Second Circuit Refines Its Fair Use Test

In 2013, the Second Circuit issued its controversial decision in Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013), in which it “rejected the proposition that a secondary work must comment on the original in order to qualify as fair use.” Eight years later, in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, –F.3d – (2nd Cir. 2021), it refined that statement to make clear that Cariou did not establish a rule that any secondary work necessarily is transformative as a matter of law if the secondary work embodies a different character, expression, and new aesthetics. The Warhol holding removes a certain amount of the concern that appropriation art would obliterate copyright infringement in the name of fair use by eliminating the need for commentary on the original work. Among courts expressing concern about the Cariou approach was the Seventh Circuit in Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir. 2014), noting its skepticism “because asking exclusively whether something is “transformative” not only replaces the list [of fair use factors]  but also could override [statutory protection of] derivative works.” One commentator flatly titled an article The Destructive Impulse of Fair Use After Cariou v. Prince, 24 DePaul Journal of Art, Technology & Intellectual Property Law (Fall 2013).

Whatever the merit of the criticisms, artists holding copyright may breathe a sigh of relief, and appropriation artists may need to think twice, in view of the modified holding in Warhol. In Warhol, artist Andy Warhol created certain silkscreen prints and pencil illustrations based on a 1981 photograph by Goldsmith of the singer known as Prince. It is difficult to describe the differences in the images succinctly, in terms of understanding the transformation, but suffice it to say that the photograph shows the head and upper chest and shoulder, in black and white, featuring a somewhat forlorn expression. Warhol’s silkscreens showed a single or multi-color background, with the face and no upper body shown, with significantly more contrast. In rejecting a bright-line rule and stressing the fact-sensitive nature of the case, the Warhol court observed: “Though it may well have been Goldsmith’s subjective intent to portray Prince as a ‘vulnerable human being’ and Warhol’s to strip Prince of that humanity and instead display him as a popular icon, whether a work is transformative 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.”

While the Court noted that even in Cariou it had rejected fair use for some images, the decision certainly was read in some quarters as unmooring fair use analysis from its traditional bases. The Second Court now has clarified that while alteration of an original work by “new expression, meaning, or message” is the “sine qua non” of transformativeness, that does not mean that the end result is transformative, and provides the example of a novel transformed into a screenplay—a quintessential example of a derivative work.

Ultimately, while the clarification may provide some comfort to artists such as Goldsmith, and some concern to appropriation artists, the result in each case remains fact sensitive and a judgment call that embodies the multitude of factors not just relating to transformativeness, by the other factors involved in the fair use analysis. The means of aesthetic expression, particularly in the digital age, are boundless, and the technological ease with which works of art may be manipulated will continue to challenge the fair use analysis. It is unlikely that Warhol will be the last word.