Supreme Court Grants Cert in Andy Warhol Foundation Case on Copyright Fair Use

Following a twenty-seven year drought of copyright fair use cases, the Supreme Court is now set to take on its second case on the doctrine in two years.  The high court granted a petition this week in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869—less than twelve months after its 2021 fair use opinion in Google v. Oracle—to revisit this defense once more.

As copyright practitioners will recognize, Section 107 of the Copyright Act sets forth a four-factor test for fair use that considers: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount of the copyrighted work that is taken; and (4) the effect of the use upon the potential market for the copyrighted work.

The Warhol Foundation’s cert petition followed a Second Circuit decision holding that all four fair use factors favored a finding that Andy Warhol’s Prince Series infringed the copyright in Lynn Goldsmith’s photograph of musical artist Prince.  The appellate court overturned a district court’s decision that Warhol’s artworks were so “transformative” of Goldsmith’s original image that fair use insulated Warhol’s works from infringement.

In its reasoning, the Second Circuit focused heavily on the first fair use factor: the purpose and character of the use of the copyrighted work.  It held that this factor typically requires courts to consider the extent to which the secondary work “transforms” the original piece, but it reasoned the district court’s evaluation of the works was too “subjective.”  The Second Circuit underscored that “it does not follow … that any secondary work that adds a new aesthetic or new expression to its source material is necessarily transformative.”  Instead, to be transformative, “the secondary work itself must reasonably be perceived as embodying a distinct artistic purpose, one that conveys a new meaning or message separate from its source material.”  At a minimum, the new work must be more than merely “the imposition of another artist’s style on the primary work.”  The appellate court found the purpose and function of Warhol’s artworks and Goldsmith’s photograph to be identical, as both were portraits of Prince.  Accordingly, Warhol’s pieces could not be construed as transformative, contributing to the denial of the Warhol Foundation’s fair use defense.  The Warhol Foundation then petitioned the Supreme Court for clarification of the concept of “transformativeness,” on which it argued there is a circuit split.

Section 107 does not explicitly require a work to be “transformative” to qualify for fair use, but the Supreme Court explained in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”  Campbell, which involved a parody of a song, remained the Supreme Court’s last serious analysis of fair use for nearly three decades.

The next Supreme Court case to analyze fair use after Campbell was Google LLC v Oracle America, Inc., 141 S. Ct. 1183 (2021).  In that case, which involved computer software, the Court found that Google’s copying of the Oracle Java Application Programming Interface was a fair use of that material as a matter of law.  The Court reasoned that Google had transformed Oracle’s work by adapting it to develop a new smartphone platform.  The Court noted, however, that “[t]he fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts in that technological world.”  The Court further noted, as it did in Campbell, that courts apply fair use on a case-by-case basis.  So it is questionable how far Google’s reasoning will apply to media other than software.

The Supreme Court’s recent consideration of the nuances of the fair use defense raises the question of what the Court hopes to resolve in the Warhol case.  The Court noted in Google that it had “not changed the nature of [traditional copyright] concepts” with its software-specific ruling.  In granting the Warhol Foundation’s petition for review, however, the Court apparently now seeks to at least clarify these concepts as they apply to more conventional copyrightable works.  Perhaps, as in Google, the Court’s analysis of the purpose and character of the use will overlap significantly with its analysis of the nature of the copyrighted work.  Perhaps the Supreme Court intends to disavow the Second Circuit’s explicit assertion that Google supports its ruling against fair use.  Or perhaps the high court hopes to outline new parameters for “transformativeness” that it did it not have occasion to describe in Google.  Artists, authors, and creators in a variety of fields likely will welcome any additional certainty from the Court.

The case will likely be argued in late 2022, with a decision by July 2023.