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

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

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

The following is an experiment:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Maybe Find Infringement First?

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

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

Image source: africa_images

New Guidance on “Transformative” Use in AWF v. Goldsmith

In this Court, the sole question presented is whether the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit edu­cational purposes,” §107(1), weighs in favor of AWF’s recent commercial licensing to Condé Nast.

Although the consideration in Andy Warhol Foundation v. Lynn Goldsmith is narrowly focused, the outcome in this case has anything but narrow implications. Almost thirty years after the decision in Campbell v. Acuff-Rose let the “transformative” blob ooze into the judiciary, the Supreme Court has now stuffed a substantial portion of the blob back in the bucket.

In a 7-2 opinion written by Justice Sotomayor, the Court held that finding “transformativeness” under factor one of the fair use test requires more than a broad purpose to make something new; it defends the derivative works right against encroachment by the “transformative” blob; and it reminds the courts not to confuse the inquiry into “purpose” with a subjective inquiry into “artistic intent.”

Shoring Up Boundaries Around “Transformative” Use

Without explicitly stating that the follow-on work must contain some perceptible element of comment on the work used, the Warhol opinion relies substantially on Campbell and the necessity there to find parody (a form of comment) in 2 Live Crew’s use of “Oh, Pretty Woman.” As the opinion states:

The Court found it necessary to determine whether 2 Live Crew’s transformation of Orbison’s song rose to the level of parody, a distinct purpose of commenting on the original or criticizing it. …the Court further explained that “[p]arody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.

This is significant because many fair use defenses since Campbell have been based on the generalized language in that decision suggesting that when a follow-on work expresses any “new meaning or message,” this may be sufficient to find that a use is “transformative.” In Warhol, the Court clarifies that this language cannot stand alone but must be read in context to the Campbell Court finding parody in the follow-on work in order to find “transformativeness.” In other words, a work that does not contain a hint of comment upon the original work used—and comment that may be reasonably understood by an ordinary observer—may not easily justify use of a protected work under factor one. As the opinion states …

The asserted commentary [by Warhol] is at Campbell’s lowest ebb. Because it “has no critical bearing on” Goldsmith’s photograph, the commentary’s “claim to fairness in borrowing from” her work “diminishes accordingly (if it does not vanish).”

So, because AWF could only claim (and reasonably so) that the Warhol screen makes broad comments about celebrity, fame, iconography, commercialism, et al.—but no comment about the Goldsmith photo itself—the Court finds nothing “transformative” in the work at issue (“Orange Prince”) as a matter of law. Then, absent a finding of “transformativeness,” the commercial use (i.e., the license to a magazine), which disfavors fair use, carries the day…

… [the] first fair use factor … focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism.

Derivative Works Right Protected

Among the difficulties fostered by over-broad readings of “transformativeness” is that it places the fair use defense in conflict with the author’s exclusive right to prepare derivative works. In practice, this can harm the author’s interest because, in the years since Campbell, a defendant who wins on the “transformative” question has tended to win the case. I am not saying that all those cases were decided incorrectly or that the Court has delivered a major reversal in fair use doctrine. On the contrary, the Court has merely shored up levees already in the caselaw, and one result should be to channel the fair use waters away from the derivative works pool …

Campbell cannot be read to mean that §107(1) weighs in favor of any use that adds new expression, meaning, or message. Otherwise, “transformative use” would swallow the copyright owner’s exclusive right to prepare derivative works, as many derivative works that “recast, transfor[m] or adap[t]” the original, §101, add new expression of some kind. [Emphasis added]

The question as to whether “Orange Prince” (or any of Warhol’s screens) are unlicensed derivative works was not addressed by the district court, which is how this became a fair use case, but the important outcome here is that the Supreme Court has refreshed the lines separating “transformative” use from the derivative works right as a matter of law.

Citing one example as to how this ruling might help creators intending to use protected works, in the ComicMix case, a poor understanding of “transformative” led a group of artists to create what was clearly an unlicensed derivative work in conflict with the rights reserved by Dr. Seuss Enterprises. ComicMix did not win in the end, but I would be willing to bet that if not for the pervasive fog in the “transformative” doctrine, the creators would not have embarked on a project making substantial use of protected works without obtaining permission from the rightsholder.

Fair Use Analysis Must Be Objective

Finally, the opinion provides guidance to lower courts that they must read the factor one “purpose” consideration as “… an objective inquiry into what a user does with an original work, not an inquiry into the subjective intent of the user, or into the meaning or impression that an art critic or judge draws from a work.” Again, given the limited scope of the question presented, the Court’s finding here is likely to have broad implications for fair use going forward.

The opinion holds that Warhol’s “Orange Prince” and Goldsmith’s photograph serve the same purpose—that of illustrating Prince—for which Condé Nast licensed the former for a special edition tribute magazine following Prince’s death. This “same purpose” finding may seem confusing because the two works are distinctly different expressions (a major point of dissent by Justice Kagan), but what the Court is saying is that it does not matter whether the photo reveals “vulnerable” Prince or if the Warhol screen depicts “iconic” Prince, and it does not matter why magazine editors will choose one image over another. What matters in a “transformative” use inquiry is an objective search for some perceivable, distinct purpose for use of the work at issue — and that purpose is likely to be comment on the original work …

…the meaning of a secondary work, as reasonably can be perceived, should be considered to the extent necessary to determine whether the purpose of the use is distinct from the original, for instance, because the use comments on, criticizes, or provides otherwise unavailable information about the original.

Again, absent some evidence of commentary upon the work used, the necessity of the use diminishes or vanishes. And to the extent the user of a work might be able to claim some distinctive purpose other than commentary, the courts are instructed to avoid entering the salons of fine artists and critics, who identify—and even invent—meaning in works of art. And that  brings us to the dissent written by Justice Kagan, which is joined by Chief Justice Roberts.

The Dissent Amplifies the Wrong Inquiry for Fair Use

In a surprisingly strident dissent, Justice Kagan devotes considerable time expounding upon Warhol’s methods and significance as an artist and then segues to a general art history lesson to emphasize the unremarkable point that artists borrow from other artists. In addition to being mundane, this axiom about creative work is so broad as to be irrelevant to this or any other consideration of fair use, which the majority opinion makes clear is fact-intensive and case-specific.

The tenor of the dissent connotes bias against copyright, including overwrought allegations that the majority opinion will “stifle new creativity,” a favorite refrain among copyright critics. For instance, Justice Kagan lambasts her colleagues’ failure to consider the obvious differences between Goldsmith’s photograph and Warhol’s screen. The dissent elides any discussion about the difficulty of balancing “transformation” favoring fair use with “transformation” to prepare derivative works, and in rejecting the majority’s reassertion of the limits in Campbell, Justice Kagan writes:

If Warhol had used Goldsmith’s photo to comment on or critique Goldsmith’s photo, he might have availed himself of that factor’s benefit (though why anyone would be interested in that work is mysterious). But because he instead commented on society –the dehumanizing culture of celebrity—he is (go figure) out of luck.

Absolutely, he’s out of luck. And he should be. The alternative, as the majority makes clear, is to foster a nearly unconditional fair use exception whereby “some difference” in the character of the secondary work is enough to win on factor one and then control the rest of the fair use inquiry. This has been the argument of many defendants and copyright skeptics, and it is gratifying to see the Court recognize that every use of a work results in “something new” and that this is too broad a rationale for finding that factor one always favors the user.

Justice Kagan’s snarky assertion that the majority is “blind” to the differences in the Warhol and Goldsmith expressions is unintentionally correct insofar as it is misplaced as criticism in a fair use inquiry. A substantial similarity consideration is more properly the forum for expert testimony and side-by-side comparisons of the expressions in the works at issue. Whereas, on the question presented here, the majority has stated that, indeed, blindness to broad and subjective artistic intent is the proper way to approach “transformativeness.” The inquiry primarily looks for one element—”critical bearing” on the work used. And as a rule, this outcome should provide clearer guidance to courts, practitioners, and creators who want to use protected works.

Court in Richard Prince Case Affirms that “Transformative” Has Boundaries

The big battle over application of the fair use defense has been focused on the highly subjective, often confusing, doctrine of “transformativeness,” which is addressed under factor one of the four-factor test. Factor one considers the purpose of the use, including whether the purpose is commercial; and over the past decade or so, several high-profile defendants have sought to broaden the concept of a “transformative” purpose to encompass any use of a work that results in any new development, from fine art to technology.

The courts have largely rejected this over-broad approach because it would render fair use a boundaryless and, therefore, meaningless aspect of copyright law. And in an opinion delivered last week, we see why it is essential to draw contours around the “transformativeness” doctrine because the “purpose” inquiry so often controls the rest of the fair use analysis.

In a case that I frankly did not realize was still active, the S.D.N.Y. affirmed the significance of a meaningful “transformativeness” consideration when it denied the fair-use-based motion for summary judgment (MSJ) to famed appropriation artist Richard Prince and co-defendant Gagosian Gallery. At issue are photographs taken by Donald Graham and Eric McNatt, which Prince reproduced, displayed, and offered for sale as part of his “New Portraits” series in 2015. The story went viral when Prince created (and sold for six-figure prices) the series of canvasses made from enlarged screen grabs of Instagram posts. Because the main expression in each of the canvasses is someone else’s visual work, which Prince used without permission, photographers and other artists responded with mixed, but generally negative, feelings about the exhibit.

Although I discussed the idea that the “New Portrait” series itself was an artistic and engaging statement about social media, I also noted, regarding the Graham complaint, that finding creative significance in the exhibit itself does not mean that any of the works copied were fairly used. According to the opinion released last week, the years since the MSJ was filed have entailed a lengthy discovery process during which Prince apparently changed his “purpose” statement from a nondescript intent “to make art” to a more assertive claim that the “New Portraits” series is a comment about social media and its role in contemporary culture.

Inconsistency in testimony notwithstanding, the court found Prince’s elaborated statement of intended social message no more persuasive that his use was “transformative” than his originally stated intent to just “make art.” Citing substantial circuit precedent, the district court reiterated the opinion that the user of a protected work must in some way comment upon the work used, not merely use a work to make a statement about something else.

…where a secondary work does not obviously comment on or relate back to the original or use the original for a purpose other than that for which it was created, the bare assertion of a ‘higher or different artistic use’ … is insufficient to render a work transformative.[1] 

The court found that Prince’s latter testimony about the intent of the series only reinforced the fact that he could have selected any of the millions of images posted to Instagram and that he in no way commented upon or added new expression to the photographs made by Graham and McNatt. Combine the finding that the appropriator could have selected any work for his purpose with the fact that the works used happen to convey the heart of the follow-on expression, and then find the purpose to be commercial, and factor one is likely fatal to the defendant’s claim of fair use. In fact, this opinion, while not articulating anything new, is a good example of how the “transformative” question affects other dispositive aspects of the fair use inquiry.

As usual, the court addressed factor two (nature of the work used) as a simple, binary question finding the photographs in suit to be expressive in nature and, so, favors the plaintiffs with scant discussion on the matter. The factor three analysis (amount of the work used) restates that while it is possible to make fair use of a whole work, this inquiry is dependent upon factor one. “Because Prince’s use is not transformative, his use of nearly the entirety of plaintiffs’ photographs cannot be deemed ‘reasonable,’” the opinion states. [2] The court found that the fourth factor (potential market harm to the work used), “weighs slightly in favor of fair use” based on evidence indicating that Prince’s use does not threaten the market for the Graham and McNatt photographs, but…

…Prince has failed to show that other artists would not be emboldened by his success in declining to compensate plaintiffs for his non-transformative use, which negatively affects the value of the original works.

So, with three factors favoring the plaintiffs and the fourth maybe “partially” supporting the defendants, Prince and Gagosian lose on the MSJ. The consistency of this opinion with Second Circuit caselaw could mean that this litigation is about to settle. On the other hand, the Supreme Court has yet to drop its later-than-expected opinion in Andy Warhol Foundation v. Lynn Goldsmith—another Second Circuit case presenting a similar question on the meaning of “transformativeness.”

Warhol is more complicated than the “New Portraits” case for several reasons, including the fact that it highlights the tension between “transformative” for an unauthorized fair use, and “transformative” for an authorized derivative work. But AWF’s argument is similar to Richard Prince’s—namely that Warhol’s use is “transformative” because it expresses a “new meaning or message.” Thus, the Supreme Court may also find that this is too broad a definition for a prong of the inquiry that so often carries the day. As argued in an older post on Warhol, requiring that some comment on the work used must be present in the follow-on work would be consistent with the purpose of the fair use exception, and it would inject some long-needed clarity into a doctrine that has caused much confusion for all parties.

[1] Warhol v. Goldsmith citing Rodgers v. Koons (2nd Cir.)

[2] Citing Cariou v. Prince (2nd Cir).