Introduction

Fair Use is a legal doctrine and a defence to promote freedom of speech and expression by allowing the unlicensed use of the copyright. Section 107 of the Copyright Act provides whether an activity qualifies under the permitted acts such as criticism, comment, news reporting, teaching or research. The provision provides a four-factor test to determine the fair use.

  1. Purpose and character of the use: Courts look at whether the use by the party claiming fair use is of a commercial or non-profit educational purposes. Usually, based on the precedents, the non-profit and non-commercial uses are considered fair. However, it does not imply that commercial uses are not fair.
  2. Nature of the copyrighted work: The factor analyses the degree of the work that is being used in promoting the creative expression. More the work is creative, it is less likely to support a fair claim than the factual work.
  3. Amount and substantiality of the portion used in relation to the copyrighted work as a whole: This factor assesses the quality and quantity of the copyrighted material that was used. If the use is of a large portion of the copyright material, then the fair use is less likely to be established. On the other hand, if only a small portion of the work is used, then there are high chances of finding fair use. However, the contrary is possible as well.
  4. Effect of the use upon the potential market for or value of the copyrighted work: The courts assess whether and to what extent, the unlicensed work harms the existing or future market for the copyright owner's original work. It has to be analysed whether there is a substantial harm on the market if the copied work was spread.

Transformative use forms a part of the analysis in the first factor. Transformative uses are more likely to be considered fair. These uses are those that add something new, with a further purpose or different character and do not substitute for the original use of the work.

One of the most important questions in applying the fair use doctrine is whether the infringer's alleged use of the copyrighted work was transformative or not. It simply means whether the new work has changed the appearance of the copyrighted work or not. However, if the use is transformative, it does not necessarily mean that the suit will succeed but it shall weigh in favour of the defendant in infringement cases.

The concept arose by the US Supreme Court decision in 1994. In Campbell vs. Acuff-Rose Music, the court focused not only on the small quality taken from the copyrighted work but also on the transformative nature of the defendant's use. The court opined that no infringement occurred because the defendant added a new meaning and message rather than copying the original work. Further, it was also stated that the new work shall not affect the market of the original work.

Post the pronouncement, there have been certain precedents that justify the transformative use of the copyrighted material. For instance, the courts in the United States have found that using magazine covers in a bibliography of an artist did not violate the copyright of the magazine publisher when the magazines were out of print. The doctrine also allows the legal databases to offer legal briefs for searchable use for academicians, students and professionals. Libraries were also allowed to scan the books and provide copies to the students in the universities for educational purposes.

However, on the other hand, there have been certain instances wherein the court did not uphold the transformative use. For example, the court ruled that a Harry Potter encyclopaedia infringed on the Harry Potter copyright because it used substantial passages from the texts of Harry Potter books. Hence, the decision depends upon the interpretation of the courts and the use as adopted by the alleged infringer.

Andy Warhol Foundation vs. Goldsmith

In March 2021, the Second Circuit Court of Appeals in the said case pronounced that Warhol's mid-1980s silkscreen portraits of the artist Prince, based on an iconic photograph by Lynn Goldsmith, do not qualify as fair use. The decision is significant because it mitigates the overreliance on broad notions of transformativeness in the jurisprudence related to fair use. The court herein has drawn a line between sufficiently transformative and simply derivative. The decision is a clear response against the misguided principles following the judicial interpretation.

Background

The works in question are a series of 15 silkscreen prints and illustrations that Warhol based on a portrait of the Prince taken by Goldsmith in 1981. It is true that Goldsmith initially licensed the photograph to Vanity Fair in 1984 for an artist reference for a work it commissioned Warhol to create, Warhol created additional series of work without any authorization. After Prince's death in 2016, Goldsmith became aware of the illustrations. Further, she contacted the foundation about the infringement. The Foundation won the case in the US District Court stating that Warhol's work qualifies for fair use. Goldsmith then appealed in the Second Circuit and stated that the District Court has erred in the judgment.

Analysis

The Court applied the four-factor test that has been established through various precedents and the legal provision to pronounce the judgment. Hence, it is essential to assess the four factors in light of the judgment.

  • Purpose and character of the alleged infringing work: The court clarified that to truly qualify as transformative, the secondary work must alter the original work "with new expression, meaning or message". The hon'ble court also cited the 2013 decision in Cariou vs Prince, wherein the works of an artist Richard Prince that incorporated black and white photographic portraits taken by Cariou, were considered as fair use. The decision was based on the conclusion that most of the work at issue distorted the human forms and settings of the photographs, added colour and explicitly resized the images, resulting in a change that was evidently different from the copyrighted Other works that were not considered fair use, were termed as derivative works.

In the instant case, the court stated because the purpose of the copyrighted and unauthorized works is visual aid, it must focus on the transformative nature of the Warhol prints. The Second Circuit court stated that the determination of transformative use is subjective and based on the opinion of one critic or judge. The court clarified that it intends to employ a more objective approach which is based on how the work "may reasonably perceived". In addition to this, the judge must also consider whether the secondary work is "fundamentally different and new" when compared to the source material. Based on these factors, the court stated that the changes were not substantial enough to constitute the transformative fair use and hence, the first factor was deemed to be in favour of Goldsmith.

  • Nature of the underlying work and amount used: The court herein stated that Goldsmith licensed the work to Vanity Fair but it does not change its status to unpublished. Further, it was stated that the activity does not diminish the Law's protection of her choice of "when to make a work public and whether to withhold such work to increase the demand". Therefore, the court held in favour of Goldsmith.

The next factor focuses on the amount of the copyrighted work that was used. The hon'ble court acknowledged that Goldsmith cannot be granted copyright in Prince's face but the foundation has missed the mark. The court's opinion provides that copyright protects the "cumulative manifestation" that results from the choices that involve lighting, posing and selection of camera. These choices create an expression from an idea. Additionally, it was stated that Warhol borrowed most of the work from Goldsmith's photograph, both in quality and quantity. Moreover, the work of Warhol, rather than minimizing, amplifies the aspects of the photograph. Hence, the third factor was also in favour of Goldsmith.

  • Effect of the use on the market for the original work: The next factor is related to whether the unauthorized use will adversely affect the potential market or value of the copyrighted The court stated that the burden of proving whether there shall be an adverse impact on the potential market, will lie on the secondary user. The Second Circuit agreed that the primary market for sales of the Goldsmith photograph and the Warhol works do not overlap. However, it then considered potential market of Goldsmith. Simply because Goldsmith did not enter the market does not mean that it will not in the future. The Second Circuit also goes on to point that in case the copying that Warhol is engaged in continues and becomes widespread, it will have a devastating impact on an existing market to license works for stylized derivative uses. Warhol, herein failed to present evidence that the series and works do not harm the actual or potential markets of Goldsmith and thus, it was held against fair use.

Ultimately, the court decided that Goldsmith's photograph was the "raw material" on which Warhol's series and works were based. Warhol created the series by copying Goldsmith's work and thus, it was stated that the expression, and not the idea, was copied. Hence, it was concluded that to a great extent, Goldsmith's work remains recognizable in Warhol's and thus, there is no reasonable claim that the works are not substantially similar.

Conclusion

The history of the fair use defence, from its inception, has witnessed a long list of catchphrases coming into and out of fashion, including "productive use," "market imperfection," "price discrimination," "functional test," and "complementary goods," to name a few. The latest and most famous is "transformative use," which has been approaching total dominance in fair use jurisprudence, involved in 90% of all fair use decisions in recent years. Judge Leval in one of his judgments stated "deploring a test's vagueness is easy. Much more difficult is to come up with a better one". Hence, the fair use doctrine needs to be further streamlined as well to provide a valid and clear explanation.

References

Source: https://copyrightalliance.org/fair-use-decision-transformative-use-analysis/

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