United States: Circuit To Warhol Estate: Google v. Oracle Does Not Dictate A Different Result

On August 24, the Second Circuit issued its amended decision in Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith et ano.¹  The case centers around a 1981 photograph of Prince taken by famous music industry photographer Lynn Goldsmith in her studio. In 1984, Goldsmith's agency licensed the photograph to Vanity Fair for use as an artist reference to create a work of art based on the image.  Unbeknownst to Goldsmith, Vanity Fair commissioned the artist Andy Warhol to use the photograph as a reference to create an image of Prince.  Also unbeknownst to Goldsmith, Warhol relied on her photograph to create a series of fifteen additional prints (the "Prince Series").

Goldsmith did not learn of the Prince Series until after Prince's death when Vanity Fair published its tribute magazine in May 2016 featuring the Prince Series image on the cover.  In that publication,Vanity Fair gave no credit or attribution to Goldsmith.  Goldsmith then registered the photograph as an unpublished work.  In 2017, the Andy Warhol Foundation for the Visual Arts ("AWF") filed an action seeking a declaratory judgment that the Prince Series works are non-infringing, or made fair use of Goldsmith's photograph, and Goldsmith countersued for infringement.

The District Court Decision

The district court granted summary judgment in favor of AWF.  That decision relied  chiefly on the Second Circuit's 2013 decision in Cariou v. Prince, and was largely premised on a finding that the Prince Series was a fair use of the Goldsmith photograph because it aesthetically transformed the original work. Specifically, Judge Koeltl of the Southern District of New York found Warhol's work transformed the original Prince image from that of a "vulnerable, uncomfortable person to an iconic, larger-than-life figure." The well-known and signature style of Warhol's artwork generally was also considered by the court. In particular, Judge Koeltl noted "each Prince series work is immediately recognizable as a 'Warhol' rather than as a photograph of Prince - in the same way that Warhol's famous representations of Marilyn Monroe and Mao are recognizable as 'Warhols,' not as realistic photographs of those persons."

The March 2021 Second Circuit Decision

Goldsmith appealed, and in March 2021, the Second Circuit reversed.  The Second Circuit held the district court had too broadly and subjectively analyzed whether Warhol's work was "transformative." The Circuit conducted a detailed analysis of fair use and clarified its prior precedent, particularly Cariou v. Prince, which it again called "the high-water mark of [the Circuit's] recognition of transformative use." 

It held that, while the "alteration of a new work with new expression, meaning or message, whether by the use of new aesthetics, by placing a work in a different context, or by any other means is the sine qua non of transformativeness,"  just because a "secondary work adds a new aesthetic or new expression to its source material" does not necessarily mean that it is transformative.  Instead, the secondary work "must reasonably be perceived as embodying a distinct artistic purpose, one that conveys a new meaning or message from its source material."  That determination, however, does not "turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic - or for that matter, a judge - draws form the work."  If that was not the case, then "the law may well recognize any alteration as transformative."  Indeed, the Circuit recognized that "an overly liberal standard of transformativeness, such as that employed by the district court . .  . risks crowding out statutory protections for derivative works," the exclusive rights to which are reserved to the copyright holder.

The Circuit cautioned that the judge should not "assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue," but a court must instead examine how the works may "reasonably be perceived" to determine whether the secondary work's use of its source material is in service of a "fundamentally different and new" artistic purpose. For a purpose to be "fundamentally different and new," it found that though the primary work need not be "barely recognizable" within the secondary work, the secondary work must "at a bare minimum, comprise something more than the imposition of another artist's style on the primary work."

Viewing the works side by side, the Circuit held that the Prince Series is not transformative.  Though the Prince Series embodies Warhol's recognizable aesthetic style, the Circuit found it was plainly an adaptation of the Goldsmith photograph: "in the narrow but essential sense, they are portraits of the same person."  It noted Warhol's work retained the essential elements of the Goldsmith photograph without adding to or modifying those elements. Warhol's only deviations to the original photograph involved magnifying some elements of the source material (like contrast and lighting) and minimizing others.   Rather than creating a transformative derivative work, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.

The Circuit also rejected as "entirely irrelevant" the district court's reasoning that the immediate recognizability of Warhol's style factors into the fair use analysis. It reasoned that implementing this logic would "inevitably create a celebrity-plagiarist privilege" allowing famous and established artists great liberty to "pilfer the creative labors of others." By way of example, it notes that even though The Irishman is recognizably "a Scorsese," this does not release Martin Scorsese of the obligation to license the original book.

The Circuit concluded the remaining fair use factors favored Goldsmith. For the "commercial use" factor, it found that AWF cannot monetize the Prince Series without paying Goldsmith even if that monetization is used for the benefit of the public.  She also met the "nature of the copyright work" factor because her original photograph was both creative and unpublished. The "amount and substantiality" factor also favored Goldsmith; the Circuit noted that "while Goldsmith has no monopoly on Prince's face, the law grants her a broad monopoly on its image as it appears in her photographs."  The Prince Series "borrows significantly" from the photograph, "both quantitatively and qualitatively."  The "effect on the use on the market for the original" favored Goldsmith even though the parties' markets did not meaningfully overlap.  The Circuit determined Warhol's use harms Goldsmith's potential market in a different way - by threatening Goldsmith's actual or potential licensing revenue.

Google v. Oracle, and the August 2021 Amended Decision

Shortly thereafter, AWF filed a petition for rehearing asking the Circuit to reconsider its March 2021 decision in light of Google v. Oracle, a case in which the Supreme Court examined fair use and the transformative use test in the context of computer software. In Google v. Oracle, the Supreme Court determined Google's use of elements of Oracle's Java code to build the Android system was transformative and fair use as a matter of law. The Court held that, although Google used portions of Oracle's code "for the same reason" the code was originally created, it was nevertheless transformative because Google sought to "create new products" with the code. The Court found that Google's conduct was "consistent with that creative 'progress' that is the basic constitutional objective of copyright itself."

In its amended August 24, 2021 decision, the Circuit noted that even though AMF's petition mostly "recycles arguments already made and rejected," it has withdrawn its original opinion to "carefully consider the Supreme Court's most recent teaching on fair use."  And, after doing so, it once again reversed the judgment of the district court and remanded the case for further proceeding consistent with the opinion, and did so largely on the same grounds as in the March 2021 decision (although it distinguishes or relies upon Google where necessary throughout the opinion, and also includes a new section directly addressing the applicability of Google v. Oracle).

The Circuit rejected AWF's assertion that Google "comprehensively refutes the panel's reasoning."  Instead, it asserted that Google is fully consistent with the original opinion.  In particular, both opinions recognize that determinations of fair use are highly contextual and fact specific, and they do not necessarily fit within square boxes.  The Circuit explained how the Supreme Court "took pains to emphasize" that the unique context of the case (software code) may make its holding less applicable in other contexts, especially in the context where the copyrighted material "serves an artistic rather than a utilitarian function."  Indeed, the Second Circuit stated that the Supreme Court left nothing to inference - it expressly advised that "in addressing fair use in this new arena, it had not changed the nature of those [traditional copyright] concepts." 

The Circuit took issue with AWF's suggestion that the original opinion effectively "outlawed" an entire "genre" of art "widely viewed as one of the great artistic innovations of the modern era."  It held that any fair reading of the opinion shows that nothing was outlawed nor denigrated, but instead the Circuit had explicitly stated that "it is not the function of judges to decide the meaning and value of art, still less to 'outlaw' types of art."  Instead, the Circuit "insists" that just like paying for paint, canvas and cameras, an artist must pay if they choose to incorporate "existing copyrighted expression of other artists in ways that draws their purpose and character for that work." 

Implications for the Transformative Use Test

Warhol is in line with other circuits that have adopted a narrower reading of the transformative use test, such as the Ninth Circuit in Dr. Seuss Enterprises v. ComicMix LLC. These decisions set forth objective standards for district courts to follow when determining fair use rather than the court's subjective interpretation of the intent behind the works. They also suggest that the transformative use test may warrant an objective evaluation, like the reasonable observer or reasonable listener test of substantial similarity analysis, by assessing how the work may "reasonably be perceived," i.e., if it conveys a new meaning or message separate from its source material.

Footnote

1 Pryor Cashman submitted an amicus curiae brief in this case to the Second Circuit on behalf of the Recording Industry Association of America.