Copyright’s Lost Art of Substantial Similarity


Three copyright doctrines focus more than any others on the contributions of authors to visual art works – originality, substantial similarity, and fair use. Questions regarding the aesthetics of works of authorship filter into determinations courts make under each of these doctrines. This article comments on a trend among courts hearing visual arts cases to de-emphasize substantial similarity analysis and shift the work of deciding infringement cases almost entirely to the fair use defense.

The trend has troubling procedural fairness consequences. When courts fail to create and preserve a full evidentiary record about the artworks they encounter in infringement cases they compromise their ability to properly evaluate whether or not the use of appropriated material in a second work is justified, or whether expression has been taken from the first work for some other (infringing) purpose. If courts fail to properly understand works because they do not fully analyze basic infringement claims, it can also affect later users and owners of artworks.

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith illustrates the conflicts appellate courts face when they are forced to analyze cases solely through the lens of fair use. In that case, as in other copyright infringement cases, the parties purportedly litigated how to balance the interests of creators and users of copyrighted works. However, by leapfrogging substantial similarity analysis at the district and circuit court levels in order to first consider whether the use of Lynn Goldsmith’s photograph by the Warhol Foundation was excusable as a transformative fair use, the parties left the Supreme Court without resort to a comprehensive and reliable fact record on the many intertwining copyright issues needed to resolve infringement claims involving the creative contributions of the respective artists. Consequently, the majority and dissenting justices clashed in their evaluation both of the art and the law at issue in the case. Justice Sotomayor’s majority opinion elegantly corrects decades of troubled visual arts fair use law in a manner that is designed to serve the goals of procedural justice. With a light touch that affirms the lower court, but provides a different account of and perspective from which to analyze the first fair use factor, the majority scales back courts’ overbroad conception of transformative fair use and returns focus to the statutory fair use factors. Yet, the court opines only on the Warhol Foundation’s commercial licensing of Orange Prince, not the artist’s unauthorized use of the Goldsmith Photograph in that silkscreen. As a result, the majority opinion by its own admission has only modest ambitions as to the scope of its aesthetic inquiry. In a strongly-worded dissent, Justices Kagan and Chief Justice Roberts questioned whether, in light of the majority opinion, courts would still be required to make a serious inquiry into the follow-on artist’s creative contributions, or whether any new expression added by a later artist would be dismissed simply because the second artist (or their estate) entered into a licensing transaction concerning the work.

This article embraces the majority opinion, but suggests that the dissent’s concerns about judicial reluctance to engage with and understand creative works aesthetically are not entirely misplaced. Such engagement should happen earlier in the infringement inquiry however – not merely as part of a fair use inquiry. The article expands and revises the 2022 Meyer Lecture delivered by the author a few weeks after oral arguments concluded in the Warhol Foundation litigation. It urges that in order to ensure the best outcomes for all artists, courts should apply a procedurally conscious approach to analyzing copyright infringement cases involving visual artworks. Specifically, district courts should establish a solid record that the first work is original; then inquire whether the second work infringes —applying the test for substantial similarity. Only if they find infringement should courts consider the affirmative defense of fair use; being cognizant of the way in which it affects established and emerging artists or users, yet favoring neither.

Following the proper procedural path is crucial to balancing all parties’ interests – particularly when the work of two artists is involved. Allowing both the first and the second artists equal voice in representing the originality of their contributions, and ensuring that courts have the factual record necessary to anticipate the impact of their rulings on future litigants and the art world at large is consistent with copyright jurisprudence that encourages creativity and original contributions to the creative lexicon.