Category: Intellectual Property

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 It is important to keep in mind that, but for this litigation, Goldsmith’s unpublished photo of Prince is not widely known, and it was certainly not known in the 1980s when Warhol made his screens.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.

Relitigating Cariou:  Why Fine Art Will Still Be Fine After Warhol v. Goldsmith

Although the most straightforward cases of fair use thus involve a secondary work that comments on the original in some fashion, in Cariou v. Prince, we rejected the proposition that a secondary work must comment on the original in order to qualify as fair use.  

– 2nd Circuit Court of Appeals in Warhol v. Goldsmith –

The following is an experiment:

One reason that fine artists et al. are not suddenly standing on uncertain fair use ground after the Supreme Court’s decision in Andy Warhol Foundation v. Lynn Goldsmith is that the Court did not articulate a new standard for factor one analysis. Rather, it reaffirmed its own and other courts’ holdings that some “critical bearing” on the work used must be present to find the use “transformative.” Further, as Keith Kupferschmid, CEO of Copyright Alliance writes, “There are unambiguous references throughout the decision that make it clear the Court intends to rein in transformative use from being dispositive and controlling of the four fair use factors.”

One prominent lawsuit that is substantially intertwined with the case law surrounding Warhol is the highly controversial decision in Cariou v. Prince in which appropriation artist Richard Prince was found to have made 25 (out of 30 at issue) fair uses of Patrick Cariou’s photographs. Not only was this case an example of transformativeness carrying considerable weight, but the transformative analysis itself turned on rejecting the “critical bearing” standard. But in a hypothetical re-litigation, I believe Prince could lose on factor one and still win on fair use overall. In Cariou, the Second Circuit stated the following:

What is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work. Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so.

Any artist taking direction from the decision in Warhol would reasonably find that holding contradicts the “critical bearing” test. It is also notable that the court articulated a “reasonable perception” standard based on Campbell and Leibovitz—two cases involving parody and, therefore, demand that the observer perceive parody—in order to rationalize finding transformativeness in works with no “critical bearing” whatsoever…

Rather than confining our inquiry to Prince’s explanations of his artworks, we instead examine how the artworks may “reasonably be perceived” in order to assess their transformative nature. Campbell, 510 U.S. at 582; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 113-14 (2d Cir. 1998) (evaluating parodic nature of advertisement in light of how it “may reasonably be perceived”). The focus of our infringement analysis is primarily on the Prince artworks themselves, and we see twenty-five of them as transformative as a matter of law.

Later, in its Warhol decision, the Second Circuit stated that the district court had erred in reading this aspect of the Cariou opinion too literally…

…the district court appears to have read Cariou as having announced such a rule, to wit, that any secondary work is necessarily transformative as a matter of law ‘[i]f looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results. Although a literal construction of certain passages of Cariou may support that proposition, such a reading stretches the decision too far.

To be clear, Cariou may reasonably be called dead law after Warhol and after the Second Circuit’s ruling in Graham v. Prince, which naturally shares common features, including the same defendants. But for the sake of this experiment, let’s look past the court’s efforts to reconcile its contradictory language in Cariou and imagine that the same facts are relitigated under the “critical bearing” standard and that factor one would, therefore, disfavor Richard Prince. Does this mean he necessarily loses on fair use? Prince did not assert, and the court did not find, “critical bearing” in any of the 25 fair uses, so we’ll assume that factor one now favors Cariou in all those examples and ask what happens to the rest of the fair use analysis?

Factor two would still favor Cariou because his photographs are expressive in nature.The second factor is often given light consideration in the overall analysis because its inquiry is typically binary—asking whether the work used is expressive or informative in nature—and there is no reason to assume it would be given any greater consideration in a hypothetical new case. Thus, the score is now 2-0 for Cariou.

Factor three is, perhaps, the trickiest question in this hypothetical on the basis that “The secondary use ‘must be [permitted] to ‘conjure up’ at least enough of the original” to fulfill its transformative purpose” (Cariou citing Leibovitz). Here, the court states, “Prince used key portions of certain of Cariou’s photographs. In doing that, however, we determine that in twenty-five of his artworks, Prince transformed those photographs into something new and different and, as a result, this factor weighs heavily in Prince’s favor.”

One reading of this holding is that factor three would have to now favor Cariou because, under the “critical bearing” standard, the court must find that there is nothing transformative in Prince’s works for which any amount of the work used can be justified. But although it is true that the amount of a work used should be weighed in light of the purpose of the use, there is an argument to be made that allowing factor one to exert too much control the over the other factors is a judicial tendency that may now be moderated after Warhol.

Note that the statute instructs the courts to consider “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” Though it is correct to say that the factors shall be weighed interdependently, in the most basic analysis, factor three asks how much of Cariou’s photos did Prince copy, and in at least some of the works at issue the answer may still be not very much. For instance, in the collage work “James Brown Disco Ball,” parts of two Rastafarian photos are used as raw elements, and arguably, very little remains of Cariou’s photographic expressions. While a fresh analysis of each of the 25 works might find too much copying in some instances, the broader point is that transformativeness need not control the consideration, and factor three can still favor Prince even if he loses on factor one.

Left: Photos by Patrick Cariou. Right: “James Brown Disco Ball” by Richard Prince.

On factor four, the major complaint against the district court’s finding for Prince is that its analysis comes very close to articulating a “celebrity exception” on behalf of the defendant, which the Second Circuit later inveighed against in its Warhol opinion. In Cariou, the fourth factor consideration states:

Prince’s work appeals to an entirely different sort of collector than Cariou’s. Certain of the Canal Zone artworks have sold for two million or more dollars. The invitation list for a dinner that Gagosian hosted in conjunction with the opening of the Canal Zone show included a number of the wealthy and famous …. Cariou on the other hand has not actively marketed his work or sold work for significant sums, and nothing in the record suggests that anyone will not now purchase Cariou’s work, or derivative non-transformative works (whether Cariou’s own or licensed by him) as a result of the market space that Prince’s work has taken up.

In a hypothetical re-litigation, perhaps the court would not be so starstruck, and rather than contrast Prince’s celebrity and wealth against Cariou’s more modest career, the court would confine its analysis to the works themselves. Once again, even without first finding transformativeness, a reasonable observer can conclude that some, or all, of the 25 Prince works are not substitutes for Cariou’s photographs, and there seems to be no other colorable claim of potential market harm in this case. On this basis then, factor four would still favor Prince.

So, do we have 2-2 tie in the hypo? Yes, but not necessarily. Part of the point of this experiment is to show that neither transformative use in particular, nor factor one in general, must control the entire fair use analysis in order to still find fair use. In fact, once upon a time, factor four carried more weight in fair use cases, and perhaps hypothetical Cariou v. Prince 2 is a good example of when it should again—especially if the factor three analysis finds that the follow-on work does not use a substantial amount of the original works’ protected expressions. So, it is possible for Prince to win (or partly win) on the weight given to fair use factors three and four rather than factor one.

Were this case in fact relitigated, the court might not agree with the above, but the purpose of this post is to emphasize that although the Warhol decision indicates that transformativeness need not carry the entire fair use defense, moving the fair use pendulum away from that assumption does not doom the fair use doctrine or the production of new art—not even appropriation art. That said, Warhol does raise another issue of which Cariou is an example—namely whether the allure of transformativeness has resulted in fair use cases that need not get to fair use.

Maybe Find Infringement First?

Perhaps one result of Warhol will be that defendants and courts, before leaping to fair use defenses based on weak assumptions of transformation, will instead consider whether a foundation for a claim of infringement exists in the first place. For example, my factor three consideration of the amount of copying in “James Brown Disco Ball” might be more properly an argument for non-infringement on the basis of di minimis use. This consideration would seem to apply to follow-on artworks that use fragments of protected works as raw elements, and there may be no need to consider fair use. Likewise, I have opined in other posts that in a substantial similarity analysis, Warhol does not copy enough of Goldsmith’s protected expression to find infringement. People of good intent can disagree with that assessment, but the broader point is that certain uses may simply be found non-infringing without having to embroider fair use tapestries made from gossamer threads of transformative whimsy.

Contrary to some views, I believe Warhol provides guidance to creators. To wit: Are you using a work to express some “critical bearing” (comment) about the work? If no, have you substantially copied the expression in the original work? If yes, then there is a pretty good chance your use is infringing, and you might need to adjust what you’re working on and/or consult with legal counsel for some guidance. Creators know that working around a copyright hurdle can be as generative of new creativity as working through any other challenge. So, the idea that new expression will henceforth be stifled by the decision in Warhol is very narrow thinking indeed.

Image source: africa_images

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.