The Supremes Transform The Fair Use Transformative Defense In Case Involving Andy Warhol Modification Of Photograph Of Prince

Would the Photographer of Marilyn have the Same Claim?

The Supreme Court recently issued its decision on the application of the fair use defense to Andy Warhol’s modified version of a photograph of Prince (“Warhol’s Version”). The decision will be cited for decades, and this article provides a summary to spare readers from having to slog through the eighty-seven pages of the decision (including the majority, concurring, and dissenting opinions). The decision changes the framework for deciding whether a new work (the “New Work”) is protected by the fair use defense against a claim of infringement of an original work (the “Original Work”). Here are the takeaways from the decision:

• Parsing through the verbose analysis, the fair use defense will now depend on whether the particular use in question of the New Work (the “New Use”) is aimed at the same market as a reasonable person would assume could be a potential market for the Original Work at the time of the New Use (“Prohibited Use”). Critically, the Supreme Court did not define a Prohibited Use, so my definition above is based on extrapolating from prior fair use decisions on analogous issues.

• The use of a New Work may be a Prohibited Use in one use but not in another, so Warhol’s Version was a Prohibited Use on the cover of a magazine about Prince, since the photographer reasonably targeted the same market, but it would not be a Prohibited Use on the cover of a magazine about Andy Warhol. The inquiry does not depend on the intent of the creator of the New Work; what matters is the actual use. Andy Warhol may have intended to criticize the original photograph or to convert it into an entirely different message, but all that matters is the actual use complained of.

• The issue of whether a New Use is a Prohibited Use will become the new fair use battleground, so here is what the Supreme Court had to say about it: A critique or parody of the Original Work is not a Prohibited Use, and neither is news reporting about the Original Work. However, a New Use that merely targets “different buyers, in different markets, consuming different products” than the Original Work is a Prohibited Use if such markets are reasonably expected potential markets for the Original Work.

• If the New Use is not a Prohibited Use, the New Use is labeled “transformative” as a shorthand, so the word “transformative” has been demoted to a conclusory label. There is no longer the initial metaphysical inquiry as to whether the New Work is “transformative.”

• For purposes of the fair use defense, it no longer matters how much the New Work is modified from the Original Work, which was the prior metaphysical “transformative” inquiry. Thus, even if the New Work is a wild modification of the Original Work, a particular use of it may be a Prohibited Use. Conversely, a particular use of an exact copy of the Original Work may not be a Prohibited Use. The extent of modification is relevant for determining whether the New Work infringes on the Original Work as a derivative work, but that is a different question, discussed below.

• Although the fair use statute lists a number of factors other than the “use” factor, that factor is without question the most important factor, since the other factors tend to follow from the “use” factor. For example, Andy Warhol’s estate conceded that all the other factors listed in the statute worked against it, yet the estate hung its hat on the premise that the “use” factor alone would save it, and the Supreme Court’s entire decision accepted that premise (but found that the “use” factor also worked against the estate).

• All is not lost for those who think that the decision will stifle creative freedom. Here are just some of the defenses to an infringement claim that are alive and well:

o The New Work is so highly modified that it can no longer be said to be a derivative work that is “based upon” or “substantially similar to” the Original Work.

o The New Work is just based on “ideas” taken from an Original Work, and not the “expression” of it.

o The New Work merely copies facts from the Original Work, since facts are not protected by copyright.

o The New Use is not a Prohibited Use.

o The Original Work lacks the requisite degree of creativity to qualify for copyright protection.

o The New Work was independently created, so any resemblance to the Original Work is coincidental.

o The copyright term of the Original Work has expired.

One important consequence of the decision may be its impact on the right of publicity. Many courts have imported the “transformative” defense from copyright into right of publicity cases, interpreting it to provide a defense when a person’s physical image has been altered. That line of cases is likely to be reversed, with the defense now transitioning to questioning the actual new use of the image.

And one last conclusion from the opinion is that Justice Sotomayer (author of majority opinion) and Justice Kagan (author of dissent) are not the best of friends, given the vitriolic barbs hurled at one another in their footnotes.