April 19, 2021

Volume XI, Number 109

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April 16, 2021

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The Doctrine Formerly Known as “Fair Use”

On March 26, 2021 the United States Court of Appeals for the Second Circuit decided The Andy Warhol Foundation v. Goldsmith, a decision addressing the “fair use” doctrine, an important part of copyright law. “Fair use” tries to balance the extent to which one artist may build on a prior artist’s work without getting the first artist’s approval or license for doing so, and when so much of the quality or quantity of first work is copied that that artist’s work deserves protection against the latter piece. In the recently-decided case, which the Warhol Foundation had won below, the appellate court rejected the claim that Warhol’s uses of certain photographs of Prince Rogers Nelson by Linda Goldsmith (with photographs and Warhol works depicted in Slip Op. at 7-9) was protected fair use of the copyrighted photos. Instead, the Court concluded that the sixteen pieces of art Warhol had created in the Prince Series could provide Goldsmith the basis for a recovery for copyright infringement. Review of this case provides an important understanding of what “fair use” has been understood to mean, how that doctrine has changed and evolved, and what it may mean in future cases.

Understanding the decision requires an understanding of some basic facts and concepts. As the court noted, “Goldsmith is a professional photographer primarily focusing on celebrity photography, including portrait and concert photography of rock-and-roll musicians.” Slip op at 5. This eventually included taking a series of color and black/white photographs in 1981 of a “(then) up-and-coming musician Prince Rogers Nelson (known through most of his career simply as ‘Prince’).” Id. at 6-7. Eventually, Vanity Fair magazine got a license from Goldsmith to use a single black/white photograph from the collection:

“as an artist reference,” which in the industry meant that “an artist ‘would create a work of art based on [the] image reference.’” Id. at 7-8. As the Second Circuit noted:

Vanity Fair, in turn, commissioned [Andy] Warhol to create an image of Prince for its November 1984 issue. Warhol’s illustration, together with an attribution to Goldsmith, was published accompanying an article about Prince by Tristan Vox and appeared as follows:

In addition to the credit that ran alongside the image, a separate attribution to Goldsmith was included elsewhere in the issue, crediting her with the “source photograph” for the Warhol illustration. [Id. at 8-9].

Understanding those facts now require some understanding of who Andy Warhol was.

According to Court, Warhol “was an artist recognized for his significant contributions to contemporary art in a variety of media. Warhol is particularly known for his silkscreen portraits of contemporary celebrities.” Slip op at 5. After creating the item to run in Vanity Fair:

Warhol created 15 additional works based on the Goldsmith Photograph, known collectively, and together with the Vanity Fair image, as the “Prince Series.” The Prince Series comprises fourteen silkscreen prints (twelve on canvas, two on paper) and two pencil illustrations, and includes the following images:

Although the specific means that Warhol used to create the images is unknown (and, perhaps, at this point, unknowable), Neil Printz, the editor of the Andy Warhol Catalogue Raisonné, testified that it was Warhol’s usual practice to reproduce a photograph as a high-contrast two-tone image on acetate that, after any alterations Warhol chose to make, would be used to create a silkscreen. For the canvas prints, Warhol’s general practice was to paint the background and local colors prior to the silkscreen transfer of the image. Paper prints, meanwhile, were generally created entirely by the silkscreen process without any painted embellishments. Finally, Warhol’s typical practice for pencil sketches was to project an image onto paper and create a contoured pencil drawing around the projected image. [Id. at 9-10].

The question then is whether Warhol infringed, or simply made fair use of, the Goldsmith photo.

To answer that question, one needs to understand what constitutes “infringement” and what is “fair use.” Infringement is the unlicensed copying of a pre-existing work. Under copyright law, the original creator has a right to the first work and a presumptive right to the works derived from it. In fact the Copyright statute, “copyright protection extends both to the original creative work itself and to derivative works, which it defines as, in relevant part, ‘a work based upon one or more preexisting works, such as a[n] . . . art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted’ 17 U.S.C. § 101.” Slip op at 13. “Fair use” is also statutorily protected, at 17 U.S.C. § 107, and grows out of the notion that much progress in art, literature, and science comes in building on the work of others. Slip op at 14-15. Thus, determining whether one is in engaging in fair use of pre-existing works, and can proceed without license, depends on a balancing and weighing of the four statutory factors: (1) the purpose and character of the second artist’s/author’s use; (2) the nature of the earlier copyrighted work; (3) the amount and substantiality of the portion of the original work used in the second work; (4) the effect of the use on the potential market for the first work. Because “fair use presents a holistic context-sensitive inquiry ‘not to be simplified with bright-line rules,’” it gets complicated. Slip op at 15.

Frequently, as occurred in the Warhol case, the first factor becomes the battleground, and there was a trend in the law to see whether the second work had made a “transformative” use of the first, and therefore could be considered fair use. One makes such decision by determining “‘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.’” Slip op at 16 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)). “Although the most straightforward cases of fair use thus involve a secondary work that comments on the original in some fashion, in Cariou v. Prince, we rejected the proposition that a secondary work must comment on the original in order to qualify as fair use. See 714 F.3d at 706.” Slip op at 17Cariou was also a photograph case where the Court concluded that twenty-five of the thirty works at issue were transformative of the original  photographs because they had been used “‘as raw material, transformed in the creation of new information, new aesthetics, new insights and understanding.’” Slip op at 17 (quoting Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013)).

In this Warhol case, however, the Second Circuit stepped back from Cariou, the “high-water mark of our court’s recognition of transformative works,” to reject the argument that the Warhol Prince Series was transformative, instead finding the series merely derivative. In doing so, the appellate court made clear that a transformative purpose was a necessary, but alone insufficient element of establishing fair use, stating that:

[W]hether a work is transformative cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic—or for that matter, a judge—draws from the work. Were it otherwise, the law may well “recognize[e] any alteration as transformative.”

* * *

Although we do not hold that the primary work must be “barely recognizable” within the secondary work… the secondary work’s transformative purpose and character must, at a bare minimum, comprise something more than the imposition of another artist’s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material. [Slip op. at 26, 28 (quoting Nimmer, § 13.05(B)(6) at 26)]

Because the appeals court concluded that “any reasonable viewer with access to a range of such photographs including the Goldsmith Photograph would have no difficulty identifying the latter as the source material for Warhol’s Prince Series,” the Second Circuit rejected the claim of fair use. Slip op. at 55. In doing so, the Second Circuit rejected what seemed like a fairly persuasive amicus argument (illustrated with photos at pages 9-26) that “recognizable similarity in expression is not, in itself, substantial similarity,” that only limited aspects of the Goldsmith work was protectable, and differences in aesthetic have been determinative in previous cases. It also pulled far back from the limits promoted by a number of legal scholars who, pre-Cariou, had suggested, in REFLECTIONS ON THE HOPE POSTER CASE, 25 Harv. J. L. & Tech. 243 (2012), even that “giving artists more freedom to make creative uses of copyrighted materials” should occur because it is “socially beneficial” to  provide a “safe harbor” for any use that is “creative,” which the article defined as anything that “either constitute[s] or facilitate[s] creative engagement with intellectual products.” Id. at 318-323.

One must understand that the appellate court here did more than simply look at the works side by side—an important element of the decision that use was not transformative comes from not seeing enough newness, for sure. Slip op at 25-26. The court deemed that true even though each allegedly infringing work is “immediately recognizable as a ‘Warhol.’ Entertaining that logic would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct that artist’s style, the greater leeway that artist would have to pilfer the creative labors of others. But the law draws no such distinctions.” Slip op at 31. But it is also important that the Second Circuit address the “commercial” purposes of the alleged use as within the same statutory prong as the transformativeness analysis. “[J]ust as we cannot hold that the Prince Series is transformative as a matter of law, neither can we conclude that Warhol and AWF are entitled to monetize it without paying Goldsmith the ‘customary price’ for the rights to her work, even if that monetization is used for the benefit of the public,” Slip op at 34, a point the Court drives home further when assessing the fourth (effect on market) statutory prong later in the opinion. Slip op at 44-50. This focus on the commercial impact, which also is further emphasized in Judge Sullivan’s concurrence, illustrates that the “fair use” analysis may be more aptly described as a “fare to use” test, in the sense that a court is determining whether the second artist must pay for the privilege of relying on the earlier creations to reach a new intended artistic destination.

It is worth noting that, despite reaction to the Warhol decision as an important one, it was ignored less than a week later by the Second Circuit itself in Marano v. Metropolitan Museum of Art, decided April 2, 2021, and the Supreme Court in Google v. Oracle. Indeed this debate continued almost immediately, as both the United States Supreme Court and the Second Circuit addressed fair use cases in recent days, and gave the second artist’s creative “purpose” a much greater continuing role in determining transformativeness than Warhol would suggest was appropriate. First, the Second Circuit itself in Marano v. Metropolitan Museum of Art (decided April 2, 2021), held in a case about a photograph of “Eddie Van Halen playing his ‘Frankenstein’ guitar” that “whether the use is ‘transformative’…constitutes the ‘heart of the fair use inquiry,’” and that the purpose the defendant sought to serve was a primary factor in determining fair use.  Summary order at 2-5 (allowing “the Met’s ‘copying the entirety of [the Photo]’”). Then, April 5th the US Supreme Court decided in Google v. Oracle that “fair use” is an “equitable rule of reason” requiring “judicial balancing” of “the sometimes conflicting aims of copyright law” so that copyright does not “stifle the very creativity which the law las was meant to foster.” (Op. at 13-15.) Neither Marano nor Google cite Warhol, though each address at some length, including in a Supreme Court dissent, the role “purpose” plays in assessing whether a use is “transformative.” See, e.g., Google, Slip op. at 24-28, Dissent at 15-17. So the debate goes on and fair use inquires remain “open-ended” and subject to “context-sensitive inquiry.” Summary order at 5.

Since fair use potentially applies to many media and markets beyond the visual art/photography one illustrated in Warhol, creators and owners of intellectual property generally need access to counsel experienced in such matters. From the book to screenplay to film progression noted as an example in WarholSlip op at 22, 28-29, 31, to newer (or newly popular) genres of poetry, to spoofspastiches and mash-ups, to video clips, to music, the question of “fair use” v. “fare to use” will continue to come up for artists building on earlier works.

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©2021 Epstein Becker & Green, P.C. All rights reserved.National Law Review, Volume XI, Number 97
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About this Author

James P. Flynn, Epstein Becker Green, Corporate Counseling Lawyer, complex commercial matters attorney,
General Counsel

JAMES P. FLYNN is a Member of the Firm in the Litigation and Labor and Employment practices. He serves as the General Counsel of Epstein Becker Green and the Managing Shareholder of the firm's Newark office, where he is based. His practice focuses on civil litigation and corporate counseling, including trial and appellate work in the area of intellectual property, complex commercial matters, and employment law. Mr. Flynn represents businesses in a broad spectrum of industries, including health care, pharmaceuticals, and financial services.

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