The US supreme court lately handed down a decision on a copyright infringement case on Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.
The dispute was about photographs of Prince Rogers Nelson, a famous musician in the United States. The photographs involved in the dispute were taken by Goldsmith, the plaintiff in the dispute, in 1981 when Prince was not that famous then. After taking the photographs, Goldsmith licensed them to various magazines for use as covers. All the magazines credited Goldsmith as the photographer, and some even paid royalties to Goldsmith for the license.
Based on the photographs taken by Goldsmith, Andy Warhol created a series of Prince. The one involved in the dispute is an orange silkscreen of Prince. The original work of Goldsmith is illustrated on the left, and new work of Andy Warhol is illustrated on the right.
The Prince Series including the orange Prince passed to the Andy Warhol Foundation (AWF), the defendant in the present dispute, after Andy Warhol died. In 2016, AWF licensed to a magazine to publish Orange Prince for $10,000. Goldsmith did not know the deal until she saw the Orange Prince in the magazine.
The major fight of the dispute was over whether AWF’s unauthorized use of Goldsmith’s copyrighted photograph was fair use, and more specifically, whether the first factor provided in 17 U.S.C. $ 107 favored for or against AWF’s fair use defense.
The court’s full text decision can be found at Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith (05/18/2023) (supremecourt.gov).
1. Courts’ split: transformative “works” or transformative “use”?
17 U.S.C. § 107 provides the fair use defense to copyright infringement. Besides enumerating specific examples of fair use such as use for purposes of criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, the article also prescribes a general rule of determining whether the use made of a work is fair use, taking into account four factors.
Amongst others, the first factor asks “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.”
In analyzing this factor, the District Court investigated whether the “new work” was transformative as compared to the original works by looking at whether the new works add new expression to the original one. In other words, the District Court focused on how the “new work” was compared with the original work, and whether the differences, if any, were transformative.
The District Court held that the new works were “transformative” because, “looking at them and the photograph “side-by-side”, they ‘have a different character, give Goldsmith’s photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” In particular, the District Court determined that the (new) works “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure,” such that “each Prince Series work is immediately recognizable as a ‘Warhol’ rather than as a photograph of Prince.”
The dissenting opinion in the Supreme Court took a similar approach in assessing the “purpose and character” of a copier’s use by asking: “does the work ‘add something new, with a further purpose or different character, altering the original with new expression, meaning or message?” When it did so to a significant degree, the work would be considered transformative and the fair-use test’s first factor would favor the copier according to the dissenting opinion.
The dissenting justices investigated what Warhol did to the original work, and found that “Warhol converted the cropped photo into a higher-contrast image, incorporated in to a silkscreen and that image isolated and exaggerated the darkest details of Prince’s head; it also reduced his “natural, angled position,” presenting him in a more face-forward way”, and thereby causing “materially distinct” visual differences between the new work and the original work in their “composition, presentation, color palette, and media”, and the change in form came an undisputed change in meaning…”. With huge difference in place, the dissenting opinion held that Warhol had effected a transformation and therefore the first fair use inquiry should favor him.
On the other hand, the majority opinion in the Supreme Court focused on the use of the new works rather than the works itself. The majority opinion considered the major inquiry of the first factor was “whether and to what extent” the use at issue has a purpose or character different from the original, and “the larger the difference, the more likely the first factor weighs in favor of fair use, while the smaller the difference, the less likely”.
Instead of centering around the comparison between the new works and the original works, the majority opinion went to the specific use of the defendant that was alleged infringing and claimed for fair use defense, and investigated whether the use has a sufficiently similar purpose to that of the original work so that it is likely to substitute for supplant the original work.
Here, the majority justices found that the specific use of Goldsmith’s photograph alleged to infringe her copyright was AWF’s licensing of Orange Prince to Condé Nast. As Goldsmith used to do that with the copyrighted photographs, too. The majority considers that the original photograph shared substantially the same purpose as AWF’s copying use of it, and AWF’s licensing of the orange Prince image superseded the objects of Goldsmith’s photograph. Accordingly, the majority held that the first fair use factor favors against the defendant.
2. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)
Campbell is a leading case on fair use doctrine, and primarily relied upon by litigants in this case. Campbell is both respected and clarified by the Supreme Court in this case.
The Campbell court considers the central purpose of the first factor is to see “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative.’”
It appears that the mixes up two standards in one paragraph. In the first part, the court focuses on the purpose of the new work, namely whether it is different or superseding; but, in the second part, the court comes back to the “new work” itself, namely, whether the work itself is transformative. By “in other words”, the court is actually setting up a different criterion of deciding the first factor.
AWF relies upon the transformative work standard of Campbell and bases its arguments thereon in further elaborating how the new work alters the original work by adding new expression, meaning, or message. As earlier mentioned, this reasoning process is followed by the District Court and the dissenting opinion of the Supreme Court.
The majority opinion of Supreme Court in this case defers to one part, and clarifies the other part. The majority opinion agrees that Campbell did describe transformative use as such, but further clarifies that it cannot be read to mean that §107 (1) weighs in favor of any use that adds new expression, meaning, or message, because otherwise, it would “swallow copyright owners’ right to prepare derivative works.”
The “superseding purpose” part is relied by the Supreme Court in coming to the conclusion that “the use of an original work to achieve a purpose that is the same as, or highly similar to, that of the original work is more likely to substitute for or ‘supplant’ the work”.
In making the transition from the focus of the transformativeness of works to the transformative purpose of use, the Supreme Court inferred from Campbell that the same copying may be fair when used for one purpose but not another. And, further based on the plaining meaning of §107, the court considers that the fair use provision, and the first factor in particular, requires an analysis of the specific “use” of a copyrighted work that is alleged to be “an infringement”.
Additionally, the court cites Campbell to stress the importance of targeting the original work in the new use in assessing whether the new use is transformative or not. In particular, the court distinguishes the fair use defense in the present case from parody in Campbell that “parody has an obvious claim to transformative value” because it can provide social benefit by shedding light on an earlier work, and, in the process, creating a new one, whereas, in the present case, AWF’s use of the new work simply copied the subject of the copyrighted work, but did not target Goldsmith’s original work in the use, and therefore should not be protected by fair use from the perspective that it did not have the justification of social benefit.
3. Comparison with Oracle vs. Google
The Supreme Court decided another copyright case in 2021 on Oracle vs. Google. It would be interesting to draw a comparison between two cases. Both cases are about fair use doctrine under § 107.
In the Oracle case, the court in a majority decision decided that Google’s copy of the API of Java SE is fair use. The court analyzed all four fair use factors in making the decision. In respect of the first factor, the court considers that the purpose of Google’s use of Java API is to create new product to be installed in Android based smart phone platforms, which is different from the oracle’s use of the Java program. Comparatively, in the present case, the court considers the purpose of AWF’s licensing of the new work to a magazine to illustrate a story about Prince is identical to the copyright owner’s use of the original work that is also licensing the work to a magazine for referencing a story about Prince, even though it might be a different magazine.
