Tag: fair use

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.

Warhol Foundation v. Goldsmith at SCOTUS Part I: The Transformative Question

Copyright watchers were surprised when the Supreme Court granted Andy Warhol Foundation’s (AWF) petition for certiorari in its case against photographer Lynn Goldsmith. For deeper background, see older posts, but this is the dispute over Andy Warhol’s “Prince Series” silkscreen images of rock legend Prince made in 1984 using Goldsmith’s unpublished 1981 portrait photograph as a reference image.

In March of 2021 the Second Circuit held that Warhol’s use of the photograph was not a fair use and then denied Warhol’s petition for rehearing in August 2021, specifically responding that the SCOTUS decision in Google v. Oracle was not a basis for reconsideration. AWF filed its petition for cert in December, and we can expect a flurry of amicus briefs this Summer as copyright advocates and critics argue for opposite outcomes on what could be seminal fair use guidance by the Court. AWF’s petition rests almost entirely on part one of factor one of the fair use analysis, which considers that bugaboo doctrine called “transformativeness.” From the AWF brief Summary:

… the district court concluded that the Prince Series was “transformative” because it incorporated a new meaning and message, distinct from the Prince photograph from which it drew. Despite agreeing that Warhol’s new work “give[s] a different impression” than the original, the Second Circuit nonetheless concluded that the work was not transformative (and thus not fair use) because the photograph “remain[ed] the recognizable foundation upon which the Prince Series is built.

The doctrine of “transformativeness” was introduced to fair use jurisprudence in 1990 in a paper by Judge Pierre Leval of the Second Circuit Court of Appeals, and it was most famously first invoked in the 1992 Supreme Court decision Campbell v. Acuff-Rose. There, the Court held that 2 Live Crew’s “Pretty Woman” was a parody of the Orbison/Dees song “Oh, Pretty Woman,” and that factor one, therefore, favored a finding of fair use.

I have written in other posts about this case that the “transformative” test is a uniquely troubling, if not almost useless, consideration in the world of fine art. I hold this view because the fair use doctrine evolved on the principle that the user of a work would, in general, comment in some way upon the work being used. This is evident in the paradigmatic examples listed in §107 of the copyright law—”criticism, comment, news reporting, and teaching.” While not intended to be an exhaustive list, it is not coincidental that these examples, and their subordinates like “parody,” all imply saying something about the work allegedly infringed.

In Campbell, the Court does not stray beyond the boundaries of this analysis. On the contrary, in holding that “Pretty Woman” was a parody of “Oh, Pretty Woman,” the Court remained well within the interpretation that factor one of the fair use analysis initially looks for evidence of commentary upon the original work. It was not necessary that the “transformative” language, adopted from the Leval paper, be part of that analysis, which is otherwise consistent with prior courts’ holdings on “parody”…

…the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works….If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

Among the difficulties with the language of “transformativeness” and the decision in Campbell is that it includes much broader language, which AWF now cites to argue that a use favors fair use under factor one if it conveys “new meaning or message” that may be distinguishable from the original work. This is one of two problematic interpretations of the broad term “transformative.” The other problematic interpretation is a use that “expands the utility” of the original work(s), as applied in Google Books—an opinion written by Judge Leval, which begins with the sentence “This copyright dispute tests the boundaries of fair use.” Of course, the “expanding utility” claim is not asserted in Goldsmith.

As I have said in the past, comment upon the original work quite often does not exist in fine art contexts, and it certainly does not exist in the case of Warhol’s Prince Series. Warhol’s images do not comment upon Goldsmith’s photograph in any way, and AWF does not argue otherwise.[1] Instead, relying upon the broader “new meaning and message” principle, it claims that the screens convey “something different” from the photograph. In fact, I agree that this is true but disagree that this favors a finding a fair use under factor one.

Different meaning may be present, but if the secondary work does not contain at least some element of comment upon the original, there is no rationale keeping the first factor analysis from spilling over the levy quoted above in Campbell. AWF, for instance, asserts that the Warhol screens convey “Prince as icon” in contrast to Goldsmith who contends that her photo expresses “Prince as vulnerable budding star.” Both interpretations are well-founded in the context of art appreciation but irrelevant in regard to copyright law. The differences between the two works, absent any evidence of commentary, becomes a vague consideration that is indistinguishable from satire or other broad purposes historically held not to be fair uses as a matter of law.

This is one reason why the “transformativeness” concept has caused so much trouble:  because it leads courts to find fair use solely on the basis of “some difference,” and this implies a fair use doctrine without limits. Certainly, this is the outcome the copyright skeptics would like to see, but it is not good law, and it is aggravated by the fact that factor one has often weighed too heavily in the four-factor test. My gut says that the Court should find that AWF’s defense fails on the “transformative” analysis in factor one and in doing so, should reaffirm the holding in Campbell stating that where no commentary upon the original work exists, “other factors will loom larger.”

But having said that, I cannot deny that I personally believe that the Warhol screens convey something substantively different than the photograph, which goes to the other question the Court should address if it hopes to untangle the “transformative” knot at all, and this is whether the Warhol works constitute unlicensed “derivative works.” Certainly, we have seen findings of “transformativeness” under fair use analyses encroach on the derivative works right, which is no surprise when the definition of a derivative work describes “…any form in which a work may be recast, transformed, or adapted.”

It would be easy enough to hold that the Warhol screens are derivatives requiring license from Goldsmith to produce, but I believe the nature of the photograph—indeed of many photographs—may militate against such a finding. More on that in the next post about this case.

[1] In fact, any claim to the contrary would be muted by the fact that the work at issue is an unpublished photo, which conflicts with the Court in Leibovitz v. Paramount, which held that the public must be reasonably conscious of the original work in order for the defendant to claim that he is commenting upon it.

Addressing Fair Use Rhetoric in Debate Over SMART Act

On March 18th, Senators Tillis and Leahy of the IP Subcommittee introduced the SMART Copyright Act. The major functions of the bill, as codified in a proposed new Section 514, would empower the Librarian of Congress to approve designated technical measures (DTM) for identifying infringing material via a triennial rulemaking process. For a detailed description of the proposed rules and remedies in the bill, see Copyright Alliance CEO Keith Kupferschmid’s post. In this post, I wanted to respond to one criticism of technical measures for copyright enforcement—namely that they cannot account for fair use—but first, a recap of the background.

The SMART Act is a legislative response to the fact that after almost 25 years, the OSPs have rarely held up their end of the bargain under the terms of the Digital Millennium Copyright Act (DMCA), ratified in 1998. The foundation for all of Section 512 was predicated on the argument by the service providers of that period that they needed a liability shield against civil litigation stemming from the inevitability that customers would post copyright infringing material to their platforms. Thus, the statute lays out the conditions under which a platform can maintain the “safe harbor” shield, and as many copyright owners know, the major OSPs since then have not always complied with these conditions in good faith.

For the past quarter century, the major platforms have consistently avoided compliance with the notice-and-takedown process by, for instance, erecting unnecessary roadblocks for copyright owners to submit requests. Or, as a Virginia federal court recently affirmed, COX Communications remains on the hook for a billion-dollar damage award due to its failure to comply with the DMCA condition requiring the removal of repeat infringers.

These and many other examples paint a picture of a service platform industry that has fostered a culture of turning a blind eye to infringement and a reluctant, scattershot compliance with the statues they themselves lobbied to write. But specifically in regard to §512(i), which requires collaboration with copyright owners to develop standard technical measures (STMs) for identifying infringing material, Big Tech straight-up ghosted on the matter.

Remember that when the DMCA was being debated and drafted, it was the OSPs who presented their own technological capabilities as an implied promise that STMs could be developed to identify and remove infringing material. But not only did those service providers, and the bigger ones who followed, never engage with copyright owners to develop technical measures, they also funded a network of organizations (you know their names)[1] to promote the general theme that online copyright enforcement is fundamentally bad for society.

Kevin Madigan, VP, Policy and/ Copyright Counsel at Copyright Alliance, describes in a new post how The Network predictably repeats the same unfounded talking points no matter what proposal is on the table. And they have certainly dragged these orcs out of the mud once again in response to the SMART Act. But even as we examine the pros and cons of the bill itself, we should not lose sight of the fact that SMART is a legislative response to the OSPs’ refusal to comply with the conditions their own industry negotiated in the days of Web 1.0. So, maybe we can put the hyperbole in the drawer and sit down like adults? I wouldn’t hold my breath.

Technical Measures Can Never Account for Fair Use?

One gremlin The Network likes to call upon whenever technical measures are discussed for identifying infringing material is that an algorithm can never identify fair use. It is an oddly defeatist argument coming from representatives for an industry that makes bold promises about AI, and hardly allows the lack of perfection to stop them from experimenting with new products. But even if it is true that no algorithm could ever account for fair use, I’ll be blunt and say that neither can most of the platform users The Network claims to represent.

Let’s be real. The minority of professional creators who endeavor to be informed and engaged on copyright matters struggle with fair use; the experts who have worked in copyright law their entire careers struggle with fair use; and the courts struggle with fair use. Naturally, The Network exploits this uncertain landscape to imply that we could never hope for an algorithm to get fair use right. But this logical leap, which is meant to end discussion, also obscures the fact that the average social platform user doesn’t get fair use right either. That is if he even considers the question at all.

The term fair use is bandied about by The Network to promote the idea that it is the default status of most uses of protected works. It is a rhetorical strategy that, when paired with the message that copyright enforcement is inherently a form of censorship, promotes an ideological agenda seeking to elevate the fair use exception to the status of a civil right. But although it is true that the fair use doctrine evolved in U.S. law partly in support of the speech right, it remains an affirmative defense to a claim of copyright infringement. And the distinction matters.

Not only does The Network consistently ignore the literal First Amendment safeguards in the DMCA (which would not be disturbed by the SMART Act), but when they assert that no AI could ever account for fair use, I suspect they are alluding to a much larger constellation of presumed fair uses than actually exists. In other words, the argument against STMs, on the basis of fair use, almost certainly encompasses the effort to expand the volume and types of uses that copyright critics believe should be excepted under the doctrine.

I cannot prove this assumption and would not claim that, if true, it necessarily simplifies the technological challenge at hand. But it if we are going to take the matter seriously at all, it is important to know which definition of “fair use” is being applied—one grounded in case law, or one which the copyright critics would like to revise as they see fit?

As a practical matter, if the average user of a protected work on a social platform makes a fair use of that work, it is more likely the result of dumb luck than a well-informed and carefully considered decision. This is a common-sense assumption based on the low probability that the average user knows anything about the fair use doctrine. And if that is not correct, then perhaps the entire foundation for the liability shield codified in Section 512 should be reconsidered. Because the premise for this whole conversation was, and remains, that the average user of the internet does not know much of anything about copyright law.

Moreover, we forget that the presumed neutrality of the service provider is in contradiction with the idea that a fair use analysis should be a component of technical measures in the first place. The role of platform management was anticipated by the DMCA to be somewhat deaf and dumb in the process. Infringing material would be removed upon receipt of a valid notice, and if the uploader of the material believed the use to be a fair use, he could file a counter-notice to that effect. The human actors on the two sides of this equation were always anticipated to play active roles, and although The Network insists that the low rate of counter-notice filing is predicated on fear alone, it is also plausible that it is the result of many uses of works that are not defensibly fair uses.

What know for sure is that tens of millions of infringing uses occur every day and that only the large, corporate copyright owners have anything close to the resources necessary to mitigate the scope of piracy online. Large platforms like YouTube have deployed their own technical measures (e. g., Content ID and Copyright Match) insofar as they serve the platform’s bottom line. But these systems do little or nothing for independent and small business creators, and leaving this class of professionals in the digital dust was not the intent of the DMCA. Whether some version of the SMART Act can address the problem remains to be seen. But these rhetorical arguments against even trying are as tedious as they are hollow.

[1] In case you don’t, the Electronic Frontier Foundation, PublicKnowledge, Re:Create Coalition, Fight for the Future, Library Copyright Alliance, Authors Alliance, and a host of legal academics.

Image source by: idaakerblom