By: Ed Mantilla
March and April 2021 have seen a large amount of activity in copyright law involving the fair use doctrine, a doctrine that is often misunderstood and misapplied. The Fair Use Doctrine is codified in the 1976 Copyright Act under 17 U.S.C. § 107, and it lists the factors to be considered to determine if the use of material does not constitute “infringement of copyrighted material.”  Section 107 provides the statutory framework for determining whether something is a fair use and identifies certain types of uses—such as criticism, comment, news reporting, teaching, scholarship, and research—as examples of activities that may qualify as fair use. One of the best ways to understand what the intent of Congress was in codifying the doctrine is to review the legislative history as to what sort of activities “courts may regard as fair use.”  These include:
…quotation of excerpts in a review or criticism for purposes of illustration or comment; quotation of short passages in a scholarly or technical work, for illustration or clarification of the author’s observations; use in a parody or some of the content of the work parodied; summary of an address or article, with brief quotations, in a news report; reproduction by a library of a portion of a work to replace part of a damaged copy; reproduction by a teacher or student of a small part of a work to illustrate a lesson; reproduction of a work in legislative or judicial proceedings or reports; incidental and fortuitous reproduction, in a newsreel or broadcast, of a work located in the scene of an event being reported….
Although the Fair Use Doctrine was codified in 1976, the doctrine had its beginning in the courts much earlier than that. In Folsom v. Marsh, a case where the use of 353 pages of copyrighted material regarding George Washington was deemed not to be fair use, Justice Joseph Story stated:
….[I]n cases of copyright, it is often exceedingly obvious, that the whole substance of one work has been copied from another, with slight omissions and formal differences only, which can be treated in no other way than as studied evasions; whereas, in other cases, the identity of the two works in substance, and the question of piracy, often depend upon a nice balance of the comparative use made in one of the materials of each work; and the degree to which each writer may be fairly presumed to have resorted to the same common sources of information, or to have exercised the same common diligence in the selection and arrangement of the materials. Thus, for example, no one can doubt that a reviewer may fairly cite largely from the original work, if his design be really and truly to use the passage for the purposes of fair and reasonable criticism. 
As Justice Story described, there is a balance that must be struck between the property rights granted to the copyright holder and the rights of anyone wishing to use in a reasonable manner some of the material of the protected work without the consent of the copyright owner.
There is a fair amount of misconception regarding when to raise fair use. Fair use is an affirmative defense. Hence, once the plaintiff establishes a prima facie case of copyright infringement, the burden shifts to the defendant to prove that the use of the alleged infringing material is fair use. To determine if the use of the infringing material is fair use, Courts make use of “fair use factors” listed in section 17 of the Copyright Act. It is important to note that not one single factor is dispositive in determining fair use. Rather, “all [four statutory factors] are to be explored, and the results weighed together, in light of the purposes of copyright.” The factors include: 
(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.
Rather than analyzing each factor, in vacuo, it is better to analyze how the courts applied the factors in two recent court decisions where the defendants raised the defense of fair use.
Before diving into the cases, it is worth spending time discussing the concept of a derivative vs. a transformative work. In its most simple term, a derivative work is a work based (or derived) on an existing work. For example (and one that the legal community is very familiar with especially when trying to sell the old case book back to the bookstore) is a new edition of a pre-existing case book used in the majority of law school classes. New annotations and modifications would represent a new “original work. A translation into a new language of your favorite novel is another example of a derivative work. Let’s say that I write that translation of that novel, the copyright holder of the original work may prevent me from publishing the translated work as it is a derivative work.
However, let’s say I add “enough” new elements to that translation (new characters, setting, etc.) that the work may receive its own copyright, then that work is said to be transformative. In other words, the new copyright exceeds the copyright of the original work, and the use of the original work may be deemed fair use.
This journey begins with the Second Circuit decision where the issue before the court was to determine if the use by Andy Warhol of a photograph of Prince taken by Lynn Goldsmith, a professional photographer, constituted fair use.
The facts in this case are rather simple. Photographer Lynn Goldsmith holds the copyright to a picture she took of Prince back in 1981:
The photograph was licensed to Vanity Fair Magazine for use as an artist reference. Vanity Fair had commissioned Andy Warhol to create an illustration for the November 1984 issue of Vanity Fair magazine. Andy Warhol also created 15 additional prints based on the photograph using his pop art style:
In 2019, the district court granted summary judgment in favor of the Andy Warhol Foundation (created after Warhol’s death), concluding that the use of the photograph was fair use. The opinion stated that the work by Warhol transformed the picture of Prince from a “vulnerable, uncomfortable person to an iconic, larger-than-life figure.” 
The case was appealed to the Second Circuit where the Court was required to consider, de novo, the four fair use factors under § 107 of the Copyright Act. The Court primarily focused on the first factor where it also considered if the secondary use is transformative or just redistributive. In other words, does the work add something new with further purpose or different character altering the first with new expression, meaning, or message?  The more transformative the new work is, the less significance is given to other factors, like commercialism, that may weigh against a finding of fair use. Interpreting a ruling from a previous case,  the Court explained that to qualify as transformative, a secondary work must do more than recognizably derive from and retain the essential elements of its source material. The Court explained that a secondary work is necessarily transformative as a matter of law if it adds a new aesthetic or new expression to the original source material. The Court singled out derivative works as those that add new expression, meaning or message to the original, but which are specifically excluded from fair use and instead are rights granted to copyright holders. See explanation of derivative vs. transformative works, supra. Here, the Court found that Warhol’s work failed this standard. Although the Warhol’s series of prints included Warhol’s artistic elements, they were just an adaptation of Goldsmith’s photograph, where the Court simply saw these as portraits from the same subject (in this case Prince), and thus not transformative. Having determined that Warhol’s work failed this first element, the Court also reviewed the remaining three factors, which all favored Goldsmith. Regarding the second factor, the Court stated that Goldsmith’s work was “creative and unpublished.” As Warhol used one complete photograph from Goldsmith’s the amount borrowed was significant under the third factor. Lastly, since the Goldsmith picture and Warhol’s work did not overlap, the Court determined that Goldsmith’s marketability would be harmed by threatening licensing and revenue opportunities.
Many software engineers depend on the Java programming platform for their work. Oracle bought out Sun Microsystems, who had developed the Java platform which included the source code, libraries, and application programming interfaces (“API”). An API, in its most basic sense, sits in between two programs, helps the two programs talk to each other, and allows programmers to call upon prewritten computing tasks for use in their own programs. After licensing negotiations with Sun Microsystems for use of the Java platform on Android mobile devices fell through, Google developed its own OS using about of 11,500 lines of code from the Java SE program which corresponded to lines in an API. Oracle sued for copyright infringement.
This battle of the two giants, which has been the subject of many blog posts, ended up at the Supreme Court. Having concluded that copyright protection extended to a software interface, the court considered whether Google’s use of the software interface in the context of creating a new computer program constituted fair use.
Justice Stephen Breyer, writing for the 6-2 majority, concluded that it did. Justice Breyer noted initially that fair use “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster.” development of other products.”
More pertinent to the present discussion is the analysis of the four fair use factors. Regarding the first two factors, the Court described the Java APIs as a “user interface” that allowed users (here the developers of Android applications) to “manipulate and control” task-performing computer programs. The Court observed that the “declaring code” of the Java APIs, defined as computer code that associates the writing of a method call with particular “places” in the computer that contain corresponding implementing code, differs from other kinds of copyrightable computer code, because it is “inextricably bound together” with uncopyrightable features, such as a system of computer tasks and their organization and the use of specific programming commands (the Java “method calls”). As such, since the declaring code is “further than are most computer programs (such as the implementing code) from the core of copyright,” this factor favored fair use.
Regarding the second factor, in contrast to the Warhol case, the Court found that the use of the APIs by Google was “transformative” and worthy of its own copyright:
Here Google’s use of the Sun Java API seeks to create new products. It seeks to expand the use and usefulness of Android-based smartphones. Its new product offers programmers a highly creative and innovative tool for a smartphone environment. To the extent that Google used parts of the Sun Java API to create a new platform that could be readily used by programmers, its use was consistent with that creative “progress” that is the basic constitutional objective of copyright itself. Thus, the first and second factor favored fair use.
Regarding the third factor, the court found that the 11,500 lines of declaring code that Google used were 0.4 percent of the total 2.86 million lines of the Java SE program. Furthermore, the purpose of the declaring code was to permit programmers to utilize their knowledge and experience working with the Java APIs to write new programs for Android smartphones. Since the amount of copying was “tethered” to a valid and transformative purpose, the “substantiality” factor favored fair use. The “substantiality” factor generally weighs in favor of fair use where, as here, the amount of copying was tethered to a valid, and transformative, purpose.
With regard to the effect of use upon the potential market for or value of the copyrighted work, the Court held that Google’s use of the code to create a platform for developing smartphone applications did not interfere with Oracle’s use of the code for the separate market of laptop and desktop applications. The majority noted that Oracle had tried to enter the smartphone market but failed for various reasons unrelated to Google’s use of the code. The Court further noted that allowing Oracle to limit who can use the declaring code would stifle, not promote, creativity by limiting new programs that can be created using the API.
As such, all four factors of the Fair Use Doctrine favored fair use.
Both cases described above seem to emphasize the role that transformation has in persuading a court that use of copyrighted material is fair use. The Warhol case teaches that merely repackaging the original source material in a different form is not enough to swing the transformative pendulum to fair use. The Google case focuses on the creative intent of the copying rather than on what a reasonable observer would consider transformative; the transformation, as the Court suggests, involves the creation of new products – the creation of “progress” that our Founding Fathers sought in enabling copyright protection in the Constitution.
Update: Since the posting of this blog, the Andy Warhol Foundation has filed a petition for a rehearing en banc in light of the Supreme Court decision in Google. The Appellees claim the appeals court’s decision goes against US Supreme Court precedent in Campbell and “threatens to render unlawful many of the most historically significant contemporary art works of the last half-century as a result of the panel’s narrow conception of the ‘fair use’ doctrine.” The petition also cites a potential circuit split especially with the 9th Circuit, the other circuit with serves as a major forum for copyright appeals. Stay tuned.
 See, 17 U.S.C. § 107.
 H.R. Rep No. 94-1476 at 65-66 (1976).
 Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841).
 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994), quoting Emerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (C.C.D. Mass. 1845).
 17 U.S.C. § 107.
 Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 316 (S.D.N.Y. 2019).
 Campbell, 510 U.S., at 569.
 Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013).
 The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420, at p.37.
 Id., at p.40.
 Id., at p.50.
 Google LLC v. Oracle America, Inc., No. 18-956, (593 U.S. ___ (2021)).
 Id. at p. 13 (citing Stewart v. Abend, 495 U. S. 207, 236 (1990)).
 Id. at p. 17.
 Id. at p. 22.
 Id. at p. 25.
 Id. at p. 28.
 Id. at p. 28.
 United States Constitution, Article 1, Section 8, Clause 8 (“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”)