Andy Warhol Foundation v. Goldsmith: U.S. Supreme Court Clarifies Fair Use Defense in Copyright Law
The law of “fair use” in copyright cases – i.e., where certain limited uses of a copyrighted work are legal despite no permission from the copyright owner – has been ambiguous for many years. A primary reason for this ambiguity was the decision of the U.S. Court of Appeals for the Second Circuit in Cariou v. Prince, in which the court reversed a judgment for the copyright owner and held that a “transformative” use of a copyrighted work constituted “fair use” as a matter of law, and thus insulated the defendant from liability. In that case, the accused infringer had modified literal copies of the plaintiff’s photographs.
The Cariou decision has been criticized as essentially deleting the copyright owner’s exclusive right to create derivative works from the Copyright Act. Because federal copyright law is applied on a regional basis by the eleven regional circuit courts of appeals, there were stark differences in fair use law depending entirely on where in the United States the infringement complaint was filed. If a copyright case was filed in the Second Circuit, a defendant asserting a fair use defense could prevail in cases where he might otherwise would have been liable for copyright infringement had the case been filed in other federal judicial circuits.
Three years ago, the Supreme Court announced that it would accept and decide Google LLC v. Oracle America, Inc., another case focusing on the copyright defense of fair use. Many people hoped that the Court would resolve the split of circuit court authority. Unfortunately, the Court’s opinion in that case did not address the tension between the copyright owner’s exclusive right to control the creation of derivative works and the “fair use” factors. If anything, the Supreme Court’s Google opinion written by Associate Justice Breyer created even more ambiguity and uncertainty as to the proper scope of fair use.
Fortunately, last week the U.S. Supreme Court announced its decision in Andy Warhol Foundation v. Goldsmith, which has brought some much-needed clarity to fair use law. In a decisive 7-2 opinion, Associate Justice Sotomayor’s opinion recognized the copyright owner’s exclusive right to create derivative works, and that merely making changes to a work while using it in the same fashion as the copyright owner was not enough to support a fair use defense.
The Warhol case involved pop artist Andy Warhol’s modifications to a photograph of the musician Prince by photographer-artist Lynn Goldsmith. Originally, Vanity Fair magazine purchased a limited use license from Goldsmith that permitted Warhol to use the photograph as the basis for an illustration for that magazine. Subsequently, however, Warhol used the photograph to create additional works, without purchasing any license to do so from Goldsmith, despite the fact that at least some of the additional works were also for magazine illustrations.
After negotiations broke down, Goldsmith sued the Andy Warhol Foundation for copyright infringement. She contended that Warhol’s unlicensed use of her photograph infringed her exclusive rights, including the right to create derivative works. The trial court, citing the Cariou decision, held that because Warhol’s work was “transformative,” the Foundation prevailed on its fair use defense as a matter of law. On appeal, however, the Second Circuit Court of Appeals (the same court that had made the controversial Cariou decision) reversed the district court. This time, the Second Circuit found that merely adding a new aesthetic or expression to an existing work does not necessarily render the use sufficiently transformative to support a fair use defense. In so doing, the court of appeals seemed to recognize that it had gone too far in its Cariou decision in favor of infringers.
The U.S. Supreme Court has now affirmed the Second Circuit’s apparent retreat from Cariou, explicitly recognizing the tension between allowing the use of a work to create truly “transformative” works and the copyright owner’s exclusive right to create derivative works:
[A]n overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner’s exclusive right to create derivative works. To preserve that right, the degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative.
The Court thus ruled that where the “purpose and character” of the copyrighted work and the challenged work were the same (e.g., magazine illustrations), the mere fact that Warhol made changes to the Goldsmith work was not enough:
If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.
. . .
The use is [Andy Warhol Foundation’s] commercial licensing of Orange Prince to appear on the cover of Condé Nast’s special commemorative edition. The purpose of that use is, still, to illustrate a magazine about Prince with a portrait of Prince. Although the purpose could be more specifically described as illustrating a magazine about Prince with a portrait of Prince, one that portrays Prince somewhat differently from Goldsmith’s photograph (yet has no critical bearing on her photograph), that degree of difference is not enough for the first factor to favor AWF, given the specific context of the use. To hold otherwise would potentially authorize a range of commercial copying of photographs, to be used for purposes that are substantially the same as those of the originals.
The Court was careful to note that it was not deciding whether this reasoning might also be true for other uses of the work for different purposes (e.g., creation of gallery pieces, use in nonprofit educational materials, use in reviews or critiques, etc.).
Associate Justice Gorsuch, joined by Associate Justice Jackson, concurred in the majority opinion, and also pointed out the need to protect the original creator’s exclusive right to make derivative works when analyzing the fair use defense:
[T]he copyright statute expressly protects a copyright holder’s exclusive right to create “derivative works” that “transfor[m]” or “adap[t]” his original work. §§101, 106(2). So saying that a later user of a copyrighted work “transformed” its message and endowed it with a “new aesthetic” cannot automatically mean he has made fair use of it. To hold otherwise would risk making a nonsense of the statutory scheme—suggesting that transformative uses of originals belong to the copyright holder (under §106) but that others may simultaneously claim those transformative uses for themselves (under §107). We aren’t normally in the business of putting a statute “at war with itself ” in this way.
Dissenting, Associate Justice Kagan, joined by Chief Justice Roberts, argued that the Court’s decision could not be reconciled with the Court’s earlier Google v. Oracle decision, and that the ruling would stifle artistic creativity. (In both the majority opinion and the dissent, Associate Justices Sotomayor and Kagan repeatedly and pointedly criticized the other’s arguments to an extent that is surprising to many lawyers and commentators.)
The essential message of the Supreme Court’s Andy Warhol Foundation decision is that merely “making changes” to a copyrighted work, standing alone, is not sufficient to support a fair use defense. In so doing, the Court has recognized the existence and importance of the exclusive right to control the creation of derivative works, and has resolved the clear split in the law between the various federal judicial circuits.
