IP Law Daily, COPYRIGHT NEWS: Supreme Court must resolve a split over the ‘transformative use’ doctrine, new petition asserts, (Dec 15, 2021)

By Matthew Hersh, J.D.

The petition for certiorari, if accepted by the High Court, could bring needed clarity to the application of fair use in the setting of visual arts.

A recent decision from a federal appellate court in New York “casts a cloud of legal uncertainty over an entire genre of visual art” and must be reversed, a petition for certiorari at the Supreme Court has argued. The petition, filed last week by an arts foundation established by the late Andy Warhol, urges the Supreme Court to resolve a circuit split over the fair use doctrine that, in the words of the filing, could lead to “the untenable result that creative works of tremendous cultural significance could be lawful in one jurisdiction, and unlawful in another.”

The players in the drama before the high court include prominent artists in the fields of music, photography, and visual arts. On the one side is Andy Warhol, arguably one of America’s most famous artists and a prominent leader of the visual arts movement known as pop art. Many of his works, such as the famous silkscreen paintings of Marilyn Monroe and Campbell's soup cans—to this day, a Google search for images of “Campbell” leads quickly to websites featuring his works—are characterized by their borrowing of pre-existing images and their reimagining in a different form and style.

In the other corner is Lynn Goldsmith, a celebrity photographer whose work has been featured by The Smithsonian National Portrait Gallery, The Museum of Modern Art, The Rock and Roll Hall of Fame, and many others. Goldsmith has achieved particular notoriety for her photographs of the music world, having done over 100 album covers and documented such well-known artists as David Bowie, Bruce Springsteen, Patti Smith, and Mick Jagger (who is captured in one of her photos as it happens, alongside Andy Warhol).

The background for the case involves a photograph that Goldsmith took of yet another entertainment icon, the musician Prince. In 1981, as Prince was just beginning to come to prominence—his 1982 album “1999” would soon propel him to worldwide fame—Goldstein took a series of portrait photos of the famously reclusive musician. Prince, nervous and uncomfortable during the session, in the words of the Second Circuit, “retired to the green room shortly after the session began and ultimately left without allowing Goldsmith to take any additional photographs.” Nonetheless, Goldsmith took 23 photographs, one of which was licensed to Vanity Fair to be used, with her permission, as an “artist reference”—meaning that an artist would create a work of art based on the image. The artist, as it happened, was Andy Warhol, and the image as it appeared in the magazine is shown here.

The lawsuit. The litigation at issue here arose 32 years later, in 2016. In that year, Goldsmith became aware for the first time that Warhol had made not only the one image for Vanity Fair but also 15 additional works based on the original photo. Goldsmith contacted the Andy Warhol Foundation for the Visual Arts, the successor to the artist’s copyrights, and requested that they stop licensing and otherwise using the works. The Warhol Foundation sued Goldsmith in the Southern District for a declaration of non-infringement on fair use grounds. The Second Circuit eventually found—after several rounds in the courts—that the Warhol images could not be protected under the doctrine of fair use.

The court’s opinion rested centrally on its determination that the work could not be considered a “transformative use” under fair use doctrine. Fearing that “an overly liberal standard of transformativeness risks crowding out statutory protections for derivative works,” the court noted as a general rule that where a secondary work does not obviously comment on or relate back to the original—as the Warhol works did not—then the secondary work “must reasonably be perceived as embodying an entirely distinct artistic purpose” and conveying a “new meaning or message” entirely separate from its source material. Central to this inquiry, the court noted, was the extent to which the original work would be “recognizable” by viewers of the second work. A touchstone example of such a permissible use, the court noted, would be “works that have themselves been distinct works of art that draw from numerous sources,” rather than works, such as the Warhol prints, that “simply alter or recast a single work with a new aesthetic.” Although the court stopped short of saying that the primary work must be “barely recognizable” within the secondary work, it emphasized that work would not be transformative if it “remains both recognizably deriving from, and retaining the essential elements of, its source material.” Under this test, the court held, the Warhol prints failed.

The petition. The Warhol Foundation poses three arguments in its request for review of the Second Circuit decision.

First, the petition asserts, the Second Circuit’s decision conflicts with two leading copyright decisions from the Supreme Court, Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) and Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021). In Campbell, the Court found that a rap group’s use of the 1960s song “Oh, Pretty Woman” was transformative because it involved “use of some elements of a prior author’s composition to create a new one.” Likewise, in Google, a case involving the copying of computer code in order to make a later software program compatible with an earlier one, the Court underscored that whether a new work is transformative turns on whether that work “‘adds something new . . . [by] altering’ the copyrighted work ‘with new expression, meaning or message.’” The Second Circuit violated this principle, the petition asserts, by stylizing the test as “the visual and aesthetic differences between two works—not their different message or meaning.” Moreover, in each of those cases, there was no dispute that the second work “recognizably deriv[ed] from, and retain[ed] the essential elements of,” the former. The Second Circuit’s test was therefore inconsistent with these precedents.

Second, the petition asserts, the decision below created a split with other circuit courts. Most importantly, the petition asserts, the decision creates a split with the Ninth Circuit—the so-called “Hollywood Circuit” that, along with the Second Circuit, handles the lion’s share of copyright cases in the country. Under the Ninth Circuit’s test, as laid out in Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013), a secondary work is “typically viewed as transformative as long as new expressive content or message is apparent.” In that case, the court found a transformative use where the band Green Day used an artist’s work—“a drawing of a screaming, contorted face”—during a video that played in the background of a performance. The use was transformative, the court held, because the original artwork conveyed nothing but a “directionless anguished” face, while the Green Day video infused it with political content, incorporating it into a video that commented about religion. Cases in the Sixth Circuit—due largely to Nashville, another prominent copyright circuit—take the same approach, the petition asserts, as do opinions from the First, Fourth, Third and Federal Circuits.

Finally, the petition asserts, the Second Circuit’s approach, if left undisturbed, “will chill artistic expression and undermine First Amendment values.” Many great modern artists do not make the kind of aesthetic change that would be demanded of the Second Circuit’s transformative use test. Indeed, the petition notes, the very “pop art” movement of which Warhol was a prominent member could be threatened by the Second Circuit’s decision. The court’s rule therefore “has the effect of hollowing out Congress’s duly enacted fair use defense in the context of visual art.”

Next steps. The response to the petition is due on January 12. The petition faces relatively long odds in the Supreme Court, as typically only a very small percentage of petitions for certiorari in civil cases are granted—though that number goes up slightly when one focuses on petitions from experienced Supreme Court practitioners. An important factor is whether the Court reaches out to seek the opinions of the Solicitor General, as it often does in copyright cases. If the SG weighs in to support the petition, that will increase dramatically the odds of a grant.

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