SCOTUS to look at ‘fair use’ in Warhol 'Prince Series' case
US Supreme Court to hear arguments in landmark copyright case | Lawyers offer insights into what’s at stake for IP | Decision will affect many creative industries.
What defines a transformative work? And how far does the scope of the ‘ fair use’ legal doctrine extend?
Tomorrow, October 12, the US Supreme Court will hear oral arguments in the landmark Andy Warhol Foundation for the Visual Arts v Goldsmith dispute, and is set to potentially address these critically important questions.
In doing so, the court could deliver a decision with far-reaching consequences for the application of the ‘fair use’ doctrine, and its effect on copyright owners.
The dispute has even prompted an intervention by the US government, which supports an appeal court's decision that a print created by the artist Andy Warhol used on a magazine cover infringed a photographer’s copyright.
On the eve of the decision, lawyers offer WIPR viewpoints on the case, and what it could portend for future copyright cases.
Samuel Lewis, co-chair of Cozen O’Connor’s copyright practice
What is the significance of this case? The answer to the question depends upon who you believe. Some of the briefings suggest that what is at stake is the future of artistic freedom and freedom of expression, while other briefings suggest that this case has the potential to transform copyright law into ‘all copying, no right’.
My own view is that this case has the potential to help reinforce, and perhaps clarify, how courts should approach fair use issues.
Since the Supreme Court’s decision in Campbell v Acuff Ros e (1994) involving the song “Pretty Woman”, various courts have broadened the scope of fair use as it relates to photographs and artwork.
Last year, in Google v Oracle—a case involving computer programs, not photography or art—the court had an opportunity to change the scope of fair use, and did not do so.
Still, this case has the potential for changing the way that courts approach fair use issues, and may further transform the concept of transformation as applied to fair use.
The makeup of the Court has changed somewhat since the Google decision. Justice Stephen Breyer, who delivered the opinion in Google, has now retired and been replaced by Justice Ketanji Brown Jackson. Justice Amy Coney Barrett did not take part in the Google decision. I will be watching what questions, if any, each of these justices raise during oral argument. That said, attempting to predict the court’s opinion based on the questions that certain justices present at oral argument is, at best, a dicey proposition.
The concept of transformation is not just central to fair use, it is also a definitional part of the concept of a derivative work. I will also be watching to see if the court addresses the concept of transformation in a way that harmonises fair use and the definition of a derivative work.
Stephanie Bunting Glaser, counsel, Patterson Belknap Webb & Tyler
The Supreme Court’s decision could have a far-reaching impact on many creative industries, whether it affirms or reverses the Second Circuit’s decision. Creators, including writers, filmmakers, musicians, visual artists and software developers, both depend on the enforcement of their copyright rights (including the right to make derivative works) and sometimes invoke the fair use doctrine as a defence when their creations involve references to others’ works.
Affirming may in fact chill artistic speech by hindering the ability of creators like appropriation artists to build on the works of others, but reversal may deprive other artists who are dependent upon the economic enforcement of their copyright rights of some of their livelihood.
There are no bright lines in the evaluation of fair use and the US Supreme Court could, at least, clarify how lower courts should apply the ‘transformative’ use analysis post-Google v Oracle. Courts will continue to have to balance the constitutional objectives of advancing First Amendment values with the rights of the copyright owners to control and economically benefit from the use of their copyrightable works, but perhaps they will have more guidance when that balance involves visual works.
Erik Kane, counsel, Hunton Andrews Kurth
At issue is the inherent tension between a copyright owner’s exclusive rights to create derivative works versus a secondary author’s statutory and First Amendment right to make fair use of a primary work.
The Foundation challenges the Second Circuit’s rejection of the “change in meaning or message” test laid out in the Supreme Court’s Campbell decision. Warhol created a series of prints of the musician Prince based upon a photograph of the musician taken by the respondent. The Second Circuit noted that in assessing fair use and in particular the first prong of that analysis where the secondary work is transformative, the secondary author must do more than merely impose a new artistic style to the original work. The Second Circuit held that the secondary work must have a distinct artistic purpose from the original work.
Yet the Second Circuit’s proposed transformative test raises highly subjective determinations of artistic purpose. As noted by the petitioner, courts have been loath to be arbiters of artistic merit. Taking on such a role would tend to chill free speech based upon the subjective beliefs of the judge applying the test. In a divisive political climate where one side accuses the other of peddling disinformation and seeks to suppress such opposing viewpoints, only to have such claims validated or refuted after the fact, we can see the dangers of censorship—and in particular allowing judicial determinations of what is allowable speech.
While there does exist a tension between the right to create derivative works and allowing fair use by transformative works, the US Copyright Act already addresses that tension in the fourth statutory fair use factor of whether the secondary work subverts the market for the original work. Application of the Supreme Court’s Campbell test of a “change in meaning or message” presents a more workable objective solution than discerning artistic purpose and avoids the tendency to chill free speech. To the extent that a copyright owner is concerned with their ability to market derivative works, that concern is addressed by the fourth fair use factor, which will be balanced with the first factor should a work be deemed transformative.
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