By: Jackson A. Lanier
I. Introduction
The 2021 Supreme Court case Google LLC v. Oracle Am., Inc. attempted to modernize United States copyright law by allowing a fair use exception for computer code that had a new meaning or message and that was necessary.[1] The rule from Google was only meant to apply to computer code but created confusion throughout the legal regime.[2] At the time of writing, there is a case before the Supreme Court that seeks to address the confusion caused by Google, that case is Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith. On one hand, is the art foundation Plaintiff which seeks to expand fair use protection to artwork that provides a new meaning or message to copyrighted work.[3] On the other hand, the Defendant photographer argues that fair use protection should only be allowed to works when the use of the copyrighted work was necessary to convey the copying artist’s message.[4] The effects of both parties’ proposed tests are best illustrated by their consequences on the emerging NFT market; a market filled with analogies to the present case.[5] Indirectly addressed by the Justices and counsel at oral arguments, this case will also determine what role the Court will play in contemporary culture.[6]
II. The Case
In 1981, Lynn Goldsmith[7] took a series of photographs of the musical artist known as “Prince”[8] in her photography studio.[9] In 1984, Goldsmith licensed the photo to Vanity Fair for $10,000 to be used as a one-time artist’s reference and conveyed no other rights.[10] Vanity Fair then commissioned Andy Warhol[11] to create an illustration based on Goldsmith’s photograph.[12] Warhol produced 16 portraits of Prince in his signature artistic style.[13] Vanity Fair then selected and utilized one of Warhol’s portraits and published it with attribution to Goldsmith.[14]
The issue arose when Prince died in 2016.[15] After his death, Vanity Fair published a special magazine called The Genius of Prince which featured, on the cover, a different image from Warhol’s 1984 Prince Portraits.[16] Vanity Fair licensed the photo from The Andy Warhol Foundation[17] (“The Foundation”) for $10,000. Also, Goldsmith did not receive attribution in the 2016 publication.[18]
In April 2017, the Andy Warhol Foundation filed a complaint seeking a declaratory judgment stating that Warhol’s Prince Series did not infringe on Goldsmith’s copyright.[19] The Foundation argued that Warhol’s unique art style was transformative and that it falls under fair use.[20] Goldsmith filed a countersuit claiming the Foundation violated 17 U.S.C. § 106 and infringed on her copyright.[21]
The district court found that Warhol’s Prince series was protected by fair use because it was transformative.[22] The district court reached this decision largely because of Warhol’s art style.[23] “[E]ach Prince Series work is immediately recognizable as a ‘Warhol’ rather than as a photograph of Prince – in the same way that Warhol’s famous representations of Marilyn Monroe and Mao are recognizable as ‘Warhols,’ not as realistic photographs of those persons.”[24]
However, the Second Circuit Court of Appeals reversed and found that Warhol’s Prince Series was not transformative.[25] The Second Circuit rejected the lower court’s assertion that Warhol’s unique and recognizable artistic style transformed Goldsmith’s image; to the Appellate court, this line of reasoning “would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct that artist’s style, the greater leeway that artist would have to pilfer the creative labors of others.”[26] The Second Circuit ultimately found that while Warhol’s Prince Series has artistic value,[27] the series is ultimately a derivative of Goldsmith’s work.[28]
III. Background
At issue in Andy Warhol Found. v. Goldsmith is the question of when is the use of another’s copyright transformative.[29] The Supreme Court attempted to answer this question in Google LLC v. Oracle Am., Inc.,[30] but as Justice Thomas wrote in his dissent in that case, the majority’s opinion only confused and distorted what “transformative” means.[31] This question ultimately cuts at the heart of copyright law which is “[t]o promote the Progress of . . . useful Arts.”[32]
A. The Legal Regime
Copyright in the United States is rooted in the Constitution.[33] Modern copyright is governed by the Copyright Act of 1976, also known as 17 U.S.C. § 106.[34] The law gives copyright holders numerous exclusive rights for their works including the exclusive right “to prepare derivative works based upon the copyrighted work.”[35]
However, a copyright owner’s rights are subject to statutory exceptions; one of them being fair use.[36] Fair use allows a subsequent creator to use portions of a copyright holder’s work so long as it is “in a reasonable manner.”[37] When determining whether a use is fair use, the courts will look at the four statutory factors:
(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.[38]
At issue in Andy Warhol Found. v. Goldsmith is the first factor (“Factor One”.)[39] The purpose of Factor One is to closely look at the use of the copyrighted work to see whether the new work supersedes or supplants the copied work or if the new work instead transforms the copied work by giving it a “new expression, meaning, or message.”[40]
B. Google LLC v. Oracle Am., Inc.
In 2020, the Supreme Court heard the case of Google LLC v. Oracle Am., Inc. to better define Factor One of the fair use analysis.[41]
The case has a long history, stemming back to Google’s 2007 debut of the Android mobile phone software.[42] The core issue of the case was that Oracle alleged that Google’s code, while not a direct copy, heavily mimicked Oracle’s copyrighted code.[43]
The case bounced around from the district court, which held that Oracle’s code was not copyrightable;[44] to the Federal Circuit Court of Appeals, which remanded the case back to the district court because it found that the code was copyrightable;[45] back down to the district court, where a jury found that Google’s use of Oracle’s code was fair use;[46] back up to Federal Circuit Court of Appeals which found that Google’s code did not constitute fair use;[47] and, finally, to the Supreme Court which found that Google’s code did constitute fair use.[48]
In its finding, the majority held that to succeed under Factor One, the new work must “add[] something new, with a further purpose or different character, altering the copyrighted work with new expression, meaning or message.”[49] In a broader sense, “the copier’s use [must] fulfill[] the objective of copyright law to stimulate creativity for public illumination.”[50]
The majority ultimately ruled that Google’s use of the code was fair use because, under Factor One, Google used it to create a new product and took “only what was needed to allow users to put their accrued talents to work in a new and transformative program.”[51] In his dissent, Justice Thomas takes issue with the majority’s Factor One analysis.[52] He writes that “the majority wrongly conflates transformative use with derivative use.”[53] He finds that “[a] work that simply serves the same purpose in a new context—which the majority concedes is true here—is derivative, not transformative.”[54]
C. NFTs: The Copyright Wild West
Embodying Justice Thomas’s point that the majority in Google confuse “transformative” with “derivative” use[55] is the NFT market.
Non-Fungible Tokens (NFT) are an emerging technology that in recent years has grabbed headlines due to their popularity and the high prices some NFTs fetch. In 2021, the NFT market was valued at an estimated $11.3 billion and is projected to grow to $231 billion by 2030.[56] NFTs live on what is called a blockchain,[57] most commonly the Ethereum blockchain.[58] NFTs are important to Google and Warhol because NFTs sits at the intersection of code[59] and art.[60]
The problem with NFTs and Google is that the market has a copycat and unauthorized derivatives problem.[61] Take the Bored Ape Yacht Club (“BAYC”)[62] NFT collection for example, when BAYC launched in April 2021, it sparked an interest in the market and made the brand and its products widely recognizable.[63] However, since the collection’s launch, numerous copycat and derivative projects have emerged;[64] and there is little BAYC can do because these collections take market share away from BAYC,[65] copy elements of BAYC to create new products,[66] and, thus, fall under fair use as outlined by the majority in Google.[67]
D. After Andy Warhol?
The problems regarding NFTs and copyright circle back to Andy Warhol Found. V. Goldsmith. Professor Brian L. Frye of the University of Kentucky College of Law has “thrown his hat into the ring” regarding Warhol’s debate over copyright by selling his own NFTs of Warhol’s Prince Series.[68]
Frye’s NFT collection is a comment on his views of NFTs,[69] Andy Warhol Found. V. Goldsmith,[70] and copyright in general.[71] What is perplexing about Frye’s NFT collection is that regardless of whether Warhol’s Prince Series is copyrightable or if it does infringe on Goldsmith’s copyright, Frye selling NFTs of Warhol’s work appears that it will not violate either Warhol or Goldsmith’s copyright. According to Frye, his use of Warhol’s work is protected by fair use because he is using them for comment on the case.[72] While Frye is directly profiting off the sale of the NFTs, he argues that it is no different from publishers selling advertisements.[73]
IV. Analysis
As Professor Frye illustrated with his NFT collection “[f]air use is fickle.”[74] Though, the reason Frye claims fair use is because he has stated the purpose of his use of Warhol’s work was to comment on the case.[75] However, like in Andy Warhol Found. v. Goldsmith, Factor One of the Fair Use factors is a hurdle to overcome.
A. Critiquing the Usefulness of Art Critics’ Testimony
During oral arguments, The Andy Warhol Foundation argued that “Factor [One] has to encompass the new meaning or message.”[76] Justice Alito asked a very poignant question: “how is a court to determine. . . the message or meaning of works of art?”[77] The district court judge, in this case, took on the role of an art critic[78] whereas the Second Circuit said judges are not art critics.[79] Justice Alito also asked whether the testimony of art critics should be considered in determining Factor One.
Both The Andy Warhol Foundation and Goldsmith argued against the consideration of art critic testimony. Goldsmith argued that art critics focus too heavily on the specifics of the work itself when the dispute is focusing on the use of the work.[80] The Andy Warhol Foundation argued as well that art critics focus too heavily on the specifics of the work, but instead pointed to the meaning of the work as being in dispute.[81] Instead, The Andy Warhol Foundation says that juries or fact finders are better suited than art critics to determine the meaning of a work because they “can exercise their common sense and say [whether there is or is not] transformative meaning or message there.”[82] Essentially, The Andy Warhol Foundation is proposing that the test for whether a work is transformative should be similar to Justice Stewart’s test for obscenity: “I know it when I see it.“[83]
B. Effect on Google
Another way to look at what is advocated for and against in Andy Warhol Found. v. Goldsmith is the expansion of the rule from Google into the artistic realm. In Google, the majority held that Google’s use of the code was fair use because, under Factor One, Google used it to create a new product and took “only what was needed.”[84]
The Andy Warhol Foundation argues that the rule from Google should be expanded into the realm of art and not be confined to computer code.[85] To support their argument, The Foundation points to the Google Court indirectly referencing another of Warhol’s famous works, his Campbell’s Soup Cans.[86] According to The Foundation, if Warhol’s appropriation of a protected intellectual property (Campbell’s logo and soup can design) in one work can be lauded as a clear example of a “transformative” work, then why can’t the same be true in a different work?[87] What The Andy Warhol Foundation focuses on from Google is that the Google Court declared Google’s to be fair use because it created a new program that “allow[ed] users to put their accrued talents to work in a new and transformative program.”[88] As such, The Foundation proposes that the Factor One analysis be simply a court asking whether the new work encompasses a new meaning or message.[89]
However, Goldsmith cautions against the expansion of the rule from Google and argues that Warhol’s Campbell’s Soup Cans are not equivalent to his use of her photo. Goldsmith argues that because Warhol was commenting on consumerism with his Campbell’s Soup Cans, he had to use Campbell’s logo and can design, or else his work would not have had the same effect; in contrast, Warhol did not have to use Goldsmith’s photograph, he could have used some other picture as inspiration.[90] What Goldsmith focuses on is the “only what was needed”[91] requirement of the Google rule. She proposes that a simplified version of the Factor One analysis be simply a court asking whether it was necessary for the copier to use the copyrighted work to communicate their message.[92]
C. Effect on NFTs
Depending on whether the Supreme Court adopts The Foundation’s New Meaning Test or Goldsmith’s Necessity Test will profoundly affect copyright law and likely make many NFT projects copyright infringers. Using BAYC[93] and the many unlicensed derivative projects[94] that ride its coattail as an example, many of these derivative projects, currently, can hide behind Google and avoid claims of copyright infringement.[95]
a. If the Supreme Court adopts The Foundation’s New Meaning Test
If the court adopts The Foundation’s New Meaning Test, this means that a work may succeed under Factor One if the new work encompasses a new meaning or message.[96] This new meaning must also be evident to a fact-finder.[97]
Some projects, like BAYCTron,[98] would not survive under The Foundation’s New Meaning Test because the project has no meaning. [99] All this project does is copy the BAYC NFT collection from the Ethereum blockchain[100] to the Tron blockchain[101] and allow BAYCTron creators to profit from sales.
However, a project such as the Bored Ape Anime Club[102] is more likely to have success under The Foundation’s New Meaning Test. Although the collection does not have a listed purpose,[103] it could be argued that the collection is a comment on media consumption, similar to Warhol’s Campbell Soup Cans.[104] If such or similar argument could be made, the Bored Ape Anime Club could pass Factor One under The Foundation’s New Meaning Test and be considered fair use of the BAYC and the many other companies’ copyright.
Though, the best example of a project likely to succeed under The Foundation’s New Meaning Test would have to be the Caked Apes.[105] This project and its similarity to BAYC is comparable to Andy Warhol Found. v. Goldsmith. Take BAYC #3884[106] and Caked Apes #6224,[107] both NFTs feature a grey ape with closed eyes wearing a spinning propeller hat.[108] The similarities between BAYC #3884 and Caked Apes #6224 are like that to Goldsmith’s photograph of Prince and Warhol’s Prince Series.[109] Because a factfinder can “exercise their common sense”[110] and see that Caked Apes use a different art style and color palette from BAYC,[111] Caked Apes would likely be found to have a different meaning or message from BAYC and thus succeed under Factor One.
b. If the Supreme Court adopts Goldsmith’s Necessity Test
If the Supreme Court adopts Goldsmith’s Necessity Test, this means that a work may succeed under Factor One if it was necessary for the copier to use the copyrighted work to communicate their message.[112]
Under the Necessity Test, works such as BAYCTron would not pass Factor One. The problem is that there is no message being conveyed by the project.[113] All this project does is copy the BAYC NFTs to the Tron blockchain.[114] The BAYCTron creators didn’t need to copy the NFTs to the Tron blockchain; if BAYC wanted their NFTs on the Tron blockchain, they could have copied it there themselves. As such, because there is no message being conveyed by the project and because it was not necessary for the project to use BAYC’s copyright, BAYCTron would likely not succeed under Factor One.
However, a project such as the Bored Ape Anime Club is likely to succeed under the Necessity Test. Although the project lacks a stated purpose;[115] it could be argued the collection is a comment on media consumption, similar to Warhol’s Campbell Soup Cans.[116] If such or similar argument could be made, the project could pass under Factor One provided that it can be shown how using BAYC’s copyright was necessary to communicate the project’s message.
Though, a project such as Caked Apes is unlikely to succeed under the Necessary Test. The problem with this project is that it is analogous to the dispute in Andy Warhol Found. v. Goldsmith.[117] Although Caked Apes utilizes a different art style, color pallet, and has different features from BAYC,[118] Caked Apes didn’t need to use BAYC’s copyright to communicate their message. Caked Apes could have utilized a different animal; could have drawn the ape differently; or found some other way.
However, an art critic may disagree. An art critic may find that it was necessary for Caked Apes to utilize BAYC’s copyright to communicate their message. The problem is that the Supreme Court is unlikely to address how much, if any, weight to give an art critic’s testimony.[119]
V. Conclusion
Though, no one knows how the Supreme Court will rule. Regardless of whether the Court adopts the Foundation’s New Meaning or Message Test or Goldsmith’s Necessity Test, the Andy Warhol Found. v. Goldsmith opinion is likely to substantially alter the Fair Use analysis. The opinion will likely relegate Google LLC v. Oracle Am., Inc. to computer code exclusively and address Justice Thomas’s dissent in Google by defining when a work is transformative.[120] The effect of the Andy Warhol Found. v. Goldsmith opinion is likely to be felt immediately by NFT projects who, under Google, were protected by fair use but may soon be considered copyright infringers depending on which test the Supreme Court adopts.[121] Though, this case goes far beyond defining a Factor One analysis; Andy Warhol Found. v. Goldsmith is the Supreme Court defining the “nature of its own role in contemporary culture.”[122]
[1] See, infra, note 49.
[2] See, Id.
[3] See, infra, note 85.
[4] See, infra, note 92.
[5] See, infra, note 109.
[6] See, Jeannie Suk Gersen, The Supreme Court’s self-conscious take on Andy Warhol, The New Yorker (2022), https://www.newyorker.com/news/daily-comment/the-supreme-courts-self-conscious-take-on-andy-warhol (last visited Jan 3, 2023) (“The Court’s grappling with Warhol’s cultural criticism may end up being its most revealing comment this term on the nature of its own role in contemporary culture.”); see also, infra, notes 80, 81, and 92.
[7] Lynn Goldsmith is an acclaimed celebrity portrait photographer. Her works can be found in the collections of The Smithsonian National Portrait Gallery, The Museum of Modern Art, The Rock and Roll Hall of Fame, and numerous other collections. Goldsmith’s work has also been published by Life, Newsweek, Time, Vanity Fair, Rolling Stone, National Geographic Traveler, Sports Illustrated, and numerous other publications. See COUNTERCLAIM OF LYNN GOLDSMITH FOR COPYRIGHT INFRINGEMENT at ¶ 9, The Andy Warhol Foundation For The Visual Arts, Inc. V. Goldsmith Et Al, 17-cv-02532-JGK (S.D.N.Y., filed June 9, 2017).
[8] Prince Rogers Nelson, who went by several names over his life including “Prince,” “,” “the Artist Formerly Known as Prince,” and “the Artist,” was an influential and popular musician. His 1983 song Little Red Corvette landed him on MTV and made him the first black musician to perform on the channel. Prince’s 1984 album Purple Rain made him one of the major stars of the 1980s and made him a famous musician. See, Prince, Encyclopedia Britannica, https://www.britannica.com/biography/Prince-singer-and-songwriter (last visited Jan 3, 2023).
[9] Counterclaim, supra, note 7 at ¶ 19.
[10] Counterclaim, supra, note 7 at ¶ 21; see also, Exhibit B, The Andy Warhol Foundation For The Visual Arts, Inc. V. Goldsmith Et Al, 17-cv-02532-JGK (S.D.N.Y., filed June 9, 2017).
[11] The son of Czechoslovakian immigrants, Andrew Warhola was born August 6, 1928, in Pittsburgh, Pennsylvania. From 1945 to 1949, Warhola studied Pictorial Design at the Carnegie Institute of Technology. After graduating and moving to New York City, he shortened his name to Andy Warhol. During the 1950s, Warhol became an award-winning illustrator and created design for several high-profile companies such as Tiffany & Co., I. Miller Shoes, Fleming-Joffe, Bonwit Teller, Columbia Records, Vogue, and others. In the 1960s, Warhol began to experiment with and enter the world of pop art. In 1962, Warhol created some of his most famous works including his Campbell’s Soup Cans and portrait of Marilyn Monroe. Warhol became a famous artist that same year when debuted his work at the Ferus Gallery in Los Angeles, California. See, Andy Warhol, The Andy Warhol Museum, https://www.warhol.org/andy-warhols-life/ (last visited Jan 3, 2023).
[12] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 318 (S.D.N.Y. 2019)
[13] Complaint at ¶ 21, The Andy Warhol Foundation For The Visual Arts, Inc. V. Goldsmith Et Al, 17-cv-02532-JGK (S.D.N.Y., filed April 7, 2017).
[14] Counterclaim, supra, note 7 at ¶ 24; see also Complaint, supra, note 13 at ¶ 42-44.
[15] See, generally, Jon Pareles, Prince, an artist who defied genre, is dead at 57, The New York Times (2016), https://www.nytimes.com/2016/04/22/arts/music/prince-dead.html (last visited Jan 3, 2023).
[16] Complaint, supra, note 13 at ¶ 51-52; Counterclaim, supra, note 7 at ¶ 29
[17] In his will, Warhol dictated that all of his intellectual property should go to the Andy Warhol Foundation. All of Warhol’s work he owned at the time of his death, including his Prince series were transferred to the Foundation. Complaint, supra, note 13 at ¶ 47-49.
[18] Counterclaim, supra, note 7 at ¶ 31.
[19] See, generally, Complaint, supra, note 13
[20] Complaint, supra, note 13 at ¶ 25
[21] See, generally, Counterclaim, supra, note 7.
[22] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 324 (S.D.N.Y. 2019) (“But the Court need not address [the] argument [that Warhol and Goldsmith’s images are similar] because it is plain that the Prince Series works are protected by fair use.)
[23] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 326 (S.D.N.Y. 2019) (“Prince appears as a flat, two-dimensional figure in Warhol’s works, rather than the detailed, three-dimensional being in Goldsmith’s photograph. Moreover, many of Warhol’s Prince Series works contain loud, unnatural colors, in stark contrast with the black-and-white original photograph. And Warhol’s few colorless works appear as rough sketches in which Prince’s expression is almost entirely lost from the original.”)
[24] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 326 (S.D.N.Y. 2019)
[25] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 43 (2d Cir. 2021) (“In contrast, the Prince Series retains the essential elements of its source material, and Warhol’s modifications serve chiefly to magnify some elements of that material and minimize others. 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.”)
[26] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 43 (2d Cir. 2021)
[27] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 44 (2d Cir. 2021) (“In reaching this conclusion, we do not mean to discount the artistic value of the Prince Series itself.”)
[28] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 44 (2d Cir. 2021) (“As used in copyright law, the words ‘transformative’ and ‘derivative’ are legal terms of art that do not express the simple ideas that they carry in ordinary usage. . . . Rather, the question we must answer is simply whether the law permits Warhol to claim it as his own, and AWF to exploit it, without Goldsmith’s permission. . . . [W]e conclude that the answer to that question is ‘no.’”)
[29] Compare Transcript of Oral Argument at 19, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (“We think that the transformative meaning or message directly affects both purpose and character.”); with Transcript of Oral Argument at 61, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (“Petitioner argues adding new meaning is a good enough reason to copy for free. But that test would decimate the art of photography by destroying the incentive to create the art in the first place.”).
[30] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209 (2021) (holding that while Google did copy large portion of Oracle’s copyrighted code, it was fair use because they used it to create a new and transformative program).
[31] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1219 (2021) (Thomas, J. dissenting) (The majority acknowledges that Google used the copied declaring code ‘for the same reason’ Oracle did. So, by turns, the majority transforms the definition of ‘transformative.’ Now, we are told, ‘transformative’ simply means—at least for computer code—a use that will help others ‘create new products.’”
[32] US Const. Art. I, § 8, Cl 8
[33] See, US Const. Art. I, § 8, Cl 8
[34] See, 17 U.S.C. § 106
[35] 17 U.S.C. § 106 (2)
[36] See, 17 U.S.C. § 107
[37] Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 541 (1985)
[38] 17 U.S.C. § 107
[39] Compare Transcript of Oral Argument, supra, note 29 at 4 (“Our approach, unlike Goldsmith’s, maintains a balance between protecting artists’ rights to monetize their works and encouraging new and important follow-on expression. We give follow-on artists credit for inDecation at Factor 1 while recognizing that Factor 4 and the other factors will sometimes cut decisively the other way.”); with Transcript of Oral Argument, supra, note 29 at 87 (“The foundation has never tried to show that copying the Goldsmith photograph’s creative elements was essential to accomplish a distinct purpose.”)
[40] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) quoting Folsom v. Marsh, 9 F. Cas. 342, 348 (discussing when a work is transformative).
[41] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1195 (2021) (“Google then filed a petition for certiorari in this Court. It asked us to review the Federal Circuit’s determinations as to both copyrightability and fair use.”)
[42] Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974, 975 (N.D. Cal. 2012)
[43] Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974, 975 (N.D. Cal. 2012) (“All agreed that Google had not literally copied the software but had instead come up with its own implementations of the 37 API packages. Oracle’s central claim, rather, was that Google had replicated the structure, sequence and organization of the overall code for the 37 API packages.”).
[44] Oracle Am., Inc. v. Google Inc., 872 F. Supp. 2d 974, 977 (N.D. Cal. 2012) citing 17 U. S. C. §102(b) (holding that the code was a “system or method of operation,” which copyright law does not allow to be copyrighted).
[45] Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1354 (Fed. Cir. 2014) (“For the reasons that follow, we conclude that the declaring code and the structure, sequence, and organization of the 37 Java API packages are entitled to copyright protection.”)
[46] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1195 (2021) (“The court instructed the jury to answer one question: Has Google ‘shown by a preponderance of the evidence that its use in Android’ of the declaring code and organizational structure contained in the 37 Sun Java API packages that it copied ‘constitutes a “fair use” under the Copyright Act?’ After three days of deliberation the jury answered the question in the affirmative. Google had shown fair use.”)
[47] Oracle Am., Inc. v. Google LLC, 886 F.3d 1179, 1186 (Fed. Cir. 2018) (“There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.”)
[48] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1197 (2021) (“We shall ask instead whether Google’s use of part of that API was a ‘fair use.’ Unlike the Federal Circuit, we conclude that it was.”)
[49] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1187 (2021)
[50] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1187 (2021)
[51] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209 (2021)
[52] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1219 (2021) (Thomas, J. dissenting) (The majority acknowledges that Google used the copied declaring code ‘for the same reason’ Oracle did. So, by turns, the majority transforms the definition of ‘transformative.’ Now, we are told, ‘transformative’ simply means—at least for computer code—a use that will help others ‘create new products.’”
[53] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1219 (2021) (Thomas, J. dissenting).
[54] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1219 (2021) (Thomas, J. dissenting).
[55] See, Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1219 (2021) (Thomas, J. dissenting).
[56] Gareth Jenkinson, NFT market worth $231B by 2030? report projects big growth for Sector, Cointelegraph (2022), https://cointelegraph.com/news/nft-market-worth-231b-by-2030-report-projects-big-growth-for-sector (last visited Dec 20, 2022) citing Blockchain market size, share, trends, growth, Opportunities & Forecast, Verified Market Research (2022), https://www.verifiedmarketresearch.com/product/blockchain-market/ (last visited Dec 4, 2022) (“A market report published by Verified Market Research (VMR) provides a lofty prediction for the future of the nonfungible token (NFT) market, projecting its value to swell to $231 billion by 2030.”).
[57] Megan E. Noh, et. al., GM! Time to Wake Up and Address Copyright and Other Legal Issues Impacting Visual Art NFTs, 45 Colum. J.L. & Arts 315, 316; A blockchain is a chain of blocks of transactions of a comprehensive, secure ledger authenticated by multiple parties. The first blockchain, Bitcoin, was launched in 2008 by a pseudonymous person known as Satoshi Nakamoto. Bitcoin was designed to be a virtual currency, a way to trade money across the world and circumvent banks and governments. When a sender wishes to send Bitcoins to someone, the sender has to pay a variable fee (colloquially called “gas”) to the Bitcoin blockchain to verify that the sender has the funds and to register the transaction on the network’s ledger. Other blockchains later emerged such as Ethereum, Litecoin, Cardano, et al that vary in their methods and features but perform the same function as Bitcoin. All of a user’s currency, NFTs, and other data on a blockchain is stored in their “wallet.” A wallet is a semi-anonymous address on the blockchain that verifies a user’s ownership of assets on the blockchain. Wallets are how users can verify the previous ownership and creator of an NFT. See, Ursman Chohan, A History of Bitcoin, Critical Blockchain Research Initiative, 8 (2017) (discussing how Bitcoin was started.); Björn Segendorf, What is Bitcoin?, 2 Sveriges Riksbank Economic Review, 73 (2014) (“Bitcoin is a decentralised virtual currency scheme with bidirectional flow, and a cryptocurrency. It was devised to be independent of governments, banks and other institutions.”); Martin Holovsky, UNHYPED COMPARISON OF BLOCKCHAIN PLATFORMS, MEDIUM (Jan. 25, 2022), https://medium.com/coinmonks/unhyped-comparison-of-blockchain-platforms-679e122947c1 (last visited Dec 17, 2022); Jake Frankenfield, What is a cryptocurrency wallet?, Investopedia (2022), https://www.investopedia.com/terms/b/bitcoin-wallet.asp (last visited Dec 20, 2022); LCX Team, How to verify NFT authenticity, LCX (2022), https://www.lcx.com/how-to-verify-nft-authenticity (last visited Dec 20, 2022) (You utilize a blockchain explorer to verify previous ownership of an NFT.).
[58] Langston Thomas & Eric Beyer, NFT BLOCKCHAINS ABOUND. HERE’S A COMPLETE GUIDE TO THE BEST IN WEB3, NFT NOW (2022), https://nftnow.com/guides/complete-simple-guide-to-top-nft-blockchains/#:~:text=blockchains%20support%20NFTs-,Ethereum,for%20transactions%20without%20requiring%20intermediaries. (last visited Dec 17, 2022) (“Despite mounting competition, Ethereum remains the most popular NFT blockchain.”)
[59] See, generally Sumi Mudgil, How to write & deploy an NFT, ethereum.org (2021), https://ethereum.org/en/developers/tutorials/how-to-write-and-deploy-an-nft/ (last visited Jan 3, 2023). (explaining how to write code for an NFT).
[60] See, generally Wall Street Journal Digital Network, NFTs are fueling a boom in digital art. Here’s how they work, YouTube (2021), https://www.youtube.com/watch?v=zpROwouRo_M (last visited Jan 3, 2023) (explaining how NFTs help digital content creators make their content scarce and prove authenticity).
[61] See, Brian Frye, How to Sell NFTs Without Really Trying, 13 Harv. J. of Sports & Ent. Law 113, 131 (2022) (discussing his project of selling the Brooklyn Bridge via NFT).
[62] Created by Yuga Labs, BAYC is one of the most popular NFT collections (if not the poster child for NFTs) on the market. Some of the NFTs from the BAYC collection have sold for millions of dollars. The Bored Ape Yacht Club Collection first sold in April of 2021 for $190 per NFT, but by August 2022 they were selling for around $150,000 each. See, Brian Frye, How to Sell NFTs Without Really Trying, 13 Harv. J. of Sports & Ent. Law 113, 116 (2022) (“But the undisputed leaders of the NFT marketplace are the CryptoPunks and Bored Ape Yacht Club collections, examples of which sell for over a million dollars each”); Bored Ape Yacht Club, https://boredapeyachtclub.com/#/home (last visited Dec 20, 2022).
[63] See, Brian Frye, How to Sell NFTs Without Really Trying, 13 Harv. J. of Sports & Ent. Law 113, 116 (2022) (“But the undisputed leaders of the NFT marketplace are the CryptoPunks and Bored Ape Yacht Club collections, examples of which sell for over a million dollars each”).
[64] Compare Yuga Labs, Bored ape yacht club OpenSea (2021), https://opensea.io/collection/boredapeyachtclub (last visited Dec 2, 2022); to 0xApes-Official, 0xApes trilogy OpenSea (2022), https://opensea.io/collection/0xapes-trilogy (last visited Dec 2, 2022); 33D4A4, Bored ape bros OpenSea (2021), https://opensea.io/collection/bored-ape-bros (last visited Dec 2, 2022); Bayctron, BAYCTRON, https://bayctron.com/gallery (last visited Dec 2, 2022); Bored ape anime club, OpenSea, https://opensea.io/collection/bored-ape-anime-club (last visited Dec 5, 2022); Bored ape galaxy club X nlke edition, OpenSea (2022), https://opensea.io/collection/bored-ape-galaxy-club-x-nlke-edition (last visited Dec 5, 2022); Bored ape punks club, Magic Eden, https://magiceden.io/marketplace/boredapepunksclub (last visited Dec 5, 2022); Bored ape skull not club, OpenSea (2021), https://opensea.io/collection/boredapeskullnotclub (last visited Dec 2, 2022); Bored ape social clubs, OpenSea (2021), https://opensea.io/collection/boringapesocialclub (last visited Dec 2, 2022); Bored ape token club BATC, OpenSea (2021), https://opensea.io/collection/bored-ape-token (last visited Dec 5, 2022; Bored apes by famous artists, OpenSea (2022), https://opensea.io/collection/bored-apes-by-famous-artists (last visited Dec 2, 2022); Bored Phyayc, Opensea (2021), https://opensea.io/collection/bored-phaycs (last visited Dec 2, 2022); BoredApeFrens, Bored ape frens OpenSea (2021), https://opensea.io/collection/boredapefrens (last visited Dec 2, 2022); Bored-Ape-Solana-Club, Bored ape solana club OpenSea (2022), https://opensea.io/collection/bored-ape-solana-club (last visited Dec 2, 2022); cakedapescreator, Caked apes official OpenSea (2022), https://opensea.io/collection/cakedapesofficial (last visited Dec 2, 2022); GrandpaApeCountryClub, Grandpa Ape Country Club OpenSea (2022), https://opensea.io/collection/grandpaapecountryclub (last visited Dec 2, 2022); Habibi Ape Club , OpenSea (2022), https://opensea.io/collection/habibiapeclub (last visited Dec 2, 2022); JRS bored ape yacht club crew, OpenSea (2021), https://opensea.io/collection/boredapeyachtclub-1 (last visited Dec 2, 2022); Lady Ape Club, OpenSea (2022), https://opensea.io/collection/ladyapeclub5668 (last visited Dec 2, 2022); Reversed Ape Yatch Club, Opensea (2021), https://opensea.io/collection/reversed-ape-yatch-club (last visited Dec 5, 2022); Skeleton Ape Society, OpenSea (2022), https://opensea.io/collection/skeleton-ape-society (last visited Dec 2, 2022); Skeleton Apes, OpenSea (2022), https://opensea.io/collection/skeletonapes (last visited Dec 2, 2022); Sketchyapes, OpenSea (2022), https://opensea.io/collection/sketchyapes (last visited Dec 2, 2022); Twisted ape yacht club, OpenSea (2021), https://opensea.io/collection/twistedapes (last visited Dec 2, 2022); VAPES – Vertically Flipped Apes, Opensea (2021), https://opensea.io/collection/vapes-vertically-flipped-apes (last visited Dec 5, 2022); and, Zullup , 3D BAYC derivatives by Zullup OpenSea (2021), https://opensea.io/collection/3d-apes-by-zullup (last visited Dec 2, 2022).
[65] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1208 (2021) (“The uncertain nature of Sun’s ability to compete in Android’s market place, the sources of its lost revenue, and the risk of creativity-related harms to the public, when taken together, convince that this fourth factor—market effects—also weighs in favor of fair use.”)
[66] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1203 (2021) (“Here Google’s use of the Sun Java API seeks to create new products. . . . 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.”)
[67] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1219 (2021) (Thomas J., dissenting) (“The majority acknowledges that Google used the copied declaring code ‘for the same reason’ Oracle did. So, by turns, the majority transforms the definition of ‘transformative.’ Now, we are told, ‘transformative’ simply means—at least for computer code—a use that will help others ‘create new products.’”)
[68] See, generally Brian L. Frye, After Andy Warhol?, OpenSea (2022), https://opensea.io/collection/after-andy-warhol (last visited Jan 3, 2023).
[69] Brian L. Frye, After Andy Warhol?, *4 (June 28, 2022). Available at SSRN: https://ssrn.com/abstract=4149015 (“You can say an NFT represents anything you like without infringing copyright, because creating a cryptographic token purporting to represent ownership of a work isn’t one of the exclusive rights of copyright owners.”)
[70] Id., at *5 (“Unlike Warhol, I didn’t use Goldsmith’s photograph to create a derivative work. I used Goldsmith’s photograph – to the extent I used it at all! – only to the extent that I copied Warhol’s derivative work based on her photograph. What’s more, I used images of Warhol’s paintings in order to comment on the litigation and criticize the lunacy of excessive copyright protection.”)
[71] Id. (“If a conceptual artwork using a copyright infringement action to reflect on the inability of copyright law to coherently mediate and resolve the disputes that arise when the ownership norms of different discursive communities conflict doesn’t satisfy [the Copyright Act’s fair use factors], I don’t know what does.”)
[72] Id. (“What’s more, I’m hardly the first to use images of Warhol’s paintings in order to comment on the litigation. The case has been widely reported, and images of Warhol’s paintings are all over the internet. If I’m an infringer of Goldsmith’s copyright, so is every publication that used images of Warhol’s paintings to illustrate a story about the lawsuit.”)
[73] Id. (“Sure, I’m selling NFTs and they’re selling advertisements, but what’s the difference? We’re all selling something, in the course of engaging in critical commentary.”)
[74] See, supra, note 69at *5.
[75] See, generally, supra, note 69; see also supra, note 68 (stating in the description of the NFT collection that he is using the images to comment on Warhol v. Goldsmith).
[76] Transcript of Oral Argument, supra, note 29 at 11
[77] Id. at 22
[78] See, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 326 (S.D.N.Y. 2019) (“Prince appears as a flat, two-dimensional figure in Warhol’s works, rather than the detailed, three-dimensional being in Goldsmith’s photograph. Moreover, many of Warhol’s Prince Series works contain loud, unnatural colors, in stark contrast with the black-and-white original photograph. And Warhol’s few colorless works appear as rough sketches in which Prince’s expression is almost entirely lost from the original.”)
[79] See, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 32 (2d Cir. 2021) (“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. That is so both because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective.”)
[80] Transcript of Oral Argument, supra, note 29 at 76- 77 (answering Justice Alito’s Mona Lisa hypothetical).
[81] Transcript of Oral Argument, supra, note 29 at 19 – 41 (answering Chief Justice Robert’s hypothetical regarding Piet Mondrian, Josef Albers, and colors).
[82] Id., at 41-42.
[83] Jacobellis v. Ohio, 378 U.S. 184 (1964) (Stewart J., concurring)
[84] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209 (2021)
[85] Transcript of Oral Argument, supra, note 29 at 4 (“Campbell unambiguously requires an examination of meaning or message. Google reaffirms that test and cites Warhol’s Soup Cans as a paradigmatic example of when it’s satisfied.”)
[86] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1187 (2021) (“In the context of fair use, the Supreme Court has considered whether the copier’s use adds something new, with a further purpose or different character, altering the copyrighted work with new expression, meaning or message. Commentators have put the matter more broadly, asking whether the copier’s use fulfills the objective of copyright law to stimulate creativity for public illumination. In answering this question, the Supreme Court has used the word ‘transformative’ to describe a copying use that adds something new and important. An 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.”); see, Andy Warhol, Campbell’s Soup Cans, The Museum of Modern Art (1962), https://www.moma.org/learn/moma_learning/andy-warhol-campbells-soup-cans-1962/ last visited Jan 3, 2023).
[87] Transcript of Oral Argument, supra, note 29 at 4 (“Campbell unambiguously requires an examination of meaning or message. Google reaffirms that test and cites Warhol’s Soup Cans as a paradigmatic example of when it’s satisfied.”)
[88] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209 (2021)
[89] Transcript of Oral Argument, supra, note 29 at 11 (“Our position is that Factor 1 has to encompass the new meaning or message.”)
[90] Id., at 84-85 (“But the Campbell’s Soup label, not only is it a completely different purpose because one’s an advertising logo that goes on a supermarket shelf to a work of art, but — and I think the government’s brief says this – he can’t have used a generic soup can, he had to use the Campbell’s Soup logo. Same as if he had picked Cheerios. It would have been really weird to do, I guess back then they didn’t have the giant Cheerios, but you’ve got to use Cheerios to make your point about consumerism and brand loyalty.”)
[91] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209 (2021)
[92] Transcript of Oral Argument, supra, note 29 at 83 – 86 (discussion between Justice Jackson and Ms. Blatt, counsel for Goldsmith, regarding Warhol’s Campbell’s Soup Cans).
[93] See, supra, note 62.
[94] See, supra, note 64.
[95] Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1209 (2021) (ruling that Google’s use of the code was fair use because, under Factor One, Google used it to create a new product and took “only what was needed to [create] a new and transformative [work].”)
[96] See, Transcript of Oral Argument, supra, note 29 at 11 (“Our position is that Factor 1 has to encompass the new meaning or message.”)
[97] Oral Transcript of Oral Argument, supra, note 29 at 41-42 (“Factfinders can exercise their common sense and say [whether there is or is not] transformative meaning or message there.”)
[98] Apes Gallery, BAYCTron, https://bayctron.com/gallery (last visited Jan 3, 2023).
[99] Home, BAYCTron, https://bayctron.com/ (last visited Jan 3, 2023) (“Welcome to the official page of BAYCTron . . . 10,000 Bored Ape NFTs on the Tron blockchain.”)
[100] See, Bored Ape Yacht Club, supra, note 62 (“The apes are stored as ERC-721 tokens on the Ethereum blockchain.”)
[101] See, supra, note 99.
[102] The Bored Ape Anime Club is a collection of 308 NFTs that appears to stylize the BAYC ape in clothing and accessories similar to that of characters from famous movies, television shows, video games, and other popular media. See, Bored ape anime club, OpenSea (2022), https://opensea.io/collection/bored-ape-anime-club (last visited Jan 3, 2023).
[103] See, Id. (the project lacks a description or link to a website).
[104] Compare Id.; to Warhol, supra, note 86.
[105] The Caked Apes collection is a collection of 8888 NFTs designed around the theme of a bakery disaster. See, Caked Apes Creator, Caked Apes official, OpenSea (2022), https://opensea.io/collection/cakedapesofficial (last visited Jan 3, 2023).
[106] Bored Ape Yacht Club, #3884, OpenSea (2021), https://opensea.io/assets/ethereum/0xbc4ca0eda7647a8ab7c2061c2e118a18a936f13d/3884 (last visited Jan 3, 2023).
[107] Caked Apes, #6224, OpenSea (2022), https://opensea.io/assets/ethereum/0xc1922a5abfa18110827c0666b7bbac0389ab7396/6224 (last visited Jan 3, 2023).
[108] Compare, supra, note 106; to, supra, note 107.
[109] Compare, supra, notes 106 and 107; to, supra, notes 9 and 13.
[110] Transcript of Oral Argument, supra, note 29 at 41-42 (“Factfinders can exercise their common sense and say [whether there is or is not] transformative meaning or message there.”); see Jacobellis v. Ohio, 378 U.S. 184 (1964) (Stewart J., concurring) (“I know it when I see it.”)
[111] Compare Bored Ape Yacht Club, supra, note 62; to Caked Apes, supra, note 65.
[112] See Transcript of Oral Argument, supra, note 29 at 83 – 86 (discussion between Justice Jackson and Ms. Blatt, counsel for Goldsmith, regarding Warhol’s Campbell’s Soup Cans).
[113] See, supra, note 99.
[114] See, Id.
[115] See supra, note 103.
[116] Compare Bored Ape Anime Club, supra, note 102; to Warhol, supra, note 86.
[117] See, supra, note 109.
[118] See, generally, Caked Apes, supra, note 105.
[119] See, supra, section IV A.
[120] See, supra, note 31.
[121] See, supra, note 95.
[122] https://www.newyorker.com/news/daily-comment/the-supreme-courts-self-conscious-take-on-andy-warhol (“The Court’s grappling with Warhol’s cultural criticism may end up being its most revealing comment this term on the nature of its own role in contemporary culture.”)