The Sincerest Form of Flattery (Not)

Bilzin Sumberg Publication
April 8, 2022
In a somewhat shocking decision handed down in March 2021, the Second Circuit ruled against the Andy Warhol Foundation for Visual Arts in a copyright infringement suit brought by a photographer whose photos of Prince Andy Warhol were used for artwork bearing Warhol’s distinctive style and flair. The Foundation claimed fair use of the photographs, but the Court said fair use did not excuse the use of the original photographs in that case.

What was shocking about the decision was that less than a decade before, the same Second Circuit ruled in a case involving artwork created by the appropriation artist Richard Prince that his use of photographs of Rastafarian men taken by another photographer was fair use. In fact, the Court referred to Warhol works taken from photographs such as his portrait of Marilyn Monroe in ruling for Richard Prince.

And in 2020, the Second Circuit held in a case involving music sampling by Drake of a portion of a Jimmy Smith song, to be fair use of the song because the sample (although taken note for note) was transformative.

In the Warhol case, the Second Circuit seems to be having second thoughts about the reach of its prior decisions finding fair use. Not surprisingly, given this sudden turn of events, the Warhol Foundation appealed to the U.S. Supreme Court. Last week, the Court granted certiorari to hear the appeal. This will be the second time in less than a year that the Supreme Court has weighed in on fair use, after a 27 year hiatus since the Court’s seminal Campbell vs Acuff-Rose decision in 1994 unanimously holding that a parody of the Roy Orbison song Pretty Woman by 2 Live Crew was fair use. In April 2021, 10 days after the Warhol decision, the Supreme Court ruled in Google vs Oracle America that Google’s use of a portion of the Oracle Java computer program in Google’s Android operating system constituted fair use.

The Supreme Court’s further review of fair use is welcome news. Since the Campbell decision, in which the Court clarified that the 4-factor test set forth in the Copyright Act to determine fair use needed to be applied in toto, federal courts have wandered all over in deciding whether a particular work makes fair use of another’s work.

This is not surprising given the complexity of applying the 4-factor test to a myriad of new and different works. However, this wide range of interpretations has been frustrating to artists and practitioners alike who are unable to discern, with any degree of certainty, when a work of art has availed itself of the fair use doctrine and when it has not.

A little background. The owner of a copyright such as a photograph, a sound recording, or even a software program, has five exclusive rights to the work: reproduction; distribution; performance; display; and derivative works. However, because the Copyright Clause of the U.S. Constitution expressly states that these exclusive rights are intended “[to] promote the Progress of Science and the Useful Arts …”, the courts have implied a right to fair use of a copyrighted work even before the Copyright Act enshrined the concept in Section 106.

Section 106 of the statute sets forth a 4-part test for determining whether a work makes fair use of another work: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of the use upon the potential market for or value of the copyrighted work. In Campbell, the Supreme Court said that all of these factors must be considered, even if some may be more important than others in a particular case. 

The Supreme Court also emphasized, in connection with the first factor, that the “transformative” nature of the new work in relation to the old could be determinative. Justice Souter wrote that “the enquiry focuses on whether the new work merely supersedes the objects of the original creation, or whether, and to what extent, it is 'transformative,' altering the original with new expression, meaning, or message." [Italics added.] Moreover, “[t]he more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

Most subsequent courts presented with a fair use defense have focused on the transformative nature of the new work, but with widely divergent results. In many cases, the courts have assumed the role of art critic (as the Second Circuit did in the Richard Prince and Warhol decisions, despite protestations to the contrary), viewing each allegedly infringing work side-by-side and determining, on their own and without the benefit of extrinsic evidence or expert testimony, whether or not the new work transformed the original work.

Needless to say, most judges (indeed most lay persons, including yours truly) make poor art critics; as the saying goes, art like beauty is in the eye of the beholder. As a result, the decisions have created a hodgepodge of rulings that depend primarily on the reviewing court’s subjective review of works of art, even though the courts profess to be applying an “objective” standard. As with the legal definition of pornography, these judges may not be able to define transformation, but they sure know it when they see it.

This is a deplorable state of affairs and certainly not what the Framers intended when they included the Copyright Clause to “promote the Progress of Science and the Useful Arts.” Artists deserve a more definitive standard than judges judging their works as “transformative” or not. 

In Oracle, the Supreme Court again focused on the transformative nature of Google’s use of the Java program to find fair use. Using Oracle’s programming language as a building block for the Android platform constituted a legitimate fair use because Google “transformed” the Java program by implementing Java’s user interface to create new products and used “only what was needed to allow users to put their accrued talents to work in a new and transformative program.” [Italics added]. Thus, in the only two cases in which the Supreme Court has addressed fair use in the last 27 years, the Court in each case overwhelmingly found that fair use applied.

One hopes the Court in reviewing Warhol will further clarify the confusing jurisprudence that has sprung up since Campbell. If it does, one (the original artist) or the other (the transforming artist) is likely to be disappointed, but at least artists will have greater clarity as to what does and does not constitute fair use in today’s rapidly evolving artistic environment.
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