Category: Law & Policy

The Role of Fame in Considering Fair Use

In Justice Kagan’s blistering dissent in AWF v. Goldsmith, she stated the following:

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). [Emphasis added]

Kagan’s sweeping view that she could not imagine why there would be interest in a Warhol that comments upon the Goldsmith photo is, I assume, careless editorial—overlooking facts relevant to the instant case and, more broadly, ignoring the significance of commentary at the heart of the fair use doctrine. It is important to keep in mind that, but for this litigation, Goldsmith’s unpublished photo of Prince is not widely known, and it was certainly not known in the 1980s when Warhol made his screens. So, Justice Kagan is right to note that commenting upon a work that nobody had seen would be an absurdity but wrong if she means to imply that the courts should not look for “critical bearing” on the work used when weighing factor one.

You can’t tell a joke about a rabbi, a priest, and a monk walking into a bar if the listener doesn’t know what those three words mean. By this same principle, certain types of comment about protected works are impossible unless the work used has at least some presence in the minds of the intended audience. Parody is futile without the intended audience having an awareness of the work being lampooned, but education, criticism, or news reporting are all paradigmatic purposes under fair use that do not require the intended audience to have any familiarity with the work being used.

All three of those exemplary purposes may be introducing a work to the intended audience for the first time, but in those cases, the comment is likely to be explicit, in written or verbal form to discuss or critique the work being used. In such instances, it is relatively easy to determine, for instance, whether an article or blog post displays an image for illustrative purposes (disfavoring fair use) or displays an image for the purpose of critiquing the image and/or the artist (favoring fair use).

Finding “critical bearing” in a use may be more nuanced when one expressive artist uses another expressive artist’s work—e.g., a visual work commenting upon another visual work—and here, the notoriety of the work used likely plays a more significant role. For instance, in Leibovitz v. Paramount, we have a parody of a visual work made by another visual work. Observers (especially at the time) saw the image of pregnant Leslie Nielsen and were familiar with the iconic image of pregnant Demi Moore that was being lampooned. And to achieve the parody, it was necessary to copy the heart of Annie Leibovitz’s expression.

Left: Demi Moore by Annie Leibovitz. Right: Movie poster by Paramount Pictures.

Of course, notoriety of the work being used entails a balancing act for the follow-on artist. On the one hand, the work used must be at least somewhat well known for the observer to perceive any comment being made about it. At the same time, the more famous the original work, the more the follow-on artist may be found to be riding the coattails of that fame and “avoiding the drudgery of working up something new.” In Dr. Seuss Enterprises v. ComicMix, the follow-on artists were found to have copied a substantial amount of the original expression—both quantitatively and qualitatively—of some of the most famous visual works ever made.

Left: Image from Dr. Seuss’s “The Zax.” Right: Image from ComicMIx’s “Oh, the Places You’ll Boldly Go!”

And although the defendants in ComicMix attempted to argue that there was parody in their mashup book, the asserted commentary was (as in Warhol) about topics or themes unrelated to any “critical bearing” on the works used. As described in other posts about ComicMix, the extensive amount of precise copying militated against fair use because the result was a book that any observer could mistake for a derivative work produced by the rightsholder. Thus, the “riding coattails” consideration weighs heavily against the follow-on creators.

Must All Observers Be “Ordinary”?

In Campbell, Leibovitz, and ComicMix, we have examples of wide-audience fame, but small-audience notoriety should not necessarily disqualify the follow-on artist from a reasonable claim to have expressed “critical bearing” on the work used. I once had a conversation with Professor Lateef Mtima about whether a jazz artist could successfully parody a well-known jazz work. We all might recognize, for instance, “Round Midnight” when we hear it, but if a new artist were to riff on that piece and interject elements that are intended as comment upon the original, it would probably take a very sophisticated listener to perceive the nature of that comment. If it were even possible.

As an exercise, this raises the question as to whether “critical bearing” on the work used must always be reasonably perceived by an “ordinary observer,” or whether the intended audience may be quite narrow. In the fine art world, where Warhol lives, is it necessary that everybody “get it,” if comment is in fact present? If fifty critics and a thousand art afficionados understand the comment being made, is that sufficient to find that factor one favors the use? I would predict that it may be sufficient for factor one, but that the uniqueness of the audience could militate against finding that factor four favors the use, depending on the market for the original.

I assume Justice Kagan’s off-the-cuff remark that she could not imagine interest in a Warhol that comments upon the Goldsmith photo was hyper-focused on the two works at issue—a parenthetical jibe in a snarky dissent, which overlooks the relevance of the photo’s obscurity at the time it was used. As such, Kagan inadvertently advises creators to consider the notoriety (intended audience’s awareness) of the work they propose to use and how that notoriety supports or rejects any claim to “critical bearing” as a result of the new use. Justice Kagan may not imagine such a thing, but artists should, if they want to make fair uses of protected works.

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.

Let’s Stop Analogizing Human Creators to Machines

Just as it is folly to anthropomorphize computers and robots, it is also unhelpful to discuss the implications of generative AI in copyright law by analogizing machines to authors.[1] In 2019, I explored the idea that “machine learning” could be analogous to human reading if the human happens to have an eidetic memory. But this was a thought exercise, and in that post, I also imagined machine training that serves a computer science or research purpose—not necessarily generative AIs trained on protected works designed to produce works without authors.

In the present discussion, however, certain parties weighing in on AI and copyright seem to advocate policy that is premised on the language and principles of existing doctrine as applicable to the technological processes of both the input and output sides of the generative AI equation. Of course, policy discussions usually begin with the existing framework, but in this instance, it can be a shaky starting place because generative AI presents some unique challenges—and not just for the practice of copyright law.

We should be wary of analogizing machine functions to human activity for the simple reason that copyright law (indeed all law) has never been anything but anthropocentric. Although it is difficult to avoid speaking in terms of machines “learning” or “creating,” it is essential that we either constantly remind ourselves that these are weak, inaccurate metaphors, or that a new glossary is needed to describe what certain AIs may be doing in the world of creative production.

On the input (training) side of the equation, the moment someone says something like, “Humans learn to make art by looking at art, and generative AIs do the same thing,” the speaker should be directed to the break-out session on sci-fi and excused from any serious conversation about applicable copyright law. Likewise, on the output side, comparisons of AI to other technological developments—from the printing press to Photoshop—should be presumed irrelevant unless the AI at issue can plausibly be described as a tool of the author rather than the primary maker of a work of creative expression.

Copyright Office Guidance Highlights Some Key Difficulties

To emphasize the exceptional nature of this discussion, even experts are somewhat confused by both the doctrinal and administrative aspects in the new guidelines published by U.S. Copyright Office directing authors how to disclaim AI-generated material in a registration application. The confusion is hardly surprising because generative AI has prompted the Office to ask an unprecedented question—namely, How was this work made?

As noted in several posts, copyrightability has always been agnostic with regard to the creative process. Copyright rights attach to works that show a modicum of originality, and the Copyright Office does not generally ask what tools, methods, etc. the author used to make a work.[2] But this historic practice was then confronted by the now widely reported applications submitted by Stephen Thaler and Kris Kashtanova, both claiming copyright in visual works made with generative AI.

In both cases, the Copyright Office rejected registration applications for the visual works based on the longstanding, bright-line doctrine that copyright rights can only attach to works made by human beings. In Thaler’s case, the consideration is straightforward because the claimant affirmed that the image was produced entirely by a machine. Kashtanova, on the other hand, asserts more than di minimis authorship (i.e., using AI as a tool) to produce the visual works elements in a comic book.

Whether in response to Kashtanova—or certainly anticipating applications yet to come—the muddiness of the Office guidelines is an attempt to address the difficult question as to whether copyright attaches to a work that combines authorship and AI generation, and how to draw distinctions between the two. This is not only new territory for the Office as a doctrinal matter but is a potential mess as an administrative one.

The Copyright Office has never been tasked with separating the protectable expression attributable to a human from the unprotectable expression attributable to a machine. Even if it could be said that photography has always provoked this tension (a discussion on its own), the analysis has never been an issue for the Office when registering works, but only for the courts in resolving claims of infringement. In fact, Warhol v. Goldsmith, although before SCOTUS as fair use case, is a prime example of how tricky it can be to separate the factual elements of a photograph from the expressive elements.

But now the Copyright Office is potentially tasked with a copyrightability question that, in practice, would ask both the author and the examiner to engage in a version of the idea/expression dichotomy analysis—first separating the machine generated material from the author’s material and then considering whether the author has a valid claim in the protectable expression.

This is not so easy to accomplish in a work that combines author and machine-made elements in a manner that may be subtly intertwined; it begs new questions about what the AI “contributed” to a given work; and the inquiry is further complicated by the variety of AI tools in the market or in development. Then, because neither the author/claimant nor the Office examiner is likely a copyright attorney (let alone a court), the inquiry is fraught with difficulty as an administrative process—and that’s if the author makes a good-faith effort to disclaim the AI-generated material in the first place.

Many independent authors are confused enough by the Limit of Claim in a registration application or the concept of “published” versus “unpublished.” Asking these same creators to delve into the metaphysics implied by the AI/Author distinction seems like a dubious enterprise, and one that is not likely to foster more faith in the copyright system than the average indie creator has right now.

Copyrightability Could Remain Blind But …

It is understandable that some creators (e.g., filmmakers using certain plug-ins) may be concerned that the Copyright Office has already taken too broad a view—connoting a per se rule that denies copyrightability for any work generated with any AI technology. This concern is a reminder that AI should not be discussed as a monolithic topic because not all AI enhanced products do the same thing. And again, this may imply a need for some new terms rather than the words we use to describe human activities.

In this light, one could follow a different line of reasoning and argue that the agnosticism of copyrightability vis-à-vis process has always implied a presumption of human authorship where other factors—from technological enhancements to dumb luck—invisibly contribute to the protectable expression. Relatedly, a photographer can add a filter or plug-in that changes the expressive qualities of her image, but doing so is considered part of the selection and arrangement aspect of her authorship and does not dilute the copyrightability of the image.

Some extraordinary visual work has already been produced by professional artists using AI to yield results that are too strikingly well-crafted to believe that the author has not exerted considerable influence over the final image. In this regard, then, perhaps the copyrightability question at the registration stage, no matter how sophisticated the “filter” becomes, should remain blind to process. The Copyright Office could continue to register works submitted by valid claimants without asking the novel How question.

But the more that works may be generated with little or no human spark, the more this agnostic, status-quo approach could unravel the foundation of copyright rights altogether. And it would not be the first time that major tech companies have sought to do exactly that. It is no surprise that an AI developer or a producer using AI would seek the financial benefits of copyright protection; but without a defensible presence of human expression in the work, the exclusive rights of copyright cannot vest in a person with the standing to defend those rights. Nowhere in U.S. law do non-humans have rights of any kind, and this foundational principle reminds us that although machine activity can be compared to human activity as an allegorical construct, this is too whimsical for a serious policy discussion.

Again, I highlight this tangle of administrative and doctrinal factors to emphasize the point that generative AI does not merely present new variations on old questions (e.g., photography), but raises novel questions that cannot easily be answered by analogies to the past. If the challenges presented by generative AI are to be resolved sensibly, and in a way that will serve independent creators, policymakers and thought leaders on copyright law should be skeptical of arguments that too earnestly attempt to transpose centuries of doctrine for human activity into principles applied to machine activity.

[1] I do not distinguish “human” authors, because there is no other kind.

[2] I say “generally” only because I cannot account for every conversation among claimants and examiners.

Image by boom15th931