Caroline Rimmer
On Monday, March 28, 2022, the United States Supreme Court granted certiorari in Andy Warhol Foundation, Inc. v. Goldsmith. This case concerned a series of silkscreen prints and pencil illustrations created by Andy Warhol that were based on a 1981 photograph of Prince taken by Lynn Goldsmith. Andy Warhol received a license to create one work of art based on Goldsmith’s photograph. However, unbeknownst to Goldsmith, Warhol actually created 15 works based on her photograph (these works are referred to as the “Prince Series”). Goldsmith did not learn of the additional works until they were published in Vanity Fair immediately following Prince’s death in 2016.
The publication led Goldsmith to notify the Andy Warhol Foundation (AWF) that she believed the Prince Series violated her copyright in the photograph. AWF responded by suing Goldsmith for a declaratory judgment that the Prince Series was non-infringing, or, alternatively, that they were allowable under a fair use defense. Goldsmith countersued alleging copyright infringement.
The United States District Court for the Southern District of New York deemed Andy Warhol’s use fair and granted summary judgment to AWF. Goldsmith appealed to the Second Circuit, whose decision, according to the recently granted Petition for a Writ of Certiorari, “creates a circuit split and implicates deeper confusion over the transformative use test.”[1]
The transformative use test falls under the first fair use factor found in 17 U.S.C. §107(2), which reads in part, “the purpose and character of the use.”[2] S.D.N.Y. found the Prince Series transformative under this factor because Goldsmith’s photograph portrays Prince as “not a comfortable person” and a “vulnerable human being”, whereas the Prince Series portrays Prince as an “iconic, larger-than-life figure.”[3] In reversing S.D.N.Y.’s decision, the Second Circuit stated that the lower court misconstrued their decision in Cariou v. Prince to express a de facto rule that any secondary work is necessarily transformative if that work has “a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.”[4] This is problematic because fair use is necessarily a “context-sensitive inquiry,[5]” and, as such, bright line rules are inappropriate. The Second Circuit also expressed concern that the District Court’s analysis was too subjective, eschewing the Supreme Court’s famous call for judicial aesthetic neutrality in Bleistein.[6]
The Second Circuit further expressed concern that finding Warhol’s use to be fair would risk something of a merger of works that would otherwise be considered derivative works into the fair use doctrine. The Second Circuit’s concern appears to be that doing so would effectively obliterate the ability of copyright owners to fully appreciate their exclusive right to create derivative works based on their copyright-protected work, as provided for in 17 U.S.C. §106(2).
The Second Circuit thus asserted that the proper test for transformativeness is “the secondary work’s transformative purpose and character 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.”[7] On the other hand, the test articulated by the Supreme Court, the Ninth Circuit, and other courts of appeal is that a work is transformative when it conveys a different meaning or message from its source material.[8] The question on which the Supreme Court granted certiorari is which is the correct test.
One amicus brief warns that the Second Circuit established a harmful rule, which they assert states “that when two works of visual art are facially similar enough, they are never transformative,” which they assert runs counter to the law and is inconsistent with the First Amendment.[9] On the other hand, Goldsmith asserted that the petition for a writ of certiorari “mischaracterizes [the Supreme] Court’s precedent and the Second Circuit’s opinion in an attempt to manufacture a circuit split that does not exist.”[10] Goldsmith also stated that the Second Circuit had applied the Supreme Court’s test for transformativeness.
[1] https://www.supremecourt.gov/DocketPDF/21/21-869/204630/20211209140512568_2021-12-09%20Andy%20Warhol%20Foundation%20Cert%20Petition%20with%20appendix.pdf
[2] https://www.govinfo.gov/content/pkg/USCODE-2010-title17/html/USCODE-2010-title17-chap1-sec107.htm
[3] Andy Warhol Found., Inc. v. Goldsmith 11 F.4th 26 (2d Cir. 2021)
[4] Id.
[5] Cariou v. Prince 714 F.3d 694 (2d Cir. 2013).
[6] Bleistein v. Donaldson Lithographic Co. 188 U.S. (1903).
[7] Andy Warhol Foundation, Inc. v. Goldsmith
[8] https://www.supremecourt.gov/DocketPDF/21/21-869/204630/20211209140512568_2021-12-09%20Andy%20Warhol%20Foundation%20Cert%20Petition%20with%20appendix.pdf
[9] https://www.ipwatchdog.com/2022/03/28/high-court-grants-warhol-petition-asking-guidance-fair-use-doctrine/id=147934/
[10] https://www.supremecourt.gov/DocketPDF/21/21-869/213328/20220204140247759_AWF%20v.%20Goldsmith%20-%20Brief%20in%20Opposition.pdf