Copyright

Duped or Duplicated? The Difference Between A Counterfeit And An Accessible Homage

/ Washington Journal of Law, Technology & Arts / 1 Comment

By: HR Fitzmorris

Even non-legally versed consumers know that counterfeit or fraudulent products are illegal. In fact, some may have even experienced the euphoria of getting what they thought was a steal on a new designer product only to find out that it was a different type of ‘steal’ altogether. 

But what about “dupes”?

Unlike counterfeit products, which are copies of trademarked consumer goods meant to be passed off as the real thing, dupes (short for duplicate or duplication) are products that mimic other companies’ popular products without seeking to trick the consumer into thinking it’s the real deal. Dupes usually mimic high-end, in-demand goods and are sold at a much lower price-point—essentially the Gen Z version of a “knock-off.” Dupes have become extremely popular with the rise of social media advertising aimed at younger demographics. Teens that may not be able to afford a wildly trendy Cartier ring ($2,995) certainly may be able to scrounge up the change for the Amazon dupe ($12.99, with free next day shipping!).

The “Real” Fakes

To the everyday consumer the distinction between a counterfeit and a dupe may seem dubious, but in legal terms it’s significant. Counterfeiting is a concept used to “indicate an infringement of intellectual property rights, namely acts (use, manufacturing, or sale, for example) carried out without the consent of the intellectual property right holder.” “Counterfeiting” is the “act of making or selling fake products with the intent to deceive consumers. In the United States, it is illegal to produce, distribute, or sell counterfeit goods.” 

There are more issues with counterfeit goods outside of intellectual property infringement and their morally dubious nature. There are also possible health and safety issues with fake products that flout FDA or consumer protection standards.  There’s of course, the economic harm to legitimate businesses that lose money when their customers are lured away. The ever-present environmental harms associated with the flood of mass-produced, easily discarded items lurk behind the scenes. There’s even concern that counterfeit goods play a role in funding broader criminal enterprises.

Dupes: Duplication or Duplicity?

One of the important elements of counterfeiting is the “intent to deceive,” and this element is a significant piece of what separates dupes from counterfeits. Dupes do not claim to be the real-deal. In fact, part of their allure is that purchasers are getting the same or similar quality and functionality of the original without the original’s branding (and the associated price mark-up). As Claire Kane put it in her article for online publication MIC: 

While “fake” is a dirty word in fashion and “counterfeit” sounds unethical, the more neutral-sounding “dupe” suggests making savvy purchases and “somehow cheat[ing] the system” to get the look for less.

Companies hoping to crack down on dupes and knockoffs face an uphill battle in court. Without distinctive, trademarked branding that makes counterfeits fall within the reach of traditional trademark infringement, brands find little sympathy in the law. The current state of U.S. copyright law as it pertains to clothing and accessories has significant gaps. U.S. copyright law does not fully protect items defined as useful articles, which are “objects having an intrinsic utilitarian function” and “clothing” is the very first example of what counts. So, without the direct, obvious infringement on the branding, companies are unlikely to prevail.

Can You  Smell the Difference?

An especially interesting sector of dupes gaining popularity are designer fragrance dupes. Most dupes, like a certain handbag or shoe dupe, the knockoff brand doesn’t need (or want) to explicitly refer to the original product—it relies on the consumer to ‘get’ the reference. Not so with replica fragrance brands such as Oakcha, Dossier, or ALT Fragrances, which directly rely on references to their designer counterparts in their marketing. In fact, they often list the fragrance they were “inspired by” right on the bottle, or in the product description. So, what makes fragrance such a fertile ground for direct and blatant knockoffs without running afoul of trademark or copyright law? 

The answer is a combination of technology and law. First, new technological developments have made it extremely easy to reverse engineer specific fragrance formulations. Also, while the branding or packaging of a perfume may be eligible for copyright protection, a perfume’s scent is not because the scent serves as the “functional purpose of the product.” This makes it, under trademark law, ineligible for registration with the USPTO (functionality is a bar to registration). Perfumers can look to other avenues of protection such as obtaining a patent over the perfume formula, or trade secret protection, but these protections are difficult and costly to obtain and have drawbacks like disclosure. 

The legal landscape concerning dupes is unique and developing. It is inconsistent across products and complicated across industries. Whether you think dupes are simply knockoffs with a moral makeover or a legitimate industry that provides consumers with accessible choices, the law is unlikely to be the force that stems the tide.

AI Art: Infringement is Not the Answer

/ Washington Journal of Law, Technology & Arts / 1 Comment
Photo by tom balabaud on Pexels.com

By: Jacob Alhadeff

In the early 2000s, courts determined that the emerging technology of peer-to-peer “file-sharing” was massively infringing and categorically abolished its use. Here, the Ninth Circuit and Supreme Court found that Napster, Aimster, and Grokster were secondarily liable for the reproductions of their users. Each of these companies facilitated or instructed their users on how to share verbatim copies of media files with millions of other people online. In this nascent internet, users were able to download each other’s music and movies virtually for free. In response, the courts held these companies liable for the infringements of their users. In so doing, they functionally destroyed that form of peer-to-peer “file-sharing.” File-sharing and AI are in not analogous, but multiple recent lawsuits present a similarly existential question for AI art companies. Courts should not find AI art companies massively infringing and risk fundamentally undermining these text-to-art AIs.

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Text-to-art AI, aka generative art or AI art, allows users to type in a simple phrase, such as “a happy lawyer,” and the AI will generate a nightmarish representation of this law student’s desired future. 

Currently, this AI art functions only because (1) billions of original human authors throughout history have created art that has been posted online, (2) companies such as Stability AI (“Stable Diffusion”) or Open AI (“Dall-E”) download/copy these images to train their AI, and (3) end-users prompt the AI, which then generates an image that corresponds to the input text. Due to the large data requirements, all three of these steps are necessary for the technology, and finding either the second or third steps generally infringing poses and existential threat to AI Art. 

In a recent class action filed against Stability AI, et al (“Stable Diffusion”), plaintiffs allege that Stable Diffusion directly and vicariously infringed on the artist’s copyright through both the training of the AI and the generation of derivative images, i.e., steps 2 and 3 above. Answering each of these claims requires complex legal analyses. However, functionally, a finding of infringement on any of these counts threatens to fundamentally undermine the viability of text-to-art AI technology. Therefore, regardless of the legal analysis (which likely points in the same direction anyways) courts should not find Stable Diffusion liable for infringement because doing so would contravene the constitutionally enumerated purpose of copyright—to incentivize the progress of the arts. 

In general, artists have potential copyright infringement claims against AI Art companies (1) for downloading their art to train their AI and (2) for the AI’s substantially similar generations that the end-user prompts. In the conventional text-to-art AI context, these AI art companies should not be found liable for infringement in either instance because doing so would undermine the progress of the arts. However, a finding of non-infringement leaves conventional artists with unaddressed cognizable harms. Neither of these two potential outcomes are ideal. 

How courts answer these questions will shape how AI art and artists function in this brave new world of artistry. However, copyright infringement, the primary mode of redress that copyright protection offers, does not effectively balance the interests of the primary stakeholders. Instead of relying on the courts, Congress should create an AI Copyright Act that protects conventional artistry, ensures AI Art’s viability, and curbs its greatest harms. 

Finding AI Art Infringing Would Undermine the Underlying Technology

A finding of infringement for the underlying training or the outputs undermines AI Art for many reasons: copyright’s large statutory damages, the low bar for granting someone a copyright, that works are retroactively copyrightable, the length of copyright, and the volume of images the AI generates and needs for training.

First, copyright provides statutory damages of $750 to $30,000 and up to $150,000 if the infringement is willful. Determining the statutory value of each infringement is likely moot because of the massive volume of potential infringements. Moreover, it is likely that if infringement is found, AI art companies would be enjoined from functioning, as occurred in the “file-sharing” cases of the early 2000s. 

Second, the threshold for a copyrightable work is incredibly low, so it is likely that many of the billions of images used in Stable Diffusion’s training data are copyrightable. In Feist, the Supreme Court wrote, “the requisite level of creativity is extremely low [to receive copyright]; even a slight amount will suffice. The vast majority of works make the grade quite easily.” This incredibly low bar means that each of us likely creates several copyrightable works every day. 

Third, works are retroactively copyrightable, meaning that the law does not require the plaintiff to have registered their work with the copyright office to receive their exclusive monopoly. Therefore, an author can register their copyright after they are made aware of an infringement and still have a valid claim. If these companies were found liable, then anyone with a marginally creative image in a training set would have a potentially valid claim against a generative art company.

Fourth, the copyright monopoly lasts for 70 years after the death of the author. Therefore, many of the copyrights in the training set have not lapsed. Retroactive copyright registration combined with the extensive duration of copyrightability means that few of the training images are likely in the public domain. In other words, “virtually all datasets that will be created for ML [Machine Learning] will contain copyrighted materials.”

Finally, as discussed earlier, the two bases for infringement claims against the AI art companies are (1) copying to train the AI and (2) copying in the resultant end generation. Each basis would likely result in billions or millions of potential claims, respectively. First, Stable Diffusion is trained on approximately 5.85 billion images which they downloaded from the internet. Given these four characteristics of copyright, it is likely that if infringement were found, many or all of the copyright owners of these images would then have a claim against AI art companies. Second, regarding infringement of end generations, Dall-E has suggested that their AI produces millions of generations every day. If AI art companies were found liable for infringing outputs, then any generation that was found to be substantially similar to an artist’s copyrighted original would be the basis of another claim against Dall-E. This would open them up to innumerable infringement claims every day. 

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At the same time, generative art is highly non-deterministic, meaning that, on its face, it is hard to know what the AI will generate before it is generated. The AI’s emergent properties, combined with the subjective and fact-specific “substantial similarity” analysis of infringement, do not lend themselves to an AI Art company ensuring that end-generations are non-infringing. More simply, from a technical perspective, it would be near-impossible for an AI art company to guarantee that their generations do not infringe on another’s work. 

Finding AI art companies liable for infringement may open them up to trillions of dollars in potential copyright lawsuits or they may simply be enjoined from functioning.

An AI Copyright Act

Instead, Congress should create an AI Copyright Act. Technology forcing a reevaluation of copyright law is not new. In 1998, Congress passed the DMCA (Digital Millennium Copyright Act) to fulfill their WIPO (World Intellectual Property Organization) treaty obligations, reduce piracy, and facilitate e-commerce. While the DMCA’s overly broad application may have stifled research and free speech, it does provide an example of Congress recognizing copyright’s limitations in addressing technological change and responding legislatively. What was true in 1998 is true today. 

Finding infringement for a necessary aspect of text-to-art AI may fundamentally undermine the technology and run counter to the constitutionally enumerated purpose of copyright—“to promote the progress of science and useful arts.” On the other hand, finding no infringement leaves these cognizably harmed artists without remedy. Therefore, Congress should enact an AI Copyright Act that balances the interests of conventional artists, technological development, and the public. This legislation should aim to curb the greatest harms posed by text-to-art AI through a safe harbor system like that in the DMCA. 

Termination Rights and the Musical Modernization Act’s Blanket Licenses

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By: Perry Maybrown

Copyright law in the digital age is tricky, to say the least. Scrolling through blog posts on WJLTA’s own website will demonstrate that fact; when you search the keyword “copyright” there are over 100 related posts. Music copyright law is no exception. Since October 2022, the U.S. Copyright Office has been working through the long and arduous process of formal rulemaking (also called notice and comment rulemaking) to pass a rule clarifying who should receive royalties from blanket licenses after a copyright transfer is terminated. A blanket license is a set amount of money (currently 9.1 cents per play) that a composer gets whenever his or her work is performed. This can be through plays from a streaming service or a recording broadcast in a public place, for example. The Copyright Office’s stance is that authors, not publishers, should receive the royalties after the copyright is terminated. 

Relatedly, a right found in the Copyright Act of 1976 has recently begun to slowly creep into relevance. According to 17 U.S.C. § 203, authors have the right to terminate the transfer of a copyright (except in specific circumstances like work made for hire) between 35 and 40 years after the transfer occurred This allows artists and their heirs to reclaim copyrights that were transferred in raw deals and renegotiate for better terms. However, in the case of music rights, this may not always be a clean break.

The issue is: who receives the royalty once the copyright transfer is terminated? Theoretically, the royalty rights should revert to the author or their heirs. Still, some loopholes allow companies to keep raking in profits even after the right has terminated. 

There is, however, an exception in the termination statute:

(1)A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant. 

A derivative work is ‘‘a work based upon one or more preexisting works, such as a . . . musical arrangement, . . . sound recording, . . . or any other form in which a work may be recast, transformed, or adapted.’’ In plain English – if the copyright holder makes a derivative work before the copyright is terminated, then they can use that derivative work the same way they have been using the original, but they cannot continue making derivative works.

For example, let’s say Musician A makes a beautiful song and then signs their rights to the song over to Company B. Company B starts making derivative works, such as a parody or a movie, based on Musician A’s beautiful song. Musician A decides that they do not like the deal they made with Company B and, after 35 years, terminates the copyright transfer. Company B can now no longer do anything in relation to that specific copyright. But, they can keep making money from the derivative works they made prior to the termination of the transfer.

Unfortunately, reality is often more complicated than the example given above. Rather than creating something themselves, companies will pass the license on to other more specialized groups in order to create a derivative work. Does the exception still apply under these circumstances? Take the example of Mills Music, Inc. v. Snyder, a 1985 case that involved this issue. There, a musician signed over their copyright to a publisher, who in turn granted a blanket license to recording companies. The publishing company was able to collect royalties through that license. But then the musician terminated the copyright transfer, posting the question of who should keep getting the royalties? The publisher didn’t make the derivative work themselves; they just licensed the work out to another company that then made the new work. In this case, the court found that the chains of licenses were protected by the exception and therefore the publisher got to keep the royalties.

However, things have changed since the 1980’s. Currently, the issue surrounds a type of blanket licenses introduced in 2018 that only apply to digital distribution of music. The Copyright Office’s view is that the exception does not apply to this newer type of digital licenses. To clarify its stance, the copyright office is working to promulgate a new rule. The three reasons the copyright office believes that the exception does not apply are:

  1. The blanket license is not something that can be “terminated.” Rather, it is a statutory license that is “self-executing.” Because it cannot be terminated, it would not make sense for a termination exception to apply.
  2. For the exception to apply, there must be a derivative work prepared “under the authority of the grant.” Under the new blanket licenses there is a presumption that digital music publishers are not creating their own derivative works, only obtaining and licensing sound recording derivatives from other companies. The blanket license that ties together the digital music publisher and company that made the derivative work is not one that is protected by the blanket license. 
  3. If the exception were to apply to blanket licenses then it would apply to all terms, which could lead to a wider effect than intended. For example, if the termination exception is applied broadly then it could also impact statutory changes. If there is a termination and Congress changes the statute on blanket licenses, what laws would apply? Would it be the law in force at the time of the termination? Or the most up to date law?

The copyright office concludes their analysis by discussing the reasons why, if the exception did apply, it would be irrelevant. The wording of the statutes indicate that “copyright owner” receives the royalties, and this owner is subject to change for a variety of reasons. Thus, the copyright office claims, it would be unreasonable to assume that the music publisher would become the permanent recipient of royalties. This rule proposal is subject to notice and comment, which means it’s subject to change. The public was able to offer comments on the proposed rule, sharing their views on its impacts and why they disagreed or agreed with the copyright office’s proposal. The opportunity to comment closed January 5, 2023. The copyright office will now consider all comments before releasing a decision. From the discussion occurring around this rule change, this update is absolutely needed. However, formal rulemaking is a long process. As of right now it is unclear how long that may take and what exact impact this new rule will have on digital licenses.

AI Art “In the Style of” & Contributory Liability

/ Washington Journal of Law, Technology & Arts / 3 Comments

By: Jacob Alhadeff

Greg Rutkowski illustrates fantastical images for games such as Dungeons & Dragons and Magic the Gathering. Rutkowski’s name has been used thousands of times in generative art platforms, such as Stable Diffusion and Dall-E, flooding the internet with thousands of works in his style. For example, type in “Wizard with sword and a glowing orb of magic fire fights a fierce dragon Greg Rutkowski,” and Stable Diffusion will output something similar to Rutkowski’s actual work. Rutkowski is now reasonably concerned that his work will be drowned out by these hundreds of thousands of emulations, ultimately preventing customers from being able to find his work online. 

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Examples of images generated by Dream Studio (Stable Diffusion) in Rutkowski’s style.

These machine learning algorithms are trained using freely available information, which is largely a good thing. However, it may feel unfair that an artist’s copyrighted images are freely copied to train their potential replacement. Ultimately, nothing these algorithms or their owners are doing is copyright infringement, and there are many good reasons for this. However, in certain exceptional circumstances, like Rutkowski’s, it may seem like copyright laws insufficiently protect human creation and unreasonably prioritizes computer generation.

A primary reason why Rutkowski has no legal recourse is because an entity that trains its AI on Rutkowski’s copyrighted work is not the person generating the emulating art. Instead, thousands of end-users are collectively causing Rutkowski harm. Since distinct entities cause aggregate harm, there is no infringement. By contrast, if Stable Diffusion verbatim copied Rutkowski’s work to train their AI before generating hundreds of thousands of look-a-likes, this would likely be an unfair infringement. Understanding the importance of this separation is best seen through understanding the process of text-to-art generation and analyzing each person’s role in the process. 

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To give a brief summary of this process, billions of original human artists throughout history have created art that has been posted online. Then a group like Common Crawl scrapes those billions of images and their textual pairs from billions of web pages for public use. Later, a non-profit such as LAION creates a massive dataset that includes internet indexes and similarity scores between text and images. Subsequently, a company such as Stable Diffusion trains its text-to-art AI generator on these text-image pairs. Notably, when a text-to-art generator uses the LAION database, they are not necessarily downloading the images themselves to train their AI. Finally, when the end user goes to Dream Studio and types in the phrase “a mouse in the style of Walt Disney,” the AI generates unique images of Mickey Mouse. 

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Examples of images generated by Dream Studio (Stable Diffusion) using the phrase “a mouse in the style of Walt Disney”

These several distributed roles complicate our copyright analysis, but for now, we will limit our discussion of copyright liability to three primary entities: (1) the original artist, (2) the Text-to-Image AI Company, and (3) the end-user. 

The Text-to-Image Company likely has copied Rutkowski’s work. If the Text-to-Image company actually downloads the images from the dataset to train its AI, then there is verbatim intermediate copying of potentially billions of copyrightable images. However, this is likely fair use because the generative AI provides what the court would consider a public benefit and has transformed the purpose and character of the original art. This reasoning is demonstrated by Kelly v. Arriba, where an image search’s use of thumbnail images was determined to be transformative and fair partly because of the public benefit provided by the ability to search images and the transformed purpose for that art, searching versus viewing. Here, the purpose of the original art was to be viewed by humans, and the Text-to-Image AI Company has transformatively used the art to be “read” by machines to train an AI. The public benefit of text-to-art AI is the ability to create complex and novel art by simply typing a few words into a prompt. It is more likely that the Generative AI’s use is fair because the public does not see these downloaded images, which means that they have not directly impacted the market for the copyrighted originals. 

The individual end-user is any person that prompts the AI to generate hundreds of thousands of works “in the style of Greg Rutkowski.” However, the end-user has not copied Rutkowski’s art because copyright’s idea-expression distinction means that Rutkowski’s style is not copyrightable. The end-user simply typed 10 words into Stable Diffusion’s UI. While the images of wizards fighting dragons may seem similar to Rutkowski’s work, they may not be substantially similar enough to be deemed infringing copies. Therefore, the end-user similarly didn’t unfairly infringe on Rutkowski’s copyright.

Secondary Liability & AI Copyright

Generative AI portends dramatic social and economic change for many, and copyright will necessarily respond to these changes. Copyright could change to protect Rutkowski in different ways, but many of these potential changes would result in either a complete overhaul of copyright law or the functional elimination of generative art, neither of which is desirable. One minor alteration that could give Rutkowski, and other artists like him, slightly more protection is a creative expansion of contributory liability in copyright. One infringes contributorily by intentionally inducing or encouraging direct infringement.

Dall-E has actively encouraged end-users to generate art “in the style of” artists. So not only are these text-to-art AI companies verbatim copying artists’ works, but they are then also encouraging users to emulate the artists’ work. At present, this is not considered contributory liability and is frequently innocuous. Style is not copyrightable because ideas are not copyrightable, which is a good thing for artistic freedom and creation. So, while the work of these artists is not being directly copied by end-users when Dall-E encourages users to flood the internet with AI art in Rutkowski’s style, it feels like copyright law should offer Rutkowski slightly more protection.

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An astronaut riding a horse in the style of Andy Warhol.
A painting of a fox in the style of Claude Monet.

Contributory liability could offer this modicum of protection if, and only if, it expanded to include circumstances where the copying fairly occurred by the contributor, but not the thousands of end-users. As previously stated, the end-users are not directly infringing Rutkowski’s copyright, so under current law, Dall-E has not contributorily copied. However, there has never been a contributory copyright case such as this one, where the contributing entity themselves verbatim copied the copyrighted work, albeit fairly, but the end user did not. As such, copyright’s flexibility and policy-oriented nature could permit a unique carveout for such protection.

Analyzing the potential contributory liability of Dall-E is more complicated than it sounds, particularly because of the quintessential modern contributory liability case, MGM v. Grokster, which involved intentionally instructing users on how to file-share millions of songs. Moreover, Sony v. Universal would rightfully protect Dall-E generally as due to many similarities between the two situations. In that case, the court found Sony not liable for copyright infringement for the sale of VHS recorders which facilitated direct copying of TV programming because the technology had “commercially significant non-infringing uses.” Finally, regardless of Rutkowski’s theoretical likelihood of success, if contributory liability were expanded in this way, then it would at least stop companies such as Dall-E from advertising the fact that their generations are a great way to emulate, or copy, an artist’s work that they themselves initially copied. 

This article has been premised on the idea that the end-users aren’t copying, but what if they are? It is clear that Rutkowski’s work was not directly infringed by the wizard fighting the dragon, but what about “a mouse in the style of Walt Disney?” How about “a yellow cartoon bear with a red shirt” or “a yellow bear in the style of A. A. Milne?” How similar does an end-user’s generation need to be for Disney to sue over an end-user’s direct infringement? What if there were hundreds of thousands of unique AI-generated Mickey Mouse emulations flooding the internet, and Twitter trolls were harassing Disney instead of Rutkowski? Of course, each individual generation would require an individual infringement analysis. Maybe the “yellow cartoon bear with a red shirt” is not substantially similar to Winnie the Pooh, but the “mouse in the style of Walt Disney” could be. These determinations would impact a generative AI’s potential contributory liability in such a claim. Whatever copyright judges and lawmakers decide, the law will need to find creative solutions that carefully balance the interests of artists and technological innovation. 

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The (Purple) Reign of Fair Use: Certiorari Granted for Warhol’s Portrait of Prince

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OXFORD, ENGLAND – FEBRUARY 02: A member of staff and her child walk next to a series of artworks by Andy Warhol at the Ashmolean Museum on February 2, 2016 in Oxford, England. The work forms part of a new exhibition entitled ‘Andy Warhol: Works from the Hall Collection’. Featuring over 100 unseen Warhol’s, it is due to will run from February 4 to May 15, 2016. (Photo by Carl Court/Getty Images)

By: Erika Hammer

Amongst several IP-focused cases this year having requested review by the Supreme Court, the high court has recently granted certiorari for a case involving copyright, fair use, and some famous individuals: artist Andy Warhol and musician Prince. The case focuses on whether a work is “transformative” under fair use, a major defense to copyright infringement. Notably, fair use is considered to be one of the most important exceptions to copyright law’s general monopoly grant of intelelctual property rights to authors of original works, as well as a major cornerstone for promoting artistic expression, access to knowledge, and dissemination of ideas. 

The case, Andy Warhol Foundation v. Goldsmith, arises from a set of portraits created by Andy Warhol, whose pieces often draw from preexisting works (e.g., a Marilyn Monroe photograph or a can of Campbell’s soup). The specific pieces at issue are portraits of Prince based on a Vanity Fair photograph taken by Lynn Goldsmith. The petition for certiorari describes how Warhol, via silkscreen printing, “cropped the image to remove Prince’s torso, resized it, altered the angle of Prince’s face, and changed tones, lighting, and detail” as well as “added layers of bright and unnatural colors, conspicuous hand-drawn outlines and line screens, and stark black shading that exaggerated Prince’s features.” 

Post-litigation, the district court granted the Andy Warhol Foundation summary judgment in favor of its fair use defense, deeming the use “transformative” for communicating a different meaning and message from the original Goldsmith work. However, the Second Circuit reversed, despite acknowledging that the two artists’ pieces represented different messages. It stated, “while the cumulative effect of those alterations may change the Goldsmith Photograph in ways that give a different impression of its subject, the Goldsmith Photograph remains the recognizable foundation upon which the Prince Series is built.” 

As the Andy Warhol Foundation argued in its petition for certiorari, the Second Circuit’s analysis focuses on the visual resemblances between the works. The Foundation further opines that this decision is creating a circuit split and highlights that the Ninth Circuit has held that a work of art is “transformative” when it portrays a different meaning or message from the original source. 

This case is significant not only because of the famous individuals involved, but also because it involves one of the most crucial doctrines in modern copyright law. Fair use, which is set forth in 17 U.S.C § 107, is the most wide-ranging limitation on copyright protection that attempts to promote the expression of artistic works. Fair use is also grounded in the goals of promoting common culture and enabling technological advancement. As such, highly creative works like Andy Warhol’s would appear to be exactly the kind of follow-on creativity that fair use is intended to not only protect, but to promote. 

Even if a work is highly creative, it must be examined under four factors used in determining whether there is a qualified fair use defense. These four factors include: (1) the purpose and character of the use, including whether the 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. The Second Circuit found that each of these factors weighed in favor of Goldsmith.

Under the first factor, the more transformative a use is, the more likely said use is deemed to be fair. A foundational fair use case, Campbell v. Acuff Rose, emphasized transformative use as a critical factor. Transformative use is often seen as adding new, creative expression or changing the purpose or character of the copyrighted work. The more transformative a use is, the less significant the other fair use factors will be in the analysis. Typically, if a court finds transformative use under the first factor, that factor tends to strongly influence the inquiry into the rest of the fair use factors. 

With transformative use being such a crucial factor in fair use, which is of itself a crucial doctrine in copyright law, it comes as no surprise that the Supreme Court granted certiorari in this case. Despite the fact that Andy Warhol’s artwork appears to transform Prince’s depiction “from a vulnerable, uncomfortable person to an iconic, larger-than-life figure,” as described by the district court, this paradigm of the transformative nature of the work did not pass muster in the Second Circuit. 

In contrast, other prior Second Circuit cases that have been seminal in the “transformative” aspect of fair use have allowed use of the defense even when the original work is still a “recognizable foundation” to the subsequent piece at issue. Graham v. Dorling Kindersley held that a Grateful Dead biography that used copyrighted, original posters was fair use because they served a different purpose, despite the entirety of the original work being used in the follow-on biography. However, in opposition to certiorari, Goldsmith argues that the Warhol silkscreens shared the same purpose as Goldsmith’s copyrighted photograph, as well as the same essential artistic elements.

How the Supreme Court comes out on this decision – whether a different message or meaning is sufficient for transformation under fair use despite facial similarities – will be very important in copyright jurisprudence and the scope of fair use.