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.
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.”
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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