Attorney Steve® Copyright Law Essentials - Andy Warhol Foundation - Supreme Court Decision

Update [Case decided]:  The Andy Warhol Foundation lost their case arguing they had copyright "fair use" rights to make "tansformative uses" of a copyrighted work.  The court held that the Warhol art work had essentially the "same simple purpose" - to depict Prince in a magazine story.  This was not held to be sufficiently transformative to avoid copyright infringement.  The court held:

Held: The “purpose and character” of AWF's use of Goldsmith's photograph in commercially licensing Orange Prince to Condé Nast does not favor AWF's fair use defense to copyright infringement. Pp. 12–38. (a) AWF contends that the Prince Series works are “transformative,” and that the first fair use factor thus weighs in AWF's favor, because the works convey a different meaning or message than the photograph. But the first fair use factor instead focuses on whether an allegedly 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, like commercialism. Although new expression, meaning, or message may be relevant to whether a copying use has a sufficiently distinct purpose or character, it is not, without more, dispositive of the first factor.

Here, the specific use of Goldsmith's photograph alleged to infringe her copyright is AWF's licensing of Orange Prince to Condé Nast. As portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and AWF's copying use of it share substantially the same purpose. Moreover, AWF's use is of a commercial nature. Even though Orange Prince adds new expression to Goldsmith's photograph, in the context of the challenged use, the first fair use factor still favors Goldsmith. Pp. 12–27. (1) The Copyright Act encourages creativity by granting to the creator of an original work a bundle of rights that includes the rights to reproduce the copyrighted work and to prepare derivative works. 17 U. S. C. §106. Copyright, however, balances the benefits of incentives to create against the costs of restrictions on copying.

This balancing act is reflected in the common-law doctrine of fair use, codified in §107, which provides:

“[T]he fair use of a copyrighted work, . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research, is not an infringement of copyright.” To determine whether a particular use is “fair,” the statute enumerates four factors to be considered. The factors “set forth general principles, the application of which requires judicial balancing, depending upon relevant circumstances.” Google LLC v. Oracle America, Inc., The first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes,” §107(1), considers the reasons for, and nature of, the copier's use of an original work. The central question it asks is whether the use “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, 579 (internal quotation marks and citations omitted). 

As most copying has some further purpose and many secondary works add something new, the first factor asks “whether and to what extent” the use at issue has a purpose or character different from the original. Ibid. (emphasis added). The larger the difference, the more likely the first factor weighs in favor of fair use. A use that has a further purpose or different character is said to be “transformative,” but that too is a matter of degree. Ibid. To preserve the copyright owner's right to prepare derivative works, defined in §101 of the Copyright Act to include “any other form in which a work may be recast, transformed, or adapted,” the degree of transformation required to make “transformative” use of an original work must go beyond that required to qualify as a derivative.

This Supreme Court decision makes it even more clear how risky it can be to rely on a fair use defense.  If you plan on relying on such a defense to copyright infringement, it would be wise to hire a. IP firm such as Vondran Legal® to obtain a "fair use opinion letter."

Introduction

The Andy Warhol Foundation ("AWF") for the Visual Arts is a renowned non-profit organization dedicated to advancing the visual arts.   A legal dispute began when the Andy Warhol foundation, released a series of prints entitled “Prince Series” featuring an image of the late singer, Prince. The prints were created from a photograph of the singer taken by photographer Lynn Goldsmith in 1981. Goldsmith threatened a lawsuit if she was not paid a (apparently, a seven figure settlement per disclosure made in oral arguments).

AWF went on the offensive by filing a lawsuit for declaratory judgement of non-infringement. Goldsmith then filed her counterclaim.  Goldsmith argued that the Warhol Foundation should be liable for copyright infringement, arguing that Warhol's reproductions of the photo violated her copyright including creating a "derivative work." AWF won in the lower district court with the judge holding that the work was "transformative" (as opposed to a derivative work) and thus their images constituted fair use. AWFS work was deemed to give new meaning and message to Goldsmitht's original source image. However, this decision was reversed on appeal in the 2nd Circuit Court of Appeals. AWF then sought, and had their writ of certiorari granted in the Supreme Court of the United States.

The four fair use factors

They key issue in the case is whether or not AWF's use is transformative and/or otherwise protected by the Copyright fair use law, or whether on balance of the fourth factors, the use constitutes a copyright infringement (which would likely end up with Goldsmith seeking a large financial recovery).  To make this determination, the high court will look at the application of the four fair use factors:

 The fair use factors are:

(1) the purpose and character of the use,

(2) the nature of the copyrighted work,

(3) the amount and substantiality of the portion used in relation to the copyrighted work,

and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The first factor, the purpose and character of the use, is concerned with whether the use of the copyrighted work is for a commercial or non-commercial purpose and whether the use is considered to be “transformative”. Non-commercial use is generally given more weight, as this type of use is more likely to be considered fair. Transformative use is another type of use that is given more weight. This is when the user is taking the original work and creating something new and different, such as a parody or a comment.

The second factor, the nature of the copyrighted work, looks at whether the work is a creative or informational work. Creative works, such as novels, films, and musical compositions, are given more protection under copyright law than informational works, such as news reports or scientific papers.

The third factor, the amount and substantiality of the portion used in relation to the copyrighted work, looks at how much of the original work is being used. If the use is of a small portion of the work, the courts are more likely to find the use to be fair. However, if the use is of a large portion of the work, the courts are more likely to find the use to be infringing.

The fourth factor, the effect of the use upon the potential market for or value of the copyrighted work, looks at whether the use is likely to harm the market for the original work. If the use is not likely to harm the market, then the courts are more likely to find the use to be fair. However, if the use is likely to harm the market, then the courts are more likely to find the use to be infringing. These four factors are all weighed when determining whether or not a use constitutes a fair use under federal copyright law. If all four factors are in favor of the user, then the courts are more likely to find the use to be fair.

However, if any of the factors are not in favor of the user, then the courts are more likely to find the use to be infringing. It is important to note that the outcome of any fair use determination depends on the specific facts of the case and that no two cases are identical.

General overview of "transformative use" under federal copyright law (results is NO copyright infringement) if win on balance

The term “transformative” does not appear in § 107, yet it permeates copyright analysis because in Campbell, the Court interpreted the “central purpose” of the first-factor inquiry as determining “whether and to what extent the new work is ‘transformative.'” Campbell, 510 U.S. at 579. Transformative use of the original work can tip the first factor in favor of fair use. A transformative work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”

On the other hand, a work that “merely supersedes the objects of the original creation” is not transformative. Id. (quotation marks omitted). While the analysis of the first fair use factor “may be guided by the examples given in the preamble to § 107,” i.e., criticism, comment, news reporting, teaching, scholarship, and research, id. at 578–79, not even these works compel “a per se finding of fair use,” Monge, 688 F.3d at 1173. Thus, we do not ask whether mash-ups can be fair use—they can be—but whether Boldly is a transformative work.

See Dr. Suess vs. ComicMix

25 examples of how a copyrighted might be transformed into a new work with new meaning and expression and avoid allegations of copyright infringement:

1. Create a parody of a copyrighted work.

2. Create a collage of images from a copyrighted work.

3. Create a new painting based on a copyrighted work.

4. Create a sculpture based on a copyrighted work.

5. Create a new song based on a copyrighted work.

6. Create a new dance routine based on a copyrighted work.

7. Create a comic book based on a copyrighted work.

8. Create a new story based on a copyrighted work.

9. Create a new play based on a copyrighted work.

10. Create a new poem based on a copyrighted work.

11. Create a new computer game based on a copyrighted work.

12. Create a new video game based on a copyrighted work.

13. Create a new website based on a copyrighted work.

14. Create a new documentary based on a copyrighted work.

15. Create a new film based on a copyrighted work.

16. Create a new TV show based on a copyrighted work.

17. Create a new musical based on a copyrighted work.

18. Create a new musical score based on a copyrighted work.

19. Create a new script based on a copyrighted work.

20. Create a new advertisement based on a copyrighted work.

21. Create a new web series based on a copyrighted work.

22. Create a new podcast based on a copyrighted work.

23. Create a new animated series based on a copyrighted work.

24. Create a new short film based on a copyrighted work.

25. Create a new graphic novel based on a copyrighted work.\

What is a "derivative work" (results in copyright infringement)

The legal definition of a derivative work is an important concept in copyright law. It is a work that is based on or derived from one or more already existing works. According to the Copyright Act of 1976, a derivative work is “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, functionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.”

To put it simply, a derivative work is a work that is based on an existing work but with new content. An example of this could be a movie adaptation of a novel, or a painting based off of a photograph. In order for something to be considered a derivative work, it must contain a substantial portion of the original work. 

In order for a derivative work to be protected under copyright law, the author of the derivative work must have permission from the original author. This permission is called a “license” and it grants the author of the derivative work the right to use the original work in their own work. Without this license, the derivative work may be considered an infringement of the copyright of the original work.

This is important to be aware of if you are creating a derivative work, as you must make sure that you are not infringing on any other copyrights. In addition to the legal definition of a derivative work, it is also important to note that there is a distinction between a derivative work and a “collective work”.  Collective work is a work that is made up of contributions from multiple authors. Each author holds the copyright to their individual contribution, but not to the collective work as a whole.

Derivative works can be a great way to add creativity to existing works and can be a powerful tool for authors. However, it is important to be aware of the legal implications of creating a derivative work and to make sure that you have the appropriate permissions from the original author before proceeding.

Contact a copyright IP & technology firm

Vondran Legal® is a leading copyright infringement law firm in the United States.  We handle a wide variety of litigation cases (including Strike 3 file-sharing lawsuits, software audits and disputes, TV signal piracy cases and more).  We have appeared in over 350 federal court litigation cases, many in the Central and Northern Districts of California.   In addition, we have been recognized as the #1 Copyright Infringement defense law firm in the UNITED STATES for the years 2020, 2021, and likely again in 2022 per the number of federal cases handled.

Copyright law is a niche area of intellectual property law.  In this area, there is no substitute for experience.  Since 2004 we have helped HUNDREDS of companies and individuals in a wide variety of copyright infringement matters.  Call us at (877) 276-5084 or fill out our contact form