Amicus Curiae Brief — Andy Warhol Foundation for the Visual Arts, Inc., Petitioner v. Lynn Goldsmith, et al.

Supreme Court briefAug 15, 2022

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No. 21-869

In The

Supreme Court of the United States

_______________

ANDY WARHOL FOUNDATION FOR THE VISUAL

ARTS, INC.,

Petitioner,

LYNN GOLDSMITH, ET AL.,

_______________

Respondents.

On Writ of Certiorari to the

United States Court of Appeals for the First Circuit

_______________

BRIEF OF SCREEN ACTORS GUILD-AMERICAN

FEDERATION OF TELEVISION AND RADIO ARTISTS

AS AMICUS CURIAE IN SUPPORT OF

RESPONDENTS

_______________

JEFFREY P. BENNETT

DANIELLE S. VAN LIER

Counsel of Record

EDRIK MEHRABI

SAG-AFTRA

5757 Wilshire Blvd.7th Fl.

Los Angeles, CA 90036

Tel.: (323) 549-6627

amicus@sagaftra.org

August 15, 2022

TABLE OF CONTENTS

TABLE OF AUTHORITIES ...................................... iii

INTEREST OF THE AMICUS CURIAE .................... 1

SUMMARY OF ARGUMENT ..................................... 3

ARGUMENT................................................................ 4

Petitioner’s “Meaning-Or-Message” Test Has No

Substantive Support in The Law or the

Legislative History of Section 107 ........................ 4

The Legislative History of Fair Use

Confirms that Congress Intended It to

Remain a Case-by-Case Analysis

Consistent with Section 107’s Preamble ... 5

Campbell Does Not Mandate a “Meaningor-Message” Test ........................................ 9

1. The Genesis of the Campbell

Transformative Use Test Does Not

Support Petitioner’s Formulation ..... 10

2. Campbell Involved a Parody and Does

Not Have the Breadth Petitioner

Ascribes to It. ..................................... 12

Google Was a Complex and Unique Case

That Does Not Support Petitioner’s

Proposed Test ........................................... 14

II. The Test Formulated by this Court in Campbell

Has Been Imported into Right of Publicity

Jurisprudence to Balance an Individual’s

Intellectual Property Rights with the First

Amendment ......................................................... 17

The Right of Publicity Is a Century Old

Property Right in One’s Persona ............. 18

The Supreme Court Recognized a Property

Right in One’s Persona Nearly Half a

Century Ago .............................................. 19

The California Supreme Court Borrowed

from Campbell to Create a

“Transformative Use” Test to Balance

Competing Interests in Right-of-Publicity

Cases. ........................................................ 21

CONCLUSION .......................................................... 24

TABLE OF AUTHORITIES

Cases

Allison v. Vintage Sports Plaques, 136 F.3d

1443 (11th Cir. 1998) ........................................... 20

Andy Warhol Found. for the Visual Arts, Inc. v.

Goldsmith, 11 F.4th 26, 51 (U.S. 2d Cir.

2021) ..................................................................... 10

Campbell v. Acuff-Rose Music, Inc., 510 U.S.

569 (1994) ..................................................... passim

Cardtoons, L.C. v. Major League Baseball

Players Ass'n, 95 F.3d 959 (10th Cir. 1996) ........ 20

Comedy III Productions, Inc. v. Gary Saderup,

Inc., 25 Cal. 4th 387 (2001) .......................... passim

Corlis v. E. W. Walker Co, 64 F. 280 (1894) ............. 18

ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915 (6th

Cir. 2003) ........................................................ 20, 24

Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183

(2021) .......................................................... 4, 14, 15

Haelan Laboratories, Inc. v. Topps Chewing

Gum, 202 F.2d 866 (2nd Cir. 1953) ..................... 18

Hart v. Elec. Arts, Inc., 717 F. 3d 141 (3rd Cir

2013) ..................................................................... 17

Hill v. Whalen & Martell, Inc., 220 F. 359

(S.D.N.Y 1914)........................................................8

Hilton v. Hallmark Cards, 580 F.3d 874, 889

fn.12, (9th Cir. 2009), amended, 599 F.3d

894 (9th Cir. 2010) ................................................ 20

Keller v. Electronic Arts Inc., 724 F.3d 1268

(9th Cir. 2013) ...................................................... 24

Kienitz v. Sconnie Nation LLC, 766 F.3d 756

(7th Cir. 2014) ...................................................... 16

iii

Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985) .......5

Roberson v Rochester Folding Box Co, 64 N.E.

442, 450 (N.Y. 1902) ............................................. 19

Winter v. DC Comics, 30 Cal. 4th 881 ( 2003).... 22, 23

Zacchini v. Scripps-Howard Broadcasting Co.,

433 U.S. 562 (1977) .................................. 17, 19, 20

Statutes

17. U.S.C. § 107 ....................................................... 5, 8

Other Authorities

Alan Latman, Fair Use of Copyright Works,

(1958), reprinted as Study No. 14 in

prepared for the Senate Committee on the

Judiciary, 86th Cong., 2d Sess. (1960) .......... 6, 7, 8

H.R. Rep. No. 94-1476 (1976) ........................ 6, 7, 9, 10

Laura G. Lape, Transforming Fair Use: The

Productive Use Factor in Fair Use Doctrine,

58 Alb. L. Rev. 677 (1995) .................................. 7, 8

Mark Bartholomew and John Tehranian, An

Intersystemic View of Intellectual Property

and Free Speech, 81 Geo. Wash. L. Rev. 1

(2013) ........................................................ 12, 13, 23

Matthew D. Bunker and Emily Erickson,

Transformative Variations: The Uses and

Abuses of The Transformative Use Doctrine

in Right of Publicity Law, 14 Wash. J.L.

Tech. & Arts 138 (2019) ................................. 16, 17

Neil Weinstock Netanel, Making Sense of Fair

Use, 15 Lewis & Clark L. Rev. 715, 746

(2011) .............................................................. 15, 16

Pierre N. Leval, Toward a Fair Use

Standard,103 Harv. L. Rev. 1105 (1990). 10, 11, 12

Report of the Register of Copyrights on the

General Revision of the Copyright Law, 87th

Cong., 1st Sess. 1 (Comm. Print 1961) .......... 6, 7, 8

Treatises

J. Thomas McCarthy, The Rights of Publicity &

Privacy, § 1:3 (2015) ............................................. 17

INTEREST OF THE AMICUS CURIAE1

Amicus

Screen

Actors

Guild-American

Federation of Television and Radio Artists (“SAGAFTRA”) is the nation’s largest labor union

representing working media artists. SAG-AFTRA

represents more than 160,000 actors, announcers,

broadcasters, journalists, dancers, DJs, news writers,

news editors, program hosts, puppeteers, recording

artists, singers, stunt performers, voiceover artists

and other media professionals. SAG-AFTRA exists to

secure strong protections for media artists.

The professionals represented by SAG-AFTRA

are the faces and voices that entertain and inform

America and the world. As the union that represents,

among others, actors, radio artists, musical artists

and other entertainment professionals, SAG-AFTRA

has long fought for strong intellectual property rights,

ranging from strong copyright to robust rights of

publicity, including through legislative efforts and

amicus briefs in other cases. SAG-AFTRA’s interest,

and that of its members, lies at the very intersection

of these two areas that are complementary in this

case.

The artists SAG-AFTRA represents will be

affected by the outcome of this case. They invest their

Pursuant to Rule 37.6, Amicus state that no counsel for a

party authored this brief in whole or in part. No counsel or party

made a monetary contribution to fund this brief’s preparation or

submission and no person other than amicus curiae made a

monetary contribution to it. The parties have provided written

consent to the filing of amicus briefs, including this amicus brief.

entire lives in building their professional careers.

While most may never be “famous,” their names,

voices, images or likenesses – their very persona –

have or will attain commercial value. These

individuals and their beneficiaries rely on laws, such

as right-of-publicity laws, to protect and prevent

misappropriation of one of their greatest assets.

Misuse of these assets can detrimentally impact a

public figure’s career and reputation and,

consequently, the economic value in their persona.

Their interest in this case arises primarily from

the impact the outcome here eventually will have in

how rights of publicity cases are decided. For over two

decades, courts around the country have relied on a

“transformative use” test derived from this Court’s

fair use jurisprudence to balance a plaintiff’s

intellectual property rights in their persona against a

defendant’s free expression right. Given the test’s

origins, courts are likely to look to the outcome of this

case in applying the transformative use test in future

rights of publicity cases. In that regard, SAG-AFTRA’s

members, and countless other professionals who rely

upon the right of publicity to protect their personas

from unauthorized exploitation, potentially will be

affected by the outcome of this case.

Accordingly, Amicus SAG-AFTRA has an

interest in this litigation.

SUMMARY OF ARGUMENT

Transformative works, generally, are an

important form of expression; they must be created

consistent with the four-factor fair use test in Section

107 lest they supplant the original creator’s rights.

However, Petitioner proposes a “meaning-or-message”

test it distills from the Court’s holding in Campbell v.

Acuff-Rose Music, Inc., 510 U.S. 569 (1994) that lacks

substantive support in either the text or legislative

history of 17 U.S.C. § 107 (“Section 107”), or the

common law from which it was derived.

Respondents, and neutral amici such as the

and the Authors Guild, have cogently explained the

potential implications of Petitioner’s proposed test,

particularly on the statutory derivative works right.

They further explore why the test would be

unworkable. Additionally, Respondents have provided

a brief history of the applicable common law. SAGAFTRA, therefore, will not unnecessarily repeat this

content and will focus primarily on the legislative

history of Section 107 and the studies and reports

included therein.

It is clear from both the plain language and the

legislative history that Congress intended a relatively

narrow, but evolving, test that would be analyzed on

a case-by-case basis, with no single factor being

determinative. A review of the theory incorporated

into Campbell and the plain language of Google

further supports this assessment. Critically, nothing

in the history of Section 107 supports Petitioner’s

“meaning-or-message” test.

Petitioner’s

formulation

particularly

concerning in light of the role “transformative use”

has played in right of publicity jurisprudence. This

important state law property right in one’s persona

has been recognized for well over a century. At times,

however, it conflicts with the rights of creators,

including photographers and appropriation artists.

Acknowledging the similarities in the goals of

decades earlier, the California Supreme Court

borrowed from Campbell to balance this inherent

economic and property right in one’s persona with the

speech rights of creators. See Comedy III Productions,

Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001). In

the two decades since the transformative use test was

first

incorporated

into

right-of-publicity

jurisprudence, it has been adopted by courts across

the country. For these reasons, the outcome of this

case has potential for broader impact, potentially

harming this important state law right.

Amicus therefore urges this Court to affirm the

lower court’s opinion.

ARGUMENT

Petitioner’s “Meaning-Or-Message” Test Has No

Substantive Support in The Law or the

Legislative History of Section 107

Petitioner argues that this Court’s holdings in

Campbell and Google LLC v. Oracle Am., Inc., 141 S.

Ct. 1183 (2021), require application of a “meaning-ormessage” test under the first fair use factor. Its

formulation of this test would render the other fair use

factors all but meaningless when a work is

transformative. Petitioner traces the English law of

the 18th and early 19th centuries to explain why this

test, judicially created in 1994, is faithful to the text

of a 1976 U.S. law that requires courts to review “the

purpose and character of the use, including whether

such use is of a commercial nature or is for nonprofit

educational purposes,” without reference to “meaning

or message.” 17. U.S.C. § 107.

Campbell did not establish such a specific test,

nor did Google. Moreover, the legislative history of the

In particular, in the mid-1950s, leading up to passage

of the 1976 Act, the Copyright Office commissioned a

series of thirty-four (34) studies relating to copyright

law. Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985).

These studies became part of the legislative history,

together with reports issued by the Copyright Office

and the House and Senate Judiciary Committees. Id.

A. The Legislative History of Fair Use Confirms

that Congress Intended It to Remain a Caseby-Case Analysis Consistent with Section

107’s Preamble

author “the exclusive right to make any new version”

of a work, granting the author exclusive rights

“sufficiently broad to include a change in the medium

of expression of copyrighted material.” Alan Latman,

Fair Use of Copyright Works, (1958), reprinted as

Study No. 14 in Copyright Law Revision Studies Nos.

14-16, prepared for the Senate Committee on the

Judiciary, 86th Cong., 2d Sess. (“Latman, Fair Use”),

at 8 (1960). It “is well within the bounds of

reasonableness for the copyright owner to consider

important a use which competes with his own work,”

as it undermines copyright’s “quasi-monopolistic

protection.” Id. at 15. Nonetheless, the concept of “fair

use” was recognized in the common law long before its

codification in the Copyright Act of 1976.

The Copyright Office’s study on fair use,

completed in 1958, noted that there had never been a

statutory fair use provision under U.S. law. Latman,

Fair Use at 5. Quite the contrary, the “language of the

statute, has always been positive in granting

exclusive rights, apparently admitting of no

exceptions,” leaving courts to grapple with the issue

without statutory language as its guide. Id. The courts

developed the “fair use” doctrine over many decades,

establishing an implied exception. Report of the

Report”), 1, at p. 24 (Comm. Print 1961). Therefore, in

crafting 17 U.S.C. § 107, “Congress meant § 107 ‘to

restate the present judicial doctrine of fair use, not to

change, narrow, or enlarge it in any way’ and intended

that courts continue the common-law tradition of fair

use adjudication.” H.R. Rep. No. 94-1476 (“House

Report”), at 66 (1976).

The Register noted that “fair use” is difficult to

define. 1961 Report at 24. In general terms, it means

that “a reasonable portion of a copyrighted work may

be reproduced without permission when necessary for

a legitimate purpose which is not competitive with the

recently, the fourth factor — focusing on the impact

on the market—was not as quickly dismissed as

Petitioner argues it should be. Quite the opposite, as

the 1961 Report notes that “the competitive character

of the use…is often the most decisive.” Id. at 25.

Latman explored prior case law, examining

situations in which the courts previously had found

fair use. Notably, uses such as Petitioner’s do not

appear within the study. The uses examined include:

incidental use, such as excerpts of song lyrics used

within a literary work or material incidentally

appearing in a newscast; excerpts used in review and

criticism; parody and burlesque, which necessarily

include an element of criticism and/or humor;

scholarly works and compilations; personal or private

use; news; use in litigation; and nonprofit or

governmental purposes. Latman, Fair Use at 8-13.

These categories of use are consistent with the list of

illustrative uses in the 1961 Report which the House

Judiciary Committee described as a non-exhaustive

list of the “sort of activities the courts might regard as

fair use under the circumstances.” House Report at 65.

Like Latman’s study, neither of these reports mention

the type of art at issue here.

Of note, many early fair use cases dealt with

fact-based or textual works and, prior to the mid1960s, most dealt with questions more akin to

infringing versus non-infringing uses, rather than

productive or transformative use. See generally,

Laura G. Lape, Transforming Fair Use: The

Productive Use Factor in Fair Use Doctrine, 58 Alb. L.

Rev. 677 (1995) (examining the history of fair use

relating to a “productive use” test). In fact, many of

these cases dealt with taking “themes” or “ideas” or

insubstantial copying. Id. at 689. At that time, the

focus tended to be on “whether the use would

substitute for the original.” Id. at 690. Moving into the

1960s, courts often looked to the public interest,

particularly in the dissemination of information. Id. at

695-96.

Latman pointed to the “Mutt and Jeff” case,

noting that “the copyright owner is protected not only

against uses having an unfavorable competitive effect,

but also a use with a competitive purpose or

potential.” Latman, Fair Use at 15. The case, Hill v.

Whalen & Martell, Inc., 220 F. 359 (S.D.N.Y 1914),

involved a dramatic production in which two

characters were almost identically named to the

famous cartoon characters whose dialogue included

direct quotations and catchphrases. The court found it

“to be ordinarily decisive… whether or not so much as

has been reproduced as will materially reduce the

demand for the original,” which would necessarily

harm the copyright owner. Id., 220 F. at 360. The

approach urged by Petitioner would ignore this

concept, embodied in the statute, to assess the impact

its works had and would have on the market for —and

value of — Goldsmith’s photographs.

The 1961 Report distilled four factors courts

generally used to determine fair use. 1961 Report at

24. These four factors were later incorporated into

Section 107, almost verbatim. See 17 U.S.C. § 107.

One notable alteration between the earlier reports

and the final language of Section 107 was the

inclusion of the commercial or non-profit character of

an activity, which the Committee indicated “should be

weighed along with other factors in fair use decisions.”

House Report at 66. As with the market harm factor,

Petitioner’s approach would ignore this express

statutory command.

B. Campbell Does Not Mandate a “Meaning-orMessage” Test

Petitioner looks to Campbell, arguing that its

purported

“meaning-or-message”

test

determinative in transformative use cases. Brief for

Petitioner (“Pet. Br.”) at 35, Andy Warhol Foundation

for the Visual Arts, Inc. v. Lynn Goldsmith, et al., No.

21-869. This test, according to Petitioner, turns on

whether the allegedly infringing work “‘c[ould]

reasonably be perceived’ to convey a meaning or

message distinct from the… original.” Id. Specifically,

Petitioner describes the test thusly: a “follow-on work

is transformative—and has a different ‘purpose and

character’ under Section 107(1)—when it can

‘reasonably be perceived’ to ‘add[] something new,’ by

‘altering the first with new expression, meaning, or

message.’” Id. at 36 (cleaned up).

While that test, in the broader context of the

four fair use factors, seems laudable, it is Petitioner’s

next statement that underlies its true intent.

Petitioner states that the test “trains the inquiry on

what a… work means, not on how much of the original

material is discernible.” Id. at 37. Petitioner’s brief,

and the test it proposes, ignores the fact that the

Second Circuit’s opinion rested on a weighing of all

four fair use factors as Campbell commands.

Campbell, 510 U.S. at 578 (requiring that all four

factors “be explored, and the results weighed together,

in light of the purposes of copyright”). The Second

Circuit did this and reached the conclusion that all

four factors favored Goldsmith. Andy Warhol Found.

for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 51

(U.S. 2d Cir. 2021).

The

Genesis

the

Campbell

Transformative Use Test Does Not

Support Petitioner’s Formulation

The

Campbell

Court

established

its

transformative use test with reference to prior judicial

decisions and the copyright reform studies discussed

above. It noted the admonition in the House Report

that Section 107 did not “change, narrow, or enlarge”

fair use, that the analysis must not “be simplified with

bright-line rules” because the statute requires it be

done case-by-case.” Campbell, 510 U.S. at 577. In

doing so, the courts “may be guided by the examples

given in the preamble to § 107, looking to whether the

use is for criticism, or comment, or news reporting.

Campbell, 510 U.S. at 578.

The test formulated in Campbell derives

largely from a Harvard Law Review commentary by

Judge Leval, who proposed transformativeness as a

way to assess the first factor of the fair use inquiry.

Pierre N. Leval, Toward a Fair Use Standard,103

Harv. L. Rev. 1105 (1990). Judge Leval posited that

the underlying work must be used “in a different

manner or for a different purpose from the original”

and must not “‘supersede the objects’ of the original.”

Id. at 1111. According to Leval, the inquiry should

include whether “the secondary use adds value to the

original -- if the quoted matter is used as raw

material.” Id.

Notably, in discussing the boundaries of

transformative use, Judge Leval cautioned:

“The existence of any identifiable

transformative objective does not,

however, guarantee success in

claiming fair use… The creator of a

derivative

work

based

[another’s] may claim absolute

entitlement

because

the

transformation.

Nonetheless,

extensive takings may impinge on

creative incentives. And the

secondary user's claim under the

first factor is weakened to the

extent that her takings exceed the

asserted justification.” Id at 111112.

In fact, Judge Leval rejected a test as

conclusory as the one Petitioner advocates. He

eschewed a test based solely on “the overall character

of the challenged work,” as it “tells little about

whether” the individual components “have a fair use

purpose or merely supersede.” Id. at 1112. The first

factor, according to Judge Leval, requires “careful

evaluation whether” each component used “is of the

transformative type that advances knowledge and the

progress of the arts or whether it merely repackages,

free riding on another's creations.” Id. at 1116.

Further, the “transformative justification must

overcome factors favoring the copyright owner.” Id. at

1111. If the use is excessive and other factors favor

the copyright owner, the use is not fair. Id. at 1112.

Such is the case here, as the Second Circuit

determined.

Campbell Involved a Parody and Does

Not Have the

Ascribes to It.

Breadth

Petitioner

The Campbell transformative use formulation

arose out of a parodic song that “substitute[ed]

predictable lyrics with shocking ones to show how

bland and banal the [original] song is.” Campbell, 510

U.S. at 573. While it has since been applied to other

contexts, including by this Court, that history

provides important context to the right.

As noted by at least some commentators, the

test’s

“radical

potential

has been greatly

exaggerated,” particularly in its emphasis on

necessity. Mark Bartholomew and John Tehranian,

An Intersystemic View of Intellectual Property and

Free Speech, 81 Geo. Wash. L. Rev. 1, 14 (2013). The

authors note that the Campbell Court took time to

point out, in dicta, the distinctions between parody

and satire—where the former borrows from the work

to comment on it, the latter is commenting more

broadly. Id. at 15-16 (citing Campbell, 510 U.S. at 58081). As they note, the Campbell Court actually went

much farther, in its comparison between parody and

satire. Id. Specifically, the Campbell Court stated that

when “the commentary has no critical bearing on the

substance or style of the original” and it is used “to get

attention or to avoid the drudgery in working up

something fresh, the claim to fairness in borrowing

from another’s work diminishes accordingly (if it does

not vanish).”

By its own admission, this description of satire

fits how Petitioner described Warhol’s works.

“Warhol’s works reflect distinctive changes that

communicate a comment on the dehumanizing nature

of celebrity” and Warhol “sought to use the …

depiction of Prince’s disembodied head to

communicate a message about the impact of celebrity

and . . . the contemporary conditions of life.” Pet. Br.

at 20. Put simply, Warhol was commenting on the

nature of celebrity, perhaps on Prince, which is

satirical; he was not commenting on Goldsmith’s

photograph of Prince as would be required for it to

qualify as parody.

Bartholomew and Tehranian posit that the

parody-satire discussion in Campbell indicates the

Court’s intent was that merely adding something to

“the world of expression” would be insufficient for a

finding of fair use. Bartholomew and Tehranian, 81

Geo. Wash. L. Rev. at 15. Instead, the underlying

“work must be necessary to the defendant’s expressive

point.” Id. This interpretation of the Campbell Court’s

reasoning contrasts with Petitioner’s proposed

meaning-or-message test.

In a footnote, the Campbell Court reemphasizes

the underlying parodic nature of the work and further

reinforces the importance of balancing the factors,

particularly the first and the fourth. The court states

that if a parody’s “wide dissemination” risks becoming

a substitute for the original or licensed derivatives…

it is more incumbent on one claiming fair use to

establish the extent of transformation and the

parody’s critical relationship to the original.”

Campbell, 510 U.S. at 580, fn 14 (emphasis added). It

goes on to add that “when there is little or no risk of

market substitution… taking parodic aim at an

original is a less critical factor in the analysis”

allowing that “looser forms of parody” and satire

require less justification for borrowing from the

original than typically required. Id.

Taking the Petitioner’s explanation of

Warhol’s intent at face value, the unlicensed use of

the specific underlying work was not necessary to the

expressive point he was trying to make with his art.

Further, Warhol’s work did serve as a potential

market substitute, as evidenced by the very facts

underlying this case.

C. Google Was a Complex and Unique Case

That Does Not Support Petitioner’s Proposed

Test

Google involved application of the fair use

doctrine to computer code which, as this Court noted,

serves a functional rather than purely expressive role.

Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1198

(2021). The code at issue in the case was “declaring

code” that performed a functional role, as “part of an

interface between human beings and a machine.” Id.

at 1192. Unlike the photograph underlying the

artwork at issue here, the code “if copyrightable at all”

was “further than are most computer programs…

from the core of copyright,” raising questions as to its

relevance to this case. Id. at 1202. Nonetheless, as

Petitioner relies on it, it is worth addressing why that

reliance is wrongly placed.

Petitioner draws attention to the Google

Court’s passing reference of an “artistic painting” that

“precisely replicates a copyrighted advertising logo to

make a comment about consumerism” in a series of

examples. Pet. Br. 35-36 (cleaned up). Petitioner’s

inclusion of this example —an attempt to distract the

Court with a likely reference to a Warhol work—

ignores its origin. The Court drew this example from

a treatise that, in turn, drew it from a law review

article. Google, 141 S. Ct. at 1203. In that article, the

author discussed two possible, and conflicting,

interpretations of the transformative use test

formulated in Campbell. Neil Weinstock Netanel,

Making Sense of Fair Use, 15 Lewis & Clark L. Rev.

715, 746 (2011). Netanel laments that, far from the

strict “meaning-or-message” test proposed by

Petitioner, the “Campbell definition leaves unclear

whether either, both, or some combination of

transforming content and transforming message are

required to constitute a transformative use.” Id.

It is worth noting that the dissent in Google

described the “purpose and character of the use” as

only the “second-most” important factor for purposes

of the fair use inquiry, the first being the harm to the

value or potential market. Google, 141 S. Ct. at 121618 (Thomas, J. dissenting). As Justice Thomas notes:

“[t]o be transformative, a work must do something

fundamentally different from the original. A work

that simply serves the same purpose in a new

context…is derivative, not transformative.” Id. at

1219. Such is the case here.

Petitioner argues for a transformative use test

that would eviscerate the other factors as well as the

derivative works right under 17 U.S.C. §106(2), at a

time when the pendulum has begun swinging back

toward a more reasoned analytical process. See, e.g.,

Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir.

2014) (expressing concern that the transformative use

test as enumerated by the Second Circuit in Cariou v.

Prince, 714 F.3d 694 (2d Cir. 2013) both ignores the

other factors and risks the derivative work right).

Other amici have provided more detailed analysis on

this point that need not be repeated.

In the nearly three decades since its

formulation, the Campbell transformative use test

has been applied in varying ways among the lower

federal courts. Matthew D. Bunker and Emily

Erickson, Transformative Variations: The Uses and

Abuses of The Transformative Use Doctrine in Right

of Publicity Law, 14 Wash. J.L. Tech. & Arts 138, 143

(2019). This has created an assortment of differing

conceptions of transformative use, some of which

contradicted each other. While transformative works,

generally, are an important form of expression that

further the goals of copyright, they must be created

consistent with the four-factor fair use test in Section

107 which balance the value they add with the rights

of the original work’s creator.

As courts wrestled with how to apply the

transformative use test in the context of copyright,

others began importing variations of the test into

other areas of law, including right of publicity. Id. at

144. It is this nexus that is of particular concern to

SAG-AFTRA. While the transformative use test has

itself been transformed to fit the right of publicity

context, the outcome of this case has the potential to

impact how courts interpret it in cases involving state

rights of publicity.

II.

The Test Formulated by this Court in Campbell

Has Been Imported into Right of Publicity

Jurisprudence to Balance an Individual’s

Intellectual Property Rights with the First

Amendment

The right of publicity is the inherent right of

every human being to control the commercial use of

his or her identity. J. Thomas McCarthy, The Rights

of Publicity & Privacy, § 1:3 (2015). It “recognizes legal

injury because…unpermitted use causes loss of the

financial rewards flowing from the economic value of

a human identity.” Id. at § 2:2 (2d ed. 2021). Although

derived originally from privacy laws, the right of

publicity is now clearly recognized as a property right.

See, e.g., Hart v. Elec. Arts, Inc., 717 F. 3d 141 (3rd

Cir 2013) (holding that a goal of the right of publicity

is to protect the property interest in an individual’s

identity). Many courts, including this Court, have

analogized it to other intellectual property rights,

including copyright and patent. See, e.g., Zacchini v.

Scripps-Howard Broadcasting Co., 433 U.S. 562

(1977).

Two decades ago, the California Supreme Court

was faced with the need to balance the intellectual

property right in one’s persona with the free

expression rights of content creators. Comedy III

Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th

387 (2001). Recognizing the similar goals between

fruits of intellectual and artistic labor, the court

looked to Section 107. Id. at 404. The Comedy III

transformative use test has since been adopted by

courts across the country.

A. The Right of Publicity Is a Century Old

Property Right in One’s Persona

In 1953, the Second Circuit first coined the

term, “right of publicity.” Haelan Laboratories, Inc. v.

Topps Chewing Gum, 202 F.2d 866, 868 (2nd Cir.

1953). While many trace the right’s origin to Haelan,

there is over a century of precedent recognizing it,

often framed as an intellectual property right

comparable to copyright. At least as early as 1894, a

Massachusetts federal court declared “that a private

individual has a right to be protected in the

representation of his portrait in any form; that this is

a property as well as a personal right.” Corlis v. E. W.

Walker Co, 64 F. 280 (1894) (holding that the

protection exists but finding no violation in the

publication of a photograph in connection with a

biography). The Corlis court analogized it to

rights which forbids the reproduction of a private

manuscript or painting.” Id.

In a 1902 dissenting opinion, a New York court

described the right in intellectual property terms,

articulating that the “plaintiff has the same property

in the right to be protected against the use of her face

for defendants’ commercial purposes as she would

have if they were publishing her literary

compositions.” Roberson v Rochester Folding Box Co,

64 N.E. 442, 450 (N.Y. 1902) (Gray, J. dissenting).2

B. The Supreme Court Recognized a Property

Right in One’s Persona Nearly Half a

Century Ago

The Supreme Court confirmed the right of

publicity as an individual’s proprietary right in his

persona nearly a half century ago. In Zacchini v.

Scripps-Howard Broadcasting Co., 433 U.S. 562

(1977), the Court expressed that the right of publicity

“protect[s] the proprietary interest of the individual”

and is “closely analogous to the goals of patent and

to reap the reward of his endeavors and having little

to do with protecting feelings or reputation.” Zacchini,

433 U.S. at 573. The rationale given by the Court for

protecting the right of publicity “is the

straightforward one of preventing unjust enrichment

by the theft of goodwill” as no “social purpose is served

by having a defendant get free some aspect of the

plaintiff that would have market value for which he

In Roberson, which pre-dated the passage of New York’s

right of privacy statute, the Appellate Division of the Supreme

Court of New York determined that the use of a woman’s picture

on ads for flour manufactured and sold by the defendant was not

a cognizable claim under the common law. Roberson, 64 N.E.

442, 447. However, as noted in Canessa, “[t]he dissenting

opinion by Judge Gray… has received almost universal support”

in its acknowledgement that “in the concept of ‘right of privacy’

there is implicit the right of property, at least in the instance of

an appropriation by a defendant of another’s likeness.” Canessa

v. J. I. Kislak, Inc., 235 A.2d 62, 68-69 (1967).

would normally pay.” Id. at 576 (quoting Kalven,

Privacy in Tort Law – Were Warren and Brandeis

Wrong?, 31 Law & Contemp. Prob. 326, 331 (1966)).

Following Zacchini, courts have continued to

identify rights of publicity as a form of individual

proprietary rights. The Ninth Circuit noted that

“[t]he cousinage between copyright liability and the

right to publicity has long been recognized.” Hilton v.

Hallmark Cards, 580 F.3d 874, 889 fn.12, (9th Cir.

2009), amended, 599 F.3d 894 (9th Cir. 2010). The

Tenth Circuit has noted that the right of publicity is

an “intellectual property right” and that, “[l]ike

trademark and copyright, the right of publicity

involves a cognizable property interest.” Cardtoons,

L.C. v. Major League Baseball Players Ass’n, 95 F.3d

959, 967 (10th Cir. 1996) (holding that where trading

cards parodied baseball players, balance between the

right of publicity and First Amendment tipped in

favor of the card manufacturers). Additionally, in

Allison v. Vintage Sports Plaques, 136 F.3d 1443 (11th

Cir. 1998), the Eleventh Circuit recognized the

intellectual property nature of the right of publicity in

applying the “’first-sale doctrine,’ a well-established

limitation on intellectual property rights,” to a rightof-publicity claim. In ETW Corp. v. Jireh Pub., Inc.,

332 F.3d 915, 928 (6th Cir. 2003), the Sixth Circuit

held that “[t]he right of publicity is an intellectual

property right of recent origin which has been defined

as the inherent right of every human being to control

the commercial use of his or her identity.”

A century of precedent makes clear that

Zacchini is not an anomaly. As illustrated supra,

federal and state courts around the country had

previously used similar analogies in equating the

right of publicity to copyright law. And in the years

since, it has become widely accepted that the right of

publicity is an intellectual property right.

C. The California Supreme Court Borrowed

from Campbell to Create a “Transformative

Use” Test to Balance Competing Interests in

Right-of-Publicity Cases.

In a case involving artistic sketches, the

California Supreme Court found itself faced with how

to balance the individual property rights in one’s

persona under state law, with the expressive rights

afforded under the First Amendment. Comedy III

Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th

387 (2001). Faced with the need to develop a workable

test, the court noted that commentators had proposed

importing copyright’s fair use test, although the

concept was not without its critics. Id. at 403-04. The

court acknowledged that “a wholesale importation of

the fair use doctrine” would not work in the right of

publicity context, in part because at least two factors

lacked direct relevance.3 Id.

Ultimately, the court concluded that the first

fair use factor “the purpose and character of the use

… seem[ed] particularly pertinent to the task of

reconciling the rights of free expression and publicity.”

In particular, the court noted that “the nature of the

copyrighted work” and “the amount and substantiality of the

portion used” seemed tailored to works of authorship and would

not aid in evaluating uses of an individual’s likeness. Comedy III,

25 Cal. 4th at 404.

Id. at 404 (citing 17 U.S.C. §107(1)). In formulating

and applying this test, the court’s aim was not to arm

“the right of publicity holder [with] a right of

censorship, but a right to prevent others from

misappropriating the economic value generated by the

celebrity’s fame…” Id. at 403. This concept is not farremoved from the goals of Section 107 in balancing the

conflicting goals of encouraging new works while

“protecting the creative fruits of intellectual and

artistic labor.” Id. at 405.

Relying heavily on Campbell, the Comedy III

Court thereby formulated a test that balances the

equities between the artist and the individual

depicted, granting the artist protection when the art

does conflict with the economic value in the

individual’s persona. Id. at 391 (“We formulate

instead what is essentially a balancing test between

the First Amendment and the right of publicity…”).

The court recognized that “when a work contains

significant transformative elements… it is also less

likely to interfere with the economic interest protected

by the right of publicity.” Id. at 405.

Two years after creating it, the California

Supreme Court revisited the transformative use test.

Winter v. DC Comics, 30 Cal. 4th 881, 888 (2003). In

doing so, it reiterated that it intended the test to grant

First Amendment protection to “alternative versions

of celebrity images that are iconoclastic, irreverent, or

otherwise attempt to redefine the [person’s] meaning,”

not literal depictions of the type for which the

individual would normally be compensated. Id. (citing

Comedy III, 25 Cal. 4th at 405).

The Winter court underscored that the

rationale for the test – that “[t]he right of publicity

derived from public prominence does not confer a

shield to ward off caricature, parody and satire.

Rather, prominence invites creative comment.” Id. at

887 (citing Comedy III, 25 Cal. 4th at 397) (emphasis

added). In this context, the right-of-publicity

transformative use test already goes farther than that

applied in copyright, often providing a complete or

near complete defense to infringement without the

need to balance other impacts. See generally,

Bartholomew and Tehranian, 81 Geo. Wash. L. Rev. 1

(comparing the doctrinal evolutions of how copyright,

rights of publicity and trademark balance the

property rights and the First Amendment).

Of relevance to this case, and indicative of the

difference in how the transformative use test has been

applied in cases involving the right of publicity, the

court referenced Warhol’s celebrity silkscreens, such

as the ones at issue here. Comedy III, 25 Cal. 4th at

406-09. The court made clear that while the creation

of “literal, conventional depictions of The Three

Stooges,” created for commercial sale must give way

to the right of publicity, works such as Warhol’s

silkscreens might be protected “[a]lthough the

distinction between protected and unprotected

expression will sometimes be subtle.” Id. at 408-409.

The Comedy III court acknowledged that

Warhol’s works were “a form of ironic social comment

on the dehumanization of celebrity itself.” Id. In other

words, the commentary is on issues other than the

work, or even the individual depicted. While this

might be an adequate justification when faced with

assessing the use of a celebrity’s persona, the same

does not hold true in the context of copyright.

In the two decades since its creation, the

transformative use test has been applied by state and

federal courts around the country. The most notable

examples have been in cases involving video games,

particularly in the Ninth and Third Circuit. See, e.g.,

Hart,

717

F.3d

141(adopting

California’s

transformative use test and finding that the games

realistic depiction of the athletes in realistic settings

did not satisfy it); Keller v. Electronic Arts Inc., 724

F.3d 1268 (9th Cir. 2013) (holding that a video game

that “realistically portrays college football players in

the context of college football games” was not

transformative as a matter of law). In a case involving

artwork depicting golfer Tiger Woods, the Sixth

Circuit, too, adopted the test. ETW Corp. v. Jireh

Publ., Inc., 332 F.3d 915 (6th Cir 2003) (holding that

the artwork at issue was more than a “literal

depiction” of Woods and “less likely to interfere with

the economic interest protected by Woods’ right of

publicity).

These cases illustrate the importance of the

transformative use test in the context of rights of

publicity. They also illustrate the broader potential

impact this case can have, even outside the context of

CONCLUSION

As illustrated herein, Petitioner’s distillation of

the transformative use test into a “meaning-ormessage’ test is not supported by the plain language

or legislative history of Section 107. While those

certainly may be factors to consider in assessing the

nature and purpose of the purpose and character of a

defendant’s use, they are not the sole factors, nor

should they be determinative.

Critically, what this Court holds in connection

with transformative uses in copyright has potential to

impact state-law rights of publicity. The right of

publicity is an important individual property right

and amicus respectfully urges caution in ensuring the

outcome here does not upend it.

For the foregoing reasons, amicus respectfully

urges the Court to AFFIRM the lower court’s holding.

Respectfully submitted,

JEFFREY P. BENNETT

DANIELLE S. VAN LIER

Counsel of Record

EDRIK MEHRABI

SAG-AFTRA

5757 Wilshire Blvd.7th

Fl.

Los Angeles, CA 90036

Tel.: (323) 549-6627

amicus@sagaftra.org

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.