Oh Look, Here's Some More Culture Being Canceled, Now Thanks To The Second Circuit

This decision, Andy Warhol Foundation for the Visual Arts v. Goldsmith, came out only a few weeks ago, yet before the Supreme Court ruled in Google v. Oracle. In light of that latter decision it's not clear that this one is still good law. Then again, it's not clear it ever was.

The decision is the latest by a Court of Appeal eviscerating fair use. I recently wrote about the Ninth Circuit's ruling in Dr. Seuss Enterprises v. ComicMix, which also undermined fair use. To be fair, this latest one is perhaps a little less egregious. In this case, for instance, the copyright holder the court ruled in favor of is still alive while the defending party (referred in the decision as AWF) is the successor of someone who is dead. Whereas in the Dr. Seuss case it was the other way around, with the court going out of its way to let the successor to a dead person's copyrights stick it to a live creator trying to make new works the dead person was never going to make for any number of reasons, not the least of which being that he's dead.

But to call this decision less egregious is really more of a statement of how awful the Dr. Seuss case was, and not really any sort of compliment. Like the other decision, the implications of this one are just as dire.

For the basic background, the opening paragraph of the decision sets forth the basic facts (or you can read Mike's writeup about the District Court ruling two years ago):

This case concerns a series of silkscreen prints and pencil illustrationscreated by the visual artist Andy Warhol based on a 1981 photograph of themusical artist Prince that was taken by Defendant-Appellant Lynn Goldsmith inher studio, and in which she holds copyright. In 1984, Goldsmith's agency,Defendant-Appellant Lynn Goldsmith, Ltd. (LGL"), then known as LynnGoldsmith, Inc., licensed the photograph to Vanity Fair magazine for use as anartist reference. Unbeknownst to Goldsmith, that artist was Warhol. Alsounbeknownst to Goldsmith (and remaining unknown to her until 2016), Warholdid not stop with the image that Vanity Fair had commissioned him to create, butcreated an additional fifteen works, which together became known as the PrinceSeries. [p. 3]

Prince's death in 2016 seems to have been what precipitated Goldsmith's discovery of the additional prints, because, as the decision later explained, it set in motion a chain of events that led to it.

On April 22, 2016, the day after Prince died, Conde Nast, Vanity Fair'sparent company, contacted AWF. Its initial intent in doing so was to determinewhether AWF still had the 1984 image, which Conde Nast hoped to use inconnection with a planned magazine commemorating Prince's life. After learningthat AWF had additional images from the Prince Series, Conde Nast ultimatelyobtained a commercial license, to be exclusive for three months, for a differentPrince Series image for the cover of the planned tribute magazine. Conde Nastpublished the tribute magazine in May 2016 with a Prince Series image on thecover. Goldsmith was not given any credit or attribution for the image, whichwas instead attributed solely to AWF.

It was at this point that Goldsmith first became aware of the Prince Series.In late July 2016, Goldsmith contacted AWF to advise it of the perceivedinfringement of her copyright. That November, Goldsmith registered theGoldsmith Photograph with the U.S. Copyright Office as an unpublished work. [p. 11]

There's plenty wrong with this decision. A lot of what's wrong is with the decision itself, but even where the decision didn't get the law wrong, it shows what is wrong with the law.

As far as the decision itself, one of the most prominent problems is its analysis of the four fair use factors, particularly on the question of whether the Warhol prints were transformative. Like the Ninth Circuit, here the Second Circuit tied itself in knots, "clarifying" [p. 18] binding precedent in that circuit (Cariou v. Prince, by focusing more heavily on the five prints that hadn't been cleared as fair use instead of the 25 that were [p. 19-20]) to decide it wasn't. Some of that knot-tying:

Which brings us back to the Prince Series. The district court held that thePrince Series works are transformative because they can reasonably beperceived to have transformed Prince from a vulnerable, uncomfortable person toan iconic, larger-than-life figure." That was error.

Though it may well have been Goldsmith's subjective intent to portrayPrince as a vulnerable human being" and Warhol's to strip Prince of thathumanity and instead display him as a popular icon, whether a work istransformative cannot turn merely on the stated or perceived intent of the artistor the meaning or impression that a critic - or for that matter, a judge - drawsfrom the work. Were it otherwise, the law may well recogniz[e] any alteration astransformative." 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 13.05(B)(6); see also Google, 804 F.3d at 216 n.18 ([T]he word transformative,' ifinterpreted too broadly, can also seem to authorize copying that should fallwithin the scope of an author's derivative rights."). Rather, as we have discussed,the court must examine how the works may reasonably be perceived.

In conducting this inquiry, however, the district judge should not assumethe role of art critic and seek to ascertain the intent behind or meaning of theworks at issue. That is so both because judges are typically unsuited to makeaesthetic judgments and because such perceptions are inherently subjective. AsGoldsmith argues, her own stated intent notwithstanding, an audience viewingthe [Goldsmith] [P]hotograph today, across the vista of the singer's long career,might well see him in a different light than Goldsmith saw him that day in 1981."Appellants' Br. at 40. We agree; it is easy to imagine that a whole generation ofPrince's fans might have trouble seeing the Goldsmith Photograph as depictinganything other than the iconic songwriter and performer whose musical worksthey enjoy and admire.

Instead, the judge must examine whether the secondary work's use of itssource material is in service of a fundamentally different and new" artisticpurpose and character, such that the secondary work stands apart from the rawmaterial" used to create it. Although we do not hold that the primary work mustbe barely recognizable" within the secondary work, as was the case with theworks held transformative in Cariou, the secondary work's transformativepurpose and character must, at a bare minimum, comprise something more thanthe imposition of another artist's style on the primary work such that thesecondary work remains both recognizably deriving from, and retaining theessential elements of, its source material. [p. 26-28]

That last bit in bold, is a new statement of law. But it's a "clarification" the court needed to make in order to impose its own judgment on what it perceived to be as an inadequate number of changes imposed by Warhol on the original photograph.

With this clarification, viewing the works side-by-side, we conclude thatthe Prince Series is not transformative" within the meaning of the first factor.That is not to deny that the Warhol works display the distinct aesthetic sensibilitythat many would immediately associate with Warhol's signature style - theelements of which are absent from the Goldsmith photo. [...] As in the case of such paradigmatically derivative works, there can be nomeaningful dispute that the overarching purpose and function of the two worksat issue here is identical, not merely in the broad sense that they are created asworks of visual art, but also in the narrow but essential sense that they areportraits of the same person. [...] Although this observation does not perse preclude a conclusion that the Prince Series makes fair use of the GoldsmithPhotograph, the district court's conclusion rests significantly on the transformative character of Warhol's work. But the Prince Series works can't bearthat weight. [p. 28-30]

In the court's view, Warhol used too much of the original.

Warhol created the series chiefly by removing certain elements from theGoldsmith Photograph, such as depth and contrast, and embellishing theflattened images with loud, unnatural colors." Nonetheless, although we do not conclude that the Prince Series works arenecessarily derivative works as a matter of law, they are much closer to presentingthe same work in a different form, that form being a high-contrast screenprint,than they are to being works that make a transformative use of the original.Crucially, the Prince Series retains the essential elements of the GoldsmithPhotograph without significantly adding to or altering those elements. [p. 30]

It mattered not at all to the court that Warhol had significantly shifted the message of the original photograph. While Goldsmith had wanted to capture and convey Prince's strength as an artist, she was left with a jittery subject who left the sitting early. [p. 7]. It was Warhol who had, as the district court found, " transformed the image of Prince from a vulnerable, uncomfortable person to an iconic,larger-than-life figure." [footnote 4]. She hadn't communicated that message in her image; he had in its transformation of it.

[T]he Prince Series retains the essential elements of its sourcematerial, and Warhol's modifications serve chiefly to magnify some elements ofthat material and minimize others. While the cumulative effect of thosealterations may change the Goldsmith Photograph in ways that give a differentimpression of its subject, the Goldsmith Photograph remains the recognizablefoundation upon which the Prince Series is built. [p. 31]

But this is just more knot-tying.

We begin with the uncontroversial proposition that copyright does notprotect ideas, but only the original or unique way that an author expresses thoseideas, concepts, principles, or processes." Rogers, 960 F.2d at 308. As applied tophotographs, this protection encompasses the photographer's posing thesubjects, lighting, angle, selection of film and camera, evoking the desiredexpression, and almost any other variant involved." Id. at 307. The cumulativemanifestation of these artistic choices - and what the law ultimately protects - isthe image produced in the interval between the shutter opening and closing, i.e.,the photograph itself. This is, as we have previously observed, thephotographer's particular expression" of the idea underlying her photograph.Leibovitz, 137 F.3d at 115-16.

It is thus easy to understand why AWF's contention misses the mark. Thepremise of its argument is that Goldsmith cannot copyright Prince's face. Trueenough. Were it otherwise, nobody else could have taken the man's picturewithout either seeking Goldsmith's permission or risking a suit for infringement.But while Goldsmith has no monopoly on Prince's face, the law grants her abroad monopoly on its image as it appears in her photographs of him, includingthe Goldsmith Photograph concluded that defendant could freely copy the central facial features of theBarbie dolls" and holding that Mattel could not monopolize the idea of a dollwith upturned nose, bow lips, and wide eyes," but the law protected its specificrendition thereof). And where, as here, the secondary user has used thephotograph itself, rather than, for example, a similar photograph, thephotograph's specific depiction of its subject cannot be neatly reduced to discretequalities such as contrast, shading, and depth of field that can be stripped away,taking the image's entitlement to copyright protection along with it.

With that in mind, we readily conclude that the Prince Series borrowssignificantly from the Goldsmith Photograph, both quantitatively andqualitatively. While Warhol did indeed crop and flatten the GoldsmithPhotograph, the end product is not merely a screenprint identifiably based on aphotograph of Prince. Rather it is a screenprint readily identifiable as derivingfrom a specific photograph of Prince, the Goldsmith Photograph. A comparison ofthe images in the Prince Series makes plain that Warhol did not use theGoldsmith Photograph simply as a reference or aide-memoire in order toaccurately document the physical features of its subject. Instead, the Warholimages are instantly recognizable as depictions or images of the GoldsmithPhotograph itself. [p. 38-41]

The court is cynical about why Warhol used this photograph, musing that his choice to use this one must have been to exploit a particular artistic value inherent to it. ("[W]e have little doubt that the Prince Series would be quite different had Warhol used [another picture] instead of the Goldsmith Photograph to create it." [p. 41].) At the same time, it acknowledged that the original photograph was the only one available to him. [p. 42]. The knot-tying as the court both faulted him for using the photograph and also at the same time changing it.

For example, the fact that Prince's mustache appears to be lighter on the rightside of his face than the left is barely noticeable in the grayscale GoldsmithPhotograph but is quite pronounced in the black-and-white Prince Seriesscreenprints. Moreover, this feature of the Goldsmith Photograph is, again, notcommon to all other photographs of Prince even from that brief session. Thesimilarity is not simply an artefact of what Prince's facial hair was like on thatdate, but of the particular effects of light and angle at which Goldsmith capturedthat aspect of his appearance. [footnote 8]

The absurdity of this decision points to the real issue with it: as with the Dr. Seuss one, it conflates the copyright holder's right to control the making of derivative works with the public's fair use right to transform existing works, for which permission from the copyright holder should not be needed. As these courts have set forth, the latter right has now been all but subsumed by the former. Which is a huge problem, because the whole point of fair use is that of course you should be able to use a previous work in making your new one. But with these decisions it effectively puts previous works still under copyright off-limits by construing potentially any subsequent use as a derivative use the copyright holder has the power to control.

The court's reasoning on the fourth factor drives home this view.

Inassessing market harm, we ask not whether the second work would damage themarket for the first (by, for example, devaluing it through parody or criticism),but whether it usurps the market for the first by offering a competing substitute.See, e.g., Bill Graham Archives, 448 F.3d at 614. This analysis embraces both theprimary market for the work and any derivative markets that exist or that itsauthor might reasonably license others to develop, regardless of whether theparticular author claiming infringement has elected to develop such markets. [p. 44]

It did not matter to the court that Goldsmith had not tried to further license the original photograph in the intervening years; the court was worried that she potentially could, and that somehow this Warhol work - different though it is from her original photo - would somehow "usurp" her licensing market.

While Goldsmithdoes not contend that she has sought to license the Goldsmith Photograph itself,the question under this factor is not solely whether the secondary work harms an existing market for the specific work alleged to have been infringed. Cf. CastleRock, 150 F.3d at 145-46 (Although Castle Rock has evidenced little if anyinterest in exploiting this market for derivative works . . . the copyright law mustrespect that creative and economic choice."). Rather, we must also considerwhether unrestricted and widespread conduct of the sort engaged in by [AWF]would result in a substantially adverse impact on the potential market" for theGoldsmith Photograph. Campbell, 510 U.S. at 590 (internal quotation marksomitted) (alterations adopted)); see also Fox News Network, LLC v. TVEyes, Inc., 883F.3d 169, 179 (2d Cir. 2018). [p. 45-46]

And the court put the burden on the transformative user to prove that it would not impact her market for licensing her works, [p. 47], while at the same time discounting all such evidence AWF provided that there was no conflict present here. Since both AWF and Goldsmith had sought to license their depictions, including for further derivative works, the court thought that was enough of a conflict.

In any case, whatever the scope of Goldsmith's initial burden, she satisfiedit here. Setting aside AWF's licensing of Prince Series works for use in museumexhibits and publications about Warhol, which is not particularly relevant for thereasons set out in our discussion of the primary market for the works, there is nomaterial dispute that both Goldsmith and AWF have sought to license (and indeed have successfully licensed) their respective depictions of Prince topopular print magazines to accompany articles about him. As Goldsmithsuccinctly states: both [works] are illustrations of the same famous musicianwith the same overlapping customer base." Appellants' Br. at 50. Contrary toAWF's assertions, that is more than enough. See Cariou, 714 F.3d at 709 ([A]naccused infringer has usurped the market for copyrighted works . . . where theinfringer's target audience and the nature of the infringing content is the same asthe original."). And, since Goldsmith has identified a relevant market, AWF'sfailure to put forth any evidence that the availability of the Prince Series worksposes no threat to Goldsmith's actual or potential revenue in that market tilts thescales toward Goldsmith. [p. 47-48]

And not only were both in the licensing business, but they also licensed for derivatives.

Finally, the district court entirely overlooked the potential harm toGoldsmith's derivative market, which is likewise substantial. Most directly,AWF's licensing of the Prince Series works to Conde Nast without crediting orpaying Goldsmith deprived her of royalty payments to which she would haveotherwise been entitled. Although we do not always consider lost royalties from the challenged use itself under the fourth factor (as any fair use necessarilyinvolves the secondary user using the primary work without paying for the rightto do so), we do consider them where the secondary use occurs within atraditional or reasonable market for the primary work. See Fox News, 883 F.3d at180; On Davis v. Gap, Inc., 246 F.3d 152, 176 (2d Cir. 2001). And here, that marketis established both by Goldsmith's uncontroverted expert testimony thatphotographers generally license others to create stylized derivatives of their workin the vein of the Prince Series, see J. App'x 584-99, and by the genesis of thePrince Series: a licensing agreement between LGL and Vanity Fair to use theGoldsmith Photograph as an artist reference. [p. 48-49]

And that's a problem, thought the court in horror, as it echoed the Ninth Circuit, because what if every fair user could make these sorts of transformative fair uses for free?

Further, we also must consider the impact on this market if the sort ofcopying in which Warhol engaged were to become a widespread practice. Thatharm is also self-evident. There currently exists a market to license photographsof musicians, such as the Goldsmith Photograph, to serve as the basis of astylized derivative image; permitting this use would effectively destroy thatbroader market, as, if artists could use such images for free, there would be little or no reason to pay for [them]." Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F.Supp. 3d 339, 355 (S.D.N.Y. 2017); see also Seuss, 983 F.3d at 461 ([T]heunrestricted and widespread conduct of the sort ComicMix is engaged in couldresult in anyone being able to produce" their own similar derivative works basedon Oh, the Places You'll Go!). This, in turn, risks disincentivizing artists fromproducing new work by decreasing its value - the precise evil against whichcopyright law is designed to guard. [p. 49-50]

But as the Supreme Court just reminded us, the real thing to guard against is interfering with the purpose of copyright, to make sure it drives further progress. The reasoning these courts keep employing overlooks that fundamental animating purpose behind copyright law and instead treats it as some sort of expansive power to preclude that original creators get, even when there's little reason to award them this incredibly generous benefit.

Look at the facts of this case: the original photograph was taken nearly 40 years ago of a person who's now been dead for nearly five. The Warhol prints were made nearly 35 years ago, by someone who himself has been dead for more than thirty years, and thus was unable to testify about his artistic choices to defend his work - which now other people uninvolved with making those choices seek to exploit the copyrights of. Meanwhile, the original photographer had no idea that these works had existed all this time. But because copyrights last for so long, we're litigating this now.

As suggested at the outset, it appears that what may have motivated the court to tie fair use doctrine into such a pretzel in rendering this decision is that the original creator is still around, and it intuitively seems consistent with modern copyright to ensure that an original creator can get the benefit of their creativity. But it could just as easily have been her successors or assignees bringing the litigation, not just 30-40 years later than any alleged infringement but even more decades into the future because copyright lasts that long, regardless of whether it is needed to incentivize further creativity. There is nothing about this decision that limits it to just her. Yet every time decisions like this are issued, expanding the power of a copyright holder, it only threatens to chill that very creativity copyright is supposed to encourage.

And less by clear rule and more by minefield. As case in point, while one panel of the Second Circuit generated this unfortunate decision shrinking fair use, another panel shortly thereafter upheld it in another case also involving a photograph. In Marano v. Metropolitan Museum of Art, the Met was found not to be liable for using a picture that cropped an existing photo to focus on Eddie Van Halen's guitar, give that the original photo's composition had focused on Eddie Van Halen himself.

We begin with the first factor-often framed as whether the use is transformative"-which constitutes the heart of the fair use inquiry." Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006) (quoting Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001)). The Met's exhibition transformed the Photo by foregrounding the instrument rather than the performer. Whereas Marano's stated purpose in creating the Photo was to show what Van Halen looks like in performance," App'x at 29, the Met exhibition highlights the unique design of the Frankenstein guitar and its significance in the development of rock n' roll instruments. Further, the Photo appears alongside other photographs showing the physical composition of the guitar, which hare collectively accompanied by text discussing th e guitar's genesis, specifications, and impact on rock n' roll music, not Van Halen's biography or discography. This context adds something new, with a further purpose or different character, altering the [Photo] with new expression, meaning, or message." Campbell, 510 U.S. at 579.

More critically, this time the court did not express the same hostility towards "transformative markets" that the Warhol decision did.

This transformative use of the Photo is consistent with the remaining factors under Section 107 tipping in favor of fair use. While the Photo is a creative work of art," that determination is of limited usefulness" given that the Met is using the Photo for a transformative purpose." Bill Graham, 448 F.3d at 612. Similarly, the Met's copying the entirety of [the Photo] [was] . . . necessary to make a fair use of the image" as one of many historical artifacts" in the exhibition. Id. at 613. Likewise, a transformative market" does not qualify as a traditional, reasonable, or likely to be developed market,"id. at 614 (quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 930 (2d Cir. 1994)), and therefore Marano cannot prevent others from entering fair use markets merely by developing or licensing a market for . . . transformative uses of [his] own creative work,'" id. at 615 (quoting Castle Rock Ent., Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132, 146 n.11 (2d Cir. 1998)). There is no indication in the record that the Met's use of the Photo on a web page describing the Frankenstein guitar could, in any way, impair any other market for commercial use of the Photo, or diminish its value. On balance, these factors indicate that the Met's display of the Photo qualifies for the fair use exception under Section 107.

There are certainly some differences between these decisions. For instance, the Met is a museum, which helps weigh in favor of fair use but, notably, is not inherently dispositive. Also, as some have noted, recent decisions by the Second Circuit upholding fair use have tended to not be precedential, while decisions, such as the Warhol one, limiting the doctrine have tended to be. But on the whole there is not much daylight between their analytical attack, only their ultimate conclusions. Which itself strongly suggests that one of the decisions was wrong. For all the aforementioned reasons, and as buttressed by the Google v. Oracle decision, it is likely to be the Warhol one.