In May, it will have been a year since the U.S. Supreme Court decided Andy Warhol Foundation for Visual Arts Inc. v. Goldsmith. In that case, the court held that Andy Warhol's silkscreens of the musician Prince based on a photograph taken by the photographer Lynn Goldsmith did not satisfy the first "fair use" factor and therefore infringed on Goldsmith's copyright.

The court's ruling and the U.S. Court of Appeals for the Second Circuit's decision that preceded it were seen by many as a retrenchment from a line of cases — emanating precisely from the Second Circuit and culminating in its 2013 Cariou v. Prince ruling, which had no relation to the musician — that had seen a steady expansion of the fair use doctrine.

Indeed, the Supreme Court itself in Google LLC v. Oracle America Inc. had ruled in 2021 that verbatim copying by Google of lines of code from an Oracle software system satisfied the statutory four-part test for fair use, using Warhol's depiction of Campbell soup cans as an example of "transformative" secondary works.

Questions After Warhol 

The Supreme Court's decision, which focused on the first fair use factor of the purpose and character of the secondary use and whether the use is of a commercial or noncommercial purpose, was widely seen as potentially chilling to creative endeavors.

In particular, the court rejected the notion that Warhol adding his unique aesthetic to the photograph was enough to make his secondary work transformative, particularly if the two works share "the same or highly similar purposes, and the secondary use is of a commercial nature." 

Justice Elena Kagan issued a scathing dissent in which she lambasted the majority for ignoring prior precedents that found the first factor in favor of the secondary artist if the secondary work was sufficiently transformative, notwithstanding that the two works were used for the same purpose, in this case licensing to magazines. "[T]oday's decision ... leaves our first-factor inquiry in shambles," she wrote.

In particular, Justice Kagan was concerned with the effect of Warhol on the creative process. "Still more troubling are the consequences of today's ruling for other artists," she stated. "If Warhol does not get credit for transformative copying, who will?" The decision will "stifle creativity of every sort"; "impede new art and music and literature"; and "thwart the expression of new ideas and attainment of new knowledge."

Dire predictions indeed. But have they come about? It is of course impossible to determine what potential transformative works have been deterred by the Warhol decision; one cannot disprove a negative.

However, anecdotally, the appropriation artist Richard Prince — the protagonist in the Cariou decision holding that his altering photos of Rastafarian men was fair use — recently settled an eight-year lawsuit against him by two other photographers who claimed he had infringed on their Instagram photographs by creating secondary works based thereon. Did the Warhol case weigh on his decision to settle?

What we can review are the cases citing Warhol since it was handed down to see whether federal courts are applying a stricter fair use standard than before, and whether this stricter standard fails to find fair use where it might otherwise. Since Warhol, there have been more than 30 cases referencing the decision. Many of the cases do not involve fair use or cite Warhol for other purposes.

A Notable Decision

The most significant post-Warhol decision is the U.S. Court of Appeals for the Tenth Circuit's reversal of summary judgment on March 28 for the defendant on fair use grounds in Whyte Monkee Productions LLC v. Netflix Inc.

In Whyte, the circuit court specifically referenced Warhol in holding that the U.S. District Court for the Western District of Oklahoma misapplied the first fair use factor in granting summary judgment to Netflix on the basis of fair use.

Timothy Sepi videotaped a funeral for the husband of the animal keeper Joe Exotic, a portion of which Netflix used in a documentary about Joe Exotic. The district court found that the clip was transformative because it had been used for a different purpose than the original video, but the circuit court stated that "a mere difference in purpose is not quite the same as transformation."

Because the Netflix documentary did not comment on or criticize the original video, Netflix's use of the video clip was not sufficiently transformative. On the other hand, the commercial purpose of the secondary use "loom[s] larger," and therefore the first fair use factor favored the plaintiff.

This case is instructive because the appellate court specifically found that the lower court misapplied Warhol and held that a different use or the addition of "some new expression, meaning or message" is not enough by itself if there is no commentary or criticism of the original work and the use is for a clear commercial purpose. A very narrow window for the first fair use factor to favor the secondary user, it would seem, at least in this circuit.

Post-Warhol Cases 

Six post-Warhol cases arose from a very similar fact pattern — the copying of a photograph to create a secondary work of some kind. In five of the six cases, the court found that the secondary work did not constitute a fair use of the original.

In the lone case finding fair use in favor of the secondary user, Kelley v. Morning Bee Inc., decided in the U.S. District Court for the Southern District of New York in September, a photographer sued the Morning Bee publication for showing 10 photographs in the background of a film the Morning Bee produced regarding the musician Billie Eilish.

The photographs were displayed in the background in a terminal at the Auckland Airport, where Eilish arrived during a stop on her world tour. The photos were displayed for a total of only 15 seconds.

The district court granted summary judgment for the Morning Bee — and the Apple+ streaming service on which the film was shown — finding that even if the defendant's use of the 10 photos constituted copyright infringement, the secondary use was fair.

On the first "purpose and character of the use" factor, the court found that the use was transformative because the two uses "serve unquestionably different purposes." All in all, not a surprising result given the facts, but query whether this result would survive in the Tenth Circuit under Whyte.

However, in Hudson Furniture Inc. v. Mizrahi, also decided in the Southern District of New York on the day before the Morning Bee case, a furniture maker sued a lighting designer for using photos of the plaintiff's furniture accessories on the designer's website to sell knockoff products.

The designer raised fair use as an affirmative defense, and the court granted the plaintiff's motion for summary judgment that the defense was inapplicable.

On the first fair use factor, the court stated that the defendant's use of the photograph "is not transformative because [defendant] simply used photographs from Hudson's websites to advertise on his websites … Defendants' use was strictly commercial and added nothing."

The court added that although the defendant made the images smaller and posted them in a different medium — the defendant's website — the photos were used "for the precise reason it was created," and therefore the defendant's use was not fair. Again, not a surprising result given these facts.

More recently, the U.S. Court of Appeals for the Fourth Circuit in February decided in Philpot v. Independent Journal Review that a publication's use of a photograph of the musician Ted Nugent in an online article did not constitute fair use.

The publication used the photo for the same purpose as the original photo — to identify the musician — and minor alterations to the photo were insufficient to make the subsequent use transformative.

The decision says, "Indeed, [defendant] has less of a case for 'transformative' use than the Andy Warhol Foundation did in Warhol. Unlike the orange dubbing in that case, [defendant] did not alter or add new expression to the Nugent Photo beyond cropping the negative space."

Although this is a more closely analogous case than the two New York cases because it involves a photo of a musician, it is still a fairly predictable result given the almost total lack of alteration of the original, and the near-identical purpose and use of the photos.

In Vogts v. Penske Media Corp., a U.S. District Court for the Central District of California case decided in August, the court also granted summary judgment to the plaintiff on the defendant's fair use affirmative defense.

In that case, the defendant published an online publication called Dirt that focused on high-end real estate transactions. Dirt used several of the plaintiff's photos of real estate purchased by celebrities on the Dirt website.

In finding against the defendant's fair use defense, the court rejected the defendant's argument that the photos had been "transported to a different context," stating that the defendant's use "does not comment on plaintiff's photographs at all."

Although the defendant maintained that its use of the photographs "provides unique commentary, criticism, and discussion," the court placed "little value on this messaging because they are untethered from the Subject Photographs themselves." The court concluded that the defendant's use of the photos was not transformative, "difference in context notwithstanding."

In Campbell v. Gannet Company Inc., a decision from the U.S. District Court for the Western District of Missouri in August, the court denied a summary judgment motion for the defendant media company that used a photograph of a female NFL coach in an ad in connection with an annual survey of Super Bowl commercials.

The court concluded that the defendant's use of the photo was not transformative because "there are no noticeable changes or distinctions, but rather the use was derivative of if not virtually identical."

The court added that even if the purpose of the defendant's use was to make the ad available for commentary and criticism, the purpose itself was commercial.

This result is somewhat at odds with Warhol because under Warhol and prior precedents cited therein, even an exact duplicate of an original work used for a commercial purpose could be considered transformative if the purpose of the use was precisely to criticize or comment on the original work itself. See also Whyte above.

The U.S. District Court for the Eastern District of Louisiana in Dermansky v. Hayride Media LLC underscored this distinction in September, denying the defendant's motion for summary judgment on the fair use defense in a case involving the use of two photographs by a news and politics blog to accompany several articles.

Because both the photographer and the blogger used the photographs "as illustrative aids for online news articles," the secondary use was not transformative under Warhol.

The court pointed out that the defendant did not use the photos to criticize or comment on the photos themselves, and the fact that the photos were used for articles offering different perspectives unrelated to the photos did not matter.

Conclusion

The decision in Whyte and in the photograph cases, while illuminating to some extent, do not indicate any trend toward a radical departure from prior precedents in fair use cases.

The cases, based on their particular facts, probably would have been decided the same way pre-Warhol, although Whyte could be read as a further narrowing of Warhol.

The fact is, none of the secondary uses of the photographs in these cases were transformative, as is commonly understood, given the minimal alteration of the original work — much less as transformative as were the Warhol silkscreens of the artist Prince in the Warhol case.

Therefore, we must wait for further interpretations of Warhol to understand whether Justice Kagan's dire predictions indeed materialize.

However, the cases do show a mashup of different concepts, such as the need to comment on or criticize the original work and whether a different use is sufficient of itself, which demonstrates that Warhol has not definitively cleared up the circumstances in which fair use will apply.

*This was republished with permission from Law360. Click to access the publication.