Introduction
A “permissions culture” has pervaded art museum practice.1 Rather than seeking to make fair use of works in appropriate circumstances, museums have defaulted to obtaining reproduction permission, even when it may not be legally necessary.2 Fair use allows for the reasonable reproduction of copyrighted works without the permission of the copyright holder.3 Museums have generally avoided fair use for several reasons. The permission-seeking default is self-reinforcing: obtaining permission from artists preserves relationships between museums and artists.4 Museums are averse to the risk of litigation because of the unpredictability of fair use, and fair use guidance can change quickly in the digital context.5 In the current digital age, as museums have increased their online activities to share information with the public, the permissions culture has impacted the industry’s ability to engage in online projects due to issues such as the time and money expended obtaining permission.6 In response, museum organizations are seeking to change the permissions culture, asserting the right of museums to make fair use of copyrighted works by creating best practice guidelines.7
Perhaps signaling a shift away from the permissions culture, the Metropolitan Museum of Art (Met) reproduced a copyrighted photograph by the professional photographer Lawrence Marano on its website without his permission.8 As part of an exhibition exploring rock and roll instruments,9 the museum exhibited the Frankenstein guitar created by the rock musician Eddie Van Halen.10 In a corresponding webpage about the guitar, the museum displayed Marano’s photograph of Van Halen playing the Frankenstein guitar.11 The webpage on which the photo was reproduced exemplifies one of the ways museums have adapted to the digital age: creating online counterparts to physical exhibitions.12
The use of Marano’s photograph resulted in litigation.13 The District Court for the Southern District of New York decided Marano v. Metropolitan Museum of Art in July 2020, holding that the reproduction of the photo was fair use rather than copyright infringement.14 In April 2021, the Court of Appeals for the Second Circuit affirmed in a summary order.15 Although the Second Circuit deems summary orders nonprecedential,16 Marano is nonetheless significant. Marano is the first case to consider whether a museum’s reproduction of a work in a publication is fair use.17 It could be seen to validate the move away from the permissions default for the museum context.18 Accordingly, Marano will be relied upon by courts and lawyers for museums in future cases with factual similarities.19 Such reliance will occur whether these cases are brought intra- or extracircuit not only because Marano addresses a novel context, but also because Second Circuit fair use cases are particularly influential.20 Moreover, Marano has already been cited and discussed by courts, lawyers, and scholars.21
Marano is distinguishable from the Second Circuit’s fair use precedent. Through the reproduction of a photograph on a museum’s website, Marano involves both art and public access to this art through the internet.22 In comparison, the Second Circuit cases involving art generally concern the incorporation of artwork by one artist into the work of another.23 The defendant-artist uses artwork by the plaintiff-artist to create new artwork.24 Meanwhile, the cases involving public access to information via the internet generally concern the incorporation of works into new technology.25 The defendant creates a new service through which the public gains access to the plaintiff’s work over the internet.26 While Marano bears similarities to both categories of cases, it fits into neither.27 Nonetheless, the court aligned Marano too closely with the art cases and too little with the public access cases.28 Instead, Marano can be placed into a developing category of cases in which a work is used to provide historical context.29 However, unlike the other cases in this category, Marano is the only one in which the plaintiff’s work is assertedly used to provide historical context on a different subject than the original.30 Because Marano involves art, public access to art through the internet, and historical context on a different subject than the artwork, the case falls into a no man’s land of the fair use doctrine.31
To determine whether a use is fair, courts engage in a case-by-case analysis of four nonexclusive statutory factors.32 Under the first factor, “the purpose and character of the use,” finding that a use is transformative weighs strongly in favor of fair use.33 In analyzing this factor, the court emphasized that Marano made the photo to show how Van Halen appears when performing, while the Met used the photo to contextualize the guitar.34 If the court did not rely on Marano’s purpose in creating the photo and on the Met’s purpose in reproducing it, the court may not have found the use transformative.35 In turn, the court may have concluded that the use was not fair.36 Instead, Marano’s photograph could have been understood as providing historical context about the subject of the photo, and the case would no longer diverge from the other historical context cases.37 Furthermore, the possibility that the Met’s use was neither transformative nor fair suggests that reliance by museums on Marano in similar contexts may be misguided; asserting a different purpose for the reproduction may not be sufficient for finding fair use.38 Despite the court’s insistence that fair use is deeply fact-specific, it did not fully consider the particular facts of Marano when analyzing the statutory factors and analogizing Marano to historical context cases.39
Marano was decided in the shadow of two significant fair use cases. One week prior to Marano, a different panel of the same court decided Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith.40 Three days after Marano, the Supreme Court decided Google LLC v. Oracle America, Inc., currently the Court’s most significant ruling on fair use in quite some time.41 One year later, in March 2022, the Supreme Court granted a petition for writ of certiorari in Warhol, the Court’s first fair use case involving works of visual art.42 Because the Supreme Court limited the question presented to the first factor, its forthcoming decision should not significantly affect the discussion of factors two through four in this Case Note.43 While the Court’s decision will likely affect what counts as transformative in fair use cases generally, the allegedly infringing work in Warhol is a new work of art, so it is not yet clear how the standard the Court announces will be applied to works outside that context.44 Nonetheless, Warhol and Google will serve as precedent for future Second Circuit cases involving museum reproduction.
Part I of this Case Note provides a background on fair use, categories of fair use cases, and significant cases decided contemporaneously with Marano.45 Part II outlines Marano’s facts, procedural history, and holdings.46 Part III argues that the court disputably found the Met’s use transformative, noncommercial, reasonable, and not harmful to Marano’s market.47 Part III also asserts that Marano is distinguishable from the other historical context cases and considers the impact of Warhol and Google on factors one and two in future cases like Marano.48
I. Background
The origins of copyright law are derived from the Constitution: “Congress shall have Power . . . To promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their respective Writings . . . .”49 Copyright has been interpreted to have a dual purpose based on this clause. On the one hand, authors receive a benefit by being afforded rights, which incentivizes the creation of artistic works.50 On the other hand, the public receives a benefit by being afforded access to these works through their creation and the limited monopoly granted to authors.51 The Supreme Court established that photographs are “writings” and that Congress, consequently, has the power to make photographs copyrightable.52 Photographs are considered “pictorial, graphic, and sculptural works” subject to copyright protection.53 Photographers are thus granted a limited monopoly in their photographs to guard their economic incentive in these works.54 This monetary motivation encourages the creation of works, and the works then benefit the public who is afforded access to them.55
A. Fair Use Doctrine
To ensure copyright’s dual purposes are served, fair use exists to limit the monopoly granted to creators.56 If creators were afforded complete protection of their works, public access would be reduced, shifting the balance in favor of creators and minimizing the public benefit.57 Use of a copyrighted work is fair and not copyright infringement when it balances these goals by providing the public with access to the work without disincentivizing the creator to continue producing.58 An affirmative defense to copyright infringement, fair use furthers the goals of copyright.59 To determine whether a use is fair, courts analyze several statutory factors, underscoring that the fair use analysis involves a fact-specific inquiry.60
Fair use is codified in Section 107 of the Copyright Act of 1976.61 The preamble states: “[T]he fair use of a copyrighted work, including . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research, is not an infringement of copyright.”62 To determine whether a use is fair, courts consider four nonexclusive factors:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.63
The preamble gives examples of the types of uses that may be found fair, but this list is not intended to be exhaustive.64 The Supreme Court has held that the four factors should be considered together.65 The “purpose and character of the use” considers whether the use of the copyrighted work is transformative, and a finding of transformation favors fair use because the use contributes new visual or conceptual content.66 The formulation of the transformative test, at least in the context of visual art, is now being reconsidered by the Supreme Court in Warhol. The Court is weighing “[w]hether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material,” as the Court has routinely held, or “whether a court is forbidden from considering the meaning of the accused work where it ‘recognizably deriv[es] from’ its source material,” as the Second Circuit has held.67 As a transformative use typically advances the constitutional purpose of copyright, this determination is currently considered the most important.68 Accordingly, if a use is found to be transformative but other factors suggest that the use was not fair, those factors are given less weight.69 This factor also considers whether the use is commercial or for a nonprofit educational purpose.70 A commercial use does not necessarily mean that it is unfair, just as a nonprofit educational use does not necessarily mean that it is fair.71 The “nature of the copyrighted work” acknowledges that certain works are more protectable than others.72 More protectable works weigh against a finding of fair use in theory, but this consideration is often given limited weight when the use is transformative under the first factor.73 The “amount and substantiality of the portion used” depends on the first factor; the more transformative the defendant’s use, the greater the use of the original that can be justified.74 The “effect of the use upon the potential market” involves a two-part inquiry: (1) the market harm resulting from the use and (2) the market harm if the use were widespread.75
B. Classifying Fair Use Cases
Responding to claims that fair use is unpredictable, in an in-depth analysis of fair use, Professor Pamela Samuelson classifies fair use cases by the type of use at issue.76 She argues that by considering the particular category into which a use falls, one may be able to determine whether the use is fair.77 She further argues that courts should consider these categories in addition to the statutory factors.78 To better understand Marano, this Section will consider three of Samuelson’s categories bearing a relationship to Marano using Second Circuit fair use cases.79
1. Uses to Set Historical Context
In “uses to set historical context” cases, the plaintiffs’ copyrighted works are reproduced by creators of factual works to provide historical context.80 Samuelson primarily discusses Bill Graham Archives v. Dorling Kindersley Ltd. and briefly mentions several documentary film cases.81 While the defendants in these cases succeeded on fair use, Samuelson points out that some defendant-documentarians have not when they copiously reproduced the copyrighted works.82 To understand the pattern of the statutory analysis in these cases, including Marano, the following discussion will consider all four factors.83
Bill Graham is a historical context case in which the defendant prevailed on fair use.84 The Bill Graham Archives sued the publishers of a book about the Grateful Dead for copyright infringement because the book reproduced six Grateful Dead concert posters and one concert ticket without permission.85 Consisting of 480 pages and more than 2,000 images, the book features a timeline of the band.86 The concert materials were reproduced at a reduced size in the timeline and interspersed with text about the corresponding concerts as well as graphic art.87 First, in analyzing the purpose and character of the use, the court emphasized the significantly reduced size of the reproductions, the dynamic design of the pages on which the images appeared, and the fact that the images constituted a small portion of the book.88 The opinion also underscored that the book is biographical and that the purposes of the original and secondary uses were different; while the original use of the posters and ticket was creative and promotional, the secondary use was historical.89 Accordingly, the works were transformed in the book.90 Second, although the nature of the copyrighted works was creative, this factor had little weight because the defendant’s use was transformative.91 Third, the reproductions were reasonable because, despite being reproduced in full, the images were reduced in size to the extent possible without becoming unrecognizable so that the images still served the purpose of providing historical context to the reader.92 Lastly, because the use was transformative, the loss of licensing fees did not harm the market for the originals.93 Samuelson classifies this case as a use to set historical context because the book is a nonfiction work and the images provided historical context.94
The documentary film cases are likewise historical context cases in which the fair use defense succeeded.95 Hofheinz, the widow of film producer Nicholson, brought copyright infringement claims against parties responsible for the creation of documentaries incorporating films created by her late husband.96 In Hofheinz v. AMC Productions, Inc., clips of films made by Nicholson, another producer, and the production company for which they worked were included in a documentary about them.97 First, the use of the clips was likely transformative; the original purpose of the films was to entertain, but the purpose of the clips was to inform.98 Second, the works at issue were published and primarily creative, weighing marginally against fair use.99 Next, the clips were a small portion of the documentary as a whole.100 Finally, the plaintiff could not show market harm.101 Finding that three of the four factors favored fair use, the court held that the defendants’ use was likely fair.102 The other cases in this triad follow a similar pattern.103 Samuelson categorizes these cases as uses to set historical context because the documentaries are nonfiction works and the film clips are used to provide information about the subjects of the documentaries.104
2. Transformative Adaptations
“Transformative adaptations” cases involve the use of creative works in a way that transforms them into new artistic works.105 This category encompasses cases involving the incorporation of artwork by one artist into the work of another artist.106 Foreshadowing Warhol, Samuelson warns that fair use may not be found when an artist does not sufficiently transform the original work.107 To understand the Supreme Court’s consideration of the transformation analysis in Warhol,108 the below discussion will focus on the transformative inquiry.
Fair use was found in the transformative adaptation case Blanch v. Koons.109 Blanch, a professional photographer, sued Koons, a visual artist, for copyright infringement after Koons used part of her photograph Silk Sandals in his collage painting Niagara.110 Blanch’s purpose in creating the photograph was to convey a sense of sexuality in an image advertising shoes.111 Koons’s purpose in creating the painting was to comment on advertising and consumerism generally.112 His painting also commented on the societal and artistic connotations of Blanch’s photograph specifically.113 Niagara was transformative because of these differing purposes and meanings and because Koons made changes to the original.114 Blanch is the main case Samuelson discusses to explain the transformative adaptations category, and she notes that it embodies fair use cases in which a secondary work artistically transforms the original.115
Cariou v. Prince is another example of a transformative adaptation case in which fair use was found.116 Cariou, a professional photographer, sued the artist Richard Prince for copyright infringement after Prince used some of his photographs in a series of paintings and collages entitled Canal Zone.117 Many of the works were transformative because Prince changed the aesthetics and messages of the originals.118 In contrast to Cariou’s calm aesthetic, Prince’s works are turbulent.119 While Cariou created small black-and-white photographs, Prince created large mixed media works with color.120 Prince’s works were transformative because they differed aesthetically from the originals.121 This is a transformative adaptation case because Prince adapted Cariou’s existing photographs into new artistic works through techniques including incorporating them into collages, increasing their sizes, and adding color.122
3. Unforeseen Uses
The “unforeseen use” cases involve uses that Congress could not have foreseen at the time of the Copyright Act of 1976 because the technologies involved did not yet exist.123 Examples of such unanticipated innovations include the internet, search engine technologies, and reverse engineering software.124 This category encompasses cases involving the incorporation of material into new technology through which the public gains access to information.125 Given the importance of balancing the public benefit of the new product with the impact on the original creator’s market, the below discussion will include the transformation and market harm factors.126
The fair use defense succeeded in the unforeseen use case Authors Guild v. Google, Inc.127 Without the permission of the books’ authors, Google digitized books and made them searchable on the internet, allowing users to search for terms within a book and to view a small portion of the book’s text containing the search terms.128 The authors sued Google for copyright infringement.129 Google transformed the books by creating digitized copies that enabled searching.130 Google also had a transformative purpose: to provide information that was otherwise unavailable, thus benefitting the public.131 The authors’ markets for the books were not harmed because the information about the books made available by Google was not a competing substitute for the originals even if there was some loss of sales.132 Authors Guild is an unforeseen use case because it involves both the internet and search engine technology.133
In contrast, in the unforeseen use case Capitol Records, LLC v. ReDigi Inc., the defendant’s fair use defense did not prevail.134 ReDigi developed an online marketplace allowing individuals who had legally purchased copyrighted digital music files to resell those files.135 Several record companies holding the copyrights to music that had been resold sued for copyright infringement.136 ReDigi’s platform was not transformative because it neither altered the original works nor provided information about them.137 Because a transformative purpose was minimal or nonexistent, the commercial character of the use was given more weight than usual.138 Overshadowing the doomed fair use defense, the reproductions directly competed with the plaintiffs’ markets.139 This market harm was not outweighed by the benefit ReDigi’s program provided to digital music purchasers.140 Although unsuccessful, Capitol Records is an example of an unforeseen use case because it involves the internet and new technology.141
C. Recent Cases
The Supreme Court’s forthcoming decision in Warhol and recent decision in Google will serve as precedent for transformative adaptation and unforeseen use cases.142
In Warhol, the Second Circuit found the artist Warhol’s use of professional photographer Goldsmith’s photograph unfair.143 Goldsmith licensed a photograph she took of the musician Prince to Vanity Fair for “use as an artist reference.”144 Vanity Fair commissioned Warhol to create a work from this photograph, and the work was then reproduced in the magazine.145 However, Warhol continued to use the photograph, creating fifteen more works, which, together with the original commission, comprise the Prince Series.146 Decades later, when Goldsmith discovered that Warhol had continued to use her photograph, she informed the Andy Warhol Foundation that the works violated her copyright, leading to litigation.147 In a lengthy analysis of transformation, the court found that because Warhol superimposed his style onto Goldsmith’s photograph, creating a work that continued to be recognizable as the original, the work was not transformative.148 Because both parties had licensed their works to magazines for reproduction, their markets overlapped, harming Goldsmith’s licensing market to magazines through lost royalties.149 Finding for the plaintiff on all four factors, the court held that Warhol’s use was not fair.150
Although the court found that Warhol’s uses of Goldsmith’s photograph were not transformative, this case nonetheless falls into the transformative adaptation line of cases.151 Warhol adapted Goldsmith’s photograph, an existing work, to create a series of prints and drawings.152 He transformed the photograph—unsuccessfully according to the court—by, for example, cropping the image to retain only Prince’s head and not his torso, changing the image from black and white to bright colors, and omitting features of the original to give the musician a flattened appearance.153 Thus, this case is an example of a failed transformative adaptation.154
In Google, the Supreme Court found Google’s partial use of Oracle’s code fair.155 Oracle owns the copyright to Java SE, a computer program that has been used by software developers to create new programs by using the Java programming language.156 Google created an Application Programming Interface (API), a library of tasks from which programmers can select code for each task that they would like a program to implement.157 The API consisted of millions of lines of new code and around 11,500 lines of copied code from Java SE.158 As a result, Oracle sued Google for copyright infringement.159 The Court foregrounded that Google used the code for Android smartphones whereas prior use of the code was primarily for computers.160 This new use required creativity and led to the creation of new products.161 Google’s product did not harm Oracle’s market because the markets do not overlap, and the product was not a substitute.162 Finding for the defendant on all four factors, the Court held that Google’s use was fair.163
This case falls into the unforeseen uses category.164 One of Samuelson’s subcategories of unforeseen uses is “competition- and innovation-promoting uses in the software industry.”165 Samuelson notes that cases in this subcategory include instances in which a copyrighted work is copied to create a new product that is found to be fair use.166 By using existing material to create new technology, Google is therefore an example of an unforeseen use case.167
The Second Circuit’s Warhol decision and the Supreme Court’s Google decision offer different perspectives on what qualifies as transformative use.168 In Warhol, the creation of new artistic works was not transformative even though they differed aesthetically from the original to some extent.169 In contrast to the Blanch and Cariou cases, the aesthetic differences were insufficient to render the defendant’s work transformative.170 In Google, the repurposing of computer code was transformative even though the defendant copied 11,500 lines of code exactly because Google used this code in a new context: in smartphones rather than computers.171 While the Second Circuit conceived of transformation narrowly in Warhol, curtailing its prior formulations of transformativeness, the Supreme Court conceived of transformation broadly in Google.172
The above cases show, as Samuelson argues, that cases within particular categories follow patterns enabling one to predict whether a particular use will be found fair.173 A transformative adaptation case may not be found fair if the defendant did not transform the plaintiff’s work sufficiently.174 The defendant’s use in Warhol was not transformative according to the court, and the use was deemed unfair.175 Among the possibilities for finding an unforeseen use case unfair is if the defendant’s use served as a substitute for the plaintiff’s market.176 The defendant’s use in Capitol Records supplanted the plaintiff’s market and thus the use was not fair.177 In addition to these category-specific patterns, more broadly, if the defendant’s use is not transformative, it will not be considered fair, as seen in Capitol Records and Warhol.178
II. The Facts, Procedural History, and Holdings of Marano
A. Facts
Marano is a professional photographer, and the Met is an art museum that displays international art from a period spanning 5,000 years.179 In 2019, the Met exhibition Play It Loud: Instruments of Rock & Roll displayed the Frankenstein guitar, an instrument assembled and painted by the rock musician Van Halen.180 In conjunction with the physical exhibition in the museum, corresponding information about the exhibition was displayed on the Met’s website, including information on the objects in Play It Loud.181 The Met reproduced Marano’s copyrighted Van Halen photo on its website without Marano’s permission.182 The Met stated that it obtained permission to reproduce the photo from Van Halen, the photo’s subject, and that it had accidentally left out the image credit to Marano on the website.183
The photo captures Van Halen playing the Frankenstein guitar at an October 1982 concert at Madison Square Garden in New York City.184 First published in January 1986, the photo’s copyright was registered in March 2019.185 Prior to the Met’s reproduction, the photo was available to license through Getty Images, where it remains available.186 The photo has been licensed to various online publications.187
The Met reproduced the photo on the object page for the guitar.188 The left side of this page displayed text about the guitar and Van Halen, and the right side of the page displayed a photograph of the guitar installed at the museum with a thumbnail of the image below and two additional thumbnails.189 The second photograph was also an image of the guitar displayed at the Met.190 The third image was Marano’s photo.191 By clicking on a thumbnail, visitors to the page could enlarge the corresponding image.192 Beneath the text and images, the page included the object details for the Frankenstein guitar, such as its date, medium, and dimensions.193
B. Procedural History
Marano brought a copyright infringement claim against the Met, arguing that the reproduction of the photo on the museum’s website infringed his copyright.194 Prior to the Met’s reply to Marano’s complaint, the district court ordered Marano to show cause as to why fair use should not result in dismissal of the lawsuit.195 Because the court determined that Marano did not show that the Met’s use was unfair, the court dismissed his complaint, and his subsequent motion for reconsideration was denied.196 Marano appealed the dismissal, but the circuit court affirmed by summary order.197 The Supreme Court denied Marano’s petition for certiorari.198
C. Holdings
The district and circuit courts’ holdings for each statutory factor and overall fair use determination will be discussed together. Because the circuit court issued a summary order, the district court’s opinion is more thorough, devoting several paragraphs to each factor.199 In contrast, the circuit court’s opinion includes only a single sentence for some of the factors, affirming the findings of the district court.200 Given the circuit court’s brief, nonprecedential opinion, and the fact that the court agreed with the district court’s determinations, the following discussion will focus on the opinion of the lower court.
1. Purpose and Character of the Use
The courts held that the purpose and character of the use weighed in favor of fair use.201 In analyzing this factor, the courts engaged in a two-part inquiry, considering whether the use was transformative and whether the use was commercial.202 Following Bill Graham, the district court found the Met’s use transformative for three reasons.203 First, Marano’s purpose in creating the photo differed from the Met’s purpose in reproducing the photo.204 While Marano’s purpose was to reveal “what Van Halen looks like in performance,” the Met’s purpose was to “spotlight[] the ‘Frankenstein’ guitar.”205 Marano wanted the photo to show that Van Halen was innovative and unconventional, whereas the Met wanted the photo to provide additional information on the guitar.206 Second, the Met used the photo in an educational context, showing that the guitar was an important and influential instrument.207 Third, the use was transformative because the photo was one image on an object page for an exhibition comprised of 185 objects and because this page contained text and additional images.208 Thus, the photo was a small portion of the overall website for the exhibition and was not particularly prominent on the object page.209 The court rejected Marano’s argument that the Met’s use was not transformative because it did not comment on the photo, instead asserting that it was not necessary for the Met to discuss the photo directly because it was used to provide context for the guitar.210
The circuit court agreed that the Met’s use was transformative because the museum focused on the instrument and because Marano and the Met had different purposes in creating and using the photo.211 The Met placed the photo in a different context—a context focused on the design and importance of the guitar rather than a context focused on Van Halen himself.212 This different context resulted in a different significance for the photo, adding to its meaning.213
Next, the district court found the use noncommercial, noting that the Met is a nonprofit institution.214 It was unlikely that the photo played a part in causing visitors to go to the museum and paying admission fees to the Met.215 The court reasoned that even if discovery could show that the photo resulted in paid visits to the museum, such a finding would be outweighed by the finding of transformation.216 The circuit court agreed, emphasizing that the Met’s website is free and has artistic and educational purposes—purposes that are noncommercial.217 The courts concluded that the first factor weighed in favor of fair use because the Met’s use was transformative and noncommercial.218
2. Nature of the Copyrighted Work
The nature of the copyrighted work tilted slightly against a fair use finding.219 For this factor, courts consider two inquiries: whether the plaintiff’s work is creative or factual and whether the work is published or unpublished.220 First, the district court stated that the photo is incontestably creative, noting that photographs of real people and events may be considered creative.221 Although finding the work creative would typically weigh against fair use, the court reasoned that this finding had little weight because the Met’s use was transformative.222 Because the Met used the photo for its historical but not artistic merit, the fact that the photo is a creative work did not weigh in favor of fair use as it might have otherwise.223 The circuit court agreed that the photo is a creative artwork and that this determination had little effect because the use was transformative.224 Second, after noting that unpublished works are afforded greater protection, the district court stated simply that the photo is published.225 The circuit court did not address the publication status of the photo.226 The district court concluded that the second factor possibly weighed marginally against fair use.227 The circuit court did not come to a separate conclusion about the weight of this factor but noted that the finding of transformation under the first factor weighing in favor of fair use was consistent with the other three factors.228
3. Amount and Substantiality of the Portion Used
The amount copied factor was found to be neutral.229 The district court assessed whether the amount of the photo used was reasonable in relation to the way in which it was used.230 The court reasoned that reproduction of a work as a whole can be essential to the purpose for which it is used.231 The Met reproduced the photo in its entirety, but this reproduction was reasonable when considered in the context of the first factor—the use of the photo for historical context.232 Also, the reproduction of the photo as a thumbnail along with other images, appearing on a page with text, reduced the photo’s artistic force.233 The circuit court agreed that the reproduction of the photo as a whole was required for the photo to serve its historical function.234 The district court concluded that this factor did not impact the potential for finding fair use because despite the Met’s use of the entire photo, the use was otherwise measured and for historical purposes.235
4. Effect of the Use upon the Market for or Value of the Original
The market harm factor weighed in favor of the Met.236 The district court evaluated whether the Met’s use appropriated the photo or offered a rival replacement for it, noting that these possibilities are less likely the more the original work is transformed.237 The court first considered whether the Met harmed Marano’s traditional market.238 Rejecting Marano’s assertion that museums are a possible market for the photo and his request for discovery on this question, the court reasoned that Marano cannot develop a market for transformative uses of the photo to prevent it from being used fairly.239 Instead, the court maintained that Marano’s traditional market for the photo consists of photography collectors of rock musicians and possibly but improbably museums for exhibitions about musicians.240 However, because the Met’s use was transformative, at issue was a transformative market rather than a traditional one.241 In this context, Marano’s loss of reproduction fees did not qualify as market harm.242 The court held that it was doubtful the market for the photo was harmed by the Met’s transformative use.243 The circuit court agreed that a licensing market could not be considered and noted that the record did not indicate that the Met’s reproduction could harm another market for the photo or reduce its value.244 The district court concluded that this factor favored fair use.245
5. Balancing the Factors
Upon balancing the factors, the district court found the Met’s use fair, largely because it found the Met’s use transformative under the first factor, impacting the subsequent determinations.246 The circuit court did not separately weigh the factors but similarly reasoned that the finding of transformation and the balance of the remaining factors suggested that the Met’s use was fair.247 Rejecting Marano’s argument that a fair use outcome would result in museums being able to claim fair use when using photographs in exhibitions for educational purposes, the circuit court emphasized that the lower court’s assessment correctly focused on the particular facts of the case.248 Furthermore, the court determined that the district court’s balancing was correct and held that it did not err in ruling that the use was fair.249
III. Analysis
Despite the Second Circuit’s insistence upon the fact-specific nature of fair use, the court paradoxically sought to fit Marano into its existing fair use jurisprudence.250 A comparison to these other cases suggests that the court’s determinations on each of the statutory factors are uncertain.251 As a result, the Met’s use may not be fair.252 Moreover, a comparison to categories of fair use cases reveals that Marano falls into neither the transformative adaptation nor unforeseen use classifications and that Marano is distinguishable from the historical context cases.253 Lastly, the recent and anticipated fair use guidance offered by the Supreme Court may affect the outcome of factors one and two in particular in future museum reproduction cases.254
A. Nontransformative and Commercial Use
In analyzing transformation under the first factor, the court relied too heavily on purpose, followed the transformative adaptation cases in asserting that the Met did not need to comment on the original, and did not sufficiently consider the way in which the photo was reproduced.255 Therefore, the Met’s use may not have been transformative.256
The Second Circuit diverges on whether the transformative inquiry should consider the plaintiff’s purpose in creating the work and the defendant’s purpose in using the work.257 In Blanch, the court emphasized that the purposes Blanch had in creating the photograph and Koons had in using the photograph were distinct.258 In contrast, in Cariou, the court declined to consider Prince’s purpose in using Cariou’s photographs.259 Similarly, in Warhol, rather than considering Goldsmith’s and Warhol’s purposes, the court reasoned that whether a work is transformative cannot depend on the secondary user’s intent, asserting that such reliance could lead to finding too many uses transformative.260 In comparison, the Marano court relied on the stated intent of Marano as well as that of the Met in determining that the Met’s use was transformative.261 Returning to the earlier test from Blanch, the court focused on the supposedly different purposes that Marano had in creating the photo and the Met had in reproducing it.262 If the Marano court had not focused on purpose, it may not have found the Met’s use transformative.
The court also diverges on whether the defendant’s work must refer directly to the plaintiff’s work.263 The Authors Guild and Capitol Records unforeseen use cases considered whether the defendant’s use comments on, criticizes, or provides information about the plaintiff’s work.264 In Authors Guild, the court stated that Google’s purpose in reproducing the plaintiffs’ works was to provide information about those works, finding the use transformative.265 In Capitol Records, the court noted that ReDigi did not transform the plaintiffs’ works because it did not comment on or provide information about them.266 Although both of these cases were decided after Cariou, in Warhol, the court reiterated the Cariou court’s rejection of the requirement that the defendant’s work comment on the copyrighted work.267 Likewise, the Marano court rebuffed this same requirement.268 Therefore, the court sometimes requires the defendant to comment on or provide information about the plaintiff’s work and sometimes asserts that the defendant does not need to do so.269 If the Marano court had followed its unforeseen use precedents, it may not have found the Met’s use transformative because the museum did not provide commentary or information about the photo.270
Also, despite the court’s attempts to analogize Marano to Bill Graham, it did not consider the facts relevant to the transformative inquiry as thoroughly.271 In Bill Graham, the court carefully compared the size of the original works to the reproductions in the book, finding that the works had been significantly reduced in scale and that the defendant reproduced the images at the smallest size needed for the book’s purpose.272 This finding supported the court’s conclusion that the defendant’s use was transformative.273 In contrast, in Marano, the court failed to consider the original size of the photo, the size at which it was reproduced, and whether the size was appropriate for the website’s purpose.274 It is unclear, therefore, whether the Met’s reproduction is sufficiently insignificant to the Met’s purpose, which may weigh against transformation.275
Next, in analyzing commercial use under the first factor, the Marano court did not consider that nonprofit educational uses may nonetheless be commercial uses.276 A comparison to other cases suggests that the Met’s use may have been commercial.277
The Supreme Court has held that the proper inquiry for determining whether a use is commercial “is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.”278 By juxtaposing “monetary gain” with “profit,” the Court implied that “profit” means something broader than whether the user benefits financially from the use.279 The Marano court did not consider whether the Met benefitted from the use of the photo other than through direct financial compensation.280 Other courts have found that educational uses of copyrighted works by nonprofit institutions were commercial because the institutions gained nonfinancial, professional windfalls.281 A nonprofit educational use is not presumptively fair.282 Also, the court ignored the fact that the Met did not pay the “customary price” to use the photo.283 Because reproduction of the photo is typically licensed for a fee, the Met benefitted by not paying for the use.284 Courts have questioned the validity of the customary price inquiry because not paying a fee would prevent any use from being noncommercial.285 However, the court should not have solely relied on the lack of direct financial benefit and should have considered the broader nonfinancial benefit to the Met. In doing so, the court could have found the use commercial.286
B. Possibly Factual
Under the nature of the copyrighted work factor, the court did not consider the possibility that the photo was factual, nor did it explain why the photo was creative.287 A comparison to other cases reveals that the photo is not necessarily creative.288
In finding the photo creative, the court provided little reasoning other than parenthetically noting that photographs of people and events can be creative rather than factual.289 However, the Second Circuit has not always found photographs documenting people at events creative.290 In Harbus v. Manhattan Institute for Policy Research, Inc., a professional photographer’s image of Andrew Cuomo giving a speech was deemed an informational rather than a creative work.291 In concluding that the photograph was factual, the court relied on the photographer’s statement that the purpose of the image was to show how Cuomo appeared when giving a speech and on the fact that other courts had found photographs for nonaesthetic purposes noncreative works.292 Further, the court asserted that the plaintiff had made little artistic choice in creating the photo.293
Marano similarly stated that the purpose of the photo was to show how Van Halen appeared when performing, and the photo likewise documents a real person at a particular event.294 Even so, Marano described his creative decisions in making the photo, such as the particular camera used, the vantage point from which the photo was taken, and the lighting.295 These individual choices were not discussed by the court, even though the Second Circuit describes such choices in other opinions.296 For example, in Warhol, the court explained that Goldsmith selected the cameras used, put makeup on Prince, and chose the lighting, concluding that the photograph was creative.297 While Harbus suggests the possibility that Marano’s photo may not be a creative work, Harbus nonetheless acknowledged that some photos of people and events may be considered creative works.298 Warhol suggests that the Marano court should have explored this question more thoroughly.299
C. Unreasonable Reproduction
Under the amount copied factor, the court did not explain what qualifies as a reduced size nor did it consider the ability of website visitors to enlarge the Photo.300 These insufficient factual considerations suggest that the Met’s reproduction may have been unreasonable.301
The court cited Bill Graham and Kelly v. Ariba Soft Corp., cases which also involved reproductions of works in their entireties.302 In Bill Graham, by minimizing the image size and quality, the defendant’s complete reproduction of the images was reasonable for the purpose of providing historical context.303 In Kelly, the defendant displayed complete images as thumbnails in response to an internet search; clicking on the thumbnails allowed users to enlarge the images.304 Kelly found that showing thumbnails of entire images was necessary to the search engine’s purpose.305 Notably, however, the court did not decide whether the ability to enlarge these images was also necessary.306 In Marano, the court relied on the fact that the photo was reproduced at a reduced size in finding the reproduction reasonable, but it did not explain what it meant by a reduced size.307 Thus, it is not clear whether this refers to the fact that the photo was a thumbnail or reproduced in smaller dimensions or lower resolution than the original.308
The reproductions in Marano and Bill Graham are not particularly analogous given that printed images in a book cannot be enlarged unlike the photo on the Met’s website.309 Yet, by citing to Kelly, the court acknowledged, without fully exploring, the more analogous context of image reproductions on the internet.310 The fact that the Met reproduced the photo on its website consequently makes this component of the case analogous to an unforeseen use, but the court failed to consider the implications of this technology.311 The district court’s determination that the reproduction of the photo at a reduced size diminished its “visual impact” ignores the fact that the thumbnail can be enlarged.312 When a visitor to the webpage clicks on the thumbnail, the photo is a substantial portion of the page and the primary visual impact.313 Kelly leaves open the possibility that the ability to enlarge the photo makes the Met’s use unreasonable.314
D. Market Harm
Lastly, in considering the market harm factor, the court incorrectly determined Marano’s traditional market and declined to consider his licensing market.315 A comparison to other cases suggests that Marano’s market may have been harmed.316
The court fundamentally misunderstood the nature of Marano’s profession and his market when it stated that Marano’s traditional market is photography collectors of iconic rock musicians.317 Marano is not a fine art photographer whose traditional market would be photography collectors.318 As a professional photographer, licensing fees are a traditional market for his work, so his licensing income will be impacted.319 In fact, licensing fees are how professional photographers monetize their works.320 Countless photographs by Marano are available to license for a fee from Getty Images, including for noncommercial websites.321 Had discovery been conducted, information about Marano’s licensing market could have been obtained by looking at past licenses for his work through Getty Images.322 Such information would have allowed the court to better understand Marano’s market and if it was harmed.323
Courts have been reluctant to find the loss of licensing revenue as evidence of market harm because of a circularity problem: in fair use cases, the defendant could have paid a fee to license the work, but if this means the plaintiff’s market was harmed, then this factor would always favor the plaintiff.324 However, courts have likewise acknowledged that this circularity may be avoided by considering certain markets, including traditional markets.325 Although the Marano court determined incorrectly, and without support, that Marano’s traditional market was not a licensing market, it acknowledged that licensing income for traditional markets should be considered.326 Therefore, the court left open the possibility for such an inquiry. Moreover, the Second Circuit has explicitly considered licensing markets in analyzing market harm.327
For example, in American Geophysical Union v. Texaco, Inc., the court held that the impact on licensing is an appropriate consideration for traditional markets.328 A licensing scheme existed for photocopies of academic articles, and the court found that unauthorized photocopies were unfair because there was a market for such photocopies and a means to pay for them.329 Consideration of licensing was thus appropriate because there was a method for licensing.330 This case is instructive for Marano. Licensing is a traditional market for Marano’s work, and a licensing scheme exists for reproductions of his photographs through Getty Images.331 Therefore, the Met’s reproduction could be found unfair because there was a market for such reproductions and payment could have been made through the licensing service.332
E. A No Man’s Land of Fair Use
Turning to the taxonomy of fair use cases, Marano fits into neither the transformative adaptation nor the unforeseen use categories.333 Although Marano involves the use of an existing, expressive work, the photo was not transformatively adapted by the Met into “an expression of artistic imagination.”334 Although Marano involves internet use, a use not foreseen at the time of the Copyright Act of 1976, the Met’s use does not involve the creation of new technology.335 Accordingly, Marano does not fit within either classification.336
In deciding Marano, the district court relied heavily upon Bill Graham, placing Marano into the uses to set historical context category.337 Indeed, Marano fits Samuelson’s definition: Marano’s copyrighted work was reproduced by the Met, the Met reproduced the photo on its website in creating a nonfiction work about the Frankenstein guitar, and the photo was used to provide historical context about this guitar.338 Although these cases may seem to fit into the same category, they do not fit together neatly. The uses in Bill Graham and the documentary film cases provide historical context in a different way than the use in Marano.339 In Bill Graham, the posters and ticket were used by the defendant to inform readers more directly.340 The posters and ticket were from Grateful Dead concerts, and the book was about the Grateful Dead, creating a direct relationship between the plaintiff’s and defendant’s works.341 Similarly, in AMC Productions, the film clips were from films produced by Nicholson and his colleagues, and the documentary was about them, likewise establishing a direct relationship between the works.342 In contrast, in Marano, the Met argued that the relationship between the photo and the website was less direct; the photo was about Van Halen, but the website was about the Frankenstein guitar, creating a more tangential relationship between the works.343 The direct relationship between the subjects of the original and secondary works in Bill Graham and the documentary cases led to the court finding the uses transformative.344 Inconsistently, the less direct relationship between the subjects of the original and secondary works in Marano led to the court finding the use transformative.345
Also, Bill Graham and the documentary film cases involve uses of the original source material to provide historical context on the same subject.346 Thus, the cases that have been placed into this category other than Marano use the copyrighted work to provide historical context about the subject of that work rather than a different subject.347 This difference does not suggest that Marano is more clearly fair use than these other cases, however; in fact, biographical works like those in Bill Graham and AMC Productions have repeatedly been found fair.348 Bill Graham and two of the documentaries are biographical, but in Marano, the Met and the court took pains to assert that the Met’s use was decidedly not biographical.349 Marano is, therefore, distinguishable from the other cases in this category.
F. The Impact of Warhol and Google
For future cases like Marano, the Supreme Court’s forthcoming Warhol decision and its recent Google decision will serve as precedent. Given that Warhol will affect the transformative test and Google shifts the emphasis placed on the nature of the copyrighted work, it is worth considering how these decisions might impact similar museum reproduction cases.350
Considering the first factor, if the Warhol Court upholds its prior conception of transformative as conveying a different meaning or message from the original work, the question of what qualifies as a new meaning or message in a context like Marano may remain unanswered.351 Is asserting that the new work has a different purpose than the original sufficient to establish new meaning, or is placing the work in a new context sufficient to establish a new message?352 If the Court instead affirms the Second Circuit’s holding that meaning may not be considered where the new work visibly stems from the original work, how will this restriction apply to uses like the Met’s where the original work is copied exactly?353 While Marano’s focus on purpose and context may be consistent with Google, it is unclear how the Warhol court’s reformulation of what is considered transformative will impact uses similar to the Met’s.354
In terms of the nature of the copyrighted work, Google signals a potential shift in this analysis. In contrast to the little weight afforded to the second factor by other courts, the Supreme Court highlighted its importance.355 Notably, even though the Court went on to find that Google’s use was transformative, it kept the analysis of the first and second factors separate and did not use the finding of transformation to accord greater weight to the conclusion that the second factor weighed in favor of fair use.356 Therefore, the Google opinion suggests not only that the second factor is gaining in importance but also that the second factor should be considered independently of the first.357 Applying these considerations to Marano, the court’s finding that the photo was creative could have resulted in a determination that this factor weighed against fair use irrespective of the Met’s transformative use.358 Furthermore, rather than concluding that this factor weighed slightly against fair use—if at all—it could have been given more weight in the overall fair use determination.359 For forthcoming cases similar to Marano, then, the nature of the copyrighted work may be considered independently of transformativeness and may be more influential in the overall fair use outcome.360
Conclusion
Even though museums may recognize that there are instances in which they may make fair use of an image, museums tend to seek permission to reproduce images generally.361 In fact, when such an industry-wide custom exists, courts frequently find that breaking with such custom negates the fair use defense.362 While fair use guidelines circulated by museum organizations note that there are instances in which museums may make fair use of an image, that the statutory factors must be considered, and that legal advice should be sought, these guidelines nonetheless rely on existing case law to predict the types of uses that will or will not be considered fair.363 Contrary to predictions that a “test case” for fair use by museums would not emerge, Marano is the test case.364 Marano is the first fair use case involving the unauthorized reproduction of a copyrighted work by a museum.365 Accordingly, it is not difficult to foresee that the next round of updates to these guidelines will include Marano and that museums will in fact rely on the most on-point case to date.366 However, because the Met’s reproduction was disputably transformative, reasonable, and not harmful to Marano’s market, the reproduction could have been found unfair.367 Accordingly, future reliance on Marano by museums may be misguided.
Marano exemplifies inconsistencies in the Second Circuit’s fair use jurisprudence generally and within the historical context category in particular.368 The court failed to consider the implications of internet reproduction, associating Marano too closely with transformative adaptations rather than unforeseen uses.369 In comparison, museum guidelines recognize the significance of the shift to online practices.370 They recommend more thorough considerations for the fair use of online images than those undertaken by the court, such as suggesting that the more information the webpage contains about the work, the larger the image that may be reproduced.371 Moreover, unlike the other uses to set historical context, the court pettifogged to find the Met’s use transformative.372 Because the Supreme Court denied certiorari, the inconsistencies of uses to set historical context will remain unresolved.373 As Marano involves both visual art and technology, the resolution of analogous cases lies somewhere in between Warhol and Google.374