In Andy Warhol Foundation For the Visual Arts, Inc. v. Goldsmith, No. 21-869, 598 U.S. _____, slip op. (May 18, 2023), the Supreme Court seemingly backed away from its former characterization of the "transformative use" test for evaluating the fair use defense in copyright law. The question the case raises for trademark litigation is whether the ruling signals a stricter interpretation of what "transformative" means, or whether, due to the specific issue and the parties involved, it should be viewed as sui generis.
The dispute in Warhol involved a photograph of the rock star Prince, which the photographer, Lynn Goldsmith, licensed to Vanity Fair magazine for one-time use as an "artist reference," meaning that the photograph was to form a basis for an illustration created by an artist. Slip op., p. 3. The illustration based on the photograph was duly created and ran in Vanity Fair's November 1984 issue. Id. at 4 (see the images accompanying the Supreme Court opinions).
That might have been the end of the story, except that the illustration based on the Goldsmith photograph was created by Andy Warhol, famous from the 1960s for his "pop art" style in art, film, and multimedia events, such as 1966's "Exploding Plastic Inevitable." Characteristically, Warhol later used the illustration based on Goldsmith's photograph to create silkscreen prints of Prince, in a style reminiscent of Warhol's iconic Marilyn Monroe portraits. Id. at 4-5. After Warhol died, copies of the Prince illustrations, known as Warhol's "Prince Series," were licensed for commercial uses by the Andy Warhol Foundation ("AWF"). Id. at 5. When Goldsmith became aware of the AWF's exploitation of the Warhol illustration based on her Prince photo, she claimed copyright infringement. Id. at 9.
In the subsequent lawsuit, the AWF asserted the fair use defense, which "permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster." Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1196 (2021). The defense, codified in 17 U.S.C. § 107, provides that copying a work "for purposes such as criticism, comment, news reporting, teaching . . . scholarship" is fair use. Section 107 lists four factors to consider when determining fair use "in any particular case" that is not covered by that express list of permissible purposes. The first statutory factor, "the purpose and character of the use," involves, according to the Supreme Court, an assessment of whether use of the later work is "transformative." Transformative use occurs when, rather than "the new work merely 'supersed[ing] the objects' of the original creation," it "adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).
Despite the nominal four-factor test, "[a] court generally cannot find fair use unless the copier's use is transformative." Google, 141 S. Ct. at 1218 (Thomas, J., dissenting). "[T]he goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright . . . ." Campbell, 510 U.S. at 579 (internal citations omitted).
In Warhol, the AWF naturally argued that Warhol's use of the Goldsmith photo was transformative. The Second Circuit Court of Appeals dutifully analyzed whether there was a "new expression, meaning, or message." Campbell, 510 U.S. at 579. While conceding that each of Warhol's Prince portraits was "immediately recognizable as a 'Warhol,'" Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 43 (2d Cir.2021), the Second Circuit concluded that the use was not transformative, based largely on the minimal nature of the alterations to the original photo by Warhol, which consisted of "flatten[ing]" the photo by removing "depth and contrast" and adding "loud, unnatural colors." Id.
The Supreme Court granted cert. and affirmed, by a 7 to 2 vote. The majority opinion of Justice Sotomayor, in contrast to the Second Circuit, focused less on the extent of changes made by Warhol and more on the purpose of the specific challenged use: licensing of a Prince Series work (an orange silkscreen portrait of Prince, aptly called "Orange Prince" by the parties) to Condé Nast for an article about Prince after his death in 2016.
The Court concluded that that particular use was too similar to the original use of the photograph by Vanity Fair in 1984 to be transformative. The Court noted that, as long as one has a different purpose, one can "borrow[ ] heavily from an original" and still be in the realm of fair use. Warhol's 1960s paintings of Campbell's Soup cans "well illustrates the distinction drawn here." Id. at 26. "The purpose of Campbell's logo is to advertise soup," but Warhol's paintings "use[d] Campbell's copyrighted work for an artistic commentary on consumerism, a purpose that is orthogonal to advertising soup." Id. at 26-27. Plus, Warhol's "Soup Cans series targets the logo." Id. at 27 (emphasis added). However, "[i]f an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying." Slip op., p. 20. Both Warhol's print and Goldsmith's photograph "are portraits of Prince used in magazines to illustrate stories about Prince." Id. at 22-23. The fact that "Goldsmith's photograph and AWF's 2016 licensing of Orange Prince share substantially the same purpose, and that AWF's use of Goldsmith's photo was of a commercial nature . . . counsel against fair use." Id. at 25.
Unfortunately, the focus in the Court's opinion on purpose may sow confusion on just how much of the "new expression, meaning, or message" test from Campbell survives. In Campbell, the rap group 2 Live Crew had argued that its song "Pretty Woman" made fair use of the Roy Orbison's rock classic "Oh, Pretty Woman," on the ground that the later song was a parody of Orbison's hit. The Court ruled in Campbell that the later song could qualify as a transformative use despite sharing the same commercial purpose as Roy Orbison (selling records). 510 U.S. at 583-84. To explain why its focus on the commercial purpose of Warhol's illustrations was not at odds with Campbell, the majority opinion in Warhol asserts that, even though "2 Live Crew's version of Orbison's song easily conveyed a new meaning or message," and "[i]t also had a different aesthetic . . . the court went further, examining whether and to what extent 2 Live Crew's song had the parodic purpose of 'commenting on the original or criticizing it.'" Slip op., p. 29.
This summary of Campbell, though, as requiring required more than a new meaning or message for the transformative use test, is highly questionable. The court in Campbell did not "further" move on to evaluating parodic purpose in a two-step process; rather, it analyzed whether a parody could be transformative despite its obviously commercial purpose. In performing that analysis, as Justice Kagan's dissent in Warhol points out, "the critical factor 1 inquiry, we held [in Campbell], is whether a new work alters the first with 'new expression, meaning, or message." Slip op., p. 14. By suggesting now that that inquiry is not as "critical" as whether there is the same commercial purpose, the majority opinion in Warhol calls into question whether it still follows the test that Campbell actually applied.
Besides criticizing the majority's use of precedent, Justice Kagan's dissent, joined by the Chief Justice, devotes over six slip opinion pages (section I.A.) to describing the new expression and message conveyed by Warhol's "transformation" (slip op., p. 10) and "dazzling creativity" (id. at 17). His Prince images, like his Marilyn Monroe images, were "a biting critique of the cult of celebrity" (id. at 6) and created a "message [that] could not have been more different" (id. at 9-10) than the original photograph. In contrast, the majority was much less dazzled, referring to the Warhol portraits as "portraying Prince somewhat differently" (id. at 33) than the Goldsmith photograph and suggesting that Warhol made only "modest alterations." Id. "Orange Prince crops, flattens, traces, and colors the photo but otherwise does not alter it." Id. at 8. In addition, the majority opinion seems almost offended by Justice Kagan's characterization of Warhol as "an avatar" and by her references to his "brilliantly novel art." Kagan, J., dissenting, Slip op., p. 4. The majority opinion counters that, as to Lynn Goldsmith, "she too was a trailblazer" (slip op., p. 1), and it briefly describes the highlights of her career (id. at 1, 2-3).
The opinions' competing views of the relative worth of Warhol's and Goldsmith's work lend support to the Court's view that, ultimately, "[a] court should not attempt to evaluate the artistic significance of a particular work." Slip op., p. 31. In that vein, Justice Kagan's resort to the trial court testimony of art experts (slip op., p. 9) can be seen as troubling. Although in Warhol there was "undisputed testimony . . . that Warhol's Prince series conveyed a fundamentally different idea, in a fundamentally different artistic style, than the photo he started from" (Kagan dissenting, slip op., p. 35), how is a court to decide the case where the art experts disagree? Also, even if experts are in agreement, can we be sure that they are interpreting the work correctly? In Jorge Luis Borges' satirical 1939 short story "Pierre Menard, Author of the Quixote," the title character painstakingly writes out several excerpts of Cervantes' novel "Don Quixote" exactly, word-for-word, but insists that it is a new work because his background as a 20th-century man is so different from that of Cervantes. A literary critic then not only agrees with him but praises the new version as superior to the original. The story, of course, is fiction, and deliberately absurd, but are not the courts ill-equipped to determine when the line has been crossed into an absurd interpretation of a supposedly "transformative" work?
Justice Kagan's dissent also raises the concern that "the decision impedes non-copyright holders' artistic pursuits, by preventing them from making even the most novel uses of existing materials." Slip op., p. 25. She quotes an amicus brief submitted on behalf of, among others, artists Robert Rauschenberg and Roy Lichtenstein for the proposition that "'the use and reuse of existing imagery' are 'part of art's lifeblood,'" id. at 30, and she cites numerous examples of repurposing, borrowing, etc. from famous works of literature, music, and painting. Given the fact that much of pop culture imagery derives from copyrighted works, it is indeed hard to dispute that an artist would be frustrated if the contents of his or her toolbox were limited to uncopyrighted material. (Think, for example, of the number of borrowings from, or homages to, previous classic films in any Coen Brothers or Quentin Tarantino film.)
Justice Kagan's dissent can be criticized on that point, though, for failing to reconcile the artist's creative need to use a vocabulary of recognizable cultural icons with the copyright owner's right "to prepare derivative works based upon the copyrighted work," 17 U.S.C. § 106(2), such as a film adaption of a novel, "or any other form in which a work may be recast, transformed, or adapted," 17 U.S.C. § 101 (definition of "derivative work"). The majority opinion in fact does criticize the dissent on the ground that it "offers no theory of the relationship between transformative uses of original works and derivative works that transform originals." Slip op., p. 36. The concurrence by Justice Gorsuch goes further and, citing the right to derivative works, would seemingly reject Campbell's "new expression, meaning, or message" test altogether. One cannot "suggest[ ] that transformative uses of originals belong to the copyright holder (under § 106) but that [other artists] may simultaneously claim those transformative uses for themselves (under § 107)." Gorsuch, J., concurring, slip op., p. 3.
Justice Gorsuch's concurrence was joined by only one other justice; the five other justices in the majority clearly would maintain the concept of a "transformative" fair use that co-exists with the owner's right to derivative works. Slip op., p. 16. The majority opinion notes that, in some unspecified way, "the degree of transformation required to make 'transformative' use of an original must go beyond that required to qualify as a derivative [work]." Id.
So how will Warhol affect the way lower courts apply the transformative use test? It could lead to a stricter approach. However, due to being narrowly limited to its facts, the case ultimately may not be influential at all. As Justice Kagan wrote in her dissent, "the sum and substance of the majority opinion" is that "Warhol licensed his portrait to a magazine, and Goldsmith sometimes licensed her photos to magazines too." Slip op., p. 18. The majority essentially agreed: "we limit our analysis" to "AWF's commercial licensing of Orange Prince to Condé Nast." Slip op., p. 21. Every party claiming fair use from now on will find some way to assert that his or her use had the purpose of commenting on the original work, making it more like Warhol's soup cans than Orange Prince. I can easily imagine the case's future role as being cited mainly for the purpose of distinguishing it, in instances in which a court finds that the first fair use factor favors the alleged infringer.
At any rate, the legal community still awaits a Supreme Court opinion that authoritatively reconciles the competing interests under copyright law of rewarding creativity, and protecting derivative works, yet not stifling new works -- an opinion that was not supplied in Warhol.
