New US Supreme Court ruling limits copyright ‘fair use’ defence

Introduction

‘Fair use’ is a doctrine under US law that permits the use of copyrighted works without the permission of the copyright owner. It is one of the limitations to copyright intended to balance the right of copyright owners to exploit their own work with the public interest of widening the availability of literature, art, and other creative works. Fair use is a general exception to copyright that applies to a range of different uses and to all types of works. It is wider in scope than the UK ‘fair dealing’ doctrine which only applies to some types of works and only for a specific purpose, for example, research, parody, news reporting or criticism and review. When relying on the UK fair dealing exemption, more consideration is required to ensure that every single use of the copyrighted works is proportionate and connected to the exempt purpose.

In the US, Section 107 of the Copyright Act 1976 identifies criticism, comment, news reporting, teaching, scholarship, or research, as examples of fair uses in respect of which the exemption can apply but does not limit the doctrine to these uses. As a result, fair use is flexible and can adapt to technological changes. For example, Google was able to rely on fair use in relation to its copying of 11,500 lines of code from Java’s programming interface for use in its android operating system. However, the recent Supreme Court case of Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (598 U.S. ___, 2023) may have limited the ‘fair use’ doctrine in relation to some uses of artistic works.

Background

In 1981, the rock photographer, Lynn Goldsmith, was commissioned by Newsweek to photograph Prince for publication in the magazine. Photographs of Prince were taken in concert and in Goldsmith’s New York studios. One of the concert photographs was run by Newsweek, together with an article entitled “The Naughty Prince of Rock”. Goldsmith retained copyright in all of the photographs and over the years they were licensed for publication in magazines such as Musician, People, Guitar World, and Reader’s Digest.

In 1984, a one-use licence for one of Goldsmith’s studio photographs of Prince (the “Photograph”) was granted to Conde Nast to be used as an “artist reference for an illustration” in Vanity Fair magazine. No other rights were granted, and Goldsmith received $400 and a source credit. The artist Andy Warhol was subsequently commissioned to use the Photograph as a template to create a portrait of Prince which was published in Vanity Fair. Unknown to Goldsmith, however, was that Warhol used the Photograph to create a series of 14 silkscreens and two pencil illustrations of Prince (the “Prince Series”). The works from the Prince Series have been sold for over six figures and have been displayed in galleries, museums, and other public venues.

In 2016 Vanity Fair published an image from the Prince Series (“Orange Prince”) on its front cover for a special issue commemorating Prince’s death. Its publisher, Conde Nast, paid the Andy Warhol Foundation (the “AWF”) $10,250 for a licence to use Orange Prince but did not pay anything to Goldsmith. Goldsmith did not know about the Prince Series until she saw Orange Prince on the cover of Vanity Fair. She complained about the use of the Photograph and in response the AWF issued proceedings against her for a declaration that the licensing of the Prince Series was protected by fair use. Goldsmith issued a counterclaim for copyright infringement.

District Court

In 2019 the District Court granted summary judgment for AWF. The Court considered the four fair use factors which in the US are applied to the facts of a case to determine whether a use of a copyright work is “fair”, those factors are as follows:

The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
The effect of the use upon the potential market for or value of the copyrighted work.

(Section 107 of the Copyright Act 1976)

In particular, with regard to the first fair use factor, the District Court held that the Prince Series was “transformative” because the new works had a different character to the Photograph. The works gave the Photograph a new expression and employed new aesthetics with creative and communicative results distinct from the Photograph. The District Court said that the Prince Series “transformed Prince from a vulnerable, uncomfortable person to an iconic, larger than life figure” such that every Prince Series work is recognisable as a “Warhol” rather than as a photograph of Prince.

The 2nd Circuit Court of Appeals

The decision of the District Court was overturned in 2021 by the 2nd Circuit Court of Appeals which held that all four of the fair use factors favoured Goldsmith. On the first fair use factor (purpose and character of the work) the Court of Appeals said that it is wrong that any secondary work that adds a new expression to its source material is transformative. The relevant question was “whether the secondary work’s use of its source material is in service to a fundamentally different and new artistic purpose and character”. In this case, however, the Court of Appeals considered that the purpose and function of the two works was identical, as they were both works of visual art and portraits of the same person. The Court of Appeals also rejected the idea that the Prince Series was transformative because it was easily identifiable as a “Warhol”, as it considered that this would create a celebrity-plagiarist privilege. On the other three factors, the Court of Appeals considered that the creative and unpublished nature of the Photograph favoured Goldsmith. The amount of the Photograph used in the Prince Series was unreasonable. AWF’s commercial licensing of the Prince Series had encroached on Goldsmith’s market for the Photograph, including her ability to license it to publications and to other artists to create derivative works.

Supreme Court Judgment

AWF appealed the judgment of the 2nd Circuit Court of Appeals. The sole question presented to the Supreme Court was whether AWF could defend a claim of copyright infringement in respect of the licensing of Orange Prince to Conde Nast because it made fair use of the Photograph. The Supreme Court expressed no opinion as to the creation, display, or sale of any of the original Prince Series works. The Supreme Court said that the first fair use factor focuses on whether an alleged infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations such as commercialisation. The central question of the first fair use factor is whether the new work merely supersedes the objects of the original creation, supplanting the original, or instead adds something new, with a further purpose or different character (Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) at 579 ). Although new expression, meaning or message may be relevant to this balancing test, it’s not determinative.

The Supreme Court said that a typical use of a photograph of a celebrity is to accompany stories about the celebrity, often in magazines. Goldsmith has licensed her Prince photographs to illustrate stories about Prince including when Prince died. Photographers may also licence their photographs to serve as a reference for another artist, such as when Goldsmith licensed the Photograph in 1984 to Conde Nast. AWF licensed an image of Orange Prince to be published in Vanity Fair magazine celebrating the life and work of Prince. In addition to the image of Orange Prince, the edition contained many studio and concert photographs of Prince. In this context, the purpose of the image of Orange Prince was substantially the same as that of the Photograph. Both are portraits of Prince used in magazines to illustrate stories about Prince. The Supreme Court also said that AWF received $10,250 for the licence to Conde Nast which weighed against a finding of fair use. Both factors taken together, i.e., the purpose of the licence and its commercial nature, indicated that the use was not fair.

The Supreme Court, however, stressed that this did not mean that all derivative works which borrow heavily from an original are unfair. The Supreme Court gave the example of Warhol’s “Campbell’s Soup Cans” series as an example of fair use in a derivative work. The Campbell’s Soup Cans series comprises 32 paintings on canvasses of cans of Campbell’s soup including the distinctive Campbell’s logo. The purpose of Campbell’s logo is to advertise soup. Warhol’s canvasses do not share that purpose, rather they serve as an artistic commentary on consumerism. The incorporation of the Campbell’s logo into the work enables the commentary as the logo is well-known to the public and is a symbol of mass consumerism. It conjures up the original work, i.e. the logo, to comment on the work itself. By contrast, AWF’s use of the Photograph, does not target the Photograph.

AWF contended that the Prince Series is transformative because the works convey a different message than the Photograph. The Prince Series comments on the dehumanising nature of celebrity and this new meaning or message makes the use “transformative”. The Supreme Court did not agree that this new expression was sufficient to make the use transformative. Otherwise, “transformative use” would remove the copyright owner’s exclusive right to prepare derivative works. The Supreme Court referred to the case of (Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) at 579) in which the rap group “2 Live Crew” had copied Roy Orbison’s song Pretty Woman to create a parody song. The new version of the song easily conveyed a new meaning or message and had a different aesthetic. However, the Supreme Court went further in its analysis, considering to what extent the 2 Live Crew song parodied the original. In Campbell, for purposes of copyright law, the heart of any parodist’s claim to quote from existing material was the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on the original work. The meaning or message was simply relevant to whether the new use served a purpose distinct from the original.

The Supreme Court also considered the analysis of the first fair use factor in the recent case of Google LLC v. Oracle America, Inc., 593 U. S. ___ (2021). In this case Google had copied 11,500 lines of code from the Java Programming Interface for use in its android operating system for mobile telephones. The Supreme Court considered the original use of the code which was created for use in desktops and laptop computers, and contrasted Google’s use of the code in the “distinct and different computing environment” of its own Android platform, a new system created for new products. The use was different and also justified because “shared interfaces are necessary for different programs to speak to each other” and because “reimplementation of interfaces is necessary if programmers are to be able to use their acquired skills”.

The Supreme Court, in agreement with the Court of Appeals, also held that a judge should not assume the role of art critic and evaluate the significance of an artistic work. The meaning of the secondary work should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original, for instance, because it provides commentary unavailable from the original. If it is assumed that the Photograph’s portrayal of Prince is photorealistic and the Orange Prince’s portrayal is iconic, that difference must be evaluated in the context of the specific use at issue. The use is the commercial licensing of the image in a commemorative issue of Vanity Fair. 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 the Photograph, that degree of difference is not enough for the first fair use factor to favour AWF, given the specific context and commercial nature of the use.

As such, the Supreme Court held that the circumstances of AWF’s licensing of Orange Prince outweighed its claim to fairness under the first factor. The purpose of the licensing of the image of Orange Prince was to illustrate stories about Prince, which was very similar to the typical use of the Photograph. No compelling justification was provided by AWF to justify the use of the Photograph. The Supreme Court affirmed the judgment of the Court of Appeals that the first factor favoured Goldsmith and returned the case to the lower courts for the proceedings to continue to trial.

The Dissenting Opinion

In the dissenting opinion, two of the justices considered that the first fair use factor favoured AWF’s use of the Photograph. The opinion stated that the majority were “uninterested in the distinctiveness and newness of Warhol’s portrait.” And warned that the decision “will impede new art and music and literature” and “thwart the expression of new ideas and the attainment of new knowledge.” However, in response to this criticism, the majority of the justices considered that it would not impoverish the world for AWF to pay Goldsmith a fraction of the proceeds from its reuse of her work. Payments like these acted as incentives for artists to create original works in the first place.

Comment

Whether a work, which incorporates another copyrighted work, is transformed by the addition of a new message or meaning will not on its own tilt the first fair use factor in favour of fair use. The new work must also have a different purpose than that of the original work which means it does not supersede it.

Some commentators have heralded Andy Warhol Foundation v Goldsmith as a re-write of an entire body of case law which had previously focused on the analysis on whether the new work was transformative. It has been pointed out that the decision makes it more difficult for those in the art world to work out whether a creative work is protected by fair use or not. One use of the work may be considered fair use, but another may be unfair. As one of the justices said in a concurring opinion in Andy Warhol Foundation v Goldsmith under the first fair use factor the display of the Prince Series in a non-profit museum may be fair use. However, the licence of an image of the Prince Series for publication in a magazine is not fair use. Other commentators have welcomed the decision as licensing photographs for publication and for use in derivative works is how photographers make a living. Licences provide an economic incentive to create original works which is the goal of copyright protection.

The case will now be returned to the district court for proceedings to continue to trial. It is likely that the district court will make a finding of copyright infringement against AWF. The appeals courts have ruled that the four factors of the fair use defence favour Goldsmith, and the Court of Appeals previously found that the Prince Series is substantially similar to the Photograph.