Fair Use in a Post-Warhol World: Part I

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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