In a controversial decision in March 2021, the United States Court of Appeals for the Second Circuit held that a 1984 series of silkscreen paintings by the pop artist Andy Warhol depicting the musical legend Prince (the “Prince Series”)—based on a 1981 photograph of Prince by Lynn Goldsmith (the “Prince Photograph”)—infringed on Goldsmith’s copyright, and did not constitute a permissible fair use. That decision shook the art world, as it seems to dramatically narrow the scope of the fair use doctrine, and raises doubts about the lawfulness of many existing works. Since we last discussed that decision on this blog in June 2021, the Second Circuit reconsidered it following a subsequent landmark Supreme Court decision addressing fair use (Google LLC v. Oracle Am., Inc.), and issued a new decision in which it reached the same result.
Now the Warhol Foundation has petitioned the United States Supreme Court for review of the Second Circuit’s amended decision. The Supreme Court’s ruling on that petition—and a possible eventual decision on the merits—could have enormous implications for the art world and other industries impacted by copyright law.
“Originals”: The Works at Issue
In 1981, Goldsmith, who was then a portrait photographer for Newsweek, took a series of photographs of the then-up-and-coming musician Prince. A few years later, in 1984, Goldsmith’s agency, which had retained the rights to those images, licensed one of them to Vanity Fair for use in an article called “Purple Fame.” Vanity Fair, in turn, commissioned Warhol to make a silkscreen using Goldsmith’s photograph. He did just that. But unbeknownst to Goldsmith, he also created fifteen additional works (including silkscreen prints and pencil drawings) using the Prince Photograph for his own artistic purposes. Following Prince’s sudden and untimely death in 2016, the Warhol Foundation, successor to the copyright in the Prince Series, licensed to Condé Nast one of the Prince Series images for use in a commemorative magazine titled The Genius of Prince, which featured on its cover the image from the Prince Series.
“Controversy”: The Litigation
Upon first learning of the Prince Series after Prince’s death—when she noticed the Condé Nast magazine cover—Goldsmith notified the Warhol Foundation that she considered the magazine’s use of the Prince Series image to violate her copyright in the Prince Photograph. In 2017, the Warhol Foundation sued Goldsmith and her agency for a declaratory judgment that the Prince Series works are non-infringing or, in the alternative, that they constitute a fair use of the Prince Photograph. Goldsmith counterclaimed for copyright infringement. The district court granted the Warhol Foundation’s motion for summary judgment, holding that the Prince Series was fair use, and dismissed Goldsmith’s counterclaim for copyright infringement. In reaching that determination, the court relied chiefly on the Second Circuit’s 2013 decision in Cariou v. Prince (no relation), in which the Second Circuit rejected the premise that a secondary work must comment on the original to be sufficiently “transformative” to qualify as fair use. With the help of a loan and donations to her GoFundMe campaign, Goldsmith appealed.
On March 26, 2021, the Second Circuit issued an opinion reversing the district court’s decision. It found that all four fair use factors weighed against fair use. Most controversially, the panel said that it had refused to consider the “intent behind or meaning of the works at issue” and therefore disregarded the notion—advanced by the Warhol Foundation and accepted by the district court—that Warhol had “transformed” Goldsmith’s photograph by converting her image of Prince as “a vulnerable human being” into an image of Prince as an “iconic, larger-than-life figure.” Instead, the Second Circuit held that the differences between the works are more akin to the differences between a novel and an adaptation of that novel—“a paradigmatic example” of a derivative work that would require a license.
That decision appeared to diverge from the court’s opinion in Cariou, in which the Second Circuit held that all but five of twenty-five works by Richard Prince constituted fair use, in large part because they “manifest[ed] an entirely different aesthetic from Cariou’s photographs” But in Goldsmith, the Second Circuit emphasized that it was not deviating from Cariou; instead, the panel attempted to distinguish Cariou, noting that, unlike the Prince Series, in Cariou “the copyrighted works found to have been fairly used were, in most cases, juxtaposed with other photographs and ‘obscured and altered to the point that Cariou’s original [was] barely recognizable.’”
Just days after the Second Circuit issued its opinion, the U.S. Supreme Court issued its first major opinion on the fair use doctrine in over 25 years on April 5, 2021 when it decided Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021). The Google case involved computer programming—not art—but the Google decision nonetheless was relevant since the Court discussed the four fair use factors at length, and even stated—in an apparent nod to the types of works for which Warhol is most famous—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.” Accordingly, when the Warhol Foundation petitioned the Second Circuit for rehearing following the Google decision, the Second Circuit agreed to reconsider the case.
Still, though, upon rehearing, the Second Circuit reached the same conclusion: Warhol’s “Prince Series” infringes on Goldsmith’s copyright in her photograph of Prince. In its amended opinion, the Second Circuit adhered to its prior reasoning and explicitly discussed how its decision aligns with Google. In addition, the panel distinguished the Prince Series from the Warhol-like painting the Google court had described in dicta, noting that “[t]he fact that the Goldsmith Photograph and the Prince Series were both created for artistic purposes makes this a different case from, for example, ‘[a]n artistic painting . . . precisely replicat[ing] a copyrighted advertising logo to make a comment about consumerism’ (such as Warhol’s well-known depictions of Campbell’s soup cans), which ‘might . . . fall within the scope of fair use.’” Id. at 43 n.5 (quoting Google, 141 S. Ct. at 1203).
Also in its amended opinion, in light of the Supreme Court’s decision in Google, the court placed newfound emphasis on the consideration of the “public benefits” the copying will likely produce as part of its analysis of the fourth fair use factor—the effect of the use on the market for the original. That factor asks “whether, if the challenged use becomes widespread, it will adversely affect the potential market for the copyrighted work.” The Second Circuit reiterated its previous determination that the answer here is yes. Although the district court had focused on the fact that the market for original works like the Prince Series and the market for the photograph do not significantly overlap, the Second Circuit focused instead on the derivative market: “although the primary market for the Goldsmith Photograph and the Prince Series may differ, the Prince Series works pose cognizable harm to Goldsmith’s market to license the Goldsmith Photograph to publications for editorial purposes and to other artists to create derivative works based on the Goldsmith Photograph and similar works.” The court specified that “what encroaches on Goldsmith’s market is [the Warhol Foundation’s] commercial licensing of the Prince Series, not Warhol’s original creation.” Thus, according to the Second Circuit, “art that is not turned into a commercial replica of its source material, and that otherwise occupies a separate primary market, has significantly more breathing space than the commercial licensing of the Prince Series.” The Second Circuit’s discussion of this fourth factor breathed new life into it, and suggested that the transformativeness analysis may not be quite as singularly outcome-determinative as it has sometimes appeared to be. Moreover, because the Second Circuit’s decision on its face pertains only to the commercial licensing of the Prince Series, it could have little impact on existing works created purely for artistic purposes.
“N*E*W*S”: The Warhol Foundation’s Petition for Supreme Court Review
On December 9, 2021, the Warhol Foundation petitioned the Supreme Court to review the following question:
Whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material (as the Second Circuit has held).
The Warhol Foundation argues that what it calls the Second Circuit’s “visual similarity” approach—which focuses on assessing the visual similarities between the two works to the exclusion of assessing their respective meanings or messages—conflicts with the Supreme Court’s instructions in Google and Campbell v. Acuff-Rose Music, Inc., to assess the meaning of artistic works, and “collapse[s] the transformativeness inquiry into the antecedent substantial similarity analysis.”
The Warhol Foundation also argues that the Second Circuit’s decision creates a split with the Ninth Circuit, which has squarely stated that new works are “typically viewed as transformative as long as new expressive content or message is apparent.”
In January 2022, four groups of amici filed briefs in support of the Warhol Foundation’s petition for Supreme Court review. They include a group of twelve prominent copyright law professors (led by Rebecca Tushnet at Harvard Law School, who previously filed an amicus brief on behalf of law professors in the Second Circuit), a group of thirteen intellectual property and art law professors (led by Mark Lemley at Stanford Law School), a pair of artists and art professors (Barbara Kruger and Robert Storr), and a trio of art institutions that have strong affiliations with pop and appropriation art (the Robert Rauschenberg Foundation, the Roy Lichtenstein Foundation, and the Brooklyn Museum).
Earlier this month, Goldsmith filed a brief in opposition to certiorari in which she argued, among other things, that even the Warhol Foundation and its amici have elsewhere expressed views—including on the meaning of the Google decision—that conflict with the positions they take in their petition and amicus briefs.
“Crystal Ball”: Will the Supreme Court Revisit “Transformativeness”?
Whether the Supreme Court will decide to review this case is difficult to predict. On the one hand, the Court addressed the fair use analysis in Google just last year, and therefore may not feel compelled to revisit it so soon. In addition, the Warhol Foundation frames the question presented in a way that recognizes that the Supreme Court itself has already answered the question at issue (i.e., it has already instructed courts to consider differences in the meanings and messages of the works at issue). These factors may weigh against a grant of certiorari.
On the other hand, though, several factors weigh in favor of a grant.
First, the Supreme Court in Google suggested that the particular nature of “the functional context of computer programs” influenced its decision. Accordingly, its discussion of the fair use factors might be best read as limited to that context.
Second, the Court may wish to correct the Second Circuit’s apparent misstatement of the law to the extent it conflicts with the Supreme Court’s instruction to consider the message or meaning of the works at issue.
Third, the Court may wish to clarify the transformativeness analysis in the context of the visual arts, given the longstanding tension between the concepts of transformativeness and derivative works, which has caused great confusion among the courts. That confusion is evident even within the Second Circuit’s decision in Goldsmith: Although the panel stated that “the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue” because “judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective,” in the same breath it implied that, where a later-in-time work comments on an earlier work, courts may consider those works’ divergent messages. Put differently, even though it made a categorical statement seeming to prohibit courts from considering the messages or meanings of the works at issue, it simultaneously seemed to acknowledge the relevance of the works’ respective meanings under certain circumstances.
Meanwhile, the Ninth Circuit’s approach, which purports to consider any work transformative “as long as new expressive content or message is apparent” seems to go too far. As the Second Circuit noted, that rule essentially eviscerates the concept of a derivative work, and makes it too easy to bypass licensing requirements by simply adding some new content or message—even of marginal significance—to an existing work.
These divergent approaches and the persistent lack of clarity delineating a transformative use from a derivative work may compel the Supreme Court to intervene.
“Emancipation”?: Musings on Transformativeness
In the event the Supreme Court does grant certiorari, it could reframe the transformativeness analysis. But what should a proper evaluation of transformativeness in the context of visual art entail? Perhaps the best approach would be one in which the burden to demonstrate visual differences between the works (the focus of the Second Circuit in Goldsmith) increases or decreases depending on the magnitude of the differences between the meaning or messages of the works (as analyzed using a reasonable person standard, not based solely on the artist’s stated intent). Under that approach, the focus of the inquiry would shift toward evaluating aesthetic differences only when no reasonable person would find compelling any purported differences in the meanings or messages of the works at issue. Although such a framework would force courts to act as art critics to some degree, it could perhaps lead to a more holistic—but still critical—assessment of transformativeness.
(More cynically, perhaps transformativeness, like obscenity, is ultimately one of those “know it when I see it” concepts whose bounds are simply impossible to intelligibly articulate.)
We will continue to monitor this litigation as it proceeds through the certiorari process, since the ultimate outcome will have significant consequences for the art world and other creative industries.
In the meantime, though, visual artists who borrow content without licensing it may face more difficulty asserting fair use defenses within the Second Circuit (New York, Connecticut, Vermont). Those with the best fair use defenses will be those who: (a) use source material that trades in a market that is completely unrelated to the market for the follow-on work, (b) draw material from numerous sources in creating a follow-on work, (c) very substantially modify the fundamental features of original work, and/or (d) comment on the original work in some fashion.
 Andy Warhol Foundation for the Visual Arts v. Goldsmith, 992 F.3d 99 (2d Cir.), opinion withdrawn and superseded on reh’g sub nom. Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).
 On the other hand, it appears a boon to photographers, as it reinforces (and arguably expands) the copyrightable aspects of photographs. The court stated that copyright protection in photographs “encompasses the photographer’s posing the subjects, lighting, angle, selection of film and camera, evoking the desired expression, and almost any other variant involved,” and observed that “[t]he cumulative manifestation of these artistic choices – and what the law ultimately protects – is the image produced in the interval between the shutter opening and closing, i.e., the photograph itself.” According to the court, that is “the photographer’s particular expression of the idea underlying her photograph.” Goldsmith, 11 F.4th at 46 (internal citations and quotation marks omitted). Cf. Bridgeman Art Libr., Ltd. v. Corel Corp., 36 F. Supp. 2d 191, 192 (S.D.N.Y. 1999) (holding that color transparencies of paintings which themselves are in the public domain “were not original and therefore not permissible subjects of valid copyright).
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 Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021).
 Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 50 (2d Cir. 2021).
 Petition for a Writ of Certiorari, Case No. 21-869 (December 9, 2021).
 Prince. (2019.) Originals [Album]. 2019 NPG Records, Inc. Warner Records Inc.
 Prince. (1981.) Controversy [Album]. Warner Bros. Records.
 Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 316 (S.D.N.Y. 2019), rev’d and remanded, 992 F.3d 99 (2d Cir. 2021), opinion withdrawn and superseded on reh’g sub nom. Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).
 Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). Cariou involved a series of thirty paintings, titled Canal Zone, created by the artist Richard Prince, who enlarged images from photojournalist Patrick Cariou’s book Yes, Rasta and transferred them to canvases, sometimes superimposing colors or other elements and sometimes incorporating them into a collage with other images. The Second Circuit held that all but five of the paintings constituted permitted fair use. Id. at 694.
 Andy Warhol Foundation for the Visual Arts v. Goldsmith, 2021 WL 1148826 (2d Cir. Mar. 26, 2021). Those factors are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. Determining whether a work is “transformative” is typically the focus of analysis when courts evaluate the first factor.
 Id. at 36, 43.
 Id. at 42. The panel declined to go so far as to conclude that the Prince Series works were “necessarily derivative works as a matter of law,” but nonetheless determined that the Prince Series paintings are “much closer to presenting the same work in a different form, that form being a high-contrast screenprint, than they are to being works that make a transformative use of the original.” Id. at 43.
 Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013). The Cariou court described the differences between the two artistic aesthetics at issue in that case as follows: “Where Cariou’s serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince’s crude and jarring works, on the other hand, are hectic and provocative. Cariou’s black-and-white photographs were printed in a 9 1/2″ x 12″ book. Prince has created collages on canvas that incorporate color, feature distorted human and other forms and settings, and measure between ten and nearly a hundred times the size of the photographs. Prince’s composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs, as is the expressive nature of Prince’s work.” Id.
 Goldsmith, 992 F.3d 99, 113 (2d Cir. March 26, 2021) (quoting Cariou, 714 F.3d at 710).
 Id. at 1203 (internal quotation marks omitted). The Court held that Google’s use of 11,500 lines of code from Sun Microsystem’s API in the development of Google’s Android cell phone operating system constituted fair use. Id. at 1186, 1209.
 Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 50 (2d Cir. 2021).
 Id. at 43 (noting that “the principles enunciated in Google are fully consistent with our original opinion” and that the Google court “expressly noted that ‘copyright’s protection may be stronger where the copyrighted material . . . serves an artistic rather than a utilitarian function.’” (quoting Google, 141 S. Ct. at 1197)).
 Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 613 (2d Cir. 2006).
 Goldsmith, 11 F.4th at 51.
 Id. (emphasis added).
 Id.; see also id. at 55 (Jacobs, J., concurring) (“The ‘public benefits’ considered here are those associated with the only use at issue: the Foundation’s commercial licensing. This use has nothing to do with ‘copyright’s concern for the creative production of new expression.’ Had the use been Warhol’s use of the photograph to construct the modified image, we would need to reassess.”) (internal citations omitted).
 Prince. (2003.) N*E*W*S [Album]. NPG Records.
 Petition for a Writ of Certiorari, Case No. 21-869 (Dec. 9, 2021) at i.
 510 U.S. 569 (1994).
 Petition for a Writ of Certiorari, supra, at i.
 Seltzer v. Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013).
 Prince. (1998.) Crystal Ball [Album]. NPG Records.
 In addition, the odds are always against the petitioner: The Supreme Court typically grants only about 80 of the 7,000 to 8,000 petitions for certiorari it receives each term (or about 1%).
 Google, 141 S. Ct. at 1203 (“Google copied portions of the Sun Java API precisely, and it did so in part for the same reason that Sun created those portions, namely, to enable programmers to call up implementing programs that would accomplish particular tasks. But since virtually any unauthorized use of a copyrighted computer program (say, for teaching or research) would do the same, to stop here would severely limit the scope of fair use in the functional context of computer programs.”).
 Id. at 42 (emphasis added) (distinguishing the works at issue in Goldsmith from “Warhol’s well-known depictions of Campbell’s soup cans,” which “make a comment about consumerism”).
 Seltzer v. Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013).
 Prince. (1996.) Emancipation [Album]. NPG Records. EMI Records.
 Perhaps that is what really happened in Goldsmith: Although the Second Circuit purported to disregard the difference between Prince-as-vulnerable-human and Prince-as-icon on the basis that courts should not consider 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,” perhaps the reality is that the panel simply did not find that difference stark enough to smack of “transformativeness” and therefore focused instead on evaluating the aesthetic differences.
 Jacobellis v. Ohio, 378 U.S. 184, 197 (1964) (Stewart, J., concurring).
 Prince. (2003.) Xpectation [Album]. NPG Records.