Legend has it that Judge Learned Hand wrote this line in a per curiam opinion, Dellar v. Samuel Goldwyn, Inc.¹: “[T]he issue of fair use...is the most troublesome in the whole law of copyright….” As recent court decisions reflect, there is turmoil in copyright law, specifically regarding the fair use doctrine in the context of transformative works, but more clarity may be approaching. The Second Circuit’s recent panel holding in the Warhol v. Goldsmith matter, discussed below, suggests that re-expressing a copyrighted image belonging to another does not entitle the new work to a fair use defense. The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, et al., 992 F.3d 99 (2d. Cir. 2021). However, the US Supreme Court’s Google v. Oracle decision, also detailed below, emphasizes creative intent when evaluating “transformativeness.” The framer’s intent, as expressed in Article I, Section 8, Clause 8 of the Constitution—charging Congress to create a scheme to promote progress by protecting authors—has been expressed by the courts in varying ways over the years, sometimes protecting too little, at the expense of authors’ exclusive rights, and at other times protecting what seems to be too much, and restricting what others may use of authors’ works, in both situations, serving some greater good in order to foster progress. Google LLC v. Oracle America, Inc., 141 S. Ct 1183 (No. 18-956, April 5, 2021).

The Supreme Court’s Google v. Oracle decision was issued days after the Second Circuit’s panel decision in Warhol v. Goldsmith. Unsurprisingly, the Andy Warhol Foundation is citing Google v. Oracle and asking the US Circuit Court of Appeals for the Second Circuit for another shot in its copyright feud with photographer Lynn Goldsmith.”² This is likely the first of many cases where lower courts will grapple with the Google v. Oracle holding on fair use, and not just in the context of computer software. 

I. The Fair Use Doctrine³

Fair use may be asserted as an affirmative defense to allegations of copyright infringement.⁴ The doctrine “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.”⁵ Codified in the 1976 Copyright Act under 17 U.S.C. § 107, the fair use doctrine lists certain factors to be considered in determining whether the unauthorized use of a copyrighted work is permissible, i.e., non-infringing.⁶ Although courts may take other factors into consideration when evaluating fair use, the four main 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 taken; and
4. the effect of the use upon the potential market.⁷

Regarding transformative works, or “those that add something new, with a further purpose or different character, and do not substitute for the original use of the work,” courts consider the alleged transformation in the context of analyzing the first factor, the purpose and character of use.⁸

II. The Second Circuit’s Panel Ruling in Warhol v. Goldsmith⁹

On March 26, 2021, the Second Circuit held that pop artist Andy Warhol’s use of Lynn Goldsmith’s photograph of the musician Prince to create 15 unauthorized prints did not constitute fair use.¹⁰

The dispute centers around Goldsmith’s 1981 photograph of Prince, which was licensed to Vanity Fair magazine. Vanity Fair commissioned Warhol to create an illustration based on Goldsmith’s photograph. Without Goldsmith’s knowledge or consent, Warhol also created a series of 15 additional prints based on this photo.¹¹ Goldsmith only became aware of the series after Prince’s death in 2016. After being contacted by Goldsmith, the Andy Warhol Foundation for the Visual Arts (“AWF”) sought a declaratory judgment of non-infringement based on fair use in an action filed before the United States District Court for the Southern District of New York. In response, Goldsmith filed a copyright infringement counterclaim.¹²

The first factor of a fair use defense is “the purpose and character of the use.” This asks whether a work is “transformative,” or, in other words, “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character.” Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013). In Warhol, at the District Court level, Judge Koeltl granted AWF’s motion for summary judgment and dismissed Goldsmith’s counterclaim, finding the artwork “transformative.”¹³ 

On appeal, the Second Circuit held that Warhol’s unauthorized works did not constitute fair use.¹⁴ The Court focused on the lower court’s analysis, in particular, noting that the element of “transformative” value originates from the understanding that certain unauthorized uses are of the type that “advances knowledge and the progress of the arts.”¹⁵ Ultimately, The Court held that whether a work is transformative it “cannot 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 from the work.”¹⁶ Rather, a transformative secondary work must “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.”¹⁷

III. The Supreme Court’s Ruling in Google v. Oracle¹⁸

In finding in Google’s favor, on April 5, 2021, the Supreme Court held that where Google re-implemented Oracle’s Java SE Application Programming Interface, taking only what was needed to allow users to put their accrued talents to work in a new and transformative program, Google’s copying of the interface amounted to fair use as a matter of law.¹⁹

Justice Breyer’s majority opinion evaluated all four fair use factors. Notably, the Court’s decision started with a discussion of the “nature of the work.”²⁰ After finding that this factor favored fair use,²¹ it turned towards “the purpose and character of the use.”²²

Unlike the Second Circuit’s decision in Warhol, the Supreme Court held that Google’s use of the copyrighted work was “transformative” and worthy of its own copyright. ²³ Particularly interesting in light of the Warhol decision, the majority opinion begins with a general discussion on transformative works, finding that, “[a]n ‘artistic painting’ might, for example, fall within the scope of fair use even though it precisely replicates a copyrighted ‘advertising logo to make a comment about consumerism.’”²⁴ Ultimately, the majority opinion held that:

Here Google's use of the Sun Java API seeks to create new products. It seeks to expand the use and usefulness of Android-based smartphones. Its new product offers programmers a highly creative and innovative tool for a smartphone environment. To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative “progress” that is the basic constitutional objective of copyright itself.²⁵

The Supreme Court also found the remaining two fair use factors favored Google.²⁶

IV. Practical Implications

As AWF’s Petition for Rehearing elucidates, these two decisions arguably created further tension in the copyright fair use arena:

The Google decision comprehensively refutes the panel’s reasoning. Indeed, Google described - as a paradigm example of transformative use - a Warhol-like work of art that is materially indistinguishable from the works at issue here. A decision by this Court conflicting with the most recent authoritative decision of the Supreme Court cannot stand.²⁷

Despite the Google v. Oracle decision, parties seeking to rely on a fair use defense premised on transformation would be wise to recall Judge Sullivan’s concurrence in the Warhol v. Goldsmith case:

I write separately only to highlight what I see as an overreliance on “transformative use” in our fair use jurisprudence, generally, and to suggest that a renewed focus on the fourth fair use factor, “the effect of the use upon the potential market for or value of the copyrighted work,” 17 U.S.C. § 107(4), would bring greater coherence and predictability to this area of the law.²⁸

In other words, relying on the “transformative” nature of a later work’s use of a copyrighted work cannot guarantee the success of a fair use defense. Regardless of the outcome of the Petition for Rehearing, these two recent decisions exemplify the US Copyright Office’s official statement on fair use:

Courts evaluate fair use claims on a case-by-case basis, and the outcome of any given case depends on a fact-specific inquiry. This means that there is no formula to ensure that a predetermined percentage or amount of a work—or specific number of words, lines, pages, copies—may be used without permission.²⁹

How this case-by-case process proceeds will depend on many things, not the least of which will be the subsequent treatment of the Warhol case, both by the Second Circuit, and by the US Supreme Court, which surely will be called on to add its particular gloss to the matter.

_{1 Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 (2d Cir. 1939)(per curiam).}

_{2 Does Andy Warhol Get Same Copyright Treatment as Google Code?, Eriq Gardner, April 23, 2021, available here, last visited May 3, 2021; see also Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021).}

<sub>3 See “More information on Fair Use,” US Copyright Office, available here, last visited May 2, 2021.

Fair use is a legal doctrine that promotes freedom of expression by permitting the unlicensed use of copyright-protected works in certain circumstances.</sub>

_{4 See Nimmer on Copyright § 13.05 (2021); 17 U.S.C. § 107.}

_{5 Iowa State Univ. Research Found., Inc. v. American Broadcasting Cos., 621 F.2d 57 (2d Cir. 1980). The Supreme Court has quoted this language several times. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994), quoting Stewart v. Abend, 495 U.S. 207, 236, 110 S. Ct. 1750, 109 L. Ed. 2d 184 (1990).}

_{6 Nimmer on Copyright § 13.05 (“Strictly speaking, the Copyright Act does not attempt to define ‘fair use.’”). The doctrine can be traced back to English law—the Statutes of Anne—and a long line of English cases, dating back to the beginning of statutory copyright law in 1710 where courts recognized that certain instances of unauthorized reproduction of copyrighted material, first described as "fair abridgment," and later described as "fair use," would not infringe an author's rights. A brief history of the English roots of this doctrine is described in the first American fair use case, Folsom v. Marsh. See e.g., Folsom v. Marsh 9 F. Cas. 342, 349, 1841 U.S. App. LEXIS 468, *24 (“A fair and bona fide abridgment of an original work, is not a piracy of the copyright of the author. But, then, what constitutes a fair and bona fide abridgment, in the sense of the law, is one of the most difficult points that can well arise for judicial discussion. . .There must be real, substantial condensation of the materials, and intellectual labor and judgment bestowed thereon; and not merely the facile use of the scissors; or extracts of the essential parts, constituting the chief value of the original work.”).}

_{7 See id.}

_{8 Id.}

_{9 Andy Warhol Found. For the Visual Arts v. Goldsmith, 992 F.3d 99 (2d Cir. 2021).}

_{10 Id.}

_{11 Id.}

_{12 Id.}

_{13 Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 316, 326 (S.D.N.Y. 2019).}

_{14 Warhol v. Goldsmith, 993 F. 3d 99.}  

_{15 See Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105 (1990) (“The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test . . .If, on the other hand, the secondary use adds value to the original -- if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings -- this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”).}

_{16 Goldsmith, 992 F.3d at 113-14.}

_{17 Id. at 114.}

_{18 Google LLC v. Oracle America, Inc., 141 S. Ct 1183 (No. 18-956, April 5, 2021).}

_{19 Id., see also Google LLC v. Oracle America, Inc., on SCOTUSblog, available here, last visited on April 30, 2021.}

_{20 Id.}

_{21 Id.}

_{22 Id.}

_{23 Id. at 1204.}

_{24 Id. at 1203 (internal citations omitted).}

_{25 Id.}

_{26 See id.}

_{27 Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021),Petition for Rehearing, in Case No 19-2420-cv, filed April 23, 2021. There has been at least one amicus brief lodged with the court as of April 30, 2021, in support of rehearing, filed by “60 Intellectual Property Scholars.”}

_{28 Warhol v. Goldsmith, 992 F.3d 99, 125 (2d Cir. 2021).}

_{29 See supra, “More information on Fair Use” (emphasis added).}