Amicus Curiae Brief — Andy Warhol Foundation for the Visual Arts, Inc., Petitioner v. Lynn Goldsmith, et al.
Supreme Court briefJun 15, 2022
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No. 21-869
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In The
Supreme Court of the United States
---------------------------------♦--------------------------------ANDY WARHOL FOUNDATION
FOR THE VISUAL ARTS, INC.,
Petitioner,
v.
LYNN GOLDSMITH, et al.,
Respondents.
---------------------------------♦--------------------------------On Writ Of Certiorari To The
United States Court Of Appeals
For The Second Circuit
---------------------------------♦--------------------------------BRIEF OF AMICUS CURIAE THE
ROYAL MANTICORAN NAVY: THE OFFICIAL
HONOR HARRINGTON FAN ASSOCIATION, INC.
IN SUPPORT OF PETITIONER
---------------------------------♦--------------------------------MICHAEL D. DUNFORD
MATTHEW W. PARKER
THE ROYAL MANTICORAN
NAVY: THE OFFICIAL
HONOR HARRINGTON FAN
ASSOCIATION, INC.
6005 Main Campus Drive
Lexington, MA 02421
(610) 247-9647
J. REMY GREEN*
COHEN & GREEN P.L.L.C.
1639 Centre Street,
Suite 216
Ridgewood, NY 11385
Tel: (929) 888.9480
Fax: (929) 888.9457
remy@femmelaw.com
*Counsel of Record
Counsel for Amicus Curiae
================================================================================================================
COCKLE LEGAL BRIEFS (800) 225-6964
WWW.COCKLELEGALBRIEFS.COM
i
TABLE OF CONTENTS
Page
Statement of Interest of Amicus Curiae ..............
1
Summary of the Argument ..................................
3
Argument .............................................................
4
I.
Fan Creativity and Fair Use......................
4
II.
Two Fanworks Under Two Versions of Fair
Use ............................................................. 10
A. Two Fanworks ..................................... 12
B. The Two Fanworks Under Campbell .... 14
C. The Two Fanworks Under Warhol ...... 18
III.
This Second Circuit’s Disregard for Meaning Is Inconsistent with This Court’s Decisions, Inconsistent with the Decisions of
Other Circuits, Internally Inconsistent,
and Unworkable ........................................ 22
Conclusion............................................................ 29
APPENDIX
A Trekkie’s Tale ................................................... App. 1
ii
TABLE OF AUTHORITIES
Page
CASES
Andy Warhol Foundation for the Visual Arts, Inc.
v. Goldsmith, 11 F.4th 26 (2d Cir. 2021) ......... passim
Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.
2018) ........................................................................20
Balsey v. LFP, Inc., 691 F.3d 747 (6th Cir. 2012) ........25
Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) .............15
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569
(1994) ............................................................... passim
Dr. Seuss Enterprises, L.P. v. ComicMix LLC, 983
F.3d 443 (9th Cir. 2020) ...........................................25
Eldred v. Ashcroft, 537 U.S. 186 (2003) .............. 4, 8, 15
Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass.
1841) ........................................................................10
Google v. Oracle America, Inc., 141 S. Ct. 1183
(2021) ........................................................... 18, 24, 30
Kienitz v. Sconnie Nation, 766 F.3d 756 (7th Cir.
2014) ........................................................................27
Lucasfilm Ltd. v. Ainsworth, [2008] EWHC 1878
(Ch) ..........................................................................16
Núñez v. Caribbean International News Corp.,
235 F.3d 18 (1st Cir. 2000) ......................................25
Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) .............19
Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir.
2013) ........................................................................25
iii
TABLE OF AUTHORITIES – Continued
Page
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) .................................................30
Stewart v. Abend, 495 U.S. 207 (1990)........................30
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d
1257 (11th Cir. 2001) ...............................................19
STATUTES
17 U.S.C. § 101 ............................................................22
17 U.S.C. § 107 ............................................................10
17 U.S.C. § 107(1) ........................................................26
17 U.S.C. § 107(2) ........................................................16
17 U.S.C. § 107(3) ........................................................26
17 U.S.C. § 107(4) ........................................................17
17 U.S.C. § 504 ............................................................29
OTHER AUTHORITIES
Anupam Chander and Madhavi Sunder, Everyone’s a Superhero: A Cultural Theory of “Mary
Sue” Fan Fiction as Fair Use, 95 Cal. L. Rev.
597 (2007) ............................................................ 7, 12
Archive of Our Own, https://www.archiveofourown.org ........8
Betsy Rosenblatt, Belonging as Intellectual Creation, 82 Mo. L. Rev. 91 (2007) .............................. 6, 9
Betsy Rosenblatt, Fair Use as Resistance, 9 U.C.
Irvine L. Rev. 377 (2007) ...........................................8
iv
TABLE OF AUTHORITIES – Continued
Page
Camille Bacon-Smith, Enterprising Women: Television Fandom and the Creation of Popular
Myth (1992) ...............................................................8
F. E. Guerra-Pujol, Of Coase and Copyrights:
The Law and Economics of Literary Fan Art, 9
NYU J. INTELL. PROP. & ENT. L. 91 (2019) ..........6
Henry Jenkins, Textual Poachers: Television Fans
and Participatory Culture (Updated 20th
Anniversary Edn 2012) .............................................8
J. Remy Green, All Your Works Are Belong to
Us: New Frontiers for the Derivative Work
Right in Video Games, 19 N.C. J.L. & TECH.
393 (2018) ................................................................19
Jen Talty, Amazon Slams the Doors to Kindle
Worlds, Hidden Gems Books (June 1, 2018) ..........17
Karen Hellekson, The Fan Experience, A Companion to Media Fandom and Fan Studies
(Paul Booth ed., 2018) ...............................................7
Madhavi Sunder, Intellectual Property in Experience, 117 MILR 197 (2018) ...................................20
Mark Twain, A Double Barreled Detective Story,
Harper & Bros (1902) ...............................................7
Melissa Anne Agnetti, When the Needs of the
Many Outweigh the Needs of the Few: How
Logic Clearly Dictates the First Amendment’s
Use as a Defence to Copyright Infringement
Claims in Fan-Made Works, 45 Southwestern
L. Rev. 115 (2015) ....................................................13
v
TABLE OF AUTHORITIES – Continued
Page
Michelle Jaworski, From “Doctor Who” to “Outlander”: How Fans Craft Reverse Engineer
Knits (Daily Dot, 5 February 2021) ..........................6
Molly Rose Madonia, All’s Fair in Copyright and
Costumes: Fair Use Defense to Copyright Infringement in Cosplay, 20 Marquette Intellectual Property L. Rev. 177 (2016) ...............................5
Pierre Leval, Campbell as Fair Use Blueprint,
90 Wash. L. Rev. 597 (2015) ......................................9
Rebecca Tushnet, Legal Fictions: Copyright, Fan
Fiction, and a New Common Law, 17 Loyola
of LA Ent. L. J. 651 (1997) ............................ 5, 6, 7, 8
Rich Johnston, Over 200 Cosplay Photos From
MCM London Comic Con Spring 2002, Bleeding Cool News and Rumors (May 30, 2022) .............5
Shannon Chamberlain, Fan Fiction Was Just
as Sexual in the 1700s as It Is Today, The
Atlantic (June 6, 2020) ..............................................6
Susana Polo, “Why the Mary Sue” The Mary Sue,
27 Feb. 2011.............................................................12
Twitter user @Pneumaz, https://mobile.twitter.
com/pneumaz/status/1353866647778504704
(Jan. 25, 2021) .........................................................13
1
STATEMENT OF INTEREST
OF AMICUS CURIAE1
Honor Harrington is a heroic military commander,
expert personal combatant, and a wise mentor. Over
the course of her story arc, she rises from Commander
to Admiral, yeoman to Duchess, and alters the course
of her entire galaxy. Little wonder, then, that readers
of David Weber’s military science-fiction epics spend so
much time building out the world through additional
fiction, art, music, and so on.
That drive lead to the creation of The Royal Manticoran Navy: The Official Honor Harrington Fan
Association, Inc. (“TRMN”)—a 501(c)(7) not-for-profit
corporation to serve as a nexus for fans of (copyright
holder) Weber’s series. From its beginning, the organization has been a home for people that creatively
express their enthusiasm for—and engage with—Weber’s work in different ways.
TRMN’s social interests stretch beyond just Honor
Harrington, though. It believes in and advocates for
the interests of other similarly situated fan organizations, as well as for the protection and advancement of
1
Pursuant to Rule 37.6, no counsel for a party authored this
brief in whole or in part, and no such counsel or party made a
monetary contribution intended to fund the preparation or submission of the brief. No person or entity other than the amicus
curiae, its members, or its counsel, made a monetary contribution
intended to fund its preparation or submission. This brief is filed
with the written consent of all parties pursuant to this Court’s
Rule 37.3(a). Copies of the blanket consent letters from all parties
have been filed with the Clerk.
2
fan works in general, and the right of fans to create
them. It believes that members of the public should be
able to celebrate fictitious worlds, and legally express
their creativity in as many ways as possible.
Over the 15 years of TRMN’s existence it has
hosted 8 conventions and participated in dozens of others where its members have shared the fruit of their
creative efforts. These have included artwork, songs,
presentations on in-universe concepts alongside realworld analogues, skits/sketches, and more. And while
it has done so for the last 11 years as the official fan
organization for the Honor Harrington series, it spent
the first four years of its existence doing so in an unofficial capacity.
With that history, TRMN is cognizant of the difficulties faced by the millions of unofficial fan creators across the country. This case presents unresolved
issues that plague such creators with legal uncertainty
and a looming threat of suit. TRMN knows from experience that fan communities do not present economic
or intellectual threats to rights-owners. Quite the
opposite: fan works consistently support and reinforce
the originals. But the Second Circuit’s decision codifies a reverse tragedy of the commons that would
scare many fan authors out of creating in the first
place.
Thus, this Court should resolve the issues before
it in a way that allows fan creators return to their efforts—which will only happen if the Court reverses,
3
and such creators stand on firm legal ground consistent with previous precedent.
---------------------------------♦---------------------------------
SUMMARY OF THE ARGUMENT
In recent decades, millions of fans of works of popular culture have relied on this Court’s determination
that new uses of expressive material that add “new expression, meaning, or message” to the original and do
not “supersede the objects of the original creation”
weigh in favor of a finding of fair use, Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994), to participate in creative activities related to their shared
love of particular creative works. These uses of popular
culture works often convey new messages and meanings to others, serving expressive and communicative
functions.
The Second Circuit’s decision, which explicitly instructs district courts to refrain from assessing the
meaning of works which are visually similar, shatters
this expectation. Works which are quite likely to be
found to be transformative under the Campbell framework, because they are used in the service of communicating new messages and different meanings than
their source material, in ways that in no way usurp the
original, are unlikely to be fair use under this framework. This radical reduction in the First Amendment
leeway built into copyright law is inconsistent with
this Court’s prior decisions, the approach used in other
4
Circuits, and the everyday conduct of millions of individual users.
While TRMN takes no position on whether the
Warhol painting itself made fair use of the Goldsmith
photograph under existing fair use precedents, Respondent correctly argues that the decision below disregards existing law in ways that radically limit the
applicability of far use. TRMN urges this Court to reverse the decision below and remand with instructions
to examine the question using a framework that protects the critical role of fair use as one of copyright
law’s “traditional First Amendment safeguards.”
Eldred v. Ashcroft, 537 U.S. 186, 220 (2003).
---------------------------------♦---------------------------------
ARGUMENT
I.
Fan Creativity and Fair Use
The Royal Manticoran Navy: The Official Honor
Harrington Fan Association, Inc. is, as its name suggests, a fan club. It is a group of people who share a
fondness for David Weber’s Honor Harrington books
and enjoy engaging in a range of activities that relate
to this series. In particular, TRMN is, as a group, best
known for engaging in “cosplay” (defined just below)
based on the characters and fictional universe Weber
created. TRMN also has a strong interest in supporting
its individual members as they participate in activities
within the broader science fiction and popular culture
fan communities, including other forms of fan creativity such as fan fiction.
5
Cosplay—a shortening of “costume play”—is a
term that was coined to describe the practice of dressing up and acting as a character from a particular work
of popular culture. See Molly Rose Madonia, All’s Fair
in Copyright and Costumes: Fair Use Defense to Copyright Infringement in Cosplay, 20 Marquette Intellectual Property L. Rev. 177, 177 (2016). Cosplay is a
major feature of modern popular culture conventions,
with some attracting thousands of attendees in costume. See Rich Johnston, Over 200 Cosplay Photos
From MCM London Comic Con Spring 2002, Bleeding
Cool News and Rumors, https://bleedingcool.com/comics/
over-200-cosplay-photos-from-mcm-london-comic-conspring-2022/ (May 30, 2022) (estimating that between
16,000 and 32,000 people attended convention in costume, and providing photos of “a small fraction”). Cosplay, by its very nature, makes use of existing
copyright-protected content, either in the form of the
character’s costume or as a performance of a character.
TRMN members also write reams of “fan fiction.”
Fan fiction has been defined as “any kind of written
creativity that is based on an identifiable segment of
popular culture . . . and is not produced as professional
writing.” Rebecca Tushnet, Legal Fictions: Copyright,
Fan Fiction, and a New Common Law, 17 Loyola of LA
Ent. L. J. 651, 655 (1997). A wide variety of works fall
within this definition. Some of these are simple extensions of existing storylines, while others are more elaborate, and draw on popular culture in the service of
purposes such as allowing marginalized groups to, in
effect, write themselves into popular culture and gain
6
a sense of belonging. See Betsy Rosenblatt, Belonging
as Intellectual Creation, 82 Mo. L. Rev. 91, 104-11
(2007). Fan fiction also makes use of existing popular
culture content by its very nature. Fan fiction is generally noncommercial and unlicensed and attempts to
change either of these norms have met with little success.
Cosplay and fan fiction are just two examples of
common fan works. Many others exist, covering a
range of media from visual art, to knitted dolls and
accessories, and beyond. See, e.g., F. E. Guerra-Pujol,
Of Coase and Copyrights: The Law and Economics of
Literary Fan Art, 9 NYU J. INTELL. PROP. & ENT. L.
91 (2019) (discussing literary-based fan art);
Michelle Jaworski, From “Doctor Who” to “Outlander”:
How Fans Craft Reverse Engineer Knits (Daily Dot,
5 February 2021) https://www.dailydot.com/unclick/
reverse-engineer-knits-pattern-doctor-who-outlanderstar-wars/. Amicus has members who engage in many
of these activities, and an interest in supporting them
both in their participation in the organization and
within the broader science fiction and popular culture
fandoms.
Although fanworks attracted little copyright attention until near the start of this century, they are not
a new form of creativity. See generally Tushnet, supra.
Fanworks are, instead, a tradition that stretches back
centuries. Fans of Gulliver’s Travels created fan art in
the 18th Century, see Shannon Chamberlain, Fan Fiction Was Just as Sexual in the 1700s as It Is Today, The
Atlantic (June 6, 2020) https://www.theatlantic.com/
7
culture/archive/2020/02/surprising-18th-century-originsfan-fiction/606532/, and many authors, including Mark
Twain, indulged in Sherlock Holmes fan fiction in the
late 19th and early 20th Centuries. See Mark Twain,
A Double Barreled Detective Story, Harper & Bros
(1902). Even cosplay, which is often seen as a relatively
new form of fanwork, can trace its roots back at least
as far as the first World Science Fiction Convention in
1939. See Karen Hellekson, The Fan Experience, A
Companion to Media Fandom and Fan Studies 67,
67-68 (Paul Booth ed., 2018). The protection of these
works by current fair use law is not merely consistent
with the expectations that are based on Campbell. It is
also consistent with the long history of fanworks.
While there is little caselaw directly addressing
noncommercial fanworks, there is a broad academic
consensus that most noncommercial fanworks are
mostly covered by fair use most of the time. See generally, e.g., Tushnet, supra; Anupam Chander and
Madhavi Sunder, Everyone’s a Superhero: A Cultural
Theory of “Mary Sue” Fan Fiction as Fair Use, 95 Cal.
L. Rev. 597 (2007). This position is widely viewed as
consistent with existing case law on fair use, and in
particular on this Court’s decision in Campbell. Id.
The central holding in Campbell—that fair use is
favored where the new work “adds something new,
with a further purpose or different character, altering
the first with new expression, meaning, or message,”
510 U.S. at 579—fits well with how fanworks are used.
In addition to being creative works in their own right,
fan creations also serve valuable social functions. They
8
are a form of active reading that engages with the original in new ways, and which allows fans to, in effect,
form their own communities and culture “from the
semiotic raw materials the media provides.” Henry
Jenkins, Textual Poachers: Television Fans and Participatory Culture 49 (Updated 20th Anniversary Edn
2012). They provide activities that support the development of communities, and often serve to allow
members of underrepresented, marginalized, and
subordinated groups to find or create places for themselves within these communities and to comment on
related issues within the context of popular culture.
See Camille Bacon-Smith, Enterprising Women: Television Fandom and the Creation of Popular Myth (1992)
45-78; Betsy Rosenblatt, Fair Use as Resistance, 9 U.C.
Irvine L. Rev. 377, 391-92 (2007). And they are ways
that fans speak to each other, participating actively in
a world that they share. Tushnet, Legal Fictions at
665.
If “copyright’s purpose is to promote the creation
and publication of free expression,” Eldred v. Ashcroft,
537 US 186, 219 (2003) (emphasis in original), there
can be no doubt that the use of “the fair use doctrine’s
guarantee of breathing space within the confines of
copyright,” Campbell, 510 U.S. at 579, to create fan
works has served that goal well. Millions of people
have, over a period of decades, participated in culture
through the creation of tens of millions of individual
fanworks. Consider the existence of Archive of Our
Own, https://www.archiveofourown.org, a single and
non-comprehensive website that currently has over 4.7
9
million users and hosts over 9.4 million unique fan creations.
Put more directly, fair use has allowed millions of
people to develop a sense of community by participating in their creation and sharing. See Rosenblatt, Belonging as Intellectual Creation, supra. And they do so
not by replacing or supplanting the original works they
are associated with, but as a means of displaying their
authors’ feelings and attitudes about those originals.
See Pierre Leval, Campbell as Fair Use Blueprint, 90
Wash. L. Rev. 597, 611-12 (2015).
Fan creations are vehicles for conveying new
meanings and messages using the trappings provided
by the original pop culture works. Forbidding courts
from considering the meaning of visually similar
works will drastically reduce the likelihood that fan
creations will be found to be fair use. This will create
substantial legal uncertainty for millions of individuals. It will reduce their ability to participate in popular
culture and to express themselves through the use of
cultural references. It will, in effect, remove the legal
protection of fair use, and leave users’ ability to engage
in noncommercial expressive uses of works subject to
the whims of copyright owners.
The immediate question in this case is whether
the use of one work of art as a starting point in the
creation of a second work of art is fair use. However,
the reasoning employed by the Second Circuit to resolve this case will, if endorsed by this Court, reach
much further. The application of the new rule will
10
inevitably sweep up fan creators and countless others
who are not before this Court. This result is not required by the Copyright Act, and this Court should
hesitate before endorsing changes to fair use that will
radically limit creative practices that have endured for
centuries.
II.
Two Fanworks Under Two Versions of Fair
Use
Fair use has a lengthy history as a common law
limitation to copyright law’s exclusive rights, see Folsom v. Marsh, 9 F. Cas. 342 (C.C.D. Mass. 1841), and
was incorporated into the 1976 Copyright Act as a statutory exception to the author’s exclusive rights. The
doctrine provides a defense to copyright if the court
determines that the new use was fair based on its consideration of:
(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.
17 U.S.C. § 107.
11
The first factor of this analysis is particularly important and has required courts to consider whether
the new use “adds something new, with a further purpose or different character, altering the first with new
expression, meaning, or message; it asks, in other
words, whether and to what extent the new work is
“transformative.” Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 579 (1994). However, in analyzing the
works at issue in this case, the Second Circuit determined that it is inappropriate to consider the meaning
or message of the new work, instead placing the center
of the first factor analysis on the extent to which the
old work was altered. Andy Warhol Foundation for the
Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 37-44 (2d
Cir. 2021). Besides being counter-textual, that innovation will cause no end of mischief.
To see that disruptive effect, consider the two fanworks below: one classic work of fan fiction, and one
example of cosplay. Both examples make recognizable
use of material from a well-known work. But both do
so in ways that convey messages and meanings that
differ significantly from the entertainment roles
served by the original—and that have no effect on the
market for the original work. But, fatal to these works
under the Second Circuit’s novel approach, they do so
by using the new material in ways which “both recognizably deriv[e] from, and retain[ ] the essential elements of, its source material.” 11 F.4th at 42.
12
A. Two Fanworks
Paula Smith’s fanfiction short story, A Trekkie’s
Tale, was published in the Star Trek fanzine Menagerie in 1973. This story, which has been reproduced in
full in the Appendix to this brief, is a work of Star Trek
fan fiction featuring Lt. Mary Sue, a young officer who
works her way into the hearts of the ship’s crew and
saves the ship before her tragic and untimely death. A
Trekkie’s Tale is short, even by fanfiction standards,
but it has become iconic in its own right. See, e.g.,
Susana Polo, “Why the Mary Sue” The Mary Sue,
https://www.themarysue.com/why-the-mary-sue/ 27
Feb. 2011 (using “Mary Sue” as the name of the website
to “re-appropriate a cliche that is closely but only circumstantially associated with femininity on a website
for geek girls”).
This 306-word story is clearly not actually intended to be a work of Star Trek entertainment.
Rather, it is a form of commentary on what the author perceived as the state of Star Trek fan fiction at
the time, and in particular on the perceived prevalence of overly-idealized characters such as the story’s
protagonist within the genre. It started a conversation
on such characters that continues to the present, and
the name of the protagonist—“Mary Sue”—is now
(sub-)cultural shorthand for similar characters. The
story has also become fodder for extensive academic
work on fan creativity. See, e.g., Chander and Sunder,
supra. The story has a form that is similar to Star Trek
fiction, at least at a high level of generality, but a meaning that is radically different.
13
Second, consider the illustration below, which depicts a costume based on the well-known Stormtroopers from the Star Wars franchise, but painted with a
detailed and colorful pattern. Twitter user @Pneumaz,
https://mobile.twitter.com/pneumaz/status/1353866647
778504704 (Jan. 25, 2021). The pattern has not been
featured, on a costume or otherwise, in any official production within the franchise. It is a pattern that once
appeared on the carpets of the Marriott Marquis hotel
in Atlanta, Georgia. See Melissa Anne Agnetti, When
the Needs of the Many Outweigh the Needs of the Few:
How Logic Clearly Dictates the First Amendment’s Use
as a Defence to Copyright Infringement Claims in FanMade Works, 45 Southwestern L. Rev. 115, 116-19
(2015).
Figure 1
14
This cosplay, like A Trekkie’s Tale, is not something
that will displace the original work as a form of entertainment. It is not intended to do so. It, too, is a work
that comments on the fandom it is part of. In this case,
the use of the carpet pattern is tied to earlier costumes
that were developed by another cosplayer who attended the annual science fiction convention held at
that hotel. Id. It is one of many examples of costumes
and other works that feature the carpet pattern. See
Cameron McWhirter, “We’re Spending Our HardEarned Money to Dress Up Like Carpet,” The TightKnit World of Rug Fans, Wall Street Journal, https://
www.wsj.com/articles/were-spending-our-hard-earnedmoney-to-dress-up-like-carpet-the-tight-knit-world-ofrug-fans-1535642554 (Aug. 30, 2018). This costume,
and others like it, serve as a kind of in-joke or badge
showing the wearer’s membership in and commitment
to the science fiction fan community that exists around
this convention. As such, it conveys a message far different from the menacing villain of the original.
B. The Two Fanworks Under Campbell
The modern fair use landscape, and particularly
the first factor analysis, has been largely shaped by
this Court’s decision in Campbell. There, faced with a
new, parody song based on an original rock song, the
Court placed the meaning and message of the new
original at the center of the first factor analysis. Campbell, 510 U.S. at 579. It did not matter that the iconic
guitar refrain was obviously pulled from the original:
Protecting the right to create new words that convey a
15
new message and meaning and that do not “merely
supersede the objects of the original creation,” id.
(cleaned up), is required, Campbell tells us, because it
furthers the “goal of copyright, to promote science
and the arts.” Id. This protection also, as this Court
subsequently stated, serves as a First Amendment
safeguard, ensuring that the limited monopoly copyright provides authors does not impermissibly interfere with freedom of expression. Eldred v. Ashcroft, 537
U.S. 186, 219-20 (2003).
Under the test for fair use that this Court articulated in Campbell, both the short story and the costume seem to be obvious fair uses of the material they
borrow from the iconic popular culture franchises they
are associated with. Both transform the original material by changing its meaning, and both have a “genuine
creative rationale” for using their source material. See
Blanch v. Koons, 467 F.3d 244, 255 (2d Cir. 2006). And
neither is a market substitute for either the original
work or any licensing market associated with the original. This is apparent at a glance, and it only becomes
clearer on examination of the four statutory factors.
In both cases, the traditional first factor analysis
shows that the works are transformative and noncommercial. The “purpose and character” of A Trekkie’s
Tale is not to create a work that “supersedes the object
of the original creation.” 510 U.S. at 579 (cleaned up).
The new work might be, in the broadest sense, similar
to an ‘official’ work of Trek fiction, in that both feature
Kirk and Spock as characters and both are literary
works. However, the purpose of the use here is to be a
16
brief, satirical examination of the tropes of fan fiction
of the day. It is not truly a Trek narrative, its transformation into a pop culture icon in its own right cannot
be explained if the work is viewed as simply a ‘Trek
story.’ The transformative nature of the story is clear
under the Campbell test.
The analysis for the stormtrooper costume is similar. Here, too, the Star Wars content is not being used
“to avoid the drudgery in working up something fresh.”
510 U.S. at 580. Instead, it is a badge of affirmation, an
affectionate display of a love of the original films, of
the fan culture expressed through cosplay and convention attendance, and for the community that attends
Dragon Con each year. It does not, in any way, supersede the purpose of the original, which was intended
to convey the “allegiance, force, menace, purpose and
. . . anonymity” of the film’s stormtrooper characters.
Lucasfilm Ltd. v. Ainsworth, [2008] EWHC 1878 (Ch)
para 121.
The second fair use factor, “the nature of the copyrighted work,” 17 U.S.C. § 107(2) is, as in the case of
parody, not “ever likely to help much in separating the
fair use sheep from the infringing goats” where fanworks are concerned. 510 U.S. at 586. This is true for
both the short story and costume. Fan creations will
“almost invariably copy publicly known, expressive
works.” Id.
The third factor will favor fair use for these fanworks. Neither uses more of the original than is necessary for its transformative purpose. The short story, in
17
particular, uses only as much of the characters and setting as is needed to firmly anchor itself to the Trek fandom of the day. Similarly, the use of the stormtrooper
costume invokes the Star Wars setting, while the use
of the carpet pattern shows its association with the
convention community. In both cases, the humor and
commentary associated with the fanworks conjure up
the original in the minds of the viewers enough to
make the associations—and, thereby, the humor—of
their depictions clear. 510 U.S. at 587-89.
Finally, the analysis of the fourth statutory factor,
“the effect of the use upon the potential market for or
value of the copyrighted work,” 17 U.S.C. § 107(4) is
relatively simple for these two fanworks. Neither A
Trekkie’s Tale nor the patterned stormtrooper costume
is in any way a replacement for any original work
within either the Star Trek or Star Wars franchise. Nor
does either one directly replace any licensed work
within either franchise. Finally, not only are there not
mechanisms or markets to explicitly license fan creations, but the few attempts that have been made to
create such markets have failed. See, e.g., Jen Talty,
Amazon Slams the Doors to Kindle Worlds, Hidden Gems
Books, https://www.hiddengemsbooks.com/amazon-closeskindle-worlds/ (June 1, 2018) (detailing closure of Amazon’s attempt to provide a venue for licensed fanfiction).
With three of the four factors favoring fair use
when examined using the Campbell approach, both
fanworks are likely to be fair use. This outcome, as
noted above, matches both the expectations that fans
18
have relied on in the decades since Campbell, and the
practices in this area that long predate that decision.
The decision below upends those expectations. In particular, the Second Circuit’s decision to disregard the
purpose of the new work at any but the most superficial level radically reduces the scope of protection that
fair use currently provides for new expressive uses
with purposes that clearly differ from the original.
C. The Two Fanworks Under Warhol
The test applied below radically departs from the
fair use approach that was outlined by this Court in
Campbell, reinforced in Google v. Oracle America, Inc.,
141 S. Ct. 1183 (2021), and which has been applied by
the courts for the last several decades. This case involves a Warhol silk-screen of the late musician Prince,
which was created using Respondent’s photograph as
a basis for Warhol’s own creativity. The court conceded
that Warhol’s painting and Goldsmith’s photographs
had radically different meanings, with the photograph
intended to depict Prince as a vulnerable human while
the Warhol altered the image in the service of creating
a depiction of Prince as a larger-than-life icon. Warhol,
11 F.4th at 41. Even so, the panel held that it was inappropriate to consider such factors, and that the
proper inquiry is restricted to “whether the secondary
work’s use of its source material is in the service of a
fundamentally different and new artistic purpose and
character, such that the secondary work stands apart
from the raw material used to create it. 11 F.4th at 42
(cleaned up).” In so holding, the panel in effect reduced
19
the first factor test from one focused on the nature and
meaning of the new work to one that examines only the
techniques used to create it. But there are only so
many techniques in the world. Indeed, it is hard to imagine how 2 Live Crew’s sampling of the “Oh, Pretty
Woman” guitar riff would be fair use under the panel’s
novel test.
Similarly, under the panel’s test, it is at best unclear if either A Trekkie’s Tale or the Carpet Stormtrooper would still be viewed as transformative. It is
possible that these works will be seen to comment, in
part, on the original, but this is far from certain. Detecting commentary can itself require that the court
exercise aesthetic judgment.
Aside from the most explicit of parodies, such as
the retelling of Gone with the Wind at issue in Suntrust
Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir.
2001), it is not always easy to determine whether a
work will be seen to comment on the original. For example, a series of fan made films that draws its humor
from its juxtaposition of absurd conversations against
the grim world of the video game it draws from might
be viewed as commenting on that video game. However, it is equally possible that the commentary here,
as in Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992),
would be viewed as a comment on the general genre
rather than the specific work. See J. Remy Green, All
Your Works Are Belong to Us: New Frontiers for the
Derivative Work Right in Video Games, 19 N.C. J.L. &
TECH. 393, 417-22 (2018).
20
And that is what concerns TRMN: Most fanworks
are not explicit parodies. The comments they convey
are often ones of homage, rather than criticism, and
courts are typically often more willing to protect the
latter than the former. See Madhavi Sunder, Intellectual Property in Experience, 117 MILR 197, 254 (2018).
In other cases, they are comments on the omission of
elements like representation from the original, and
that commentary is made by the inclusion of those elements in the fan creations. Nor are most fanworks as
radically different in form as, for example, the digitization of works to permit full-text searching was in Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir. 2018).
They use the works to different purposes and to convey
new messages and meanings, but they do so in formats
that can be depicted as sharing the same “overarching
purpose” as the original works they draw from. 11
F.4th at 40.
If the first factor inquiry is artificially limited to
superficial similarities between the works, it is unlikely that the works will be found to be transformative. The short story is, like many licensed works of
Star Trek fiction, a literary work. The painted costume
is, at a high level of generality, still a costume. And, of
course, both fan creations recognizably derive from,
and retain essential elements of, their source material.
Assessed only as creative works within those genres,
without an examination of meaning, it is entirely plausible that the “purpose” of the short story will be
viewed as “being a short story,” and the “purpose” of
the costume as “being a costume.” Like the portraits in
21
Warhol, both will also be works of the same subject as
the corresponding originals. A direct application of the
Warhol standard, without the addition of consideration
of the purpose or meaning of the works, is likely to conclude that these works are not transformative and that
the first factor does not favor fair use.
With the first factor no longer favoring fair use, it
is likely that the third would follow suit. The assessment of this factor is based on the reasonableness of
the use “in relation to the purpose of the copying.”
Campbell, 510 U.S. at 586. Where the purpose of the
copying is transformative, copying is more likely to be
reasonable. Absent a transformative use, the question
becomes one of why the copying came from this particular source, and the amount of use that is permissible
plummets accordingly.
When meaning is assessed, it is likely that both A
Trekkie’s Tale and the carpet stormtrooper are fair use.
In each case, at least three of the four factors are likely
to weigh in favor of fair use. If, however, the court is
forbidden from assessing meaning aside from a determination of whether there is comment on the original,
it is likely that the analysis shifts to one where at least
three of the factors weigh against fair use. Such an outcome would shatter the expectations that millions of
people have relied on over a period of decades in creating such works. And the First Amendment breathing
room TRMN and other fan authors have long relied on
will be no more.
22
III. This Second Circuit’s Disregard for Meaning Is Inconsistent with This Court’s Decisions, Inconsistent with the Decisions of
Other Circuits, Internally Inconsistent,
and Unworkable
The decision below is not consistent with current
law. It contradicts this Court’s prior decisions and the
approach used in fair use cases both in other circuits
and within the Second Circuit itself. It is also unworkable. It provides inconsistent guidance to district
courts, and it places users in a position where their
ability to reasonably make fair uses of material becomes largely dependent on their ability to correctly
guess whether a judge will find that their use is different enough in appearance from the original.
Although the plain language of the Copyright Act
mandates an examination of “the purpose and character of the use,” 17 U.S.C. § 101 (emphasis added), the
Second Circuit’s treatment of the factor is restricted to,
at most, an extremely superficial level. Purpose is declared “a less useful metric” for works that “at least at
a high level of generality, share the same overarching
purpose (i.e., to serve as works of visual art).” 11 F.4th
at 40. Rather than assess purpose, the Second Circuit
instructs that “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.” 11 F.4th at
41. “Instead, the judge must examine whether the secondary work’s use of its source material is in service of
a ‘fundamentally different and new’ artistic purpose
and character, such that the secondary work stands
23
apart from the ‘raw material’ used to create it.” 11
F.4th at 42. Although the court did not provide explicit
guidance on how much difference would be enough, it
made it clear that a use of material is problematic if
the “secondary work remains both recognizably deriving from, and retaining the essential elements of, its
source material.” Id.
This approach, which tells district courts that conducting an analysis of the meaning of the new work
can be reversible error, is not merely inconsistent with
the express language of the statute. It is also starkly
at odds with this Court’s precedent. In Campbell, the
Court focused explicitly on the need to assess whether
the new work contains any “new expression, meaning,
or message” in the fair use analysis. Campbell, 510 U.S.
at 579 (emphasis added). The Second Circuit attempts
to restrict this meaning-free approach to only certain
cases: those in which the new work “does not obviously
comment on or relate back to the original or use the
original for a purpose other than that for which it was
created.” 11 F.4th at 41.
The Second Circuit appears to attempt to thread
the needle between disregarding meaning in most
cases where both new and old work are the same general type of work—both works of visual art, for example, or both songs—without openly contradicting this
Court’s holding that uses that parody “traditionally
[has] had a claim to fair use protection as transformative works.” Campbell, 510 US at 583. In so doing, however, it misses a critical point: the holding in Campbell
was not restricted to new works that comment on the
24
original. The Court there found that parody “needs to
mimic an original” to comment on that original, and
therefore has a built-in reason for using the original.
Id. at 580-81. Other works, which lack this justification, need to provide a reason for their borrowing—but
the Court explicitly noted that this might be possible
even in cases of satire, which do not comment on the
original. Id. at 581 n. 14.
This Court reinforced the importance of purpose,
meaning, and message in the first factor analysis in
Google v. Oracle America, Inc., 141 S. Ct. 1183 (2021).
There, the court explicitly rejected arguments that the
nature of the work is the same when both old and new
works are the same type of work, such as computer
programs. Id. at 1199. The court also explicitly rejected
the argument that the purpose and character of the
new work is the same in such cases. Id. The Second
Circuit’s attempt to limit Google to computer programs
misses the point. 11 F.4th 51-52. The particular facts
of the case were, of course, critical to the outcome. However, nothing in the case suggests that the approach
used to assess fair use depended on the nature of the
works. Whether or not a particular new purpose is sufficient to yield a finding of fair use may vary some from
work to work—because, for example, the second factor
adds weight where the original is a factual work “further . . . from the core of copyright.” Google, 141 S. Ct.
1202. The assessment of purpose itself, however, remains critical.
Second Circuit aside, the Courts of Appeals have,
since Campbell, routinely looked to the purpose,
25
meaning, and message of a new work, and determine
transformativeness on this basis, rather than on superficial similarities. They have found that new meaning
and message transformed works even where there is
little visual change to the work, see, e.g., Seltzer v.
Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013);
Núñez v. Caribbean International News Corp., 235 F.3d
18 (1st Cir. 2000), but not when there was a lack of new
meaning or message. See, e.g., Balsey v. LFP, Inc., 691
F.3d 747, 759 (6th Cir. 2012). Similarly, courts have
found that even in cases of significant superficial
change, a work is not transformative because there is
not sufficient new purpose, meaning, or message. See,
e.g., Dr. Seuss Enterprises, L.P. v. ComicMix LLC, 983
F.3d 443, 452 (9th Cir. 2020). In all these cases, the core
of the first factor analysis rests on the assessment of
the purpose, meaning, or message of the new work.
This is consistent with the text of the statute and this
Court’s prior decisions, but not with the Second Circuit’s approach here.
In addition to resting on soft legal footing, the Second Circuit’s guidance is also internally inconsistent.
The court does not instruct district judges to ignore
meaning in all cases. It instructs that the district
courts “should not . . . seek to ascertain the intent behind or meaning of the works at issue . . . because
judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently
subjective” where the new work “does not obviously
comment on or relate back to the original or use the
original for a purpose other than that for which it was
26
created.” 11 F.4th at 41-42. This, in effect, requires that
the judge first ascertain if the intent was to comment
on the original, and only if the judge determines that
this was not the intent, to refrain from seeking to ascertain the intent of the original.
Instead of assessing meaning in all cases, the Second Circuit’s approach shifts when the court determines that there is a lack of commentary on the
original to one that focuses instead on the similarities
between the new and original works. 11 F.4th at 42-43.
The court, rather than assessing whether the new use
has a different purpose, message, or meaning than the
original, focuses on how much the new work resembles
the old. This conflates the analysis of the first factor,
which examines the purpose of the new use, with the
third factor, which is where the amount used is assessed. Compare 17 U.S.C. § 107(1) with 17 U.S.C.
§ 107(3).
The decision to assess the similarity between the
two works at a fine-grained level is in tension with the
court’s decision to refrain from assessing meaning because “judges are typically unsuited to make aesthetic
judgments.” 11 F.4th at 41. Instead of determining the
intent behind the creation of the new work, the court
placed itself in a position where it needed to first assess what the “essential elements” of the Goldsmith
photograph were, and then whether the Warhol silkscreen retained those elements. 11 F.4th at 43. Yet,
even then, the panel found itself making decisions
based on factors such as “the glint in Prince’s eyes
where the umbrellas in Goldsmith’s studio reflected off
27
his pupils.” 11 F.4th at 48. It is not clear how aesthetic
judgment is implicated less by these assessments than
by an assessment of the intended use of the new work.
Finally, the effect of these changes is unworkable.
Ultimately, these changes place users who need to determine if the use they plan to make of a new work is
a fair use in an unenviable position. If their new work
does not, in the judgment of the court, comment on the
original, they must successfully guess whether it is
more similar to the examples in the top row below,
which are not fair use in the view of the Second Circuit,
11 F.4th at 48, or the two in the bottom, which are fair
use in the view of both the Second and Seventh Circuits, id.; Kienitz v. Sconnie Nation, 766 F.3d 756, 759
(7th Cir. 2014).
28
The millions of creators of fanworks face, if they
incorrectly guess which of these examples is closer to
their new work, the potential strict liability for copyright infringement. If the source work they utilize
was timely registered, they may be subject to both statutory damages of up to $150,000 and awards of attorney’s fees, even if they make no profit from the
infringing work and the copyright owner sustains no
29
actual damages. 17 U.S.C. § 504. And, given the noncommercial nature of their work, they will likely have
to make their guess without the assistance of counsel.
The result? They will simply stop creating (or stop
sharing it). And, as TRMN can assure the Court, that
is not the result anyone wants—neither fans nor copyright holders.
---------------------------------♦---------------------------------
CONCLUSION
Amicus’s interests and experience are in the popular culture arena, not fine art. It takes no position on
whether one artist’s use of another artist’s photograph
as the basis for the creation of a new and distinct work
of art is fair use. In fact, it is not certain that correcting
the Second Circuit’s approach to the first fair use factor, reinforcing the importance of meaning to the analysis, and remanding the case for further proceedings
would necessarily result in a change to the outcome of
this case. It is possible, for example, that a shift in
meaning from “Prince, vulnerable” to “Prince, iconic” is
not enough of a change in meaning, particularly in
combination with the commercial purpose of the new
work, to permit the first factor to favor fair use. See,
e.g., Campbell, 510 U.S. at 579 (“the more transformative the new work, the less will be the significance of
other factors, like commercialism, that may weigh
against a finding of fair use”). It is also possible that,
even if the shift in meaning results in the first factor
favoring the Prince series, the potential effect on the
existing market for depictions of Prince might offset
30
that, and the total analysis might not favor fair use.
The first factor is, after all, not outcome-dispositive in
and of itself; all the factors should play a role in the
analysis.
But the test is wrong in a way that will sow chaos.
Thus, amicus merely urges this Court to answer the
question presented, “whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material,” Cert. Pet. at i, in the
affirmative. The meaning-centric approach to the first
fair use factor utilized by this Court in Campbell and
Google, and by the Circuit Courts of Appeals in many
other cases has allowed millions of works of fan fiction,
fan art, and memes to blossom. This result has served
valuable social functions, and it has served the constitutional purposes of incentivizing the creation of new
works. It should be preserved.
Considering the purpose, meaning, and message of
works is a critical part of determining whether a new
use of a copyright-protected work is intended to unfairly interfere with the limited grant of monopoly
privileges provided by copyright, see Sony Corp. of Am.
v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984),
or if it is the kind of transformative use that embodies
“the very creativity which that law is designed to foster.” Stewart v. Abend, 495 U.S. 207, 236 (1990). Identifying works that use the original as a vehicle for
communicating new meanings to others—a purpose of
many fan creations—is consistent with fair use’s role
as one of copyright’s First Amendment safeguards.
31
Amicus respectfully urges this Court to reverse
the decision below and remand for further proceedings
consistent with the longstanding recognition of the
importance of message and meaning in the fair use
analysis. By so doing, the Court will preserve the ability of millions to continue to create noncommercial
fanworks, the ability of millions more to use visual
popular culture references as a form of communication,
and the critical role of fair use as a First Amendment
safeguard.
Respectfully submitted,
MICHAEL D. DUNFORD
MATTHEW W. PARKER
THE ROYAL MANTICORAN
NAVY: THE OFFICIAL
HONOR HARRINGTON FAN
ASSOCIATION, INC.
6005 Main Campus Drive
Lexington, MA 02421
(610) 247-9647
J. REMY GREEN*
COHEN & GREEN P.L.L.C.
1639 Centre Street,
Suite 216
Ridgewood, NY 11385
Tel: (929) 888.9480
Fax: (929) 888.9457
remy@femmelaw.com
*Counsel of Record
Counsel for Amicus Curiae
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.