While we wait, we wonder. Will the result by the Supreme Court in Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith (“Warhol”) give copiers the right to turn Darth Vader into a choir boy without paying the copier a dime? Will sequels, spinoffs and adaptations be available for others to monetize for free?
No worries.1 Whatever your views of the Supreme Court, I don’t think the result in Warhol will permit any of these transformations. Although predictions on the outcome of a Supreme Court case are not for the faint of heart, I bravely make an exception here. In Warhol, No. 21-869, the Court will affirm the Second Circuit’s finding that the use by the Andy Warhol Foundation (the “AWF”) of a Warhol silkscreen print called Orange Prince did not transform Lynn Goldsmith’s photograph of Prince Rogers Nelson or Prince (the “Goldsmith Photo”).
Why this result? The AWF argued before the Court that Orange Prince‘s new meaning or message, without more, made that work transformative and, in turn, presumptively a fair use. The new asserted message: that Orange Prince commented on the dehumanization of celebrity status and transformed the Goldsmith Photo’s depiction of Prince from vulnerable to iconic. Really? I won’t ask you if you agree.
But the Justices’ concerns raised during oral argument (see the audio clips below) indicate the Court will not hold the comment about celebrity allegedly made by Orange Prince enough to satisfy the first fair use factor. Instead, the Court will likely find no transformation because the Goldsmith Photo and Orange Prince were used in magazine articles featuring Prince for the same purpose: to illustrate or depict him. This factor one issue was the only one raised by the AWF’s cert. petition. So the Court could stop there. But if the Court goes further and analyzes and applies all four fair use factors, the Court will also likely conclude that Orange Prince infringes. That’s because it usurps the licensing market for Goldsmith’s derivative works.
For those unfamiliar with copyright’s definition of transformation, a “transformative” work is one that “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).
I. Background Facts
Before turning to the argument here briefly are the facts.
A. 1984 License to Vanity Fair
In 1982 Lynn Goldsmith photographed Prince creating the Goldsmith Photo:
In 1984 Vanity Fair featured Prince in an article and retained Warhol to create an illustration of Prince to accompany the article. Vanity Fair licensed from Goldsmith the Goldsmith Photo for $400 for Warhol to use as a reference when creating his illustration. Goldsmith’s license authorized Vanity Fair to publish only in its November 1984 issue the illustration based on the Goldsmith Photo. The license provided the Goldsmith Photo “may not be reproduced or utilized in any form or by any means” without Goldsmith’s permission, adding, “NO OTHER USAGE RIGHTS GRANTED.”
Warhol using Goldsmith Photo as a reference created an illustration of Prince, referred to as Purple Prince. It was published in the 1984 Vanity Fair article with a tiny credit to Goldsmith:
B. Creation of Prince Series
Warhol then used the Goldsmith Photo to create 15 more works called the Prince Series, including Orange Prince. Here are some of those works with their inventory numbers:
C. The 2016 License of Orange Prince
After Warhol’s death in 1987 the AWF acquired rights to the Prince Series and began to monetize them. When Prince died in 2016, Vanity Fair prepared an issue honoring him. Condé Nast, Vanity Fair’s parent, licensed Orange Prince from AWF for $10,000.
Here is Orange Prince with no credit or payment to Goldsmith next to Purple Prince and the Goldsmith Photo:
When Goldsmith saw Orange Prince used in the magazine to depict Prince, she asserted infringement. In response, the AWF sought a declaratory judgment that the Prince Series conveyed a new message and was therefore fair use. The AWF asserted that Orange Prince shows Prince as an icon and comments on the dehumanizing nature of celebrity status while the Goldsmith Photo depicts Prince as vulnerable.
D. The District Court Finds Fair Use
The district court agreed with the AWF. 382 F. Supp. 3d 312 (S.D.N.Y. 2019). The court found the Prince Series “transformative” because it gave the Goldsmith Photo “a new expression, and employ new aesthetics with creative and communicative results distinct from the Goldsmith Photo.” Id. at 326.
E. The Second Circuit Reverses
On appeal, the Second Circuit reversed. 11 F.4th 26 (2d Cir. 2021). The appellate court rejected the district court’s finding that “new aesthetics” or a “new expression” are enough to satisfy the first fair use factor lest an “overly liberal standard of transformativeness crowds out protection for derivative works.” Id. at 38-9, 41. Instead, the court indicated that a secondary work would be transformative where it “embod[ied] a distinct artistic purpose, one that conveys a new meaning or message separate from its source material.” Id. at 41.
The appellate panel focused on visual similarity as the touchstone for non- transformation, stating:
The district judge must determine whether “the secondary work stands apart from the ‘raw material’ used to create it. … [T]he secondary work’s transformative purpose 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.
Id. at 42.
The circuit court concluded for two reasons that Orange Prince did not transform the Goldsmith Photo. First, the court held the “overarching purpose and function of the two works” “identical” because they “are portraits of the same person.” Id. The court also found no transformation because the Prince Series “retain[ed] the essential elements” of Goldsmith’s photograph. Id. at 42-3. In other words, the Goldsmith Photo “remain[ed] the recognizable foundation upon which the Prince Series is built.” Id. at 43. Although the circuit court assumed that Goldsmith and Warhol “may well have had” different “subjective intent[s],” transformation “cannot turn merely on the stated or perceived intent of the artist.” Id. at 41.
F. The AWF’s Cert. Petition
It attacked what petitioner perceived as the rule established by the Second Circuit that a secondary work visually similar to the original can never be transformative. The AWF asserted this result can’t be squared with the dictum in Google v. Oracle, at 141 S. Ct. at 1203, that a precisely replicated work, seemingly referring to Warhol’s use of the Campbell’s Soup can, may be fair use:
An ‘artistic painting’ might, for example, fall within the scope of fair use even though it precisely replicates a copyrighted ‘advertising logo to make a comment about consumerism.
II. Supreme Court Argument Summary
The argument before the Court on October 12, 2022, scheduled for 70 minutes lasted 100 minutes. Roman Martinez, argued for the AWF; Lisa Blatt represented Goldsmith; and Yaira Dubin appeared for the government. As demonstrated below, the Justices were skeptical of Mr. Martinez’s argument; they rarely challenged Ms. Blatt’s assertions and were most deferential to Ms. Dubin, seemingly asking the government to write a portion of the opinion.
A. Mr. Martinez’s Argument
In his argument Mr. Martinez’s tried to expand the transformative inquiry to include all the works in the Prince Series, not just Orange Prince. He asserted the series, when created, was transformative because each work conveyed a new meaning or message. Trans. 3:11-15, 35:24-37:5. But the Justices’ primarily focused on the commercial license of Orange Prince. As Justice Sotomayor stated to Mr. Martinez, “let’s look at the 2016 license of Orange Prince, which is what I thought this case was about.” Trans. 8:18-20 (all references to “Trans.__” refer to the transcript of the oral argument found here).
In examining that 2016 license, the Justices raised questions implicating factors one and four. The Justices’ first factor concerns included that a test resting transformation solely on new meaning/message would damage the derivative right; invited disputes about what the new meaning might be; would be easily manipulated and difficult to apply and would retrospectively benefit from Warhol’s fame. The Justices’ fourth factor issues focused on whether Orange Prince was a superseding use because it and the Goldsmith Photo shared the same market and commercial purpose.
Here is a summary of the questions and concerns the Justices raised during Mr. Martinez’ argument supplemented by audio clips of some of those concerns.
B. First Factor Concerns
Chief Justice Roberts commented there would be nothing “left to the original author for derivative works” if a copier using technology “put a little smile on Prince’s face and sa[id] this is a new message. The message is Prince can be happy.” Trans. 12:9-15, 13:6-10.
i. Damage to Derivative Right
Justice Sotomayor stated derivative works also “add something new” “[s]o why shouldn’t they be protected as well according to your theory?” Trans. 6:2-9.
Justice Barrett stated, “one of the problems that you have, as evidenced by a lot of the questions that you’ve been getting, is with the derivative works protection, you know, which, in, you know, [§]106(2), actually talks about transforming any other form in which a work may be recast, transformed, or adapted. And it seems to me like your test, this meaning or message test, risks stretching the concept of transformation so broadly that it kind of eviscerates Factor 1 and puts all of the emphasis on Factor 4.” Trans. 52:3-14.
ii. Difficulties Determining the New Message
Justice Alito observed, “[t]here can be a lot of dispute about what the meaning or the message is.” Trans. 25:5-10. Implying that he might disagree with the meaning ascribed to Orange Prince by the AWF, Justice Alito added, “[s]ome people would say it’s not necessarily the meaning or the message that the artist had in mind.” Trans. 24:10-12.
Justice Kagan wondered how a court how should determine that the follow-on work added something “important” “that does something … we really need to hear or to see”? Trans. 25:16-18, 26:8-15.
iii. New Meaning Easily Manipulated
Justice Thomas, demonstrated how easily a copier can add a new message to an existing work. He asked whether it might be fair use if he, playing the role of a Syracuse football fan, made Orange Prince into a giant poster, added “Go Orange” underneath and marketed the poster “to his buddies.” Trans. 42:20-24, 44:4-5. When Mr. Martinez suggested this use of Orange Prince would not be fair, Justice Thomas replied, “you’ve just changed position with Goldsmith then.” Trans. 44:19-20.
iv. Reliance on Hindsight
Justice Kagan asked whether the AWF was attempting to benefit from hindsight stating, “we know who Andy Warhol was … and what his works have been taken to mean, so it’s easy to say that there’s something importantly new in what he did with this image.” Trans. 37:9-12. The Justice added, “[b]ut, if you imagine Andy Warhol as a struggling young artist, … and then you look at these two images, you might be tempted to say something like, well, I don’t get it. All he did was take somebody else’s photograph and put some color into it.” Trans. 37:13-19.
v. No Justification
Justice Barrett stated, “Warhol didn’t need” [the Goldsmith Photo], right? I mean, it could have been a different photo of Prince.” Trans. 29:23-30:1.2
C. Fourth Factor Concerns
i. Market Harm
Justice Kavanaugh raised the issue that Goldsmith Photo and Orange Prince were “competing in the same market” with both “used in stor[ies] about Prince.” Trans. 16:13-22, 17:17-20.
Justice Sotomayor asked, “why doesn’t the fourth factor just destroy your defense in this case? Meaning you licensed directly to a magazine, which is exactly what the original creator does, and as Justice Kavanaugh said, it was licensing to the very topic that both do, which is two magazines that are talking about the life of … Prince.” Trans. 47:24-48:1-7.
Justice Jackson similarly commented that, although Orange Prince and the Goldsmith Photo may convey a different message, “both of those depictions are going in a magazine for a commercial nature, the purpose, the reason why you’ve used it, … is the same.” Trans. 51:18-22.
B. Lisa Blatt’s Argument
Lisa Blatt’s opening comments echoed many of the concerns the Justices expressed to Mr. Martinez. She stated, “[p]etitioner’s colloquial definition of the word ‘transformative’ is too easy to manipulate. The act also gives creators and not copiers the right to make derivative works that transform the original into new ones with new meaning. If Petitioner’s test prevails, copyrights will be at the mercy of copycats. Anyone could turn Darth Vader into a hero … without paying the creators a dime.” Trans. 61:22-62:7.
During the balance of Ms. Blatt’s argument, only the Chief Justice took up the AWF’s cause. He commented, “[i]t’s not just that Warhol has a different style. It’s that unlike Goldsmith’s photograph, Warhol sends a message about the depersonalization of modern culture and celebrity status….” … “It’s a different purpose. One is the commentary on modern society. The other is to show what Prince looks like.” Trans. 69:13-20.
Ms. Blatt responded, “what do we perceive in Prince’s face, or what we think about when we think about what the author intended, would just drive a giant hole through a derivative work, which, by definition, is a work that adds new meaning to the original.” “Your test lies madness in the way of almost every photograph to a silkscreen or lithograph or any editing. Trans. 70:3-8, 71:22-24.
Ms. Blatt, displaying the confidence derived from considerable Supreme Court experience, added, “I guarantee the air-brushed pictures of me look better than the real pictures of me, and they have a very different meaning and message to me.” Trans. 71:24- 72:2.
Ms. Blatt concluded asking the Court to reject “a bare, unadorned new meaning or message test … not tied to any purpose other than I want to make some money off some art and I had some really cool idea here.” Trans. 86:14-17.
C. Yaira Dubin’s Argument
Ms. Dubin began by noting the AWF’s lack of justification, stating the AWF had “never tried to show that copying the Goldsmith photograph’s creative elements was essential to accomplish a distinct purpose.” Trans. 87:7-10. She then focused on the damage to the derivative right the new meaning/message test would cause. Ms. Dubin warned that “sequels, spinoffs, adaptations” all derivatives, “would become fair game if conveying a different meaning confers license to copy.” Trans. 87:24-88:4. She also argued that the evisceration of the derivative market would cause artists to lose the incentive to create, thereby destabilizing industry licensing practices. Trans. 101:5-102:1.
She later argued the borrowing by the AWF was unlike Warhol’s use of the “very well-known commercial [Campbell’s Soup] advertising logo,” whose “effect on the audience depended on [the logo’s] incorporation.” Trans. 109:3-6.
Justice Gorsuch agreed that the Campbell’s Soup example would not save the AWF stating, “Campbell’s Soup seems to me an easy case because the purpose of the use for Andy Warhol was not to sell tomato soup in the supermarket. It was to induce a reaction from a viewer in a museum or in other settings. And the difficulty of this case is that this — this particular image is being used arguably maybe for the same purpose, to identify an individual in a magazine, okay, in a commercial setting.” Trans. 109:10-19.
Justices Kagan, Kavanaugh and Barrett finally asked Ms. Dubin to articulate the narrow standard that would justify copying, assuming the Court were to decide in Goldsmith’s favor. After some back and forth, Ms. Dubin stated that copiers could only copy if “necessary or essential or at least useful.” Trans. 111:22-115:13.
The Court now has at least four options, all of which Ms. Dubin outlined. Trans. 103:17-105:12. First, the Court could vacate the opinion below and send the matter back to the Second Circuit with instructions to give more weight to meaning and message in the analysis of the first factor. Second, if the Court agreed with how the Second Circuit decided the first factor, the Court could affirm and stop there because that was the sole issue on cert. Third, the Court could also affirm for the reasons raised in the briefs by Goldsmith, the government and their amici. Fourth, the Court could affirm and then in its opinion clarify the boundaries of transformation for creative works.
But whatever option the Court chooses, it is apparent from the multiple concerns expressed by the Justices at the argument that the Court will not find that a new meaning or message alone is enough for transformation. Hopefully in reaching that result, the Court will provide badly needed guidance for the lower courts and litigants on the contours of and criteria for transformation for visual works. As one amici argued, “[t]he meaning of ‘transformative use’ has become amorphous to the point of incoherence. The transformative concept fails to produce principled, consistent results or to provide useful guidance regarding what secondary uses qualify as fair use. Thus this concept imposes no real constraints on the power of courts to authorize unlicensed uses under the guise of fair use.” Docket # 59, Amicus Brief of The Motion Picture Association, Inc. dated June 17, 2022, at p. 6. I agree.
Stay tuned with fingers crossed.
1. © Andrew Berger 2023
2. As my firm pointed out in the amicus filed in this case, transformation was proposed by Judge Leval in his Harvard Law Review article “as one of several tools for reaching the more important and fundamental issue of whether the infringer had a fair justification for what it took.” Docket # 114, Amicus filed by Leichtman Law PLLC on behalf of photographers Gary Bernstein and Julie Dermansky dated August 15, 2022, at p. 10.