Navigating Contemporary Fair Use

Shortly after the Second Circuit Court of Appeals ruled in Warhol v. Goldsmith, I wandered deep into the tall grass, PJs tucked into my boots, thinking about the fair use analysis in the difficult context of fine art. And then the Supreme Court delivered Justice Breyer’s opinion in Google v. Oracle, which, among other transgressions, broke a cardinal rule by weighing a fair use defense without first addressing the challenge to copyrightability of the work at issue. The result was a train wreck of legal contradictions in which a core copyrightability question was dropped into prong two of the fair use test like a marshmallow in a martini.

But one thing Goldsmith and Google have in common is that both opinions confirm that when it comes to the fair use doctrine, legal practitioners, the courts, and creators seem to be hiking through an ever-thickening wood without map or compass. This may be especially true with regard to distinguishing fair uses from derivative works, and I say that despite the extent to which the court in Goldsmith showed deference to derivative works—because it did so without offering much clarity on the matter. But let’s back up a bit.

I think there are a lot of moving parts in the Goldsmith case that don’t fit into a single post of ordinary length; and although the following contains several personal opinions, a few of which may diverge from my pro-copyright friends and colleagues, it is all offered as food for thought—asking more questions than presuming to have answers. Further, this post assumes a certain familiarity with Goldsmith and the related cases, but here’s the background as condensed as I can make it:

Background – Andy Warhol Foundation (AWF) v. Lynn Goldsmith

Lynn Goldsmith captured the photograph at issue in 1981, during a truncated photo session with the semi-reclusive musical artist Prince Rodgers Nelson, who was then barely known to mainstream audiences as Prince. Goldsmith contends that she made certain creative choices resulting in an image of the “vulnerable human being” behind the persona. The photograph was never published but was licensed in 1984 (unbeknownst to Goldsmith) to Vanity Fair as a “reference photo” to produce an illustration to accompany a story about musician’s rise to stardom. In fact, the photo was used by Andy Warhol make a series of silkscreens similar to those he has made of Marilyn Monroe, Mao Zedong, etc., all using photographs as original sources.

Goldsmith was not aware of the existence of the Warhol screens until 2016 when, after Prince’s death, Vanity Fair published a special edition with one of the Warhol versions on the cover. At that time, Goldsmith communicated to the Andy Warhol Foundation (AWF) that the works may infringe the copyright on her still unpublished photo, and in response, AWF filed suit seeking a declaratory judgment of non-infringement or, barring that, a finding of fair use. The district court held the Warhol screens to be fair use, primarily by following the Second Circuit ruling in Cariou v. Prince, but on appeal, the court reversed, finding the Warhol screens are not fair uses.

Warhol v. Goldsmith: Maybe Transformative & Fine Art Don’t Mix?

“Just because you can find meaning in art, doesn’t necessarily mean that was the meaning the artist necessarily intended to be there.”– Daniel Sloss, comedian, taking the piss out of a pretentious interpretation of a Jackson Pollock painting.

Although my sympathies are squarely with Lynn Goldsmith, especially because AWF sued her, I am not convinced the Second Circuit came to a sound conclusion—at least not one that can easily be called practicable for future artists. While the court did provide a fresh reminder that there is an important boundary between a transformative use tilting toward fair use and a protected derivative work, this opinion also emphasizes how nettlesome analyzing transformativeness under factor one of the fair use test remains.

Attempting to describe a transformative (potentially fair) use by means of the fallible, subjective English language is difficult enough in many circumstances. Terms like new meaning, new context, new purpose can be so ambiguous that a district court (in Brammer) held that using an “expressive” photograph for an “informational” purpose was transformative. That error demonstrates what can happen when subjective language confronts works like photographs, which are almost always both expressive and informative. Brammer was easy enough to reverse on appeal because the user copied and displayed nearly the entire image for a commercial purpose that classically requires a license. But in a fine art context, where works like reference photos are used all the time, terms like new meaning etc. may be as unhelpful or capricious as asking words to define the secondary artworks themselves.

So, although the Second Circuit provided new language affirming that there is a line between transformative and derivative, if I put myself in the shoes of the next artist seeking guidance from the outcome in Goldsmith, I am not exactly sure where the line is. Especially when the court stopped short of calling the Warhol screens “derivative works.” To put this in visual, practical terms, the artist poised to make use of a reference photograph is told that as things stand, the image on the left is fair use but the image on the right is not:

Left: Secondary use in Keinitz v. Sconnie Nation. Right: Secondary use in AWF v. Goldsmith.

Critical or aesthetic distinctions notwithstanding–and without knowing anything about the original or secondary users’ intent–what are the legal distinctions one can infer from these two images that tell the next artist where the line is? The image on the left, according to the Seventh Circuit has stripped away the protectable expression in the reference photograph, while the image on the right, according to the Second Circuit, has copied too much of the protectable expression from the photograph. And if the next artist asks her attorney for guidance, the answer probably should not be that she should only use reference photos made by authors in Illinois, Indiana, and Wisconsin.

For all the effort the Second Circuit made to clarify the distinction between Goldsmith and in its findings in Cariou—and as informative as that part of the opinion may be to the transformative test (stress on may)—reckoning Goldsmith and Cariou was not really the difficulty in this case in my view. Nevertheless, the distinction does provide a useful framework.

Distinguishing Goldsmith from Cariou

For starters, the circuit court held that the lower court applied too subjective a test by finding that the Warhol screens “can reasonably be perceived to have transformed Prince from a vulnerable, uncomfortable person to an iconic, larger-than-life figure.” To this, the reversing opinion replies:

“…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.” (citations omitted)

So, it’s like that. We know what we said, and you could definitely read it that way, but don’t. But let’s be legal laymen for a moment and look at some of the evidence side-by-side:

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

To the observer without any copyright knowledge whatsoever, there is an objectively perceptible difference between most (if not all) of the Richard Prince works that were held to be fair uses of Cariou’s photographs and the Andy Warhol silkscreens, now found not to be fair uses of Goldsmith’s photograph. Prince’s collages (e.g. James Brown Disco Ball), whatever one thinks of them, are not in any sense reproductions of Cariou’s expressions. They are something else entirely for which Cariou’s photos were used as raw materials in combination with other materials to create a new work. As the court states in the Goldsmith opinion:

“… in Cariou, the copyrighted works found to have been fairly used were, in most cases, juxtaposed with other photographs and “obscured and altered to the point that Cariou’s original [was] barely recognizable.” (citations omitted)

Left: “Prince” by Lynn Goldsmith. Right: One of the silkscreens made by Andy Warhol.

By contrast, Warhol’s screens are clearly made from Goldsmith’s photo, which any ordinary observer can see, but the legal question is whether they copy the protectable expression of the photograph, or merely the facts of it. Goldsmith asserts her authorship, partly by declaring that she made certain decisions in order to capture the “vulnerable, human” Prince, while AWF asserts that Warhol rendered Prince as “icon,” which is arguably the exact opposite expression. In both cases, the court discusses process, which can be problematic for two reasons: 

First, copyright protection is technically agnostic with regard to how a work is made as long as the finished product meets a minimum standard for originality, expressed in the two-prong standard in Feist that the work be independently created and that it reveals a modicum of creativity. Second, the Goldsmith opinion avers that it has sequestered intent from its consideration thus:

“Though it may well have been Goldsmith’s subjective intent to portray Prince as a “vulnerable human being” and Warhol’s to strip Prince of that humanity and instead portray him as a popular icon, whether a work is transformative cannot turn merely on the state or perceived intent of the artist or the meaning or impression that a critic –or for that matter, a judge – draws from the work. Were it otherwise, the law may well ‘recognize[e] any alteration as transformative.’” (citation omitted)

But this view is not compatible with any discussion of process in the production of art because intent and process are often intertwined until they become almost synonymous. To wit, the artist frequently says, “I wanted to express X, so I made decision Y with materials Z.” Nevertheless, stripping intent from the analysis makes sense up to a point. Intent is a highly subjective property of creation; it is apt to be amended or even invented for a complaint or defense brief; and in many cases, as with Richard Prince, an artist may reject the very notion of intent other than “to make art.”

Objectively, I do not think the distinction between Cariou and Goldsmith is unclear; it squares with what I suggested above that any ordinary observer can perceive. The Cariou holding rests on the foundation that “the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material.”

The Richard Prince pieces that were held fair uses would seem to fit that description, but if Warhol’s screens do not meet that standard, is it because too much of Goldsmith’s expression was copied? Or is the transformativeness in the Warhol screens too subtle for this particular panel of judges to notice? Or is the language used to describe transformativeness too obtuse for this entire conversation? Because I strongly suspect those words meaning and message cause a lot of trouble when the transformative principle arrives in the salons of the fine art world.

Fair Use is Founded on “Message”

The seminal case in weighing the fair use consideration called “transformativeness” was Campbell v. Acuff-Rose (1994). There, 2 Live Crew used a substantial amount (the heart of the work) of the song “Oh, Pretty Woman” to produce a rap version that was as nasty as they wanted it to be, and the Supreme Court held the secondary work to be a fair use as a parody.[1] Seminal though it was, Campbell was a relative cakewalk as a consideration. The use conveyed parody that an ordinary listener could hear; the defendant said it was parody; and parody is a paradigmatic purpose implied in the statutory terms “comment” and “criticism” as examples of purposes amenable to a fair use defense. Moreover, the Orbison/Dees song was necessary to 2 Live Crew’s new expression. And a consideration of necessity substantially informs factors one and three.

The four fair use factors are meant to be weighed interdependently, and there is a strong, magnetic interplay between factors one and three which implies a consideration of necessity. Factor one assesses the purpose and character of the use, while factor three assesses the amount of the original work used to fulfill that purpose. As Terry Hart discusses in a post written after the Second Circuit’s Cariou decision, necessity is a cornerstone of fair use jurisprudence. He writes, “… throughout the history of fair use, there has been this idea that some overriding purpose is required to privilege a use that would otherwise be infringing. And the use of the original work must be necessary to the new work.” [Emphasis added]

Although a court opinion will usually reiterate that the four factors are weighted holistically and interdependently, the question of purpose under factor one—and therefore the consideration of transformativeness—appears to take on outsize significance in many contemporary fair use cases. Indeed, scholars and practitioners tell us that factor four, which considers potential harm to the market for the original work, used to be the more dominant factor until “transformativeness” was introduced to jurisprudence in 1990.

In considering the elevated prominence of transformativeness, I believe it is reasonable and relevant to generalize that the fair use doctrine evolved in contexts in which the user’s purpose (i.e. “message”) was fairly easy to define, and this probably remains true in most cases. It is no accident that the statutory examples in Section 107, though not exhaustive, imply commonly understood forms of expression and, moreover, imply some element of commentary—in many cases, nonfiction commentary—upon the work being used.

Thus, the doctrine of necessity, as Hart describes in his post, is fairly straightforward. We do not need legal educations to understand why the historian or journalist needs to quote certain works or why the parodist needs to copy enough of an original to make the joke work. In these examples, ordinary observers usually share a common understanding of what the secondary works are saying as well as an understanding of the nature of the work used. Indeed, one rule of fair use as parody (Leibovitz v. Paramount) is that the nature of the original expression must be sufficiently understood in the consciousness of the observers in order to assert parody. My point is that purpose is typically intertwined with a broadly understood “message,” and this is the context in which we traditionally think about fair use. Thus, most of the language in fair use case law ably suits this these analyses.

But a communicable assessment of purpose can break down in the quantum universe of fine art where “message” is often eschewed or becomes subjective to a point of whimsy that some find obnoxious, but which may also be rescued in a critical sense by the principle known as art of for art’s sake. Richard Prince, whatever anyone thinks about him or his work, makes art for art’s sake. And although many other artists will call him “lazy,” I am not sure that he is always “avoiding the drudgery of working up something new” in a legal sense, at least not in the Cariou examples held to be fair uses.

Richard Prince, in this regard, is comparable to Marcel Duchamp (or Warhol for that matter), appropriating bits and pieces of creative works rather than “found objects” and treating these as raw media without caring about their original meanings or certainly the original authors. He treated Cariou’s Rastafarian photographs as “raw elements,” and as Terry Hart notes in a post arguing that Cariou was wrongly decided, finding fair use in those instances was doctrinally out of step with the Supreme Court’s instructions on transformativeness. He writes:

“… the Second Circuit disregarded the Supreme Court’s direction on transformativeness. That Prince was using Cariou’s photos as raw materials to “avoid the drudgery in working up something fresh” rather than building upon them seems readily apparent, especially given Prince’s own testimony during the trial that he “‘do[es]n’t really have a message,’ that he was not ‘trying to create anything with a new meaning or a new message,’ and that he ‘do[es]n’t have any . . . interest in [Cariou’s] original intent.’”

But does Hart’s incontrovertible observation mean that the Second Circuit invented a new fair use standard, or does it imply that the language used to describe transformativeness is hopelessly inadequate to assess potential fair uses in certain contexts? Because fine art may not be about message at all. Quite often it is not, unless somebody makes one up.

It is relevant to note that the courts tend to imbue transformativeness with subjective measurement, using terms like “slightly transformative” or “highly transformative,” and indeed anything other than a binary yes or no may be vexing for practitioners. But suffice to say, the courts do seem to agree that there is such a thing as more transformative or less transformative, which is probably a natural temptation in an analysis that purports to weigh interdependent factors.

But if that is the case, and a court cannot define what the new expression is other than “art,” then it seems the court cannot rationally assign a “more” or “less” value to transformativeness in such an instance. In Cariou, the court found transformativeness in a use without “message” by upending the Supreme Court’s instructions, finding that, “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. 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.” [emphasis added]

So, is Cariou one of the worst decisions in modern fair use jurisprudence—a “carve out for Richard motherfucking Prince”—as one attorney called it on Twitter? Or is it a sophisticated and nuanced interpretation of transformativeness, but which perhaps disserved the plaintiff by skewing other factors in the fair use analysis?

Because the analysis of purpose and character is historically grounded in definable forms of expression, other factors should perhaps supersede the search for transformativeness in cases where “message” cannot be clearly defined, where the defendant rejects the idea of “message,” and where we do not want judges to act as art critics and invent “messages” they perceive, which may be rejected by other observers, including the defendants themselves.[2] In such circumstances, the court has little or nothing upon which to hang a transformative analysis, and the doctrine of necessity evaporates altogether.

If secondary artworks cannot tell us what they are conveying, a court cannot rationally weigh how necessary the works used were to the new expression or how transformative the new work is. At best, the court can find that using precedent works as “raw materials” could tilt toward fair use, though in some cases, perhaps the exception is more properly de minimis use.

In fine art, where “message” does not necessarily define purpose, the fair use analysis can be frustratingly vague under factor three as well. If the user’s purpose is undefinable, the court can only guess whether the amount used was the “least amount necessary” to that purpose, which boils down to taking the user’s word for it—that he used what he needed to achieve an expression that he himself refuses to describe. And the Second Circuit in Goldsmith said the courts should be deaf and blind to such claims by the artist in general.

So, what if the courts demote the need to immediately describe transformativeness in the equation and simply affirm, for instance, that both James Brown Disco Ball and the Warhol screens are new and hold this newness to be purpose enough to proceed with the analysis? In such an instance, it seems, the analysis could begin with factor three, but with the understanding that the absence of purpose warps the “amount necessary” consideration. So, what the court is left with is reproduction. Because, in the simplest (i.e. layman-friendly) terms, it seems the Second Circuit found that James Brown Disco Ball does not reproduce Cariou’s expressions but that the Warhol silkscreens do reproduce Goldsmith’s expression. As such, should the court really proceed with a fair use analysis at all?

What is a Derivative Work of a Photograph?

Although the court sufficiently explains the distinction in reasoning between Cariou and Goldsmith, it does not compellingly explain why Warhol copied anything more than the facts of Prince from Goldsmith’s photograph, especially when the opinion stops short of finding that the Warhol screens are derivative works “as a matter of law.” Because if not, what are they? According to this court, the screens are more akin to any other print that Goldsmith might have made herself (e.g. a version where she burns and dodges to change the contrasts) from the original negative. But that begs a question not answered by this court, and one not easily answered in general: what exactly constitutes a derivative work of a photograph?

Nearly all photographs are a mix of protectable expression and unprotectable fact. A portrait in front of a plain background, no matter how expressive the face or pose may be—and no matter how much effort the photographer makes to extract the look from her subject—still contains a substantial amount of fact that is simply not protectable.

In the seminal case affirming copyright in photography (Burrow-Giles v. Sarony, 1884), Napoleon Sarony did not invent the fact of Oscar Wilde in the portrait at issue, but the Court held that the lithographic company reproduced all of Sarony’s expressive choices—background, positioning, propping, etc.—some of which required considerable effort and care in 1882. But if the Wilde photograph had been a headshot against a plain backdrop, the Supreme Court might have come to a very different conclusion—not that the lithographer had made a fair use, but rather that Sarony’s photograph contained insufficient authorship for copyright to protect.[3]

Jump to 1981, and we should by no means deny Lynn Goldsmith authorship in her photograph of Prince—doctrine has evolved, and I think correctly, to embrace more nuance since 1884. But if we follow the Second Circuit’s reasoning—i.e. that Goldsmith’s authorship is not “Prince’s vulnerability” and Warhol’s secondary authorship is not “Prince as icon”—then it seems that a consideration of what the two works share is either “Prince as fact” or “Prince as expression,” the former fair use, the latter infringing. My personal call would probably tilt toward “Prince as fact,” with each work imbued by relatively thin, but distinguishable, layers of authorship in both cases. Ergo, the Warhol screens, especially presented as a series in a multi-screen artwork, are more properly a fair use in my view.* But if they are not fair use, then it seems the court should have at least unequivocally called the screens derivative works or reproductions.

Instead, adding what seems like further confusion, the Goldsmith opinion concludes by describing the Warhol screens as “substantially similar” to the photograph, which seems like a strange finding to follow a fair use decision, especially, when considering an image with relatively thin protectable elements. Because to the ordinary observer (i.e. next creator), isn’t the court essentially calling the screens “copies” without quite saying so? And if they’re copies, the court should should end its analysis at §106 and not bother with §107 at all.

Derivative Works and Factor Four

It is intriguing (frustrating?) that the court declined to call Warhol’s screens derivative works given that the misapplication of a derivative works analysis can lead to poor considerations under factor four, which is arguably where the Second Circuit did the greatest disservice to Patrick Cariou. Factor four considers the potential harm to the market for the original works. And although one can sustain the finding that Richard Prince’s works make use of Cariou’s images in ways too unrecognizable to have any effect on the potential market for the original works, the court did not need to leave us with this observation about factors extrinsic to the works themselves:

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.

That’s the kind of language which invites criticism that the Second Circuit carved out an exception for Richard Prince (i.e. that the court was distracted by his celebrity), and it is not easy to reconcile with its declaration in Goldsmith

Finally, we feel compelled to clarify that it is entirely irrelevant to this analysis that ‘each Prince Series work is immediately recognizable as a ‘Warhol.’ Entertaining that logic would inevitably create a celebrity-plagiarist privilege; the more established the artist and the more distinct the artist’s style, the greater leeway that artist would have to pilfer the labors of others.

Agreed in principle, but damn. In order to justly consider under factor four whether a secondary work may usurp the market for the original, the court should imagine the original author’s potential means of exploiting his works. And although Cariou would be unlikely to use his photos in a manner akin to Richard Prince, photographers straddle the worlds of photojournalism and fine art all the time. As such, the court should no more have described the celebrity world occupied by Richard Prince than it should give deference to same for Andy Warhol. The light reflecting off the fame of a particular user can obscure the court’s view of a derivative work that may be advertised as a transformative fair use.

BUT (and this is one reason this case keeps me up at night), there may be instances where an artist’s “message,” like the unmistakable Warholness of the many silkscreens he made in his career, is a factor that reasonably makes a secondary work a new expression with new meaning or message. Campbell’s soup cans on a shelf are just soup. Campbell’s soup cans painted on a canvas—or any medium—are “Warhol’s soup cans.” Another artist could not hope to use that graphic element without alluding to Warhol. Like it or not, Warhol gave that mundane packaging new meaning, and that meaning cannot be entirely compartmentalized from the celebrity attached to the act of making the works.

So, to return to the start of this epic journey inward, if we place ourselves in the studio of the artist about to make use of a reference photograph for a new work, shifting her gaze back and forth between the image in Sconnie Nation and the Warhol screens, what does she conclude? I’m still not sure, but I may have to agree with one commenter on a Facebook group I help moderate that the Supreme Court just might grant cert if AWF pursues an appeal that far. Though after Google v. Oracle, I would not necessarily have high hopes for clearer direction on fair use.

Implications for New Challenges

Finally, it strikes me that a finding of fair use of works as “raw materials” in Cariou has more kinship with the opinion in Google Books than it does with assessing the purpose of a secondary work of artistic expression. There, books were used as raw materials to create a search tool, but without making whole books available as a market substitute. Similarly, in Cariou, what the court held is that Richard Prince made use of photographic elements as raw materials to create secondary artworks that did not make the original photographs available as a market substitute. In other words, perhaps Cariou could have been a more streamlined, yes or no, holding under prong one without the need to get bogged down in artsy adjectives stapled onto the already fuzzy interpretations of “transformative.”

Whether readers agree with that distillation, it seems likely that the conclusions we can draw from Cariou and Google Books will feature substantially in the brewing debate over whether creative materials may be fairly used in machine learning to teach AI to produce new creative works. But that’s another big discussion for another day.

*CORRECTION: This should have been properly stated as non-infringing because it does not copy protectable expression, not because it is fair use.

[1] Technically SCOTUS remanded, but as a shorthand, we refer to this case as though the Court made this finding.

[2] Yet, in the Goldsmith opinion, we see how difficult this is to avoid. Simply by writing descriptions of the Prince works they held to be fair uses, using words like “jarring” and “crude” to contrast with the originals they describe as “serene” and “deliberately composed,” the court, to an extent, is inventing message in order to satisfy the mandate to look for transformativeness.

[3] This does not mean the constitutional argument against protecting photographs under copyright would have prevailed in Burrow-Giles v. Sarony, only that the Court might have found nothing to protect in the image at issue.

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