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'; Katie Vetter Discusses Copyright Fair Use One Year After Andy Warhol Foundation v. Goldsmith US Supreme Court Decision
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Katie Vetter Discusses Copyright Fair Use One Year After Andy Warhol Foundation v. Goldsmith US Supreme Court Decision

June 11, 2024

By Katie Vetter

On May 18, 2023, the Supreme Court handed down its decision in Andy Warhol Foundation v. Goldsmith, affirming the Second Circuit Court of Appeal’s finding that the Andy Warhol Foundation had not made fair use of Goldsmith’s copyrighted photograph of the musician Prince. The Court’s decision hinged on the first factor of the copyright fair use defense: “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes” 17 U.S. Code § 107. Weighing heavily in its decision that the Andy Warhol Foundation had not made fair use of the photograph when it licensed “Orange Prince” was that licensing the work to Conde Nast magazine for $10,000 was considered commercial in nature. While the Court acknowledged that the commercial nature of the use was not dispositive of the first fair use factor, it held that “[i]f an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying” [1]. Given that the original photograph of Prince was created to license to a magazine for an article about Prince and the secondary use by the Andy Warhol Foundation was also licensing to a magazine for an article about Prince, the Court found the purposes to be the same. Thus, the secondary use, specifically limited to the licensing of Orange Prince, rather than its original creation [2], was not transformative.

Important to the Court’s decision in Warhol was that the addition of a new meaning or message would not be sufficient to make a secondary use transformative. Rather adding a new expression, meaning or message is “simply relevant to whether the new use served a purpose distinct from the original” [3]. Thus, the Supreme Court instructed lower courts to only consider new meaning or expression added to “ to the extent necessary to determine whether the purpose of the use is distinct from the original, for instance, because the use comments on, criticizes, or provides otherwise unavailable information about the original” [4].

Since the Warhol decision, there have been at least 18 copyright cases decided where a court has applied the Supreme Court's new fair use analysis. In association with the one-year anniversary of the Warhol decision, we now take a look at how certain lower courts have grappled with the Court’s ruling in their application of the first factor of the fair use analysis.

Impact of Warhol

Transformative Purpose in the Context of Tattoo Art

The Warhol decision has had a substantial impact on the application of the fair use defense in cases where the secondary user has added a significant degree of new meaning or expression, rather than “merely repackaging” the original work. Applying Warhol, courts will no longer rely solely on a formal analysis of the secondary users’ stylistic choices to determine whether the second use is transformative. With the Supreme Court’s instructions to consider such new meaning or expression only to the extent necessary to determine whether the purpose of the use is distinct from the original, lower courts such as the Central District of California in the Sedlik v. Drachenberg decision now consider arguments involving only a formal analysis of the secondary users’ stylistic choices to be foreclosed by Warhol [5].

In Sedlik v. Drachenberg, celebrity tattoo artist Katherine Von Drachenberg (“Kat Von D”) was sued for copyright infringement by photographer Jeffrey Sedlik after she used Mr. Sedlik’s photograph of Miles Davis for a tattoo on her friend’s arm. Sedlik’s copyrighted portrait of Miles Davis was originally published on the cover of a jazz magazine. In utilizing the image, Kat Von D stenciled the photograph, tattooed the image on her friend’s arm, and published images of the process and completed tattoo on social media. Mr. Sedlik then sued Kat Von D, alleging that each of these uses of his photograph constituted copyright infringement.

Prior to Warhol, the Central District Court of California concluded that the transformative nature of Kat Von D’s use could not be concluded as a matter of law and would need to be left for the jury [6]. Among other considerations, the court initially found that Kat Von D’s changes to the appearance of the original work to add movement and a more melancholy aesthetic to the resulting tattoo could be considered transformative to a jury [7].  However, upon reconsideration and applying Warhol, the court concluded that Kat Von D’s use of the photograph was not transformative [8]. The court held that Warhol required it to focus on the purpose of the use, rather than assessing the aesthetic character of the resulting work [9]. Without consideration of the aesthetic character of the resulting tattoo, the court indicated that there was no transformative purpose because Kat Von D had merely recast the original photograph in a different visual medium [10].

While the jury ultimately ruled in Kat Von D’s favor by finding the tattoo and the original photograph not to be substantially similar, the case demonstrates that arguments in favor of transformative use, which rely solely on aesthetic character considerations, will be given little weight in the post-Warhol legal landscape.

Transformative Purpose in the Context of Documentary Filmmaking

The Warhol decision has potentially far-reaching consequences for documentary filmmaking practices. In the 10th Circuit, the court is currently determining the appropriate scope of the Warhol decision in its application to documentary filmmaking in Whyte Monkee Productions LLC v. Netflix Inc. The copyright infringement case surrounds Netflix’s use of Timothy Sepi’s video showing Joe Exotic giving a eulogy at his late husband’s funeral for its widely popular Tiger King series [11].

Pre-Warhol, the District Court for the Western District of Oklahoma granted summary judgment in Netflix’s favor, finding that Netflix’s use of Timothy Sepi’s video was fair use as a matter of law [12]. However, on March 27, 2024, the 10th Circuit reversed the district court’s decision, finding that the recent guidance in Warhol indicated that the transformative fair use analysis weighed strongly in favor of Sepi, rather than in favor of Netflix [13]. In its reversal, the 10th Circuit found that Netflix’s use of the video was not transformative because it did not comment on the original work. While the Court found that Netflix used the video to “illustrate Mr. Exotic’s purported megalomania, even in the face of tragedy,” it found that Netflix’s use provided commentary on Joe Exotic as a character, rather than providing commentary or having any critical bearing on the original copyrighted video itself [14]. The Court compared Netflix’s use to that in Warhol, finding “Andy Warhol himself targeted a character—the artist, Prince—but the Court determined that his work was not sufficiently transformative in part because Mr. Warhol did not target the original work—viz., Lynn Goldsmith’s photograph of Prince” [15]. With Netflix’s use found not to comment on or otherwise “transform” the original video, the 10th Circuit found that the commercial nature of using the video in a profitable series on Netflix’s streaming service loomed larger and weighed in favor of the Plaintiff [16].

This decision drew quick backlash in the documentary film industry with many important players (including the Motion Picture Association, the International Documentary Association (“IDA”), Film Independent, and several media law professors) supporting Netflix’s petition for  rehearing, arguing that the Court had misapplied the Warhol decision. These groups argue that the 10th Circuit misread the Warhol decision and applied it much more broadly than intended and in a way that would disrupt standard practices for documentary filmmaking. In its amicus brief, the IDA argues that Warhol was primarily concerned with directly competitive uses where there was a well-established market for licensing the original work [17]. It argues that the Supreme Court explicitly limited its decision to that context through its footnote stating: “[T]he analysis here might be different if Orange Prince appeared in an art magazine alongside an article about Warhol” [18].

Telling of the significant confusion and unanswered questions left by the Warhol decision, as of May 13, 2024, the 10th Circuit has granted Netflix’s petition for a rehearing [19]. On June 3, 2024, Netflix submitted its supplemental brief ahead of the rehearing. In its brief, Netflix points to the decades of analogous documentary film use that have been considered fair use, and which could be disrupted by the court’s decision [20]. Further, Netflix draws the court’s attention back to the preamble of Section 107 of the Copyright Act, which explicitly states that the fair use of a copyrighted work “for purposes such as criticism, comment, news reporting, teaching [] scholarship, or research, is not an infringement of copyright.” Netflix argues that using unlicensed video for “commercial historical or biographical works for purposes of social commentary—and not only to target or comment on the original work—is transformative; and such uses fall within Section 107’s preamble” [21]. Using the Warhol decision to support its arguments that a transformative use does not necessarily require commentary on the original work, Netflix emphasizes the Supreme Court’s acknowledgement that other Andy Warhol works--which it argues do not specifically comment on the original, such as the Campbell Soup Cans series--are considered transformative use [22].

With further argument set for July 10, 2024, it remains to be seen where the 10th Circuit will land on this issue.

In sum, there are still unanswered questions remaining one year since Warhol. Thus far, it appears that the courts will no longer consider a secondary user's artistic style or aesthetic choices alone to render use transformative. However, in cases such as documentary filmmaking where the secondary user uses a copyrighted work for their own purpose, without providing commentary on the original work itself, it seems the courts have not yet finally determined the appropriate scope and contours of transformative fair use post-Warhol.

References

  1. Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 532–33 (2023)

  2. at 534 (“[T]he Court expresses no opinion as to the creation, display, or sale of any of the original Prince Series works.”)

  3. at 542.

  4. at 544-45.

  5. See Sedlik v. Drachenberg, No. CV211102DSFMRWX, 2023 WL 6787447, at *4 (C.D. Cal. Oct. 10, 2023).

  6. See id. at *1.

  7. See id.

  8. See id. at *4.

  9. See id. at *3.

  10. See id.

  11. See Whyte Monkee Productions LLC v. Netflix Inc., No. 22-6086 (10th Cir. 2024).

  12. See Whyte Monkee Prods., LLC v. Netflix, Inc., 601 F. Supp. 3d 1117, 1139 (W.D. Okla. 2022), aff'd in part, rev'd in part and remanded, 97 F.4th 699 (10th Cir. 2024), reh'g granted and opinion vacated, 101 F.4th 787 (10th Cir. 2024).

  13. See Whyte Monkee Prods., LLC v. Netflix, Inc., 97 F.4th 699, 706 (10th Cir. 2024), reh'g granted and opinion vacated, 101 F.4th 787 (10th Cir. 2024)

  14. at 714.

  15. at 714-15.

  16. See id.

  17. See Brief of Amici Curiae International Documentary Association, et al., P. 18, Whyte Monkee Productions LLC et al. v. Netflix Inc. et al., Case No. 22-6086 (10th Cir. May 2, 2024).

  18. See id. at 24; Andy Warhol Found., 598 U.S. at 536 n.12.

  19. See Whyte Monkee Prods., LLC v. Netflix, Inc., 101 F.4th 787 (10th Cir. 2024).

  20. See Appellees’ Supp. Brief, p. 1, Whyte Monkee Productions LLC et al. v. Netflix Inc. et al., Case No. 22-6086 (10th Cir.).

  21. at 9.

  22. See id. at 15-16.