Copyright watchers were surprised when the Supreme Court granted Andy Warhol Foundation’s (AWF) petition for certiorari in its case against photographer Lynn Goldsmith. For deeper background, see older posts, but this is the dispute over Andy Warhol’s “Prince Series” silkscreen images of rock legend Prince made in 1984 using Goldsmith’s unpublished 1981 portrait photograph as a reference image.
In March of 2021 the Second Circuit held that Warhol’s use of the photograph was not a fair use and then denied Warhol’s petition for rehearing in August 2021, specifically responding that the SCOTUS decision in Google v. Oracle was not a basis for reconsideration. AWF filed its petition for cert in December, and we can expect a flurry of amicus briefs this Summer as copyright advocates and critics argue for opposite outcomes on what could be seminal fair use guidance by the Court. AWF’s petition rests almost entirely on part one of factor one of the fair use analysis, which considers that bugaboo doctrine called “transformativeness.” From the AWF brief Summary:
… the district court concluded that the Prince Series was “transformative” because it incorporated a new meaning and message, distinct from the Prince photograph from which it drew. Despite agreeing that Warhol’s new work “give[s] a different impression” than the original, the Second Circuit nonetheless concluded that the work was not transformative (and thus not fair use) because the photograph “remain[ed] the recognizable foundation upon which the Prince Series is built.
The doctrine of “transformativeness” was introduced to fair use jurisprudence in 1990 in a paper by Judge Pierre Leval of the Second Circuit Court of Appeals, and it was most famously first invoked in the 1992 Supreme Court decision Campbell v. Acuff-Rose. There, the Court held that 2 Live Crew’s “Pretty Woman” was a parody of the Orbison/Dees song “Oh, Pretty Woman,” and that factor one, therefore, favored a finding of fair use.
I have written in other posts about this case that the “transformative” test is a uniquely troubling, if not almost useless, consideration in the world of fine art. I hold this view because the fair use doctrine evolved on the principle that the user of a work would, in general, comment in some way upon the work being used. This is evident in the paradigmatic examples listed in §107 of the copyright law—”criticism, comment, news reporting, and teaching.” While not intended to be an exhaustive list, it is not coincidental that these examples, and their subordinates like “parody,” all imply saying something about the work allegedly infringed.
In Campbell, the Court does not stray beyond the boundaries of this analysis. On the contrary, in holding that “Pretty Woman” was a parody of “Oh, Pretty Woman,” the Court remained well within the interpretation that factor one of the fair use analysis initially looks for evidence of commentary upon the original work. It was not necessary that the “transformative” language, adopted from the Leval paper, be part of that analysis, which is otherwise consistent with prior courts’ holdings on “parody”…
…the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works….If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.
Among the difficulties with the language of “transformativeness” and the decision in Campbell is that it includes much broader language, which AWF now cites to argue that a use favors fair use under factor one if it conveys “new meaning or message” that may be distinguishable from the original work. This is one of two problematic interpretations of the broad term “transformative.” The other problematic interpretation is a use that “expands the utility” of the original work(s), as applied in Google Books—an opinion written by Judge Leval, which begins with the sentence “This copyright dispute tests the boundaries of fair use.” Of course, the “expanding utility” claim is not asserted in Goldsmith.
As I have said in the past, comment upon the original work quite often does not exist in fine art contexts, and it certainly does not exist in the case of Warhol’s Prince Series. Warhol’s images do not comment upon Goldsmith’s photograph in any way, and AWF does not argue otherwise. Instead, relying upon the broader “new meaning and message” principle, it claims that the screens convey “something different” from the photograph. In fact, I agree that this is true but disagree that this favors a finding a fair use under factor one.
Different meaning may be present, but if the secondary work does not contain at least some element of comment upon the original, there is no rationale keeping the first factor analysis from spilling over the levy quoted above in Campbell. AWF, for instance, asserts that the Warhol screens convey “Prince as icon” in contrast to Goldsmith who contends that her photo expresses “Prince as vulnerable budding star.” Both interpretations are well-founded in the context of art appreciation but irrelevant in regard to copyright law. The differences between the two works, absent any evidence of commentary, becomes a vague consideration that is indistinguishable from satire or other broad purposes historically held not to be fair uses as a matter of law.
This is one reason why the “transformativeness” concept has caused so much trouble: because it leads courts to find fair use solely on the basis of “some difference,” and this implies a fair use doctrine without limits. Certainly, this is the outcome the copyright skeptics would like to see, but it is not good law, and it is aggravated by the fact that factor one has often weighed too heavily in the four-factor test. My gut says that the Court should find that AWF’s defense fails on the “transformative” analysis in factor one and in doing so, should reaffirm the holding in Campbell stating that where no commentary upon the original work exists, “other factors will loom larger.”
But having said that, I cannot deny that I personally believe that the Warhol screens convey something substantively different than the photograph, which goes to the other question the Court should address if it hopes to untangle the “transformative” knot at all, and this is whether the Warhol works constitute unlicensed “derivative works.” Certainly, we have seen findings of “transformativeness” under fair use analyses encroach on the derivative works right, which is no surprise when the definition of a derivative work describes “…any form in which a work may be recast, transformed, or adapted.”
It would be easy enough to hold that the Warhol screens are derivatives requiring license from Goldsmith to produce, but I believe the nature of the photograph—indeed of many photographs—may militate against such a finding. More on that in the next post about this case.
 In fact, any claim to the contrary would be muted by the fact that the work at issue is an unpublished photo, which conflicts with the Court in Leibovitz v. Paramount, which held that the public must be reasonably conscious of the original work in order for the defendant to claim that he is commenting upon it.