Tag: Andy Warhol Foundation v. Lynn Goldsmith

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.

AWF v. Goldsmith: The Need for a Workable Standard of “Transformativeness”

The Supreme Court on October 12th heard oral arguments in Andy Warhol Foundation (AWF) v. Lynn Goldsmith, and presumably every copyright nerd (pro and con) was listening. In general, I would describe the Court as consistent—all justices focused on the narrow question presented with very little discussion outside those lines. The question, which badly needs an answer, is this:  What is “transformativeness” under factor one if the fair use test?

Petitioner AWF’s argument is that a use of a protected work to create a follow-on work that contains “new meaning or message” is sufficient to find that not only does factor one tilt toward fair use but that “new meaning and message” should be determinative of outcome in any fair use consideration The fact that AWF narrowly asks the Court to consider this one question—and insists that the art world depends on their standard—demonstrates how much weight factor one has accumulated in the years since the decision in Campbell (1992).

Whether the Court opines more expansively on fair use, I think it is safe to say that it will decide whether factor one requires a more rigorous standard—namely whether a follow-on work must contain at least a modicum of comment on the work being used.  While we wait, the copyright skeptics and critics—many who have filed briefs in this case—will say that the fair use doctrine itself, and even the speech right, are in peril unless the Court sides with the Warhol Foundation. But this is simply untrue.

AWF’s very broad interpretation of the first factor analysis is certainly what many copyright critics would like to see, but they are asking the Supreme Court to maintain confusion on the question presented—to give a nod of approval to an application of fair use circumscribed by little more than the imagination of the copier and their lawyers. But if the Court rejects this expansive view—if it clarifies the sprawling confusion as to what “transformative” means—fair use as an affirmative defense will remain a vibrant and appropriately balanced aspect of U.S. copyright law.

Comment is at the Core of Fair Use

As argued in the past, it is no coincidence that the preamble of the statute (Section 107) cites exemplary purposes for fair use that imply the presence of some discussion about the work being used. While understood not to be an exhaustive list, “criticism, comment, news reporting, teaching, scholarship, [and] research” are named because the fair use doctrine evolved as judge-made law weighing cases entailing these types of uses. And because “purpose” is not defined beyond that illustrative list in the preamble, it is reasonable to hold that factor one of the four-factor test, which identifies the “purpose” of the use at issue in the very next sentence of the statute, should not become unmoored from the spirit of that preamble. 

Campbell does not stray from this principle. Some may disagree that parody exists in the follow-on work (2 Live Crew’s “Pretty Woman”), but as long as parody was the basis for the finding, the “comment on” requirement was met—albeit in context to a troublesome term of art called “transformativeness.” Since the popularization of that term in Judge Leval’s paper in 1990, courts and defendants have articulated factor one rationales so broad as to be undefinable. And AWF’s “new meaning and message” standard is precisely that—undefinable as a legal standard.

What is Meaning and Message?

In fact, a precedent case in the same lower court (the Second Circuit) illustrates some of the difficulties with the AWF arguments in this case. In Cariou v. Prince, follow-on artist, Richard Prince, rejected any notion of a “meaning” or “message” in the works he made using photographer Patrick Cariou’s images. What does a court do with AWF’s theory when the defendant himself will not define “meaning and message”? There, the Second Circuit held that some “new expression” was sufficient to find that factor one favored fair use—that comment on the original work is not required.

But tellingly, it was the Second Circuit’s own factor one language in the Cariou decision which provided the district court with a rationale for finding “transformativeness” in the Warhol screens, and which the Second Circuit then reversed stating:

“…the district court appears to have read Cariou as having announced such a rule…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…”

Many legal practitioners have commented on the serpentine reasoning applied by the circuit court in order to square the Warhol and Cariou decisions—and all because “transformativeness” has become a doctrine without clear meaning.

Considering that a defendant artist might present any form of “message”—from baroque to minimalist to Richard Prince’s silence—and that it would be famously unwise for courts to apply a legal standard that turns on the judge or jury’s opinion of artistic merit, the Court should decline to engage in these semantic entanglements.  What is definable and identifiable is whether any comment on the original is present in the new work.  This would provide the factor one analysis with an articulated legal standard that judges and juries are able to apply in a principled way.

Necessity Implies Commentary

Several justices at oral arguments focused on the subject of “necessity,” asking whether it was essential that Warhol use Goldsmith’s photograph to make the “Prince Series” silkscreens. The rational answer to this question in this case is No. It was not necessary, in a legal sense, that Warhol use that particular photograph. Aside from the fact that a middleman (Vanity Fair) obtained the photograph from Goldsmith and provided it to Warhol, even if that were not the case, the necessity question is predicated on the commentary requirement.

Absent commentary on the work used, any alleged “need” for that exact work may be technical or functional but is not defensible as a matter of fair use. For instance, Goldsmith’s photo may be conducive to Warhol’s method because it’s a headshot in front of a plain background, but this kind of “need,” which facilitates the user’s process, is not a proper consideration for courts weighing fair use. Likewise, Richard Prince’s almost haphazard cut-outs of Cariou’s photos for some of his works are more suggestive of “opportunity” than “need,” and my guess is Richard Prince would confirm this assumption.

This view of necessity should focus attention on the question as to whether the expression in the original work has in some way been transformed through commentary upon that expression. By contrast, under AWF’s theory, nearly all uses of, for instance, underlying musical compositions would be fair uses merely by adding new lyrics to famous melodies. This is anathema to fair use doctrine in general and in conflict with Campbell in particular.

AWF’s Theory Did Not Exist in Warhol’s Time

Perhaps it is worth contemplating the legal landscape when Andy Warhol made the “Prince Series.” It was 1981, and most of Warhol’s career was behind him. The current Copyright Act—the first to codify fair use—had only been in effect for about three years, and the seminal application of Judge Leval’s “transformativeness” doctrine was still more than a decade in the future. It is understood that Warhol both appropriated and licensed photographs for his iconic works, though I doubt anyone could prove that he actively contemplated fair use—let alone considered the doctrine  as it has been applied or argued since Campbell.

At present, expansive applications of “transformativeness” have resulted in holdings that treat factor one as the dispositive consideration. Several empirical studies find that a defendant who wins on the “transformative” question is almost certain to prevail on the fair use defense overall,[1] and even where factor one is reasonably the most compelling, this only emphasizes the need for clarification as to the meaning of “transformativeness.”

Far too many decisions, especially in district courts, have placed fair use in direct conflict with the derivative works right, which is little surprise when the word “transformed” appears in Section 101 defining “derivative works.” Further, district courts (e.g., Brammer v. Violent Hues) have applied untenable interpretations of “transformative” in conflict with the most fundamental licensing models under the reproduction right, possibly resulting in needless time and expense on appeals for both parties.

Rather than holding that some evidence of “new expression” almost always carries the day, the other three fair use factors should be given proper consideration by mitigating the apparently mesmerizing effect of “transformativeness.” AWF and its amici’s assumption that its test would create more certainty in the art world is a plea for the status quo in which courts will continue to misapply factor one because “meaning and message” are often undefinable to the point of capriciousness. By rejecting AWF’s over-broad standard, the Court can clarify the vagueness which, since Campbell, has caused unnecessary confusion for rightsholders, users of works, and the courts.

[1] For instance, “Is Transformative Use Eating the World?” – Asay, Clark D. et al.  https://lira.bc.edu/work/ns/5f6a0b59-6497-4457-a063-153dae3cee94

Warhol Foundation v. Goldsmith at SCOTUS Part II: The Derivative Works Right

In Part I, I wrote that I hope the Court will find that AWF’s central argument fails on the “transformativeness” question presented and that it will reaffirm that this part of the fair use factor one inquiry must find at least some evidence of commentary upon the original work. Warhol’s Prince Series does not comment upon the photograph used, which is why the Court should also reject AWF’s allegations that the speech right is at stake in case:  because AWF wrongly applies the fair use exception in context to speech.

Once again, the implication that fair use evolved to protect all uses resulting in any form of protected speech (i.e., nearly all uses) is where the anti-copyright crowd would like to go, but it is an aberration of the doctrine. Instead, the speech right lives in fair use because, at its core, the exception prevents the copyright owner from prohibiting various uses that comment upon or criticize her work. Under AWF’s doctrine, everything that speaks is fair use, even Sen. Hawley’s recent defense that his unlicensed use of a photograph on campaign merch should be fair use because it is obviously political speech.[1] This is simply wrong as a matter of law.

Many follow-on works that legitimately fall within the correct doctrinal boundary of fair use will continue to be made if the Court rejects AWF’s over-broad claim to defend speech and the entire world of appropriation art. With regard to the latter subject, uses that do not meet a proper fair use standard may still be made through licensing, which brings us to the question overshadowed by the fair use inquiry, which is whether Warhol prepared derivative works that infringe Goldsmith’s exclusive right under Section 106(2) of the copyright law. I have said in earlier posts that my own view is that the Warhol screens do not sufficiently copy enough of Goldsmith’s expression to be infringing, but that’s a matter for lower courts and juries. More germane to the moment is whether the Supreme Court might reaffirm the importance of considering prima facie infringement before responding to a fair use defense and, thereby, reaffirm the derivative works right, which has been gnawed upon, if not occasionally consumed, by the fair use hydra.[2] After all, the right to prepare derivative works is statutory law, while the “transformative” doctrine is not.

Affirming Authorship in Photography

Oddly enough, my instinct here is that reasserting the value of the derivative works right in this case would, in addition to fostering better copyright law, possibly shore up the foundation of authorship in works like photographs. I say this regardless of the outcome for either party, and others may disagree, but I’ll do my best to explain.

Begin with the acknowledgement that nearly all photographs—and certainly many portraits—are a mix of unprotectable fact and protectible expression. In a photograph like Goldsmith’s 1981 portrait of Prince, the expression (i.e., Goldsmith’s authorship) is subtle in that we understand, as a matter of law and common sense, that she is obviously not the author of Prince’s face. This nuance in photographic authorship is a conceit the anti-copyright ideologues would like to obliterate, and quite often they attempt to do so by arguing a very broad interpretation of “transformativeness” that would swallow the author’s exclusive rights.

Copyrightability in the medium of photography rests substantially on two principles articulated in two Supreme Court cases—Sarony in 1884 and Bleistein in 1903. In Sarony, the case which challenged the constitutionality of protecting photographs at all, the Court had a relatively easy time identifying the photographer’s authorship in the observable creative choices he made to produce the resulting portrait of Oscar Wilde …

[“Oscar Wilde No. 18”] is a useful, new, harmonious, characteristic, and graceful picture, and . . . plaintiff made the same . . . entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by the plaintiff.

But that same decision also theorized that an “ordinary” photograph—perhaps one of the many portraits typical of the day depicting regular folks posed in front of plain backgrounds—might not be protectable. But nine years later, although the Bleistein case did not involve photographs, Justice Holmes introduced the metaphysical notion of the “personality of the artist” as a foundation for authorship, an idea which prefaces the doctrines of “modicum of originality” and automatic copyright upon fixation. Holmes writes:

The [creative rendering] is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone. That something he may copyright unless there is a restriction in the words of the act.

In Bleistein, Holmes also famously cautioned courts to avoid playing the role of art critics …

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.

If the Sarony Court might have found a portrait like Goldsmith’s of Prince too “ordinary” for copyright to attach, thankfully she and the rest of the photography world are rescued by Holmes’s “personality of the artist” principle. But to accept this principle, and continue to affirm it, we must acknowledge very subtle forms of authorship in works like photographs, which are always a paradoxical combination of truth and fiction, of human vision and mechanical reproduction.

Moreover, because many visual arts, are non-verbal works, they often defy any effort to describe what they are or what they communicate, much like a consideration of instrumental music. Hence, concepts like “meaning and message” are easily bent out of shape in cases like AWF v. Goldsmith, as was manifest in the Second Circuit’s efforts to square its decision with its prior holding in Cariou v. Prince, which failed to heed Holmes’s counsel to avoid art criticism

The “transformative” analysis invites meandering discussion about “meaning and message,” which is distracting to questions of law but also may not exist in the works at issue.[3]We must keep in mind that copyright is about expression—the subject matter of authorship—and not about meaning and message—the subject matter of audiences and critics. When inquiries become un-moored from this principle, fair use makes a hash of cases like this, and cases like this make a hash of fair use.

Where a secondary work is clearly based upon a primary work but does not meet the fair use qualification of commenting upon the primary work, the courts can agree that the derivative works right under Section 106(2) is implicated. Then, at trial, it may be determined whether the secondary work copies enough of the expression in the original to be infringing.

Observers of good intent will disagree as to whether Warhol copied more factual or expressive elements in Goldsmith’s photograph, but this inquiry under the light of Section 106(2) affirms the value of authorship in the former while allowing a reasonable consideration of possible non-infringement for the latter. In contrast to AWF’s sprawling view of fair use, the derivative works inquiry forces a court, or a jury, to begin with an analysis of the authorship in the work used with proper deference to the bundle of copyright rights attached to that authorship upon fixation.

[1] Not that this is the worst copyright mistake made by the senator. See Stephen Carlise and Aaron Moss.

[2] Recognizing that the Court failed to do exactly this in Google v. Oracle, and because only the fair use argument is presented in this case, copyright advocates have reason to be anxious about the outcome in AWF v. Goldsmith.

[3] Indeed, Richard Prince insisted that there was no meaning or message other than “art” in his works made from elements of Patrick Cariou’s photographs.