Category: Law & Policy

New Guidance on “Transformative” Use in AWF v. Goldsmith

In this Court, the sole question presented is whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit edu­cational purposes,” §107(1), weighs in favor of AWF’s recent commercial licensing to Condé Nast.

Although the consideration in Andy Warhol Foundation v. Lynn Goldsmith is narrowly focused, the outcome in this case has anything but narrow implications. Almost thirty years after the decision in Campbell v. Acuff-Rose let the “transformative” blob ooze into the judiciary, the Supreme Court has now stuffed a substantial portion of the blob back in the bucket.

In a 7-2 opinion written by Justice Sotomayor, the Court held that finding “transformativeness” under factor one of the fair use test requires more than a broad purpose to make something new; it defends the derivative works right against encroachment by the “transformative” blob; and it reminds the courts not to confuse the inquiry into “purpose” with a subjective inquiry into “artistic intent.”

Shoring Up Boundaries Around “Transformative” Use

Without explicitly stating that the follow-on work must contain some perceptible element of comment on the work used, the Warhol opinion relies substantially on Campbell and the necessity there to find parody (a form of comment) in 2 Live Crew’s use of “Oh, Pretty Woman.” As the opinion states:

The Court found it necessary to determine whether 2 Live Crew’s transformation of Orbison’s song rose to the level of parody, a distinct purpose of commenting on the original or criticizing it. …the Court further explained that “[p]arody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.

This is significant because many fair use defenses since Campbell have been based on the generalized language in that decision suggesting that when a follow-on work expresses any “new meaning or message,” this may be sufficient to find that a use is “transformative.” In Warhol, the Court clarifies that this language cannot stand alone but must be read in context to the Campbell Court finding parody in the follow-on work in order to find “transformativeness.” In other words, a work that does not contain a hint of comment upon the original work used—and comment that may be reasonably understood by an ordinary observer—may not easily justify use of a protected work under factor one. As the opinion states …

The asserted commentary [by Warhol] is at Campbell’s lowest ebb. Because it “has no critical bearing on” Goldsmith’s photograph, the commentary’s “claim to fairness in borrowing from” her work “diminishes accordingly (if it does not vanish).”

So, because AWF could only claim (and reasonably so) that the Warhol screen makes broad comments about celebrity, fame, iconography, commercialism, et al.—but no comment about the Goldsmith photo itself—the Court finds nothing “transformative” in the work at issue (“Orange Prince”) as a matter of law. Then, absent a finding of “transformativeness,” the commercial use (i.e., the license to a magazine), which disfavors fair use, carries the day…

… [the] first fair use factor … focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism.

Derivative Works Right Protected

Among the difficulties fostered by over-broad readings of “transformativeness” is that it places the fair use defense in conflict with the author’s exclusive right to prepare derivative works. In practice, this can harm the author’s interest because, in the years since Campbell, a defendant who wins on the “transformative” question has tended to win the case. I am not saying that all those cases were decided incorrectly or that the Court has delivered a major reversal in fair use doctrine. On the contrary, the Court has merely shored up levees already in the caselaw, and one result should be to channel the fair use waters away from the derivative works pool …

Campbell cannot be read to mean that §107(1) weighs in favor of any use that adds new expression, meaning, or message. Otherwise, “transformative use” would swallow the copyright owner’s exclusive right to prepare derivative works, as many derivative works that “recast, transfor[m] or adap[t]” the original, §101, add new expression of some kind. [Emphasis added]

The question as to whether “Orange Prince” (or any of Warhol’s screens) are unlicensed derivative works was not addressed by the district court, which is how this became a fair use case, but the important outcome here is that the Supreme Court has refreshed the lines separating “transformative” use from the derivative works right as a matter of law.

Citing one example as to how this ruling might help creators intending to use protected works, in the ComicMix case, a poor understanding of “transformative” led a group of artists to create what was clearly an unlicensed derivative work in conflict with the rights reserved by Dr. Seuss Enterprises. ComicMix did not win in the end, but I would be willing to bet that if not for the pervasive fog in the “transformative” doctrine, the creators would not have embarked on a project making substantial use of protected works without obtaining permission from the rightsholder.

Fair Use Analysis Must Be Objective

Finally, the opinion provides guidance to lower courts that they must read the factor one “purpose” consideration as “… an objective inquiry into what a user does with an original work, not an inquiry into the subjective intent of the user, or into the meaning or impression that an art critic or judge draws from a work.” Again, given the limited scope of the question presented, the Court’s finding here is likely to have broad implications for fair use going forward.

The opinion holds that Warhol’s “Orange Prince” and Goldsmith’s photograph serve the same purpose—that of illustrating Prince—for which Condé Nast licensed the former for a special edition tribute magazine following Prince’s death. This “same purpose” finding may seem confusing because the two works are distinctly different expressions (a major point of dissent by Justice Kagan), but what the Court is saying is that it does not matter whether the photo reveals “vulnerable” Prince or if the Warhol screen depicts “iconic” Prince, and it does not matter why magazine editors will choose one image over another. What matters in a “transformative” use inquiry is an objective search for some perceivable, distinct purpose for use of the work at issue — and that purpose is likely to be comment on the original work …

…the meaning of a secondary work, as reasonably can be perceived, should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original, for instance, because the use comments on, criticizes, or provides otherwise unavailable information about the original.

Again, absent some evidence of commentary upon the work used, the necessity of the use diminishes or vanishes. And to the extent the user of a work might be able to claim some distinctive purpose other than commentary, the courts are instructed to avoid entering the salons of fine artists and critics, who identify—and even invent—meaning in works of art. And that  brings us to the dissent written by Justice Kagan, which is joined by Chief Justice Roberts.

The Dissent Amplifies the Wrong Inquiry for Fair Use

In a surprisingly strident dissent, Justice Kagan devotes considerable time expounding upon Warhol’s methods and significance as an artist and then segues to a general art history lesson to emphasize the unremarkable point that artists borrow from other artists. In addition to being mundane, this axiom about creative work is so broad as to be irrelevant to this or any other consideration of fair use, which the majority opinion makes clear is fact-intensive and case-specific.

The tenor of the dissent connotes bias against copyright, including overwrought allegations that the majority opinion will “stifle new creativity,” a favorite refrain among copyright critics. For instance, Justice Kagan lambasts her colleagues’ failure to consider the obvious differences between Goldsmith’s photograph and Warhol’s screen. The dissent elides any discussion about the difficulty of balancing “transformation” favoring fair use with “transformation” to prepare derivative works, and in rejecting the majority’s reassertion of the limits in Campbell, Justice Kagan writes:

If Warhol had used Goldsmith’s photo to comment on or critique Goldsmith’s photo, he might have availed himself of that factor’s benefit (though why anyone would be interested in that work is mysterious). But because he instead commented on society –the dehumanizing culture of celebrity—he is (go figure) out of luck.

Absolutely, he’s out of luck. And he should be. The alternative, as the majority makes clear, is to foster a nearly unconditional fair use exception whereby “some difference” in the character of the secondary work is enough to win on factor one and then control the rest of the fair use inquiry. This has been the argument of many defendants and copyright skeptics, and it is gratifying to see the Court recognize that every use of a work results in “something new” and that this is too broad a rationale for finding that factor one always favors the user.

Justice Kagan’s snarky assertion that the majority is “blind” to the differences in the Warhol and Goldsmith expressions is unintentionally correct insofar as it is misplaced as criticism in a fair use inquiry. A substantial similarity consideration is more properly the forum for expert testimony and side-by-side comparisons of the expressions in the works at issue. Whereas, on the question presented here, the majority has stated that, indeed, blindness to broad and subjective artistic intent is the proper way to approach “transformativeness.” The inquiry primarily looks for one element—”critical bearing” on the work used. And as a rule, this outcome should provide clearer guidance to courts, practitioners, and creators who want to use protected works.

Would You Fall for the Anti-SOPA Campaign Today?

“The more desperate one is to get attention, rather than to accurately communicate what one believes a problem is, the more one ventures into the realm of sensationalist propaganda.”

That observation was not written about anyone promoting the Stop the Steal narrative that led to the insurrection on January 6, 2020. No, that’s Chris Ruen, in his book Freeloading (2012), describing Fight for the Future co-founder Holmes Wilson trying to come up with a line to rally support among Redditors for American Censorship Day in November 2011 to protest the anti-piracy bills SOPA/PIPA. According to Wilson’s own description, as quoted by Ruen, he eventually grabbed readers’ attention with this lulu: “The MPAA will soon have the power to block American’s [sic] access to any website unless we fight back, hard!”

There was zero truth in that statement. And although FFTF is terribly concerned about the power of social media today, for instance, Facebook’s role in fostering the events of January 6th …

…the organization is not likely to acknowledge that ten years ago, they and their friends in the “digital rights” world exploited the same manipulative tools and the same human flaws in what was arguably the first misinformation campaign to succeed at scale.

Hyperbole like Wilson’s headline naturally went viral and accreted even more outlandish claims as the Stop SOPA crusade gained momentum through the end of 2011 and culminated on January 18, 2012 with “Blackout Day.” The idea, hatched by Wikipedia founder Jimmy Wales, perhaps imagining himself as John Galt, was to get prominent websites to go dark on a single day and show us what a post-SOPA internet would allegedly look like. Wales also went on TV as the erudite and magnanimous representative of “the internet” and wove a crazy quilt of lies about SOPA/PIPA causing harm to free speech online.[1]

Behind the scenes, death and rape threats (a common feature in any digital-age campaign) were directed at female congressional staffers and other women in pro-copyright organizations, along with the predictable spate of DNS attacks against the websites of any organization that dared voice support for—or even just try to explain—the legislation. Relatedly, it is not a minor footnote that the Stop SOPA folks reached out to 4Chan, which Wilson described as “awesome,” to help push the censorship message.

Today, many readers know 4Chan as a site where misogyny, racism, and legit fascism intersect with bored adolescent boys and hackers espousing a broad spectrum of moral relativism. The output of this crucible has often been a prankster/hacktivist hybrid in which the motive for action may be nothing more than a laugh (aka for the lulz). 4Chan begat 8Chan, and 8Chan begat QAnon. And my point is not that the anti-SOPA organizers spawned Q but rather that it is significant that both January 18th and January 6th were, in part, fueled by tapping into this nebulous digital underworld.   

Above ground, Google, Mozilla, the Electronic Frontier Foundation, and other organizations with internet-industry resources, coordinated and directed a deluge of messages that jammed phone lines and clogged email servers on Capitol Hill, leading Congress to abandon the SOPA/PIPA legislation in a bipartisan group shrug, with staffers and Members mystified as to what exactly had just happened. In the days that followed, some Members even reported that upon returning to their districts, they discovered that constituents had not only not protested SOPA, but that they had never even heard of it.

January 18th is also something of a tenth anniversary for this blog, which first launched in August 2012 but really began with an editorial in The Hill in which I called support for in the anti-SOPA campaign Pavlovian and dysfunctional. At the time, I wrote that “I believe we are seeing the most extreme, most egotistical voices — from the Tea Party to Anonymous — aiming not for change, but to dismantle the system itself.”

Notice that says nothing about media piracy. Piracy was secondary. It was the mechanisms of the anti-SOPA campaign that scared the hell out of me. Worse than the specific lies about the legislation was the bigger lie being promoted by the “digital rights” groups, telling the world that Stop SOPA represented a new model for grassroots activism in which the people are finally empowered by real information and social platforms. In truth, these groups simply showed us how easy it is to rally thoughtless action with little more than some provocative bullshit on a web page.

Wilson posted that nonsense about the MPAA and site-blocking in November, and by January, a virtual mob that knew nothing about what it was protesting stopped Congress in its tracks. Fast-forward to the era of Trump, and a different breed of unscrupulous provocateur, including one calling himself Q, post even more outrageous lies online, and by January, a physical and violent mob tries to stop Congress in its tracks. If we believe there is an ethical chasm between Q and Wilson, it’s because we are overlooking the fact that this is the same disease causing different symptoms.

There is little difference between the fearmongering declarations, “Fight like hell, or you won’t have a country anymore,” and “Fight like hell, or you won’t have an internet anymore.” Convince people that someone is trying to rob them of their liberty—End piracy. Not liberty. was Google’s message in 2012—and you just might start a riot. And during this interval between the first anniversary of January 6th and the tenth anniversary of January 18th, I truly doubt that anyone intending to memorialize their role in the latter would ever acknowledge their insidious contribution to the former.

In a healthy democracy, the means are always more important than the ends, and the inversion of this principle—that it’s okay, even admirable, to lie like hell as long as you win—is the underlying pathology driving both decorum and integrity to the margins of our political discourse. The vector bearing the pathogen is social media, a force which was not so widely understood in 2012 as an addictive, dopamine-inducing activity that neutralizes reason while feeding emotion. That was the human frailty exploited by the professional anti-SOPA crowd ten years ago. And considering all the destruction that misinformation has done to the world since, I cannot imagine why anyone would want to celebrate that travesty of a milestone.

[1] For instance, the legal remedies in SOPA/PIPA have been applied in different ways both prior to and since the defeat of the bills without any effect on the speech right.

Fair Use and Politics: Trump Denied Dismissal in Suit with Eddy Grant

This week, the SDNY denied the motion to dismiss requested by Donald J. Trump et al in the copyright suit filed by singer/songwriter Eddy Grant. The complaint stems from the unlicensed use of Grant’s song “Electric Avenue” which was synched with an animated, political video satirizing then candidate Joe Biden in 2020. The video was distributed via social media, including on Trump’s own Twitter account on August 12th. The defendants based their petition for dismissal on the grounds that use of the song was a fair use.

It is difficult in general to win a dismissal of a copyright claim based on a fair use defense. But that procedural standard notwithstanding, the fair use argument presented in this case is well-trod territory and, therefore, short work for a court in the Second Circuit, which is replete with copyright precedent. Specifically, Trump et al employed a familiar tactic by arguing a too-broad interpretation of what it means to “use a work for a different purpose” than its original purpose at creation. This argument is made under the first prong of the fair use test, which considers the purpose of the use, including whether the use is transformative. Here, the SDNY was clear:

While it is true that the animation is partisan political commentary and the song apparently is not, the inquiry does not focus exclusively on the character of the animation; rather, it focuses on the character of the animation’s use of Grant’s song. As the Second Circuit Court of Appeals recently stated: ‘where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ is insufficient to render a work transformative.’

So, as I say, the court is not breaking any new ground in finding that the fair use test would most likely favor Grant in this case and that it must, therefore, deny the motion to dismiss. If this litigation proceeds, I believe Trump et al will continue to find that there is no precedent on which its fair use defense can survive; and considering the much darker legal clouds gathering around Trump’s world, I would not be surprised if this little civil dispute with one musician is settled in the coming weeks or months.

Is Political Speech a Little Different?

What can be tricky for many observers with this kind of case—and the court here alludes to the matter—is that political satire is a “rich part of our First Amendment tradition.’” The the anti-Biden video was satirical in general and produced by a third party, albeit as an endorsement of Trump for President. But the reason the transformative test fails is that no comment upon “Electric Avenue” itself is present in the use. The fact that the overall message of a work may be satirical does not favor a fair use any more than if the overall message is deadly serious. The essential ingredient that must exist under prong one of the fair use test is some comment upon the work being used without license. But what if a political video is satirical overall and achieves parody of a work being used?

In fact, this is close to what occurred in Henley v. DeVore in which Don Henley’s songs were used for political purposes, and about which the court in Grant writes, “In Henley, the defendants changed some of the lyrics to the copyrighted songs and even provided their own vocals. And because the defendants there used the songs as vehicles for their political messaging, in one instance to poke fun at Henley himself for his political affiliations, the court found that the secondary works were satire and parody, respectively.”

The Grant court notes that the fair use test still failed due to the amount of Henley’s work used for the purpose, but I underline the example to make the point that a political advertisement could conceivably be parody of a work and a satire at the same time and, therefore, be held a fair use of a protected work at issue. But might this raise an acute tension with the First Amendment?

It is considered self-evident that political speech is a paradigmatic subject of the speech right, but if this is so, then compelled political speech is a paradigmatic infringement of the speech right. Thus, when a copyrighted work is used without license in a political message, the use has greater potential to result in an especially egregious form of compelled speech. This principle is exacerbated in the current climate, where political divisions are sharp and hostile, but also in the digital landscape, where the distinction between the political satirist and the political operative is almost invisible.

Any smartass with a smartphone can, and does, make potentially very persuasive political commentary and distribute same via social media. And, of course, the low-cost tools of production and distribution are available to the many PACs and other third parties who are not in the satire business like South Park or The Daily Show, but are instead in the professional campaign business. Meanwhile, as viewers, we do not pay much attention to the sources of all the memes and videos that shape or reinforce our views and opinions—even where that information is available at all.

In principle, a court looking at a satirical video, whether it is produced by a PAC or SNL, should consider fair use in the same manner. As the court in Grant notes, “…denying the defendants’ fair use defense in this case—especially at this early stage in the litigation—will not chill legitimate political satire. Creators of satirical videos like the one at issue here must simply conform any use of copyrighted music with copyright law….” On the one hand, it is sensible that a court view the Biden satire video as it would any other “legitimate political satire” with regard to the fair use analysis; but on the other hand, it strikes me that if the creator of a political satire is a political operative with a clear political purpose (e.g. to win an election or advance a specific policy), that the speech rights of the copyright owner should perhaps weigh more heavily against a finding of fair use than might be considered in a use that does not have such a clear political purpose.

While it is true that the unlicensed use of a work to promote a brand or a message may feel to the copyright owner like a form of compelled speech (and may even violate his right of publicity), these private sector infringements lack the state action  necessary to implicate the First Amendment. And even though a work of political satire may be produced by a party like a PAC, which is in the private sector, when the satire’s purpose is arguably an extension of a political campaign—especially of an incumbent office-holder—the copyright owner may justifiably feel a more acute form of compelled speech than with a typical commercial infringement.

Specifically, when a sitting President uses his social platform to distribute a video endorsing his reelection, and the video is enhanced by an unlicensed copyrighted work, the compelled contribution by the rightsholder to that message may consider the experience awfully close to a constitutional, as well as a personal, violation of his speech rights. This may be true even with an incumbent who is more disciplined than Donald Trump when it comes to the distinctions between the office and the individual. The fact that this form of compelled speech will generally skirt a constitutional violation is a technicality mired in the tangles of campaign finance rules and the role of PACs, but the bottom line for the copyright owner is likely something like this: “The sitting President just used my voice to support his reelection, and I don’t support him.” But should that violation be allowed, if the use also succeeds in commenting upon the work at issue within the same political message? Perhaps, but alas …

Sadly, we no longer live in a world in which political theater plays a fractional role within a broader competition of ideas. Instead, our political process is too often nothing more than theater. No politician in modern history both exploited and exemplified this circus atmosphere more than Donald Trump, and no platform has ever amplified the cacophony like social media. It is simply too easy today to cobble together pictures and sounds into political performances that go viral; and at the very least, the authors of the works being used should be accorded the right to allow or disallow the exploitation of their creative expressions for those purposes.

The underlying principles of the fair use exception in copyright law are high-minded in theory. The exception supports the speech right—especially the right to comment upon protected works—and this, in turn, animates the foundation of copyright to promote more expression. But when considering fair use in regard to using unlicensed works for political speech, perhaps the identity of the user and the precise nature of his political intent should be considered under factor one—the purpose of the use—in deference to the copyright owner’s speech rights.

Photo source by: melis82