Thread by @SterneKessler

Good morning! Will Milliken here. I’m a director in Sterne Kessler’s Trial and Appeals Group. I’ll be live-tweeting today’s #SCOTUS argument in Andy #Warhol Foundation for the Visual Arts v. Goldsmith.
#AppellateTwitter 1/

The #Warhol case concerns the scope of the “fair use” defense to copyright infringement, and, specifically, whether Andy Warhol’s “Orange Prince” work is a fair use of the Lynn Goldsmith photograph on which it was based. 2/

If you joined us for our inaugural #SCOTUS argument live-tweets for the #Arthrex and #Minerva cases last year, welcome back! 3/

If you’re tuning in for the first time, welcome! 4/

First, some lawyerly disclaimers, which are both important and necessary so they keep letting me have the password to the firm Twitter account: These tweets are intended to convey general information only, and should not be construed as a legal opinion or legal advice. 5/

Also, all penetrating observations and incisive critiques are attributable to the firm; any inaccuracies, dumb comments, glaring typos, or bad jokes are attributable solely to me. 6/

If you would like to listen to the arguments in real time, you can access a live stream from the #SCOTUS website: supremecourt.gov/oral_arguments… 7/

The argument will begin at approximately 10am this morning and likely last for 75-90 minutes or so. 8/

It’s worth noting that we have the pandemic to thank for being able to listen to these arguments live (and live-tweet them!). When the Court moved from in-person arguments to telephonic ones as a result of the pandemic, it made live audio available. 9/

#SCOTUS arguments are now both in-person and open to the public again, but—to the delight of nerds like me—they are continuing to make real-time audio available. (Presumably no more toilet flushes, though.)
#AppellateTwitter 10/

The questioning format now being used is sort of a hybrid of the free-for-all traditional model and the seriatim-questioning model that was used when the arguments were conducted telephonically in the early days of the pandemic. 11/

Each advocate will have about two uninterrupted minutes in which to speak, and then the Justices will begin asking questions. Once the advocate’s time has expired, each Justice has an opportunity to question the attorney. 12/

The seriatim questioning proceeds in order of seniority, starting with the Chief and ending with Justice Jackson. 13/

Now, to the #Warhol case, which marks the second time in as many years that #SCOTUS has addressed #fairuse. (Last year’s Google v. Oracle case considered fair use in the context of copyright on computer code.) 14/

First a bit of legal doctrine. I know, I know. You came here for the high art and the low comedy, not tweet-lectures on the corpus juris. I promise to be quick. 15/

“Fair use” is an affirmative defense to copyright infringement. The statute, 17 U.S.C. 107, lists the following as non-exhaustive example of #fairuse: use “for purposes such as criticism, comment, news reporting, teaching, … scholarship, or research.” 16/

The statute also instructs that, in determining whether a use is fair, courts should consider the following four factors. 17/

The first factor is “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” This is sometimes characterized as an inquiry into whether the use is “transformative.” 18/

The second factor is “the nature of the copyrighted work.” 19/

The third factor is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” 20/

The fourth factor is “the effect of the use upon the potential market for or value of the copyrighted work.” 21/

The specific question presented in this case concerns the appropriate legal test for analyzing the first factor, the “purpose and character of the use”—which, again, is sometimes framed as an inquiry into “transformativeness.” 22/

The dispute arose when petitioner Andy Warhol Foundation licensed Warhol’s “Orange Prince” work to Condé Nast magazine after Prince’s death. Orange Prince is a silkscreen print based on a photograph of #Prince taken by respondent Lynn Goldsmith. Here are the two works again. 23/

Goldsmith argues this violated her copyright in the photo. AWF has argued, as relevant here, that any use it or Warhol made of the photograph was “fair use” and therefore not an infringement. 24/

I will note, in case it comes up in questioning, that there's some dispute whether the use at issue is limited to AWF’s licensing of Orange Prince or encompasses the creation and display of the entire "Prince Series" that Warhol made based on the Goldsmith photo. 25/

The Second Circuit found in favor of Goldsmith, concluding that Orange Prince was not transformative because it served the same “purpose and function” as the Goldsmith photograph. 26/

AWF, naturally, thinks that was error. 27/

AWF, relying on a 1994 #SCOTUS case called Campbell, contends that a use is transformative when it can “reasonably be perceived” to “add something new, with a further purpose or different character, altering the first with new expression meaning, or message.” 28/

(Campbell concerned whether 2 Live Crew’s parody of “Pretty Woman” infringed Acuff-Rose Music’s copyright in Roy Orbison’s song.) 29/

Goldsmith argues for a much narrower definition of transformative use: a use is transformative only where copying is necessary to accomplish a distinct creative end—for example, when the new use comments on or parodies the original. 30/

The United States, appearing as amicus in support of Goldmsith, does not propose a specific test for transformativeness but argues that AWF failed to show that the use in question was fair under the statutory four-factor test. 31/

The U.S. brief places significant weight on the fact that, in its view, AWF’s licensing of Orange Prince “supplanted” or “usurped the market for” Goldsmith’s original photograph. 32/

Various amici have also weighed in, some proposing still different legal tests. Most of the amici generally support Goldsmith’s ultimate position, though AWF has its fair share of defenders as well. 33/

One common thread running through many of the amicus briefs in support of Goldsmith is that the focus shouldn’t really be on “transformativeness” at all, given that the term appears nowhere in the text of the Copyright Act. 34/

That argument could resonate with the more textualism-inclined Justices. 35/

At the risk of stating the obvious, this case is a big deal. Where #SCOTUS draws the #fairuse line matters immensely for creators of all types. 36/

If #fairuse is too broad, artists will have their work ripped off with impunity. But if it’s too narrow, we might chill the ability of artists to build on others’ work to create art that is innovative in its own right. 37/

The extreme cases are easy. E.g., #fairuse shouldn’t protect a filmmaker who rips off a popular fantasy novel by simply adapting it to the screen, or by changing the lead character’s name to Gary Spotter and his arch-nemesis’s name to Coldemort. 38/

But #fairuse should protect a book critic who reproduces a few passages of said fantasy novel as part of a book review. 39/

The cases between extremes, however—like, arguably, this one—can be very hard. I would expect a lot of questioning to focus on how to draw an administrable line that properly serves the values of the Copyright Clause and the First Amendment’s guarantee of free expression. 40/

We’re about to begin! A final caveat. Oral argument is not a perfect indicator of which way #SCOTUS is leaning. (Sometimes, it’s not even a good indicator.) So take any prognosticating you hear—including from yours truly—with ample grains of salt.
#AppellateTwitter 41/

Again, for anyone interested in listening live, the audio is here: supremecourt.gov/oral_arguments… 42/

Roman Martinez, counsel for AWF, begins. 43/

Martinez argues that AWF's position is supported by #SCOTUS precedent; maintains an appropriate balance between original and follow-on expression; and ensures appropriate protection for modern art. 44/

Justice Thomas asks for an example of follow-on work that fails AWF's test. Martinex says a book-to-movie adaption is the classic example. 45/

Justice Sotomayor asks why. Doesn't a movie add a new message or meaning under AWF's theory? 46/

An exchange ensues concerning whether the "use" at issue is just the licensing of Orange Prince, or whether it encompasses Warhol's creation of the whole series. 47/

Justice Sotomayor asks to focus on just the licensing of Orange Prince. Martinez says that, under the first factor, you still need to consider whether Warhol's creation of Orange Prince imparted a new message or meaning. 48/

But doesn't the licensing have a commercial purpose, Justice Sotomayor asks? Martinez says yes, but you would still need to consider that #Warhol's work is transformative. 49/

CJ Roberts asks if putting a new facial expression on Prince would be enough to be transformative. Martinez says this would be relevant to the factor 1 inquiry, but not necessarily dispositive-transformativeness is a matter of degree. 50/

And then you would still consider market effects under factor 4. 51/

Justice Kagan asks another question about movie adaptations. Why aren't these often "transformative" under AWF's test? 52/

Martinez says that factor 4 (market effects) would weigh heavily against fair use in that case--the book and the movie adapation are market substitutes. 53/

Justice Kavanaugh suggests that the same reasoning might apply here, because there is some indication that the Warhol work and the Goldsmith photograph are market substitutes. 54/

Justice Jackson asks a question about how AWF's test fits with the text of section 107. 55/

Martinez says that, in the visual art context, having a new meaning or message necessarily implies a different purpose and character. 56/

Justice Alito asks how courts are to determine the message or meaning of a given work. Expert testimony from art critics? 57/

Martinez says that usually litigants put forward evidence from creators or expert witnesses. Judges could also bring their own interpretation of the works to bear. 58/

Martinez says that, under Campbell, the issue is not what *the* meaning is, but whether a new meaning could "reasonably be perceived." That creates some "latitude" in the inquiry. 59/

Justice Sotomayor asks what level of generality courts should use in determining a work's "purpose." Isn't the purpose of the specific use here just to portray Prince in a magazine? 60/

Martinez says that is too high a level of generality. He analogizes to Campbell, where the Orbison and 2 Live Crew songs were both popular music commenting on sexual attraction. 61/

Justice Barrett pushes back, suggesting that Campbell turned on the fact that parody must necessarily borrow from the original to make its point. 62/

Martinez says a "necessity" test has no footing in the caselaw and would not work because copying is never truly "necessary." (E.g., Warhol's Campbell Soup Cans work could have used an uncopyrighted logo.) 63/

A colloquy ensues between Justice Kavanaugh and Martinez about the contours of AWF's test and its fit with precedent. Martinez ends the colloquy by emphasizing that this case is not just about the licensing use, but also about the creation of the Prince Series. 64/

Justice Kagan asks, doesn't AWF's case benefit from hindsight? We now all know about Warhol and what he did. But if this case were litigated when Warhol was an unknown, wouldn't it have been easy for a court to just say, "I don't get it, he just copied the photo"? 65/

Martinez responds that it is precisely for the benefit of unknown artists that we need a strong fair use doctrine. 66/

Martinez's time is up and the seriatim questioning begins. CJ Roberts asks a hypo about whether changing the color of a monochromatic work would satisfy AWF's "meaning or message" test? 67/

What if experts testified that changing the color changed the meaning or message? 68/

Martinez says, essentially, that the court or jury would weigh that testimony and decide whether to credit it. 69/

Justice Thomas mentions that he was a Prince fan in the 80s. Justice Kagan: "No longer?" Laughter ensues. 70/

Justice Thomas also asks a hypo about what if he took a picture of Orange Prince to a Syracuse game and wrote "Go Orange" on it. Martinez suggests that this would not be fair use. 71/

Justice Sotomayor follows up on this hypo--the purpose of the Go Orange sign isn't commercial, or if it is, it's commercial in a different way. So why doesn't the fourth factor weigh in favor of fair use there? 72/

She then transitions into asking why the fourth factor doesn't hurt Martinez in this case, since the licensing of Orange Prince directly competed with the type of photographs Goldsmith was known for. 73/

Martinez says they believe they'd win on factor four, but in any event it would need to go to a jury--summary judgment for Goldsmith was inappropriate. 74/

J Kavanaugh asks about amici's concern that AWF's test poses an existential threat to photographers. Martinez says it would not, because transformative uses tend not to compete with the photographs on which they are based. 75/

Justice Barrett notes that Martinez's answers to many hypos have pivoted to factor 4 instead of saying the use in the hypo is not transformative--isn't AWF's position broadening "transformativeness" to where almost anything is transformative? 76/

Justice Jackson suggests that AWF is conflating "meaning or message" with "purpose." The statute seems to be looking at purpose in a different way--i.e., is it a commercial purpose or a teaching purpose? 77/

She notes that the statute explicitly lists "purposes such as criticism, comment, news reporting, teaching . . . scholarship, or research." 78/

Martinez says you can look at purpose in this way, but that doesn't exclude also looking at meaning or message. 79/

J Jackson asks if #SCOTUS should address the other factors in its opinion. Martinez says the other factors aren't fully briefed up. 80/

Next up is Lisa Blatt, counsel for Goldsmith. 81/

She says that adding new "meaning" is not enough to justify not taking a license. AWF's definition would impinge on copyright-holders' ability to make derivative works. 82/

J Kagan asks how you can inquire into purpose and character without asking about the use's meaning. 83/

Blatt says meaning and message is relevant. J Kagan says, but didn't the Second Circuit say it was irrelevant? Blatt says no. The Second Circuit simply said it wasn't enough that Warhol imposed his purportedly "distinctive style" on the photo. 84/

J Kagan asks where the "necessity" part of Goldsmith's test comes from. Blatt says that comes from Campbell. Kagan does not seem totally convinced. 85/

Kagan also points out that Google did not use the "necessity" formulation, and in fact used Warhol's Campbell soup cans paintings as an example of transformative use. 86/

Blatt says this statement was dicta, and she points out that the Campbell court did not inquire into the specific respective meanings of the 2 Live Crew and Orbinson songs. 87/

So, here, we should not be inquiring about whether Warhol was trying to convey a message the dehumanizing power of celebrity verus Goldsmith conveying a message about Prince's vulnerability. That's too specific. 88/

Blatt is using a lot of hypos (TV shows, movies, etc.) to try to make the point that most derivative works/spinoffs would satisfy AWF's test of transformativeness. 89/

Justice Alito asks a question about the Second Circuit's criticism of the district court for "playing the role of art critic." Blatt says this means courts shouldn't be in the business of discerning the "vibe" of a piece of art. 90/

J Barrett asks whether there is a difference in the use of a Warhol in a museum versus the licensing use. 91/

Blatt says they are absolutely different, because the purpose is different and the factor 4 analysis is different. 92/

J Kagan says, but isn't the reason why museums want to display these works because Warhol's art was transformative? So doesn't that weigh in favor of fair use at least at factor 1, even for the licensing? 93/

J Sotomayor asks whether possession and sale of the Prince Series is at issue. Blatt says, essentially, not in this lawsuit, because AWF doesn't have the others anymore. Only the commercial licensing of Orange Prince is at issue. 94/

Blatt's time is up. Only Justice Jackson has additional questions. She asks about the "necessary" condition of Goldsmith's test. How would that work for commentary? 95/

E.g., the #Warhol soup can painting didn't have to use Campbell's soup. 96/

Blatt says that this would satisfy the necessary test, because Warhol had to use a well-known brand to make his point about consumerism. She also says they would be OK with a test where copying is not necessary but merely "useful." 97/

Now up for the government, Yaira Dubin. 98/

She says that the focus should be on whether the copying was justified, not whether the copyist changed the meaning of the work. 99/

CJ Roberts asks how the US's position differs from Goldsmith's. She says, essentially, that the government would leave it open for defendants in other cases to try to establish that their uses were fair in other ways. 100/

Dubin argues that many changes made to derivative works would qualify as changes in message or meaning, and those sorts of changes have never been thought sufficient to make a given act of copying fair use. 101/

She says meaning or message is relevant in determining whether the purpose is different, but a new meaning or message is not sufficient to show a different purpose. 102/

Dubin points out that a "derivative work" is defined in the statute as one that "transforms" the original--so "transformativeness" in the colloquial sense cannot be enough to make a use fair. 103/

The copyist must justify the copying, not simply argue that they added something new and valuable. In the latter case, the follow-on artist must get a license. 104/

J Sotomayor asks, what about a reproduction of Orange Prince in an art magazine? Dubin says this might be said to have a different purpose--teaching about Warhol. And it probably wouldn't compete with Goldsmith's photograph in the marketplace. 105/

J Barrett asks a question about how to balance fair use with derivative work rights. Dubin says that AWF's test would eviscerate the latter. The *purpose* must be transformative for the use to qualify as fair--not merely the content. 106/

J Jackson asks a question about remedy--why is the US asking the US to affirm? Dubin says that the Second Circuit analyzed the remaining factors as well, and AWF sought cert only on the first factor. 107/

J Jackson asks if #SCOTUS should go through the remaining factors as well. Dubin says they can, but don't have to given how AWF framed the cert petition. 108/

J Sotomayor says, what if we conclude that the Second Circuit should have given more weight to meaning? Dubin says that the CA2 did consider meaning, but if #SCOTUS disagrees the proper remedy would be to vacate and remand for a new analysis. 109/

J Gorsuch asks a question about how to define "purpose." Dubin says that it's a broad inquiry about whether the purpose is distinct and whether the purpose *requires* borrowing from the underlying work. 110/

J Gorsuch pushes back, saying that doesn't tell us at what level of generality to define purpose or what evidence to consider. 111/

Dubin says that the effect of a work on a reasonable observer can be relevant to purpose, but the follow-on artist's subjective intent is not relevant. 112/

J Kagan says, is necessity required under your test? Dubin says no--that is a difference between us and Goldsmith. E.g., in a book review, it's not *necessary* to copy passages from a book. 113/

J Kavanaugh asks for the Government's best formulation of the test. Dubin suggests "necessary or at least useful." 114/

"Essential" is another option, Dubin says, though Kagan thinks "essential" and "necessary" are synonyms. General chuckling all around at this semantic debate. 115/

Rebuttal time! Martinez says that Blatt conceded during oral argument that courts can consider meaning or message at factor 1, which at least requires a remand. 116/

He also says that Blatt backed off the "indispendable" test and now is endorsing the Government's "at least useful" formulation. 117/

Martinez also says that a follow-on artist is justified in copying if they create a work with a new, valuable meaning or message. That is useful and therefore satisfies the Government's test. 118/

Martinez also touches again on the disputed issue of what "use" is at issue. AWF sought a declaratory judgment as to all 16 #Prince series works, so the creation of those works is at issue. 119/

He closes by noting the major implications of this case for artists. 120/

And that's a wrap! Thanks for joining us today. As expected, most of the questioning focused on how best to articulate a #fairuse test that balances the rights of both copyright holders and artists who use others' work to create new work that's innovative in its own right. 121/

Stay tuned for further analysis on the case! 122/