

Assessing the purpose and character of PRO’s use, the court cites to Warhol’s explanation that the first factor “asks whether and to what extent the use at issue has a purpose or character different from the original.” It then found that PRO’s purpose was “to provide the public with a free and comprehensive repository of the law”—which it determined was distinct from ASTM’s purpose of “producing standards reflecting industry or engineering best practices.” While the court found that PRO’s use constituted a transformative, non-commercial purpose that weighed factor one in favor of fair use, it did not allow that determination to control its analysis of the remaining factors—which it may have prior to Warhol.

Another post-Warhol case with unique facts is Larson v. Dorland, also known as the “Bad Art Friend” case, which saw the author of a short story bring a declaration of noninfringement claim against the writer of a letter detailing her decision to donate a kidney who claimed that the short story infringed her copyright in the letter. Analyzing the purpose and character of Larson’s use, the District Court for the District of Massachusetts invoked Warhol to settle a disagreement between the parties on the proper framing of the transformative use inquiry. Larson argued that the proper inquiry should be whether the short story, titled The Kindness, taken in its entirety as a short story, serves a distinct purpose to Dorland’s original Facebook post of the letter. Alternatively, Dorland argued that the letter as it exists within the short story is put to the exact same use as Dorland’s original letter. Finding that the law post-Warhol was on Larson’s side, the court explained: 

Applying the Andy Warhol Foundation framework to the facts of this case, the short story itself is the broader framework in which the allegedly infringing material—the letter—appears. Thus, the court must conduct its analysis in line with that final contextual reference point.

The court goes on to find that The Kindness was an obvious criticism of Dorland’s letter, and again citing Warhol, says that criticisms (and parodies) “do not ‘supersede the objects of, or supplant’ an original work in the same way that more flattering follow-on works might do.”

Finally, the court borrowed a term from the Warhol opinion, concluding that Larson’s use constituted an entirely “orthogonal” purpose—meaning it was independent of or irrelevant to Dorland’s purpose. The court’s post-Warhol focus on purpose and character related to the “final contextual reference point” is significant, and it could have a serious impact on other fair use cases, including those involving artificial intelligence, in the near future. 

A Photography Case that Settled after Warhol

A case that applied Warhol’s factor-one analysis in response to a motion for summary judgment, but has since settled, is Campbell v. Gannett. In Campbell, a photographer brought infringement claims against multiple news outlets in 2022 for unauthorized use of her photograph of the first female coach in the National Football League. After the defendants moved for summary judgment, the district court for the Western District of Missouri issued an order finding that the defendants failed to meet their burden of showing they are entitled to judgment as a matter of law on their fair use affirmative defense.

Reaching that decision, the court analyzed the first fair use factor in light of the Warhol decision and found that defendants’ use of the photograph—which involved the posting a high-resolution screengrab of plaintiff’s photo on at least 14 different news publisher websites—was not transformative and that a reasonable trier of fact could conclude that the purpose and character of Defendants’ use of the photo was commercial. Assessing whether the use was transformative, the court explains that “there are no noticeable changes or distinctions, but rather the use was derivative if not virtually identical.” Importantly, the order compares the use at issue to that in Warhol, saying “even assuming the purpose of Defendants’ use was to make the [original photograph] available for commentary and criticism, that purpose itself, in the context of this case, is commercial.” While the case was set to go to a jury, it’s likely that the defendants reconsidered their options after Warhol was applied and decided to settle.

Conclusion

A review of the post-Warhol cases that have applied the Supreme Court’s reining in of transformative fair use reveal a broad spectrum of disputes involving all types of copyrighted works and secondary uses. It’s worth noting that, despite some critics’ claims that Warhol would threaten traditional fair uses, the cases show that clear-cut transformative, non-commercial uses that would have qualified as fair use before Warhol will continue to qualify as such. And while the decisions have come out both for and against fair use across the various cases, the clear takeaway is that courts’ factor-one analyses have become more nuanced since Warhol, and findings of transformativeness (correctly) no longer control the other factors.

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In May of last year, the Supreme Court handed down its much-anticipated fair use decision in Andy Warhol Foundation v. Goldsmith (referred to as Warhol throughout this blog). At the time of the decision, we wrote extensively about the decision itself and its likely impact on fair use jurisprudence in a two-part blog (Part 1 and Part 2). This fair use week, we thought it would be a good time to examine how courts have been applying Warhol to fair use cases that have since been decided, and some that are ongoing.  

There have been at least 18 copyright cases that have been decided since Warhol was handed down—as well as a few ongoing cases—in which a lower court applied the Supreme Court’s fair use analysis. Here is a breakdown of what those cases involve:

• Two cases involve tattoos (one where the plaintiff was the tattoo artist and one where the tattoo artist was the defendant).
• Two cases involve documentary filmmakers as defendants, and not surprisingly, in both of these cases, the use was considered to be a fair use.
• One case involves the use of academic materials for non-commercial educational purposes that was found to be fair use.
• One case involves the use of a YouTube channel “icon” that was found to be transformative and for purposes of criticism.
• Five cases involve unauthorized use of photographs.
• One case involves technical standards that were incorporated by reference into law, the unauthorized distribution of which was found to be fair use.
• Two cases involve claims related to the infringement of software code.
• Two cases involve online publishers as defendants that used images with accompanying text, and, somewhat similar to the Andy Warhol Foundation (AWF) in the Warhol case, since the modifications didn’t comment or criticize the photo itself, the fair use defense was rejected in these cases.
• Two cases involved Richard Prince, the famous misappropriation artist, who before Warhol had successfully asserted a fair use defense, but post-Warhol did not.

With that as backdrop, this two-part blog will examine the application of fair use law post-Warhol. Part one will look at the decisions involving documentary filmmakers and photographers, while part two will cover software, Richard Prince, and others.

The Documentary Film Cases

As noted, there were two cases involving documentary filmmakers as defendants, and in both instances, fair use defenses were raised. As we’ll see in the courts’ analysis and decisions in these cases and a related case, paradigmatic fair uses like those listed in the preamble to Section 107 of the Copyright Act are not threatened in a post-Warhol world.

In Cramer v. Netflix, plaintiff’s tattoo of Joe Exotic of Tiger King fame (made with his permission) appeared on the lefthand corner of the screen for 2.2 seconds along with numerous other images related to Joe Exotic in an episode of Netflix’s second installment of the popular streaming series. The tattoo, along with these related images, were used by Netflix to demonstrate to the audience “the sense of nature and scale of the public’s bizarre reaction to the Joe Exotic phenomenon.”

In response to plaintiff’s copyright infringement suit against Netflix, the court found that Netflix’s use was transformative because the plaintiff’s purpose in creating the tattoo, which was to capitalize of Joe Exotic’s popularity “in order to sell gift certificates,” was fundamentally different than Netflix’s purpose. And while both parties were seeking to “exploit the story and life of Joe Exotic,” Netflix was doing it in a way that qualifies as criticism, commentary or reporting and, under Warhol, did not “supersede the object of the tattoo nor serves as a substitute.” Based on these findings and using Warhol as a guidepost, the court held that the two uses were sufficiently different, and that, under the first fair use factor, Netflix’s use should be considered to be transformative, even though the use was also commercial.

In Kelley v. Morning Bee, a professional photographer, Michael Kelley, whose photographs were displayed in an exhibit titled “Airportraits” in a New Zealand airport, brought an action for copyright infringement against both Morning Bee, the producer of a documentary film about Billie Eilish in which photos from the Airportraits exhibit appear for about 15 seconds in the background, and Apple, the streaming platform on which the film was released. Judge Woods of the U.S. District court for the Southern District of New York ultimately held that the use was both de minimis and, even it wasn’t, that the use qualified as a fair use.

The use here was clearly de minimis. The photos in the exhibit appeared fleetingly in the background and was not the focus of the film. The photos were blurry, obstructed, indiscernible, at angles and often out of the frame. There was no need to even get to the fair use question, but the court did and found that the filmmaker’s use was a prototypical fair use. Under the first factor, the court found that, even though the film was commercial, the “first factor militates strongly in favor of Defendants” because the photographs and the film “serve unquestionably different purposes.”

The court found that the purpose of the photographs was to “comment on and capture the spirit of modern aviation” while the purpose of the film was “documenting Eilish’s life and career” and “showing the life and ascendence to fame of a teenage pop artist.” Therefore, the court found that under Warhol, “rather than ‘supplant[ing] the original,’ the Film ‘adds something new, with further purpose or different character’ to that of the underlying work—the photographs.”

The court also found that the documentary use here furthers the goals of copyright, explaining that:

If documentarians had to obtain licenses for every fleeting, incidental capture of a copyrighted work in the background of any given scene, the incentive to create biographical documentaries that accurately represent a subject’s life and movements would be severely curtailed.

The court then went on to independently evaluate the other factors—without letting the transformativeness in factor one influence or dominate its consideration of these factors—and held that the defendants’ use ultimately qualified as a fair use.

Both the Cramer and Morning Bee cases are typical examples of transformative use, and the court’s analysis and decisions show that the Supreme Court did not eviscerate fair use law in deciding Warhol. The outcome in both these film documentary cases is not terribly surprising, and in all likelihood would have been the same regardless of whether the case was decided pre-or post-Warhol.

Another case worth mentioning here is Wilder v. Hoiland, which, while not involving documentary films, applies Warhol’s analysis to confirm that truly transformative, non-commercial uses that fit more neatly into the categories enumerated in section 107 will likely continue to qualify as fair use. In Wilder, a faculty member at College of the City University of New York sued over the unauthorized use of materials from an academic presentation that were subsequently used by the defendant in a Power Point presentation used at a conference of college professors and administrators. Analyzing the purpose and character of the allegedly infringing use, the district court in the Southern District of New York cited to Warhol’s explanation that:

The ‘central’ question it asks is ‘whether the new work merely “supersede[s] the objects” of the original creation . . . (“supplanting” the original), or instead adds something new, with a further purpose or different character.’”

The court found that the purpose of Hoiland’s use of the materials was educational, of a different nature, and for a different audience, and “therefore was a use that was transformative rather than a ‘usurping’ infringement of the original work.” It’s important to recognize that the court’s analysis did not end with its determination of transformativeness and non-commerciality, but rather went on to weigh the remaining three factors before concluding that fair use applied. Ultimately, the case, along with the documentary cases, confirm that a careful application of Warhol will not threaten the type of uses that the Copyright Act aims to protect as fair use. Rather, it shows that courts engage in a more balanced analysis of each of the four fair use factors instead of having the first factor analysis overtake and render meaningless the weight of the other factors.

Cases Most Like the Facts in Warhol – Photographs Used in News Article

There are three cases with facts very similar to the facts in Warhol, and thus, arguably gives us the best insights into how courts are applying the Supreme Court’s decision: Vogts v. Penske Media Corp., Dermansky v. Hayride Media, and Philpot v. Independent Journal Review. Plaintiffs’ photographs were of celebrity real estate, two local politicians, and Ted Nugent, respectively. The defendants in each case published articles commenting on the subject matter of these photographs, but not commenting on the photographs themselves. The Dermansky case is especially interesting because the case was first filed before the Copyright Claims Board (CCB), but when Hayride opted out of having the CCB hear the case, Dermansky then filed suit in federal court.

In all three cases, the plaintiff was a professional photographer whose work was used in a media publication without authorization. In all three cases, the court found that the use did not comment on or criticize the photograph(s), but rather commented on or criticized the subject matter of the photograph(s). Therefore, in all three cases the purposes of the uses were similar in that they were meant to accompany articles about the subjects of the photographs. This is similar to Warhol, where the silkscreen print was being used as commentary on the musician, Prince, rather than on Goldsmith’s photograph. Finally, in all three cases, the courts concluded, that under Warhol, because the uses were similar and there was insufficient justification provided for using the photograph(s), the use failed to qualify as transformative under the first fair use factor.

Another case involving photographs is Hudson Furniture v. Mizrahi, where a manufacturer and retailer of lighting designs and furniture brought copyright (and other IP) claims against the defendant for posting its copyrighted photographs to a website selling knockoff products. Defendants claimed the first fair use factor weighed in their favor, arguing that the use was transformative because they made the images smaller and posted them to their own website. The court unequivocally rejected that argument, citing to Warhol and explaining that the defendants simply used photographs from Hudson’s websites for advertisement purposes—a use that “was strictly commercial and added nothing.” While the court would have hopefully arrived at the same conclusion before Warhol was decided, the Supreme Court’s clarification of what constitutes new expression, meaning, or message slammed the door on such tenuous transformativeness claims.

It’s very possible that one or more of these photography cases would have been decided differently if they were decided before the Supreme Court’s decision in Warhol. However, the Supreme Court clearly reins in the transformative use doctrine in Warhol and gives clear instructions to lower courts on how transformativeness ought to be evaluated. Without this guidance, these lower courts might have strayed from a proper factor one analysis—as so many other lower courts did pre-Warhol—and misinterpreted transformative use.

In part two of this blog, we’ll look at a few more cases that were decided largely by applying Warhol’s clarification of purpose and character, as well as a few ongoing cases where Warhol is impacting the litigation.

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Yesterday, the Supreme Court, in a 7-2 opinion written by Justice Sonia Sotomayor, found that the purpose and character of the Andy Warhol Foundation’s (AWF) use of Lynn Goldsmith’s photograph did not favor a fair use defense under the first fair use factor. The landmark decision reaffirms a critical tenet of the fair use doctrine—that whether a use is transformative not only doesn’t control a fair use determination, but it also doesn’t control a factor one analysis. Sotomayor’s thoughtful examination of the boundaries of fair use—paired with a recognition of the importance of copyright owners’ right to prepare derivative works—rightfully reins in expansive notions of transformative use by lower courts and others who have misinterpreted the doctrine as first handed down by the Court in Campbell v. Acuff Rose Music almost 30 years ago. Indeed, despite a dissent that claims the decision is taking copyright law in a new direction, the opinion is a clarification of Campbell’s often misconstrued principles.

While some commentors claim the decision is narrow because it addresses a specific situation—use of images for licensing to magazines—the opinion’s (and concurrence’s) affirmation of the limited weight of transformativeness and significance of the derivate works right is anything but narrow. Of course, fair use cases are always limited to the facts in the case, and this case is no different in this regard. But unlike Google v. Oracle, which was clearly limited—the court repeatedly stressed that the nature of the declaring code at issue was unique, explaining that “this code is different from many other types of code” and “embodies a different kind of creativity”–the Warhol decision does not say that the work at issue is unique or that its transformative use analysis is only applicable to a distinct scenario. Those commentors claiming the Warhol decision to be narrow are misconstruing the fact that the court did not, as a matter of procedure, opine on other uses that were not at issue in the case as a statement by the Court that its analysis is inapplicable to other uses. However, nothing in the opinion states that the broad analysis of the first fair use factor itself is limited. For example, it’s not hard to see how the Court’s treatment of transformative use could impact artificial intelligence developers’ approach to their unauthorized copying and ingestion of copyrighted works for training purposes. AI developers who rely heavily on notions of transformative use to support such unauthorized copying and ingestion will now need to drastically reevaluate their approach. 

Background

At issue in the case is a series of 15 silkscreen prints and pencil illustrations that the late appropriation artist, Andy Warhol, based, without authorization, on a photographic portrait of Prince taken by photographer Lynn Goldsmith in 1981. In late 2021, AWF petitioned the Supreme Court to address a question involving the transformative use standard it claims was distorted by the Second Circuit when it found in 2020 that AWF’s use of Goldsmith’s work did not qualify as fair use.

For a full background on the facts and procedure of the case, see this earlier blog. Long story short, in the wake of the Supreme Court’s Google v. Oracle decision, AWF filed a petition for rehearing of the Second Circuit’s decision, claiming that the Second Circuit court was now in direct conflict with the Supreme Court. In August 2021, the Second Circuit issued an amended opinion “emphatically” rejecting petitioner’s claims and reenforcing the clearly limited applicability of Google v. Oracle. While that seemed to be the end of the road for AWF, it then filed a petition for certiorari with the Supreme Court, asking it to resolve the question of:

“[w]hether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material, or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material.”

Despite AWF’s misrepresentation of what the Second Circuit actually said in its opinion, the Supreme Court accepted AWF’s petition in March and there were thirty-seven amicus briefs in the months by a wide range of stakeholders. On October 12, 2022, the Supreme Court heard oral arguments—summarized in this blog—and while the Justices seemed to struggle at times to grasp important issues and ultimately seemed skeptical of AWF’s position that a mere difference in meaning or message constitutes a transformative use.

New Expression, Meaning, or Message Isn’t Enough….and Neither is Transformative Use

The Court’s opinion begins with a direct rebuttal of AWF’s argument that if an allegedly infringing use includes new expression, meaning, or message, it has a different purpose or character and constitutes fair use under the first factor. Sotomayor explains that while new expression, meaning, or message is relevant, it is not dispositive and that a further purpose or different character is a “matter of degree” that must also consider elements like commercialism. This idea of purpose and character being a matter of degree is similar to points made in amicus briefs—including ours and leading law professors’—that explained that first-factor transformativeness must be considered on a “sliding scale,” as it was in Campbell v. Acuff Rose (more on that later). In short, if an allegedly infringing work is highly transformative in purpose—like the enumerated uses in Section 107 of the Copyright Act—the less transformative the character must be, and visa versa.

Sotomayor’s opinion makes clear that not only do the original photograph and Warhol’s copying “share substantially the same purpose” because they were images licensed to magazine stories to depict Prince, but also that Warhol’s use is unequivocally commercial in nature. This combination, along with the fact that AWF “offered no other persuasive justification” for its unauthorized use, weighed the first factor in favor of Goldsmith. Speaking to the point of “justification,” the opinion makes the distinction between copying that is “reasonably necessary”—as is the case for parodies like the 2Live Crew song in Campbell—and copying that is “merely helpful.” Sotomayor explains that when copying is merely helpful to convey a different meaning or message, it cannot be justified under the first fair use factor.   

Perhaps the most important part of the opinion is its clarification that transformative use alone is not dispositive of a fair use finding. Moreover, the Court confirms that it’s only one consideration of many in a first factor analysis. Even Justice Kagan’s dissent acknowledges that transformation should “not dictate a finding of fair use.” This is a crucial point that will hopefully rein in courts that have elevated the transformative use doctrine to make it the most influential element of the fair use test. In fact, an empirical study by Dr. Jiarui Liu reported on transformative use decisions in U.S. copyright history through January 1, 2017 and found that “of all the dispositive decisions that upheld transformative use, 94% eventually led to a finding of fair use” and that “a finding of transformative use overrides findings of commercial purpose and bad faith under factor one, renders irrelevant the issue of whether the original work is unpublished or creative under factor two, stretches the extent of copying permitted under factor three towards 100% verbatim reproduction, and precludes the evidence on damage to the primary or derivative market under factor four even though there exists a well-functioning market for the use.” In other words, since Campbell, lower courts have manipulated and created a Frankenstein of transformative use that improperly swallows up the entirety of the statutory fair use analysis.

Warhol’s clarification of the proper weight afforded to transformative use is not just an indictment of some courts’ past wrongs, it should also be a warning to courts who will soon be faced with questions about whether the use of copyrighted works for AI purposes is transformative and whether it qualifies as fair use. As the opinion notes, the Supreme Court has never held “that any secondary use that is innovative, in some sense, or that a judge or Justice considers to be creative progress consistent with the constitutional objective of copyright, is thereby transformative.”

Fair Use is an Objective Standard

Another critical point Sotomayor’s opinion makes is that “fair use is an objective inquiry into what a user does with an original work, not an inquiry into the subjective intent of the user, or into the meaning or impression that an art critic or judge draws from a work.” Throughout the case, AWF and its experts argued that the Warhol works transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure. But the Supreme Court agreed with the Second Circuit that different meaning or message—and ultimately transformative use—“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.”

This need for objectivity is a point our amicus brief also focused on, explaining that to rely on subjective assessments would allow users to simply make up a purpose, even if it had little to do with the actual original purpose of the secondary work. If the determination of a work’s purpose were based solely on the testimony of the user, a critic, or the opinion of a judge, the test for different character or purposes under the first factor would be rendered meaningless.

Campbell Doesn’t Stand for What AWF Thinks it Does

The Court’s heavy reliance on the Campbell v. Acuff Rose Music case marks a return to the fundamental principles that gave rise to the transformative use test in the first place and a return to the intended careful application of the concept in weighing the first fair use factor. Much of the opinion is dedicated to distinguishing the Warhol facts from the transformative use analysis in Campbell v. Acuff Rose. Sotomayor explains that in Campbell, while 2 Live Crew “without a doubt” transformed Roy Orbison’s song by adding new lyrics and musical elements, such that “Pretty Woman” had a different message and aesthetic, “that did not end the Court’s analysis of the first fair use factor.” The opinion describes how the Supreme Court then went on to determine that 2 Live Crew’s use rose to the level of a parody, with “a distinct purpose of commenting on the original or criticizing it.” Parody and other uses that comment on or criticize the original work are more “justified” in using a work because it furthers the goals of copyright in promoting the progress of the arts “without diminishing the incentive to create.”

In the case of Warhol, AWF never argued the use was a comment on or criticism of the original Goldsmith photograph, and the Court found that (1) Goldsmith’s work and AWF’s “share the same or highly similar purposes,” and (2) dissemination of AWF’s work would run the risk of substitution for Goldsmith’s. In the Court’s view, Campbell and Warhol are easily distinguishable, and despite AWF’s contention to the contrary, Campbell “cannot be read to mean that §107(1) weighs in favor of any use that adds new expression, meaning, or message.”  

Transformative Use Cannot Swallow the Right to Prepare Derivative Works

One of the most impactful parts of the opinion reconciles the relationship between transformative use and the enumerated statutory right of a copyright owner to prepare derivative works. As the opinion notes, the word “transformative” is not found in relation to the fair use doctrine in section 107 of the Copyright Act. Rather, it appears in the definition of derivative works (that a copyright owner has the exclusive right to prepare) and includes “any other form in which a work may be recast, transformed, or adapted.”

The opinion explains that this right cannot be preserved if the degree of transformation required to make transformative use of an original doesn’t go beyond that required to qualify as a derivative. Sotomayor warns that overbroad concepts of transformative use would narrow the derivative right so much that traditional adaptions like musical arrangements, film and stage adaptions, sequels, and spinoffs would be swallowed up.

Justice Gorsuch’s concurring opinion also recognizes that the derivative work right is threatened by expansive notions of transformative use that “risk making a nonsense of the statutory scheme.” The Court’s reinforcement of copyright owners’ right to prepare derivative works is significant step in the right direction in the face of AWF and others who argue for a transformative use interpretation that would all but nullify the right—something the Court calls an “intractable problem.”

Dissent Falls into the Same Traps as AWF

Justice Kagan’s dissent (joined by Chief Justice Roberts) focuses on many of the same irrelevant issues that AWF and its supporters did. It begins with a lesson in Warhol’s fame and significance in the world of modern art—none of which should ever have a bearing on a fair use analysis. It goes on to fall into the trap of subjectivity, opining about the new expression, meaning, and message of Warhol’s “dazzling creativity.”

Ultimately, it warns that the majority’s opinion would “stifle creativity of every sort” and “make our world poorer.” Addressing that hyperbole, Sotomayor simply notes that “[t]hese claims will not age well.” In one of the most powerful passages of the opinion, she writes:

“It will not impoverish our world to require AWF to pay Goldsmith a fraction of the proceeds from its reuse of her copyrighted work. Recall, payments like these are incentives for artists to create original works in the first place.”

Sotomayor’s call for accountability and compensation and her recognition of the incentives that power our copyright system could not be more on point. This is especially true at a time when some AI developers are ignoring available licenses, using massive amounts of copyrighted works without permission, and jeopardizing the incentives for artists to create the very works they claim their AI systems must ingest.

The dissent also speaks to the need for a copyright regime with “escape valves” like fair use that allow other to build on copyrighted material, which Kagan believes are threatened by the majority decision. Sotomayor addresses this head on, explaining that “copyright law is replete with escape valves: the idea–expression distinction; the general rule that facts may not receive protection; the requirement of originality; the legal standard for actionable copying; the limited duration of copyright; and, yes, the defense of fair use, including all its factors.”

Conclusion  

The key takeaway from Court’s opinion is that transformative use does not control the first fair use factor. While most copyright experts understand this, it is a point that has unfortunately been lost on courts in recent years as many have elevated transformative use into a dispositive factor that magically results in a finding of fair use. Sotomayor’s opinion swings the pendulum back to its proper position, explaining the intended context and application of transformative use within factor one, and that the first fair use factor must balance a number of considerations—and even then, must be weighed against the other three factors.

While critics of the decision will inevitably argue that it distorts the law, the reality is that the Court has clarified and confirmed the often-misinterpreted guidance of Campbell. This reaffirmation of the proper weight that should be afforded to transformative use shouldn’t come as a surprise, as other courts have recently begun to recognize that expansive notions transformative use are a “high-water mark.” Warhol assures us that the high water is now receding and will hopefully settle at level that the Supreme Court intended. The decision recognizes this return to a more balanced approach, explaining that it “is consistent with longstanding principles of fair use.” Rather than alter the law in a way that “snuff[s] out the light of Western civilization,” as the dissent implies, the Warhol decision confirms that “existing copyright law, of which today’s opinion is a continuation, is a powerful engine of creativity.”

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On October 12, the Supreme Court heard oral arguments in the highly anticipated transformative use copyright showdown between photographer Lynn Goldsmith and the Andy Warhol Foundation (AWF). The arguments lasted over 90 minutes, with all nine Justices attempting to better understand how “different meaning or message” fits into factor one of a fair use analysis—and what weight transformative use should be afforded overall. The Court engaged in lively debate and pressed counsel for Goldsmith, AWF, and the U.S. Government on the merits of their briefs, but unfortunately some of the most critical issues were glossed over in favor of hypotheticals that weren’t particularly illuminating. While the Justices at times seemed skeptical of AWF’s position that a mere difference in meaning or message constitutes a transformative use, it’s difficult to predict an outcome based on oral arguments—especially with copyright stalwarts Ginsburg and Breyer no longer on the bench.

Background

At issue in the case is a series of 15 silkscreen prints and pencil illustrations that the late appropriation artist, Andy Warhol, based, without authorization, on a photographic portrait of Prince taken by photographer Lynn Goldsmith in 1981. In late 2021, AWF petitioned the Supreme Court to address a question involving the transformative use standard it claims was distorted by the Second Circuit when it found in 2020 that AWF’s use of Goldsmith’s work did not qualify as fair use. In that decision, the Second Circuit reversed and remanded a district court’s fair use holding, finding that courts have misapplied the standard it set forth in Cariou v. Prince and by doing so have greatly diminished the copyright owner’s right to prepare derivative works.

For a full background on the facts and procedure of the case, see this earlier blog. Long story short, in the wake of the Supreme Court’s Google v. Oracle decision, AWF filed a petition for rehearing of the Second Circuit’s decision, claiming that the Second Circuit court was now in direct conflict with the Supreme Court. In August 2021, the Second Circuit issued an amended opinion “emphatically” rejecting petitioner’s claims and reenforcing the clearly limited applicability of Google v. Oracle. While that seemed to be the end of the road for AWF, it then filed a petition for certiorari with the Supreme Court, asking it to resolve the question of:

“[w]hether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material, or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material.”

Despite AWF’s misrepresentation of what the Second Circuit actually said in its opinion, the Supreme Court accepted AWF’s petition in March. Thirty-seven amicus briefs were filed over the summer, and oral arguments were set for October 12.

AWF’s Counsel Doubles Down on Different Meaning or Message

The hearing began with Roman Martinez arguing on behalf of AWF, and in his opening remarks he promoted AWF’s misrepresentation of what the Second Circuit said in its decision. AWF has repeatedly claimed that the Second Circuit rejected any consideration of “different meaning or message” in a factor one analysis. But what the court held was that meaning or message is only part of a more holistic test that—following the text of §107(1) of the Copyright Act—considers the purpose and character of the use. Martinez also said that Warhol’s transformative meaning “puts points on the board” under factor one of the fair use test. It was an interesting statement to make right out of the gate, and one that backs down from AWF’s more hardline position that Campbell v. Acuff-Rose held that transformativeness always satisfies the first factor. Martinez concluded his opening remarks by claiming that a ruling in favor of Goldsmith would be “repugnant” to copyright because it would chill expression and hurt emerging artists who rely on fair use. But that view disregards the harm that would befall all creators if their right to prepare derivative works was invalidated.

Justices Thomas and Sotomayor kicked off questions with an inquiry that goes to the heart of AWF’s tenuous position: couldn’t it be argued that quintessential derivative uses, like adapting a book into a movie, would almost always constitute a different meaning or message? Instead of arguing against that proposition, Martinez said that factor four would most obviously distinguish a “classic example” of a derivative work. Then, when pressed by Sotomayor about AWF’s and Goldsmith’s works serving the same commercial purpose, Martinez claimed that different meaning or message should outweigh any commercial use commonalities.

Justices Thomas, Kagan, and Kavanaugh all picked up on the derivative works paradox, with Kagan explaining that certain derivative uses must involve some level of transformation. While the Justices were slow to make the connection, it’s worth pointing out that “transformed” is in the definition of derivative work in §101 of the Copyright Act but is nowhere to be found in §107. Martinez responded that he doesn’t believe a book-to-movie adaptation inherently includes different meaning or message, and that, again, factor four would step in to protect an author’s right to exploit potential markets for adaptations.

Justice Jackson then asked Martinez how meaning and message fits into the first factor’s purpose and character inquiry. Martinez said different meaning or message impacts both purpose and character of a use, claiming that the purpose of visual art is to convey a certain message to an audience. Jackson pointed out that Martinez was offering a subjective hypothesis about what an artist’s purpose in creating a work might be, which is something that shouldn’t be relied upon in a transformative analysis. That led to a back and forth with Justice Alito about how a court should determine meaning or message, with Martinez saying it should be a combination of a judge’s interpretation—such as that of Justice Souter in Campbell—and evidence offered by the creator and through expert testimony. While that position moves in the right direction towards a more holistic analysis, Martinez stopped short of admitting it should be an objective, reasonable observer test.

Justice Kagan raised the point that this case benefits from hindsight because we recognize Andy Warhol as a game-changing artist and celebrity. What if it was an unknown artist who took a photograph and made very little changes to it? Martinez said that AWF’s position is meant to protect those emerging appropriation artists, but again, AWF’s approach would overwhelmingly favor one type of creator over another.

Justice Thomas proposed a hypothetical that involved him using Warhol’s “Orange Prince” on a Syracuse Orange poster that he waved at a sporting event. (Side note: Thomas said he was a fan of Prince “in the 80s.”) When asked whether AWF would sue him, Martinez said that he would have to conduct a full four-factor analysis and consider whether the transformative nature of the poster upheld the goals of copyright law. He assured the Court that AWF’s “very substantially creative” use passes the test. Unfortunately, Martinez’s subjective opinion of the creativity (or meaning or message) involved in AWF’s use is the exact thing that cannot be relied upon when determining transformative use.

Justice Sotomayor then asked why the fourth factor doesn’t “destroy” AWF’s argument—after all, AWF’s use certainly affected the licensing market and value of Goldsmith’s work. Martinez said that one must look at the differences in the “licensing audience” and “price” of the work in addition to a work’s different meaning or message. However, as Martinez probably well knows, those are not traditional elements considered under the fourth factor.

Justice Jackson turned the discussion back towards the language of the statute, explaining that “purpose” expressly includes whether a work was commercial and that both Goldsmith’s and Warhol’s works served the same commercial purpose. Martinez responded by claiming commerciality is “not the main event.” When asked by Jackson whether AWF would want the Supreme Court to deliver an opinion addressing all four fair use factors, Martinez said he would not, given that the other factors hadn’t been “briefed up.”

Goldsmith’s Counsel Focuses on Preserving the Right to Prepare Derivative Works

Arguing on behalf of Goldsmith, Lisa Blatt’s opening remarks reminded the Court that fair use does not excuse the unauthorized use of a work by someone who simply wants to avoid “paying the customary price or the drudgery of coming up with something fresh.” She stressed that “petitioner’s colloquial definition of transformative is too easy to manipulate,” and it would devastate a wide range of creators and creative industries.

Justice Thomas then asked Blatt why Goldsmith’s brief doesn’t address the “character” prong of §107(1)’s purpose and character factor. Surprisingly, Blatt said that they agree with AWF’s definition of character, and that purpose and character are “very similar”—in this case they both go to the commercial purpose of the use. (for an explanation of the difference—namely that the character inquiry should look to how a user used the preexisting work and the degree to which the preexisting work was altered—see the Copyright Alliance’s amicus brief).

Justice Sotomayor then asked how purpose and character could be assessed without considering meaning or message. Again, neither the Second Circuit nor Goldsmith argues that meaning or message cannot be considered, only that it is merely part of a broader inquiry. Blatt reminded the Court that the Second Circuit simply held that a subjective opinion of different meaning or message alone is not enough to qualify as transformative.

Chief Justice Roberts pressed Blatt on the alleged difference in meaning or message in the purpose of Warhol’s use—i.e., his commentary on celebrity and dehumanization of the subject. Blatt explained that, by definition, a derivative work adds new meaning or message to the original, and that AWF’s position would “drive a giant hole” through the derivative use right. Any spinoff or adaptation, according to Blatt, would qualify as transformative fair use if AWF had its way—which would result in Norman Lear “turning over in his grave.” (Fact check: Norman Lear is still with us.) Blatt also pointed out that photographers and the photography industry would be particularly threatened and potentially “ripped to shreds” by AWF’s transformative theory in an age when anyone can easily alter and adjust a preexisting photo.

Touching on an issue that should have been a greater point of focus during the hearing, Blatt then said that granting one subset of one fair use factor such influence over a fair use determination would force all authors to go into an analysis with “one hand tied behind their back.” As the Copyright Alliance brief makes clear, transformativeness is only part of a factor one analysis, and neither it nor factor one as whole should be afforded undue weight in a full four-factor determination.

Justices Sotomayor and Barrett moved the discussion towards the display of Warhol’s work in museums, which Sotomayor claimed was testament to his transformative use of underlying works. However, that reasoning suffers from the hindsight trap that Kagan raised earlier—it’s easy to look back now and say what Warhol did (at times) was sufficiently transformative as to qualify as fair use, but we cannot adopt AWF’s broader-than-necessary test moving forward. Sotomayor’s reasoning is also lacking for another important reason that Blatt did not address: Sotomayor was referring to Warhol’s body of work as a whole (including portraits of Elvis, Marilyn Monroe, etc.). That analysis focuses on the user (Warhol) and not a specific use, which is what a fair use analysis is all about.

Blatt’s time concluded with a discussion (prompted by Justice Jackson) on how “need” or the necessity to use a particular underlying work should impact a factor one analysis. And while Blatt said that “need” can play a role in fair use analysis, the present case presents a narrower question as to whether different meaning or message alone qualifies a work as transformative. As we’ll see in a moment, the “need” issue comes up again, and significantly so, when the U.S. Government made their case.

Solicitor General’s Office Says AWF’s Use Wasn’t Justified  

Representing the United States, which filed an amicus brief in support of Goldsmith, Assistant to the Solicitor General Yaira Dubin began by explaining that AWF’s use was not justified because AWF has never shown that copying Goldsmith’s creative elements was essential to accomplish a distinct purpose. Dubin went on to say that “using another artist’s work as a starting point to turn around and compete directly with the original has never been considered fair.” Like Blatt, Dubin warned that AWF’s test would destabilize long standing licensing practices in the creative industries.

In response to Chief Justice Roberts’ question of how the Government’s position differs from Goldsmith’s, Dubin said that the Government leaves open the possibility for defendants in other cases to establish their copying was justified for other reasons when the meaning or message of the work is different—which AWF chose not to do. The relevant issue, according to Dubin, is that the purpose of AWF’s use was the same as Goldsmith’s—to depict Prince in an article about Prince. When pressed by Roberts about the changes Warhol made to the photograph, Dubin explained that the changes are the same that accompany any adaptation or transformation of a derivative work and are not sufficient to show transformative purpose under the first factor.

When asked by Justice Jackson if “character” does different work in the factor one analysis than “purpose,” Dubin largely echoed Blatt’s view that they work as a unit and that “character” could be seen to focus more on the commercial nature of the work. Dubin then said that in Campbell the Court considered meaning and message as a way to determine whether the work at issue qualified as a parody and therefore satisfied the first factor.

Turning to the language of the Copyright Act, Dubin explained that copyright owners are granted a specific right to prepare derivative works, and the provision defines derivative works as those in which the preexisting work has been “transformed.” Dubin said that for someone to claim their work should qualify as transformative under the first factor simply for being creative, without offering any justification as to why they needed to use the preexisting work, does not fit within the “safety valve” of fair use.

Justice Alito then asked whether the “need” analysis would change if Prince refused to sit for any other portraits and no one would agree to license a preexisting photograph to Warhol. Dubin said that while there may be scenarios that would result in a better justification for using someone else’s work, that is not the case before the court. Here, Vanity Fair provided Warhol with an image it had licensed because it was a good photograph that suited Warhol’s reproductive style. Additionally, Dubin explained, Goldsmith offered evidence of the existence of other photos available at the time that Warhol could have licensed to create his prints—something he had done in other projects. 

In response to a question from Justice Kavanaugh about the impact AWF’s theory would have on other creative industries, Dubin explained that a key incentive for many creators is the opportunity to license their works for derivative uses. Any test in which different meaning or message renders fair use presumptive would make it all but impossible for copyright owners to secure their right to prepare derivate works.

Justice Jackson then asked whether—if the Court was to affirm the Second Circuit’s decision—it should cabin its decision to the first factor or conduct a full four-factor analysis. Dubin said that while the Court could affirm solely on the first factor, given that is how AWF framed the case in the question presented, it could also provide guidance for lower courts analyzing the other factors on a case-by-case basis. She also added that if the Court believes that the Second Circuit didn’t properly consider different meaning or message—something that the Government does not agree with—that it could vacate. 

Revisiting the “need” issue, Dubin’s time concluded with a robust and lengthy discussion, prompted by Justices Kagan and Kavanaugh, over whether it’s the Government’s position that a use must be “necessary,” “essential,” or just “highly useful” to be justified. The Justices peppered Dubin with questions about how to interpret and apply these terms. To explain why the Government thought that “essential” or “necessary” standing alone was not the proper standard, Dubin gave the example of a book review, explaining that using excerpts from the book would not be essential but incorporating the excerpts into the review would be “at least highly useful.” There was discussion of a concerning “at least useful” standard, which may be too easily misinterpreted or broadly defined by courts. Ultimately, Dubin said that while there are some cases in which “necessary or at least useful” may work, in most cases the standard should be that the use is “essential.”

Conclusion

The hearing wrapped up with a short rebuttal from AWF’s counsel, during which he argued that because Goldsmith is attempting to “excommunicate” meaning and message from the first factor, that the Court should reverse or vacate. He once again said that the creation of Warhol-like appropriation works are at risk, and once again failed to address the risk to preexisting works without which appropriation artists could not create.

Ultimately, the hearing was a bit disjointed, and many critical issues got little-to-no airtime. Some of those issues include:

• The purposes listed in the preamble of §107 and their impact on the scope of transformative use, if any;
• The fact that transformative use is not in the Copyright Act (but the derivative right is);
• The fact that a finding of transformative use has become such a controlling factor in fair use cases that it makes the fourth and other factors irrelevant; and
• The fact that Congress used the word “character,” so it must have some meaning that is different than “purpose.”

A decision in the case is expected sometime in early 2023, and here’s hoping the new year brings with it an opinion that addresses the issues above, rejects AWF’s misguided test, upholds creators’ rights to prepare derivative works, and provides a clearer roadmap for lower courts applying fair use than they have today.

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Oral arguments in Andy Warhol Foundation v. Lynn Goldsmith are scheduled for October 12, marking the second time in as many years the Supreme Court will hear a fair use case. Unlike Google v. Oracle, which resulted in a fair use determination that was limited to a specific type of software code, the Warhol case could have a wide-ranging impact on the fair use doctrine and what it means for a work to be transformative. Of course, given the narrow question presented, the Court may choose to remand the case to the Second Circuit without issuing any groundbreaking transformative use opinion.

Regardless, industry associations, law professors, artist organizations, the U.S. government, and many others submitted amicus briefs over the last two months hoping to educate, influence, and inform the Court. Most recently, twenty amicus briefs were filed in support of the respondent, photographer Lynn Goldsmith, bringing to end a busy briefing period. After reviewing all thirty-seven briefs, some common arguments and themes stand out that reveal Andy Warhol Foundation’s (AWF) untenable position on transformative use. Below are a few key takeaways:

• AWF and its amici promote a misguided test for transformative use that has no foundation in the Copyright Act.
• Amicus briefs filed neutrally and in support of Goldsmith explain that court-created, overbroad interpretations of the transformative use doctrine override copyright owners’ express statutory right to prepare derivative works.
• Many of the briefs warn against subjective assessments of what constitutes transformative use and instead urge for the adoption of a test based on how a work is reasonably perceived by an objective observer. 
• A diverse range of amici detail the widespread harm AWF’s test would have on licensing markets if adopted.

Briefs in Support of Goldsmith Form a United Front Against AWF

A diverse range of amici filing briefs in support of Goldsmith include individual creators, law professors, artists’ rights groups, legal organizations, creative industry associations, a U.S. Senator, the U.S. government, and many others. The briefs touch on various issues, but they all reject AWF’s transformative use test as having no support in the law.

Many of the amicus briefs were filed by individual photographers or photographer organizations like the American Society of Media Photographers (ASMP). ASMP’s brief is quick to point out the highly artistic, expressive nature of Goldsmith’s photos (and of photography in general) and how appropriation art must comment on the underlying work in order to demonstrate a different character and purpose under the first fair use factor. Jeff Sedlik, a professional photographer and copyright expert, submitted a brief that warns that AWF’s boundless interpretation of fair use poses an existential threat to the business of photography, as it would lead to a flood of unlicensed derivative uses and “further the urban myth that photographs are free for the taking.”

Joining the photographers in their concern for the survival of licensing markets and the right to prepare derivative works are the Association of American Publishers (AAP), the Recording Industry Association of American (RIAA), and the National Music Publishers’ Association (NMPA). AAP’s brief explains that publishers rely on the derivative use right “not only to invest in and distribute as many original works as possible, but also to undertake the operational costs associated with bringing those works to the market,” which ultimately leads to the furtherance of more voices and free expression. Outlining the harm to the music industry that would result from the adoption of AWF’s broad test, the RIAA and NMPA brief warns that the robust licensing market for secondary use of sound recordings (or sampling) would shift to a misappropriation free-for-all and “make obtaining and paying for licenses for numerous uses of copyrighted sound recordings, compositions, and other works unnecessary.”

Four different briefs were filed by copyright law professors in support of Goldsmith, many of which detail how vague notions of transformative use have come to dominate fair use analyses in recent years. A brief filed by Professors Peter Menell, Jane Ginsburg, and Shyam Balganesh  explains that courts have gone too far and “substituted amorphous ‘transformativeness’ inquiry for the statutory framework and factors that Congress and Campbell prescribe.” Similar to the suggestion made in the Copyright Alliance brief, the professors’ brief proposes a “sliding scale for calibrating the degree of transformativeness against other statutory considerations.” This sliding scale or spectrum approach would, among other things, look to whether a transformative use has a commercial purpose and the extent to which the transformative use affects existing or potential future markets. This re-focusing on the 4^th factor is something many amici urge the Court the court to do, as it would reduce the undue weight courts have afforded to transformative use under the first factor and return to the balanced four-factor test that Congress intended.

Highlighting the importance of licensing markets under the fourth factor, a brief by Professor Guy Rub explains that “the creation of new works for commercial purposes, which are substantially similar to existing copyright-protected works, should typically not be considered fair if a license that permits such use is offered by the copyright owner, is readily available, but never sought and secured.” According to Professor Rub, allowing unlicensed uses when there is merely added meaning or message would “undermine a core building block of multiple creative industries” by rending licensing markets obsolete. This concern is shared by Professor Philippa Loengard, whose brief warns that focusing exclusively on meaning or message means that almost any transformation can be argued to have changed an artwork’s meaning and threaten to decimate an artist’s statutory derivative work right.

Another brief, submitted by copyright and art law professor Terry Kogan, focuses on the objective versus subjective transformative use test that many other amici touch on. Kogan insists that a transformative analysis must only assess objective, verifiable evidence based on “perceivable attributes and common understandings of the artworks in issue.” AWF’s test which only looks to meaning or message, according to Kogan, invites subjective opinions of individuals and should never be dispositive of transformative use or fair use. Kogan also makes an important point that comes up in many of the briefs: the notion that because Warhol’s prints are “recognizable as a Warhol” they should be considered transformative runs contrary to legal principles. There is not, and should not be, a celebrity infringer exception to copyright laws, and the status or fame of the alleged infringer should never factor into an assessment of the secondary work’s value.

Rounding out the copyright scholars’ support for Goldsmith is a brief by Professor Zvi Rosen, which provides a detailed history of the development of the statutory fair use factors and the right to prepare derivative works. Professor Rosen traces the evolution of the derivative use right from its origins in mid-nineteenth century treatises and the Copyright Acts of 1870 and 1909, up to its formalization (along with the fair use doctrine) leading up to the 1976 Act. The brief explains that since the 1976 Act, expanding theories of transformative use threaten to overwhelm the statutory text. Professor Rosen urges that the Second Circuit’s decision be affirmed, as it is reflective of the historical background and represents a straightforward application of the four fair use factors.

Senator Marsha Blackburn (R-TN), a constant supporter of creators’ rights, filed a brief in support of Goldsmith that focuses on Congress’s intent in drafting the Copyright Act, which is “principally designed to protect an artist’s right against improper copying or imitation.” Pointing out that the text of Section 107 makes no reference to meaning or message, Senator Blackburn’s brief warns that AWF’s overbroad transformative use test ignores factor one’s consideration of whether a use is commercial and negates the fourth factor. The brief, like many others, urges a return to a holistic four factor analysis that protects the rights of all creators.

Picking up on a theme of many briefs in support of Goldsmith, the U.S. government—with the support of the U.S. Copyright Office—filed a brief warning that treating “purported new meaning and message as sufficient under Section 107(1) would dramatically expand the scope of fair use.” It explains that, by eliminating licensing opportunities, AWF’s proposed rule would seriously diminish the ability of Goldsmith and other photographers and creators to reap the rewards of their own expression. The brief then refutes a key mischaracterization AWF makes regarding the Second Circuit’s decision—that a work cannot be transformative if the essential elements of its source material remain recognizable. This distortion of the Second Circuit’s ruling is something that AWF’s amici have also tried to promulgate in an attempt to categorize the holding as restrictive of fair uses and free speech. But the government’s brief discredits that position, explaining that Second Circuit found that the problem was not simply that the essential elements of the Goldsmith photograph were recognizable, but that AWF used those elements for the same purpose as in the Goldsmith photograph itself.

The government’s brief concludes by rejecting AWF’s attempt to raise First Amendment concerns, explaining that “a user of a copyrighted work has no First Amendment right to exploit another’s expression.” In the government’s view, the public value tied to the dissemination of works of appropriation does not entitle the appropriator to use another’s work “without paying the fair price.” This reference to licensing is a critical point made by many amici, and it’s one that reflects the need for a full four-factor analysis that is not overridden by expansive notions of transformative use.

Neutral Briefs Focus on a Correct Interpretation of the Narrow Question Presented

Eight briefs, including the Copyright Alliance’s, were filed neutrally. Rather than try to directly weigh in on whether AWF’s appropriation qualifies as fair use, these briefs seek to educate the Court on a proper interpretation of the Copyright Act, and many propose alternate tests or standards for determining transformative use. The Copyright Alliance brief, which I recently summarized in detail, sets out guidelines a court should follow in a transformative use analysis that would preserve a copyright owner’s right to prepare derivative works and serve the foundational copyright goals of promoting the progress of the sciences and useful arts.

Expanding on a critical point made by many amici, the Authors Guild’s brief stresses that a transformative use analysis cannot replace a full four factor fair use analysis, lest it “dilute derivative-work rights and distort and expand fair use into an uncontrollable gaping hole in copyright protection.” Another key theme in the Authors Guild’s brief is the scope and degree of authors’ reliance on their derivative works right and how AWF’s proposed standard would effectively nullify that right, resulting in loss of revenue for authors and publishers. Finally, the brief proposes a transformative use test that, rather than ask whether a secondary work is recognizably derived from the original, instead focuses on whether the value of the secondary work derives from the entertainment and aesthetic value of the original. Such a determination, the brief explains, should not turn on a judge’s or critic’s assessment, but rather how such value is “reasonably perceived.”

Library Futures, an organization founded to push the agenda of copyright skeptics, submitted a neutral brief that immediately mischaracterizes fair use as a “right,” rather than a statutory exception to a copyright owner’s rights. The brief asks the Court not to undermine the last twenty-five years of transformative use jurisprudence—the same jurisprudence that is increasingly recognized by courts, commentators, and stakeholders as having swung the pendulum so far that the derivative use right has been all but erased. The brief claims that the Second Circuit’s decision threatens the ability of libraries and archives to display works “from well-known artists who adapt source material in a way that changes its meaning and message, while leaving the source material recognizable.” But the brief chooses to ignore that such displays, by a qualified library or archive, would almost certainly be permitted through either a full four-factor fair use analysis or the exceptions for libraries found in section 108 of the Copyright Act.

Countering the views of AWF and its amici are neutral briefs from the Motion Picture Association (MPA) and the American Intellectual Property Law Association (AIPLA). MPA’s brief makes clear that there’s no support in the Copyright Act (or elsewhere) for AWF’s interpretation of transformative use, which reflects a greater trend towards a “freestanding, amorphous concept untethered from both the text of Section 107 and the common-law principles that provision codified.” It urges the Court to clarify the scope of transformative use in a way that ensures the effectiveness of the derivative work right, which protects paradigmatic categories of secondary uses in the film industry: spinoffs and sequels. AIPLA’s brief also discusses the undue influence transformative use now has in fair use determinations, citing to empirical data that shows that when a court determines a use is transformative, it finds in favor of fair use 94% of the time. Like many others, the AIPLA brief urges the Court to clarify that work’s purpose or meaning must be determined based on the reasonable perception of that work and cannot depend solely on the subjective opinions of individuals.

Briefs in Support of AWF Miss the Mark (and Misstate the Law)

The nine briefs filed in support of AWF come from some usual suspects—organizations and professors who routinely advocate for weaker copyright laws—as well as appropriators of copyrighted works who would prefer broader fair use exceptions. The problem with nearly all the briefs is that they misrepresent the Second Circuit’s opinion and support AWF’s misguided position that a work qualifies as transformative under the first fair use factor if it merely adds a “new meaning or message.”

For example, a brief by art law professors claims that the Second Circuit held that visual works that are facially similar can never differ in their purpose and can never convey a different expression, meaning or message. However, the Second Circuit’s opinion contains no such absolutisms. Instead, it makes clear that new meaning or message cannot be based on the subjective assessment of an artist, critic, or judge.

An appropriation artists’ brief claims that modern art practices require a broad interpretation of different meaning or message, and that anything less would chill creative expression. It also argues against any “visual-similarity” analysis for infringement disputes surrounding photographs, claiming that all art that incorporates preexisting images would be found infringing. However, their arguments ignore the fact that alleged infringers can still raise a fair use defense even if works are found substantially similar, particularly for the educational uses the amici believe will be threatened.

Indeed, the Authors Alliance brief makes this very point when it says “Goldsmith may have made out a prima facie case that the Warhol works infringed the derivative work right because they were substantially similar to the Goldsmith photograph, but the fair use defense remains available under this Court’s rulings.” (emphasis added). However, like many of AWF’s amici, the Authors Alliance erroneously claims that the Second Circuit held that a work found to be an infringing derivative can never qualify as a fair use. Their brief also tries to argue the Second Circuit’s holding conflicts with the Supreme Court’s Google v. Oracle decision, which held that Google’s “highly creative and innovative” use of Oracle’s API qualified as fair use. Whether AWF’s use of Goldsmith’s work is “highly creative and innovative” is debatable, but regardless, the Supreme Court could not have been clearer about the limited applicability of its decision in Google.

Another brief, filed by a group of law professors, proposes a test that at first glance seems to move towards a more objective and reasonable standard by leaving the determination of what the new meaning or message is up to a “reasonable audience.” But “reasonable audience” or, as the Authors Alliance brief suggests, “relevant artistic community” is a slippery slope that moves away from a purely objective observer standard and back towards the subjective assessment of whether there is a new meaning or message from the point of view of a particular group. It’s not hard to imagine an alleged infringer like AWF presenting a court with the expert opinions of hand-picked, likeminded “experts” who it claims represent a relevant audience or artistic community.

Not surprisingly, the Electronic Frontier Foundation filed a brief making absurd claims about copyright being “weaponized” against free speech. It’s not worth responding their tired anti-copyright talking points in this blog, which we recently addressed here, but suffice it to say that First Amendment safeguards remain an integral part of fair use analyses. A rejection of AWF’s overbroad transformative use test will not change that.

Conclusion

The diverse range of individuals and organizations—including creators, lawyers, government officials, and professors whose interests lie in the proper application of the law—that filed briefs expressly rejecting AWF and its amici’s arguments is telling. There’s consensus among many of these amici that the question presented in AWF’s petition misrepresents the Second Circuit’s decision and promotes an untenable transformative use test that would swallow a copyright owner’s right to prepare derivative works. And while AWF is not without its own supporters, they’re comprised of groups whose arguments have no basis in the statute and do not further the fundamental goals copyright law. Hopefully the Supreme Court recognizes as much and hands down a sensible and sustainable transformative use decision.  

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It’s not often that amicus briefs are filed at the summary judgment stage of a trial in district court, but the stakes are high in a case that could have a lasting impact on the ability of copyright owners to protect and control their works. Over the past few weeks, briefs have been filed on both sides in Hachette Book Group, Inc. v. Internet Archive, a case challenging the Internet Archive’s (IA) so-called “controlled digital lending” (CDL) of massive amounts of copyright protected works.

Most recently, briefs were filed by creator organizations, copyright scholars, international rightsholder groups, and the Copyright Alliance in support of the plaintiff publishers’ motion for summary judgement. And while the briefs vary in focus, they share an underlying message: the Internet Archive’s practices are clearly infringing, do not qualify as fair use, and would devastate creators and creative industries if sanctioned by the court.  

Copyright Scholars Say There’s No Exemption for IA’s Practices

A brief filed by a group of copyright law professors begins by stating that the signatories are interested in ensuring copyright law is interpreted in a manner true to its foundations so that “creativity, dissemination of works, and innovation will continue to flourish.” Explaining that the IA’s “lending” practice has no foundation in copyright’s constitutional and statutory foundations, the brief details how the IA and its amici invented the CDL theory because they know there’s no existing exception to copyright that would allow for its practice of mass scanning and distribution.

The brief goes on to describe how the IA and its amici have tried to convince the court (and the public) that fair use “steps in” to cover situations involving digital reproductions that are not explicitly addressed by the first sale provisions of section 109 of the Copyright Act. But the scholars refute that theory as nothing more than the IA’s attempt to manufacture a wide-ranging exception for its own benefit, calling out the IA and its amici for arguing that “two copyright ‘wrongs’ can make a right.”

Indeed, this mischaracterization of sections 107 and 109 of the Copyright Act is something that copyright experts and commenters have pointed out since CDL was introduced in a white paper in 2018, and the arguments the IA and its amici make now ring just as hollow as they did then. Unfortunately, the IA has taken a page out of the playbook of many tech companies by doing what they want without permission, claiming its for the greater public good, and justifying it after the fact through spurious legal theories.

Citing to ample judicial precedent, the scholars explain that fair use is no defense when unauthorized reproduction and digital distribution disrupts a well-developed market and diminishes compensation to rightsholders and authors. The Internet Archive’s CDL practice results in those exact consequences, and the scholars warn that no “self-defined policy” promoted only by those who stand to benefit from it should be sanctioned. The brief concludes by making a point that’s found in many of the briefs in support of the publishers: the Internet Archive and its amici are not the arbiters of copyright law, and only Congress has the authority to consider expanding the Copyright Act’s limitations and exceptions. 

Rightsholders Warn that IA’s Practices Violate International Copyright Law

A group of international rightsholder organizations—including the International Publishers Association, the International Confederation of Societies of Authors and Composers, the International Federation of Film Producers Associations, and others—submitted a brief that reflects their interest in ensuring the U.S. is in compliance with its obligations under international copyright and related rights treaties. The brief explains that the treaties to which the U.S. is party not only guarantee copyright owners certain exclusive rights, but also establish limits on the scope of limitations and exceptions to those rights. Addressing the IA’s “lending” practice, the rightsholder groups make clear that it “squarely infringes” the exclusive rights of the plaintiffs and that qualifying CDL as fair use would run afoul of the standards established by international copyright treaties.

The brief goes on to identify two key concerns for international rightsholders.

• A decision in favor of the IA “would severely limit the practical ability of rightsholders…to enforce their rights effectively against an Internet platform engaged in unauthorized copying and dissemination of protected works on an industrial scale and thereby threaten to place the U.S. in breach of its international obligations and responsibilities,” and
• If U.S. law is perceived to allow entities like the IA to function without restraint, there would be a spillover effect in countries that already have lax enforcement measures.

It should be noted that while other countries have limitations and exceptions to copyright law, U.S.-style fair use has not been widely adopted. The brief describes the “three-step test” that restricts limitations and exceptions that can be imposed on the rights granted to copyright owners in countries that are party to the Berne Convention (and three other core international treaties). That test allows for unauthorized reproduction only (1) in certain special cases, (2) provided that such reproduction does not conflict with a normal exploitation of the work, and (3) if it does not unreasonably prejudice the legitimate interests of the author.

The brief explains that the IA’s practices fail this test resoundingly because they (1) put the U.S. in direct conflict with its international treaty obligations, (2) are out of line with the application of exceptions regarding public lending in the EU and elsewhere, and (3) set a dangerous global precedent that would compromise the ability of rightsholders to manage the digital lending and eBook markets for their content. The brief argues that the conduct of the IA violates exclusive reproduction, derivative work, and making available rights under the laws of the European Union and does not guarantee the minimum standards of protection required by international treaties.

Ultimately, the brief warns that if the IA’s standard of fair use takes hold, the broader global rightsholder community will suffer and the U.S. would be out of step with the rest of the world. While the IA and its supporters may not like to admit it, it’s important to understand that because U.S.-style fair use is not the norm abroad, expansive fair use theories that would result in fewer protections for rightsholders would almost certainly be rejected in other countries. Not only that, but the U.S. could be found to be in violation of multiple international treaties if such theories were authorized.

Authors Groups Describe Devasting Impact of IA’s Practices

A large coalition of creator groups—led by the Authors Guild, but also including photographer, dramatists, and visual artist groups—filed a brief that focuses on the significant harm the IA’s practices have caused (and will continue to cause) if condoned by the court. The brief begins by explaining that the IA’s practices are not transformative, do not qualify as fair use, and are totally irreconcilable with the fundamental principles of copyright law. While it doesn’t rehash the extensive arguments against fair use that the plaintiff publishers make in their brief, it does highlight an important point that other amici do as well: the IA is using literary works in their entirety for their original intended purpose and is simply providing a free substitute for licensed eBook lending. The fact that there’s no transformative use and there’s market harm weigh the first and fourth fair use factors—the most important in the analysis—heavily against the Internet Archive.

The brief describes the harm that the IA’s practices cause to all of the amici’s members, especially those who are part of the “long tail” of older published works that earn most of their revenue from licensed electronic uses rather than sales of new copies. And therein lies a critical flaw of the IA’s CDL theory. Part of their argument is that their unauthorized distribution is made up of mostly older books that have lost market value, and so the fourth fair use factor should favor CDL. However, as the brief explains, if the IA’s CDL practice is sanctioned, more libraries will abandon eBook licensing for older titles and thereby hurt the authors who rely the most on that licensing revenue. At the end of the day, a completely free “library,” whether it offers physical or digital books, would create a direct market substitute for the licensed lending that provides royalties to authors.

Copyright Alliance Warns of Far-Reaching Harm to Creative Industries

The Copyright Alliance submitted a brief to address the far-reaching legal and practical consequences the AI’s practices would have not only on books and the livelihoods of authors and publishers, but all other types of copyrighted works, creative professionals, and creative industries. The brief begins by explaining that the IA’s practices do not fit within the bounds of fair use because the works created by this practice serve the exact same purpose as the works they infringe. Additionally, we note that the first-sale doctrine under section 109 does not support the IA’s position, as it does not permit a physical work to be digitized and distributed.

Turning to section 108, which allows for qualified libraries to reproduce and distribute works when there is no indirect commercial advantage or interference with functional markets, our brief explains how the IA’s excessive digital copying and distribution clearly exceeds 108’s conditions. As a private actor, operating entirely online and distributing massive amounts of copyrighted works, the IA falls well outside of the Congressionally considered limitations in section 108 that are meant for traditional community libraries.

While the IA likes to speak grandly about access and the greater public interest its CDL practice serves, our brief highlights the practical considerations and real-world consequences it conveniently ignores. The reality is that if CDL continues on and expands to other works—namely digital versions of music, film, video games, and visual arts—existing markets will be flooded with free alternatives and the incentives to create and distribute new works to the public would be destroyed.

As our brief details, the music and film industries in particular have invested heavily in providing the public with content in a digital format that can be listened to or viewed from any device, anytime and anywhere. These industries contribute massively to the U.S. economy, and they rely on valid licensing regimes to recoup investments, fund future projects, and safeguard the incomes of all who work for them. The IA’s theory of fair use that permits the distribution of unauthorized digital copies of works to users would not only destroy licensing markets, but it would cripple enforcement efforts by providing pirates with a colorable defense for their thievery.

The Copyright Alliance brief concludes by reminding the court that only Congress is empowered to decide whether and under what circumstances to expand exceptions that allow non-rightsholders to digitize and distribute books. It may seem like an obvious point to make, but it’s critical that the court understand that the IA and its supporters have concocted a one-sided fair use theory out of whole cloth, and in doing so have completely disregarded the interest of copyright owners and others who rely on a sensible interpretation of the Copyright Act.

What’s Next?

On September 2, the Internet Archive is scheduled to file a brief in opposition to the publishers’ motion for summary judgement, which will then be followed by the publishers’ opposition brief in early October. The parties have also requested oral arguments be heard in the matter, although a date has not yet been set by the court. Eventually, the court will issue an order in response to the dueling motions for summary judgement, and while it’s difficult to predict how the Judge will rule, we’re hopeful that court will grant the publishers motion and confirm that the Internet Archive’s CDL practices do not qualify as fair use and are an affront to the fundamental principles of copyright law.

If you aren’t already a member of the Copyright Alliance, you can join today by completing our Individual Creator Members membership form! Members gain access to monthly newsletters, educational webinars, and so much more — all for free!

On October 12, the U.S. Supreme Court will hear oral arguments in Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, a case that could have a lasting impact on transformative use analyses and copyright owners’ derivative use right. Earlier this month, the Andy Warhol Foundation (AWF) filed its opening brief in the case, asking the Court to embrace a transformative use test that has no foundation in the Copyright Act or case law. The Copyright Alliance filed an amicus brief this past week explaining AWF’s misguided approach and the harm the overbroad standard it promotes would inflict on copyright owners and creativity. Focusing on the importance of interpreting the Copyright Act in a manner preserves a copyright owner’s right to prepare derivative works, our brief lays out a set of guidelines that must be taken into account in a transformative use analysis.

Background

In late 2021, AWF petitioned the Supreme Court to address a question involving the transformative use standard it claims was distorted by the Second Circuit when it found in 2020 that AWF’s use of Goldsmith’s work did not qualify as fair use. In that decision, the Second Circuit reversed and remanded a district court’s fair use holding, finding that courts have misapplied the standard it set forth in Cariou v. Prince and by doing so have greatly diminished the copyright owner’s right to control the creation of derivative works.

At issue in the case is a series of 15 silkscreen prints and pencil illustrations that the late appropriation artist, Andy Warhol, based, without authorization, on a photographic portrait of Prince taken by photographer, Lynn Goldsmith, in 1981. Rejecting the district court’s transformative use analysis, the Second Circuit found that in order for a secondary use to be transformative enough under the first factor of the fair use test, the work must be “fundamentally different and new” and embody an “entirely different artistic purpose” so that it “stands apart from the raw material”—all of which the court found the Warhol prints failed to do. The opinion provided welcome guidance on how to analyze what constitutes transformative use (a court-created subtest of the first factor of the fair use test) as opposed to derivative use (falling under the derivate work right, a fundamental right granted by the Copyright Act), a crucial clarification that corrected case law and commentary that have increasingly blurred the line between transformative use and derivative works in recent years, all but eliminating a copyright owner’s exclusive right to prepare derivative works.

Then, in the wake of the Supreme Court’s Google v. Oracle decision, AWF filed a petition for rehearing of the Second Circuit’s decision, claiming that the Second Circuit court was now in direct conflict with the high Court. In August 2021, the Second Circuit issued an amended opinion “emphatically” rejecting petitioner’s claims and reenforcing the clearly limited applicability of Google v. Oracle. While that seemed to be the end of the road for AWF, it then filed a petition for certiorari with the Supreme Court, asking it to resolve the question of:

“[w]hether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material, or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material.”

Despite AWF’s misrepresentation of what the Second Circuit actually said in its opinion, the Supreme Court accepted AWF’s petition in March, jump-starting amicus efforts from a wide range of stakeholders.

While some have framed the case as the Supreme Court’s next big fair use showdown, the question presented only involves the transformative use standard—which is merely one part of the first of four fair use factors courts must consider. As our brief explains, the question presented can and should be resolved without a conclusive determination of whether AWF’s use qualifies as a fair use, and it’s for that reason that the Copyright Alliance filed in support of neither party. Additionally, by focusing on the narrow question presented, the brief cautions against the increasingly elevated weight courts have afforded to transformative use analyses and emphasizes the continued importance of the other three factors of the fair use test.

AWF’s Overbroad Test Would Nullify the Derivative Work Right

The backdrop to this case is a growing tension between a copyright owner’s exclusive right to control the creation of derivative works found in Section 106 of the Copyright Act and the exception to that right which permits a third party to use preexisting copyrighted works to make new works that qualify as fair use pursuant to Section 107 of the Copyright Act. Whether a work is “transformative”—a term that does not appear in Section 107—has come to dominate fair use analyses to a point where it unduly encroaches on and engulfs the copyright owner’s exclusive right to control the creation of derivative works. As our brief explains, elevating the importance of the transformative use inquiry improperly favors a judicial interpretation of a statute over that statute’s own express language and is contrary to the language and purpose of the Copyright Act.

Moreover, AWF promotes a standard that asks only whether a secondary work conveys a “difference in meaning or message.” But whether a work conveys a different meaning or message is only part of the equation, and AWF ignores the fact that the Supreme Court in Campbell v. Acuff Rose articulated a more holistic test that requires a subsequent use of a preexisting work to have a “further purpose or different character” from the original. Campbell also made clear that the transformative use inquiry is a means of interpreting Section 107 to determine whether the secondary work’s purpose and character differs sufficiently from the original’s so as not to “‘supersede[] the objects’ of the original creation” and thus impinge on the copyright owner’s exclusive rights.

If AWF’s standard is accepted, practically any secondary use would qualify as transformative and a copyright owner’s statutory right to create and control derivative works would be rendered meaningless. But by limiting the scope of uses that are considered “transformative” so as not to limit the derivative work right, the Court can strike that correct balance between both Sections 106 and 107 of the Copyright Act.

Google v. Oracle’s Fair Use Analysis is Not Applicable

AWF argues that the Supreme Court’s decision in Google v. Oracle supports its misguided standard and “establish[es] a straightforward rule” on transformative use. However, that opinion is unequivocally clear that its fair use analysis was limited to the specific type of software code at issue and that its decision does not “change[] the nature of” traditional copyright concepts nor “overturn or modify … earlier cases involving fair use.”

In Google, the Court explained that it was addressing the distinct realities surrounding the creation and dissemination of technological works, noting that a broad view of “purpose” would “limit the scope of fair use in the functional context of computer programs.” (emphasis added). While the Court’s context-specific consideration was fitting in the special case of software and represents the flexibility the fair use analysis affords, it cannot be applied generally to other transformative use analyses.

AWF’s Standard Would Upend Creative Industries

As our brief explains, the creative industries rely on a balance between licensing the derivative works right and making fair use of preexisting works. It’s a balance that’s fostered the creative output of large industries down to individual creators, and it’s one that incentivizes the dissemination of a diverse array of creative expression for the public to enjoy. Given that a determination of transformative use almost always leads to a finding in favor of fair use, AWF’s proposed standard would disrupt robust derivative rights licensing markets that drive our vibrant creative ecosystem.

Take for example, storytelling industries like film, theater, books, and video games. These industries pay authors for the right to make adaptations of their works, allowing the owners of the preexisting works to reap the benefits of the creativity in those works and incentivizing authors to create new works that might also be licensed for different adaptations. Film and television adaptations in particular—which often involve the licensing of existing works such as books and screenplays—are paradigmatic examples of derivative works that might suddenly qualify as transformative under AWF’s test by merely adding new meaning, message, or expression.

In the music industry, there is a healthy market for the use of preexisting sound recordings in ways that do not comment on or criticize them, as source material for new sound recordings through processes known as sampling, subsampling, remixing, stemming, or mashing up. Sampling or remixing often alters the prior song in at least a minimal way, often by adding new expression. Under AWF’s test, sampling would almost always qualify as transformative, and as a consequence, copyright owners would see their sound recordings sampled and reused without any control over or payment for those uses.

AWF’s test would also disrupt markets for the licensing of photographs and other visual art works. All a secondary user would have to do is slightly alter a photograph and claim new expression and new meaning—for instance, by using a simple tool like Adobe Photoshop or a readily available Instagram filter to darken the image to communicate a meaning of dread. The original photographer would be unable to prevent such use or be compensated for their creativity, effectively gutting the photography and visual art licensing market.

Finally, AWF’s test would also have a devastating impact on how copyrighted works are used with new technologies. As companies continue to develop “metaverses,” users will likely soon be able to view recorded performances of their favorite musicians, model their avatars after their favorite film or TV characters, or see their favorite artworks transformed into three dimensions. Under AWF’s test, it’s possible that any movement from the preexisting work into these new technologies could be transformative. It is critical that creators retain their rights when there’s merely movement of a creative work from traditional mediums into the virtual space.

The Supreme Court Should Articulate a Transformative Use Standard Grounded in the Language and Purpose of the Copyright Act

Ultimately, our brief urges the Court to articulate a standard for a transformative use inquiry that incorporates the following principles, all of which are grounded in the language and purpose of the Copyright Act.

• Where the derivative use right and transformative use tests overlap, the derivative work right must retain primacy.

If the test for determining the scope of the derivative work right and the test for determining the scope of transformative use conflict, the derivative work right should prevail. When a user “transforms” a preexisting work, the ensuing product is a derivative work subject to the exclusive control of the copyright owner. That express statutory right should have primacy over what qualifies as transformative use for the fair use defense.

• Courts must consider both the purpose and the character of the secondary use.

The language of the first factor in Section 107—which requires consideration of “purpose and character” of the use at issue—must frame any consideration of whether a use is transformative. This two-pronged test starts with consideration of the classically permissible purposes are embodied in the preamble to Section 107, which lists criticism, comment, news reporting, teaching, scholarship, or research. These purposes should guide the analysis of whether a secondary work has a purpose sufficient to justify the taking. As to the second prong, the character of the work must be sufficiently altered so it does not supersede the original and must constitute more than a simple change in medium.

Courts should consider on a sliding scale both whether the use was for a transformative purpose—in other words, whether the preexisting work was used for a reason closely tied to one of the examples in the preamble of Section 107—and whether the character of the use was such that the preexisting work was sufficiently altered so that the secondary work does not supersede the original. This sliding scale would reflect that the more compelling the purpose of the use, the less altered the character need be, and vice versa. Therefore, where a secondary work is for a purpose that highly justifies its use by being aligned closely with the examples in the preamble to Section 107, it may be transformative even without alteration. Alternatively, a work’s character may be so significantly altered that, despite having a less-justifying purpose, it is still transformative.

• The analysis of a transformative purpose and character cannot rely on subjective assessments.

A transformative use analysis must be done objectively, without consideration of the subjective assessments of the artist, experts, or the judge. Additionally, the transformative use analysis cannot consider the status or identity of the artist, or the commercial success of a work.

• The transformative use analysis cannot replace the fourth factor.

Nothing in a transformative use analysis should be seen as a substitute for a robust analysis of the fourth fair use factor, which considers the effect on the market for the copyrighted work. As the Court in Campbell made clear by remanding for further consideration of the fourth factor rather than relying on a finding of transformative use to find the parody song fair use, the first and fourth factors, though related, are independently necessary for the fair use analysis.

Conclusion

In the coming months, more briefs will be filed and more stakeholders will attempt to sway the Court towards their interpretation of transformative use. As the Court considers the question presented, it’s critical that it recognizes that the parameters of transformative use must be defined in a manner that preserves a copyright holder’s exclusive right to prepare derivative works. This case also presents the Court with an opportunity to reduce courts’ overreliance on a transformative standard that has come to dominate fair use analyses by confirming the continued importance of the other three factors of the fair use test. For the sake of all copyright owners and creators, we hope it does just that.

If you aren’t already a member of the Copyright Alliance, you can join today by completing our Individual Creator Members membership form! Members gain access to monthly newsletters, educational webinars, and so much more — all for free!

On March 18, Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT) introduced the SMART (Strengthening Measures to Advance Rights Technologies) Copyright Act of 2022. The bill makes amendments to existing section 512(i) and adds a new section—section 514—to the Copyright Act, which establishes a triennial public rulemaking process through which the Librarian of Congress will publicly designate certain technical measures (or designated technical measures, known as DTMs). A summary of the bill and the support it has garnered from the copyright community can be found in our earlier blog.

In response to the SMART Copyright Act, the usual group of anti-copyright organizations turned to the same playbook they’ve been using for more than a decade to oppose any efforts to help creators combat infringement or enforce their rights. The responses are as predictable as they are divorced from facts, and most of them rely on the rhetorical tactic that one cannot prove a negative. Outlandish predictions and scare tactics are substituted for good-faith debate, and the following is just a sample of their favorite plays:

Play 1: Insist that piracy is not a problem.

Most would admit that online piracy is an enduring problem, but there are some who absurdly try to claim that piracy does not and has never posed a real threat to creators. For example, the Library Copyright Alliance submitted comments in response to the Copyright Office’s Notice of Inquiry on Technical Measures asserting that “online infringement no longer poses an existential threat to the content industries, to the extent it ever did.” It’s a brash statement which is entirely contradicted by data-driven evidence revealing that piracy continues to inflict substantial harm on copyright owners and creators.

Recent reports show that despite the ever-increasing availability of legal content, online piracy remains rampant. While some forms of online infringement, such as peer-to-peer torrent downloading, may be decreasing, this is mainly because piracy has migrated to illegal streaming, which now dominates the piracy landscape and inflicts massive harm on copyright owners and the creative industries that create hundreds of thousands of jobs and contribute billions to the U.S. economy.

 A 2019 study on the impact of digital piracy found that digital video piracy causes lost domestic revenues of at least $29.2 billion and as much as $71.0 billion annually, and that it results in losses to the U.S. economy of between 230,000 and 560,000 jobs and between $47.5 billion and $115.3 billion in reduced gross domestic product (GDP) each year. These are staggering numbers, and yet they don’t capture the hard-to-measure impact on independent creators who often don’t have the resources to monitor for or report infringement. It’s baffling that some can continue to claim with a straight face that piracy isn’t a problem, and yet that’s exactly what organizations like the Library Copyright Alliance are doing.

Play 2:  Demand perfection in order to avoid doing anything at all.

Through mostly anecdotal “evidence,” copyright opponents attempt to poke holes in every new approach by predicting various, often extreme, hypothetical consequences as a way to claim that the new solution will never work. In their minds, unless a proposal is perfect, there’s no point in even considering it. It’s a rather hypocritical position when you consider that these same groups are big supporters of various laws and technologies that are far from perfect. Take the fair use exception in the Copyright Act, for example. Courts routinely get fair use cases wrong. Does that mean we should throw out the fair use doctrine because it’s not perfect? Of course not.

Specifically, technical measures currently employed by platforms like YouTube and Facebook do not work perfectly, but they implement these measures because it is in their interest to protect the rights of at least some creators. Provisions like the SMART Copyright Act strive to improve upon these measures, inviting all stakeholders to contribute to that end. But instead of sincere participation, these groups trot out a litany of hypothetical negative results, insist that we let the perfect be the enemy of the good, and pretend that they have given the matter serious consideration.

Play 3: Say we want compromise but never come to the table.

Tactics like the above are designed to sink proposals rather than negotiate in good faith. It is especially frustrating when we consider the time and effort that copyright owners have dedicated over the years to listening to the concerns of service providers and user communities and working towards compromises that ensure copyright reforms do not have unintended consequences. But the rhetoric employed by the critics intentionally obfuscates the truth about the legislative process.

For example, the SMART Copyright Act language presently contained in Section 514 was part of Section 512 in the initial drafts of the bill. When platforms, including Google and Amazon, complained that this would add a new requirement that could jeopardize their safe harbor protection, and requested that the rulemaking be altered so that failure to comply would not impact the safe harbor, their requests were accommodated. Yet, even after that compromise, the service provider community remains stubbornly opposed, moving the chess pieces and complaining that the bill does not address every possible concern—real or imagined—they choose to raise.  

We should remember that the SMART Copyright Act was introduced this year because for nearly a quarter century platforms and other stakeholders have refused to collaborate on standard technical measures, as Congress envisioned when the DMCA was drafted. This includes their unwillingness to participate meaningfully in the Copyright Office’s current technical measures consultations. As we noted in testimony before the Senate Subcommittee on Intellectual Property, organizations representing online service providers often talk about their willingness to work with stakeholders and Congress,  yet when copyright owners reach out to them to discuss possible approaches, they are always unresponsive.

Play 4: Repeat the slogan that Copyright enforcement is censorship.

The organization Re:Create released a statement just after the SMART Act’s introduction that claims the bill would “censor free expression online.” Predictably, Re:Create fails to explain how or why this is likely to happen. Going even further, the Electronic Frontier Foundation (EFF) claims in a recent blog that the SMART Act will result in the same censorship of the internet that occurs in China and Iran. Pretty scary stuff, huh? After all no wants to be subject to a regime as repressive as those in China or Iran. The message being sent here is clear: Don’t worry about the details just hurry up and tell your congressman you want them to oppose the SMART Act or anything like it!

It would be nice if Re:Create or EFF acknowledged that the SMART Copyright Act incorporates a number of safeguards that address potential abuses, including careful consideration by the Librarian of Congress of “the impact a technical measure may have on criticism, comment, news reporting, teaching, scholarship, research, increasing information sharing, or other relevant public interest considerations.” But that’s not in the playbook.

Play 5: Label efforts to improve copyright enforcement unconstitutional.

Unsatisfied by merely raising the specter of censorship, those who oppose copyright enforcement improvements typically invoke the Constitution in an attempt to derail legislative efforts. For example, in its statement on the SMART Copyright Act, Public Knowledge (PK) claims that the bill creates an “unconstitutional delegation of authority to a non-expert agency within the legislative branch.”  

This is not the first time that Public Knowledge and EFF have claimed that some aspect of copyright enforcement is unconstitutional. For example, they make similar claims about section 1201, the anti-circumvention provisions in the Digital Millennium Copyright Act (DMCA). But their constitutional challenges to section 1201 have been soundly rejected in court. In 2021, the U.S. District Court for the District of Columbia issued an opinion making clear that it is in the government’s interest to protect copyrighted works online and that section 1201 is “unrelated to the suppression of free expression.”

It is highly unlikely that a constitutional challenge to the triennial rulemaking process established by the SMART Act would fare any better, but the statements and blogs written by the SMART Copyright Act’s critics repeat the words censorship and unconstitutional and omit discussion of the bill’s following requirements:

• An open process for all stakeholders, including the public, to provide input and identify technological measures.
• Assessment of the impact a technical measure may have on competition among service providers, and the impact it may have on competition among copyright owners.
• Ample opportunity to affected service providers to challenge proposed technical measures or petition for the rescission or revision of a technical measure designation.
• The opportunity to appeal any decisions on technical measures to the DC circuit.
• Limits on service provider liability for good faith efforts to comply with the SMART Acts provisions.

Play 6: Insist that efforts to reform copyright law are driven by (and will only benefit) Hollywood and other large copyright owners.

For years, copyright detractors have resorted to the familiar refrain that copyright enforcement measures are something that only serves “Hollywood.” Recent articles with titles like “Senators Leahy & Tillis To Team Up To Suggest Destroying The Internet For Hollywood’s Sake” and “Wouldn’t It Be Great if Internet Services Had To License Technologies Selected by Hollywood?” are just a couple of examples of how these critics try to mislead the public and frame the issue as something it’s not.

These type of clickbait headlines suggest that movie industry companies wield tremendous power over Congress and can get them to do their bidding. What these articles choose not to mention is the massive amounts of money tech companies have dedicated in recent years to lobby Congress and fund the astroturf groups they control (like EFF, PK, and Re:Create). If you need proof, look no further than the reports about the big tech platforms spending $55 million on lobbying in 2021, by far the most of any industry—notably more than defense and pharmaceuticals.

Posing copyright reform as something only “Hollywood” wants and something that will only benefit large companies or corporate copyright owners is a false-flag tactic used again and again by copyright skeptics, no matter the issue. As we’ve said in the past, ad hominem attacks are favored by those who cannot or will not articulate a sound critique on the merits of a proposal. It is an especially absurd form of misdirection in the context of technical measures to protect against piracy, given that the larger copyright industry players already benefit from measures developed through voluntary agreements. It is the smaller players who stand to benefit the most from the SMART Copyright Act.

What articles like the ones mentioned above conveniently omit is that the SMART Copyright Act and other efforts to develop technical measures are based on an effort to provide access to these tools to individual creators and small copyright owners, who are not involved in and do not always benefit from voluntary measures negotiations. The truth is that individual creators have been at the forefront of advocacy for effective and available technical measures and provisions like the establishment of the Copyright Claims Board.

Play 7: Remind everyone that better copyright enforcement will break the internet—just like SOPA!

Perhaps the most outlandish argument that copyright skeptics make in opposition to updates to the law that would improve copyright enforcement is that any change will somehow “break the internet.” What exactly is meant by breaking the internet is never truly explained and instead is left up to the reader’s imagination.

Hyperbolic claims about the demise of the internet have been made in response to just about every copyright legislation introduced, including 2020’s Protecting Lawful Streaming Act (PLSA), which imposes accountability for large scale, commercial streaming piracy operations. But the PLSA has now been law for a year and a half, and the internet seems to be carrying on just fine.

The narrative peaked ten years ago when many of the same copyright detractors told people that the Stop Online Piracy Act (SOPA) and the Protect IP Act (PIPA) would “break the internet.” Since then, SOPA/PIPA fearmongering has had more sequels than the Rocky franchise. Organizations like the EFF never miss an opportunity to pat themselves on the back for their role in mobilizing people to oppose SOPA/PIPA and threatening that such-and-such bill is the second coming of SOPA/PIPA. So, it comes as no surprise that the EFF now claims the SMART Act is “almost as bad” as SOPA/PIPA.

Play 8: Tell everyone the Copyright Office is incapable of understanding technology.

Just about every statement made in opposition to changes to copyright enforcement includes a derogatory statement about the Copyright Office’s inability to administer or analyze any issue relating to technology. In the case of the SMART Copyright Act, copyright critics accuse the Office of not being able to administer technical measure rulemakings because it lacks technological expertise. The echo chamber of comments includes Re:Create’s warnings about “government lawyers without technical expertise” and “the Copyright Office’s history of ignoring serious cybersecurity concerns in its support of past proposals.” Public Knowledge claims the Copyright Office “has very little technical expertise and a known history of prioritizing corporate interests over the interests of internet users and individual creators.”

As to the lack of technical expertise, no one expects lawyers at the Copyright Office to understand the underlying technological workings of a measure at the same level as the experts who develop and employ them. Those who administer the section 1201 rulemaking aren’t computer engineers, and they rely on petitioners, copyright owners, and service providers to educate and inform them of the details of anti-circumvention measures and digital rights management technologies. They consider exemptions as part of an open process and make determinations based on whether the balance intended by the DMCA will be upheld.

The proposed designated technical rulemaking set forth in the SMART Copyright Act will not be much different. The Copyright Office will apply its expertise in the law—including on things like fair use and the First Amendment—to the proposed technical measures and make determinations as part of an open process where all stakeholders will have the opportunity to be heard. Furthermore, the SMART Copyright Act recognizes that consultation with other expert agencies may be needed and expressly requires the Librarian of Congress to consult with, report and comment on the views of the Director of the National Institute of Standards and Technology (NIST), the Assistant Secretary of Commerce for Communications and Information, the Attorney General, and “any relevant cybersecurity agency.” The Act also calls for the appointment of a Chief Technology Advisor at the Copyright Office “who shall advise the Register on technology issues related to copyright law, including by evaluating and providing advice on the factors in section 514.”

Conclusion

The immediate and vehement criticism of the SMART Copyright Act—repeating a pro forma list of grievances invoked to oppose every copyright enforcement proposal—is telling. First, it shows that rather than carefully consider each proposal on its own merits and think about how it might address recognized problems, these organizations flatly refuse to work cooperatively with copyright owners or offer any solutions of their own. Second, it shows that they realize that it best for them to resort to buzzwords and scare tactics because they have worked in the past and it allows them to avoid engaging in an honest and open discussion of how best to resolve the issues. Finally, it reveals the true colors of companies that will fight any change to the status quo tooth and nail to preserve business models that have allowed them to thrive while turning a blind eye to infringement.

It’s past time these groups are called out for what they’re doing as they go back to the same threadbare playbook in opposition of the SMART Copyright Act. Faux concern about internet users’ rights, censorship, and “breaking the internet” are nothing more than a means to an end, and they will continue to be employed to challenge any updates to the DMCA. Don’t believe me? Wait until the next copyright bill is proposed and have your checklist ready.

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