Transformative Use and Infringing Derivatives: The Future Under Warhol v. Goldsmith


The Future of Derivative Works and Copyright Law Under Warhol v. Goldsmith

Transformative Use and Infringing Derivatives

Derivative Works – On October 12, 2022, the United States Supreme Court heard oral arguments in Andy Warhol Foundation for the Visual Arts v. Goldsmith, a case that has the potential to drastically alter the landscape of copyright law when it comes to derivative works, specifically the limits of what is considered a proper transformative work, and what would remain an infringing derivative.

The Future of Derivative Works and Copyright Law - Seal of the US Supreme Court

The Court must decide whether Andy Warhol had committed copyright infringement by creating prints in his famous pop art style using a portrait taken of the musician Prince by renowned rock photographer Lynn Goldsmith. In 1981, Newsweek hired Goldsmith to photograph Prince during the time “Purple Rain” was beginning to gain widespread popularity. Newsweek ultimately opted to use a concert picture of Prince taken by Goldsmith and Goldsmith kept the portraits for future commercial licensing or publication. 

A few years later, Vanity Fair commissioned Andy Warhol to create an illustration of Prince using Goldsmith’s photo as a reference point. Vanity Fair paid $400 to Goldsmith for licensing and promised in writing to only use the photo in a single issue. Warhol subsequently created and copyrighted 16 silkscreens of the Prince portrait, one of which was used in the Vanity Fair article. Following Prince’s death in 2016, Condé Nast, Vanity Fair’s parent company, paid the Warhol Foundation to run one of the silkscreen images on its cover. Goldsmith filed suit, and much of the following litigation centered on whether Warhol had transformed Goldsmith’s photograph by adding a different “message and meaning” to constitute fair use.

Defining Derivative Works and Copyright Infringement

Under U.S. copyright laws, creators of original work are granted a number of exclusive rights. Included in this bundle of rights are the rights to derivative work. The Copyright Act defines a derivative work as “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work’.” 17 U.S.C. §101.

In other words, a “derivative work” is a new work that is based on or derived from an existing, copyrighted work. This means that the copyright owner of the original work also owns the rights to derivative works and may bring a copyright infringement lawsuit against someone who creates derivative works without their permission. Thus, to create a derivative work, the creator must obtain permission from the copyright owner of the original work or rely on a legal exception such as the Fair Use Doctrine.

The Fair Use Doctrine: The Four Factors of Fair Use

However, the Fair Use doctrine allows limited use of copyrighted material without first obtaining permission from the copyright holder, essentially making an exception for copying that would otherwise be unlawful.

Courts consider four factors to resolve fair use disputes: (1) the purpose and character of 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.

The primary question in Warhol is whether the use of the copyrighted work was “transformative,” which goes to the first factor. If the derivative work is sufficiently transformative, then it may be considered “fair use” and deemed not copyright infringement. However, fair use cases are fact specific, and the courts decide whether something is sufficiently transformative as to constitute fair use on a case-by-case basis. 

Transformative Use in Copyright Law

The concept of transformative use was first addressed by the Supreme Court in the seminal case, Campbell v. Acuff-Rose Music. There, the Court determined that no infringement occurred when “2 Live Crew,” a rap group, borrowed the opening line of the song “Pretty Woman” for their own song. Other than the use of this lyric, the melody and the rest of the lyrics were distinctive. The Court found that the defendant added a new meaning and message to the song, rather than simply “superseding” the original work. As a result, the song likely would not affect the market for the original work, i.e., the copyright owner would not suffer financial harm. 

The Court focused on the small quantity taken from the copyrighted work and the transformative nature of the use. The inquiry 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.” The more transformative the secondary work is, the less will be the significance of the other factors of the fair use doctrine. In the following decades, the definition of “transformative” continued to evolve, though the standards remain murky. 

As for the pending Warhol case, in 2019, a federal district court found that the Warhol image is “transformative” because it conveys a different message from the original and thus constituted fair use. However, the Second Circuit Court of Appeals disagreed, stating that the Warhol work added no more than “the imposition of [Warhol’s] style,” and stated that judges “should not assume the role of art critic…” 

Goldsmith argues that the Foundation infringed her copyright by creating and licensing Warhol’s work, which was based on her photo, to Condé Nast without obtaining her permission. Goldsmith’s legal team argues that the Foundation never provided any justification for copying Goldsmith’s picture to commercially license Warhol’s image in 2016.

The Assistant to the Solicitor General, Yaira Dubin, filed a friend of the court brief on behalf of the U.S. government. Dubin states that the Foundation has never tried to show that copying Goldsmith’s photo “was essential to accomplish a distinct purpose.” She argues that the Foundation is suggesting this is fair, by urging the Court to “look primarily to what the silkscreens mean, rather than why the copying was justified.” Dubin states that the Court should reject this test, which “requires courts to inquire into the meaning of art and would destabilize long standing industry licensing practices that promote the creation of original works.” Sequels and other adaptations would “become fair game if conveying a different meaning confers license to copy.”

The Foundation’s lawyers argue that Warhol’s work is sufficiently transformative because Warhol cropped and resized the image, altered the angle of Prince’s face, and changed other features such as the tone, colors, and detail. According to the Foundation, the result is “a flat, impersonal, disembodied, mask-like appearance” that is no longer “vulnerable,” as Goldsmith described her portrait, but iconic in its own right as a statement about the impact of commercial fame, thereby creating a new message and meaning.

The Foundation further contends that Goldsmith’s position “banishes transformative meaning from the equation altogether,” and that a ruling for Goldsmith would make it “illegal for artists, museums, galleries and collectors” to display and sell a large number of works.

Transformative Use and Fair Use: What You Need to Know

The Supreme Court’s decision will have major consequences for creators and the world of copyright law as a whole. Those favoring the Foundation’s claim assert that ruling in favor of Goldsmith would restrain the artworld by preventing artists from creating content containing elements from other works. The implications of such a ruling would affect everything from art and music to AI inventions and movies.

On the other hand, those who support Goldsmith’s argument contend that a decision in favor of the Foundation would be inconsistent with copyright protection for derivative works like book to movie adaptations, which are frequently licensed, and would pose an existential threat to creators by favoring imitators over copyright holders. Representatives of the recording industry and other groups have expressed to the court their concern that a broad interpretation of fair use would make it harder for them to protect their valuable copyrights.

Overall, the decision may alter the law to grant the original artist greater authority and protection, but it may also deter artists and other content creators from incorporating earlier works not only into contemporary art but social and digital media as well.

Given the continued trend of incorporating earlier works into new works in almost everything we see today, a conservative ruling could stifle the creative landscape and hinder newer content creators. Then again, an unchecked allowance of what is considered a transformative work could belie the purpose of copyright law itself, “to promote the progress of the sciences and useful arts,” by stripping an author of one of their bundle of rights—the right to control derivative works—a right that carries the majority of the economic consequences in this day and age.

Ultimately, the Court’s decision will not only shape the future of copyright law and the art world but could also have broader implications for the balance between creative expression and intellectual property rights in our society.

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If you need legal assistance with derivative works or other IP matter, reach out to the founder of Cartee, LC, business, trademark and intellectual property attorney, Anthony Cartee, at (714) 942-2225, or via email, or schedule an appointment.