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.
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