(Guest Post) Judicial Politics and Legal Scholarship in Warhol Foundation v. Goldsmith

I meant it when i said I have no idea who had the better of Warhol. So the following is from my FIU colleague Hannibal Travis, who does.

The majority opinion in Warhol carries forward certain recent trends in decisionmaking at the Supreme Court.  As others have noted, there is a "David and Goliath" quality to the ruling that photographer Lynn Goldsmith, breaking barriers as a woman in the male-dominated rock-n-roll photography field and earning a modest living from selling photographs to magazines for around $400, was entitled to compensation for Andy Warhol making an unauthorized tracing and silkscreen of her photograph of the rock star Prince and licensing it to Vanity Fair for $10,000.  It is reminiscent of the celebrated ruling in NCAA v. Alston (2021) that college athletes had been unlawfully exploited when colleges conspired to limit their education-related benefits for playing, and that the NCAA had no right to define intercollegiate athletics as a market in which cost-of-attendance scholarships are the fundamental cap on scholarships to ensure amateur play.  The majority also attempts to return fair use doctrine to what it sees as first principles, contrary to certain lower court rulings that supposedly overemphasized one aspect of one fair use factor.  This continues a trend of swatting away overly formalistic or innovative circuit court tests, some of the more notorious being "design marketability," "likelihood of dilution," the "machine-or-transformation" test for concrete patentable ideas, and the "teaching-suggestion-motivation test" for obvious improvements to existing technologies for patentability purposes.

Henry Mistry suggests that judicial opinions -- including dissents -- are a kind of performative ritual that is intended to alter social perceptions and bolster the legitimacy of the ritual's practitioner.  From this point of view, decisions like Warhol that make up the trend of Supreme Court decisions against various "Goliaths" are not only norm-clarifying but legitimacy-building.  As a related form of performative judicial politics, a dissent calls aspects of the legal system into question while underlining the system's legitimacy as a responsive and "dynamic" one.  In this instance, the majority mobilizes a constituency for its view from the factual background of Goldsmith's craft to its attempt to reassure artists that not much will change in the last paragraph. 

One of the critical points of contention in Warhol is the relationship between the defense of fair use and the exclusive right of Goldsmith and other copyright holders to prepare "derivative works."  As Justice Sonia Sotomayor's opinion for the Court explains:

[T]he owner has a right to derivative transformations of her work. Such transformations may be substantial, like the adaptation of a book into a movie. To be sure, this right is “[s]ubject to” fair use. § 106; see also § 107. The two are not mutually exclusive. But an overbroad concept of transformative use, one that includes any further purpose, or any different character, would narrow the copyright owner's exclusive right to create derivative works. To preserve that right, the degree of transformation required to make “transformative” use of an original must go beyond that required to qualify as a derivative.... See ... Authors Guild v. Google, Inc., 804 F. 3d 202, 214 (CA2 2015) (Leval, J.) (“The more the appropriator is using the copied material for new, transformative purposes, the more it serves copyright's goal of enriching public knowledge and the less likely it is that the appropriation will serve as a substitute for the original or its plausible derivatives, shrinking the protected market opportunities of the copyrighted work”). A use that shares the purpose of a copyrighted work, by contrast, is more likely to provide “the public with a substantial substitute....” [Id.] at 207....

Similarly, Justices Neil Gorsuch and Ketanji Brown Jackson state in their concurring opinion:

[T]he copyright statute expressly protects a copyright holder's exclusive right to create “derivative works” that “transfor[m]” or “adap[t]” his original work. §§ 101, 106(2). So saying that a later user of a copyrighted work “transformed” its message and endowed it with a “new aesthetic” cannot automatically mean he has made fair use of it. Contra, post, at 1–2, 22–23, 34–36 (Kagan, J., dissenting). To hold otherwise would risk making a nonsense of the statutory scheme—suggesting that transformative uses of originals belong to the copyright holder (under § 106) but that others may simultaneously claim those transformative uses for themselves (under § 107). We aren't normally in the business of putting a statute “at war with itself ” in this way. United States v. American Tobacco Co., 221 U.S. 106, 180 (1911).

The opinion in American Tobacco was not about a contradiction between two provisions, however, but between a reasonable reading of a single provision and another proposed reading that would seemingly undermine the legislative objective (freedom of interstate commerce).  In Warhol, the justices were at loggerheads over whether presumptively vesting the ability to adapt, recast, or transform a work in its original author would thwart the very creativity that copyright is deemed to promote.  For dissenting Justice Elena Kagan and Chief Justice John Roberts, there is no tension between finding a work to be an infringing derivative yet favored under fair use as having a "purpose or character" that is akin to comment, criticism, research, or scholarship.  The derivative work right is not eliminated despite this approach because the amount and importance of material taken and any economic harm to the original author can outweigh the purpose factor.  Even more importantly, the derivative work right is "[s]ubject to" section 107 (the fair use statute) and other defenses/limitations.  In 2013, for example, the Court found that even though copyright infringement includes unauthorized distribution of copies, the first-sale (or resale of a lawful copy) defense applied.  The strength of the argument that an unlawful distribution occurred could not eliminate the first-sale doctrine's role (because distribution exclusivity is subject to it).  Thus, ruling against Goldsmith on the question presented (that the unauthorized Prince art based on a Goldsmith photo was "transformative" under the fair use doctrine) would conflict with neither the fundamental goal of copyright nor with the derivative work language.

The legislative history of the Copyright Act further illustrates why allowing fair uses of some derivative works would not make nonsense of the statute.  Both the definition of a derivative work, and that of fair use, refer to a "portion of [the] ... work" being used.  Unlike the majority opinion in Warhol, which defines fair use as necessarily excluding "plausible derivatives," the legislative history states that "no real definition" of fair use even exists.  Several of the examples of fair uses in the legislative history amount to a "recast[ing]" of the original work, and are therefore "plausible derivatives," including: "illustration or clarification of the author’s observations" and "summary of an address or article, with brief quotations, in a news report."  Both of these examples are captured in the preamble to the fair use statute under "comment," "research," or "scholarship," so that criticism or parody does not exhaust the world of fair uses.  Nevertheless, the majority opinion starkly contrasts comment and criticism, and greatly disadvantages commentary and research in comparison to "target[ing] an original work."

By excluding illustrative or summative commentary and other plausible derivatives from the scope of the first factor of the fair use doctrine, the majority opinion will confine fair use to a very minor domain because it did not want to "narrow" the derivative or adaptation right.  As the dissent points out, the first factor ensures a "'breathing space' for artists to use existing materials to make fundamentally new works, for the public's enjoyment and benefit."  Courts formerly utilized the first factor to outweigh aspects of the new work that might otherwise negate a fair use, such as use of the entire work or use of the "heart" of the work such as a song's refrain.  The dissent goes on to criticize the majority's move here:

[T]he preamble ... gives examples of uses often thought fair: “criticism, comment, news reporting, teaching[,] ... scholarship, or research.” § 107. As we have explained, an emphasis on commercialism would “swallow” those uses—that is, would mostly deprive them of fair-use protection.... [¶]  [Yet o]n the majority's view, an artist had best not attempt to market even a transformative follow-on work—one that adds significant new expression, meaning, or message. That added value (unless it comes from critiquing the original) will no longer receive credit under factor 1. And so it can never hope to outweigh factor 4's assessment of the copyright holder's [economic] interests.

The dissent in Warhol recalls on earlier dissent on an even weightier issue.  In 1984, the Court ruled 6-3 that paraphrasing and selectively quoting choice passages from the memoirs of a former president and potential presidential primary candidate Gerald Ford were consumptive and exploitive uses of his manuscript, rather than fair news reporting with a more beneficial purpose of conveying uncopyrightable facts without scooping a new book.  Building on this approach, courts  ruled that even liberally quoting unpublished letters could result in a copyright ban on a biography.  Justices William Brennan, Byron White, and Thurgood Marshall issued one of the great First Amendment dissents in the Ford case, warning that news reporting, which was a "prime example" of fair use according to the statutory text, had been disfavored by the majority, threatening open discussion and debate on public figures and official measures.  Scholars  have often confirmed that this danger has indeed materialized.

The Warhol dissent takes a minimalistic approach.  The First Amendment right to make art of a postmodern or even simply a "pop art" variety is not discussed, despite effective briefs on the topic by art law professors and copyright law professors.  Even the legislative history, which contains important discussions of the scope of fair use and of the derivative right, makes no appearance.  Cass Sunstein conceived of judicial minimalism as different from judicial restraint in that it promotes core principles on which supposedly everyone can agree, while striking down laws when necessary to shield traditional rights.  It is not "skeptical" of the judicial role so much as committed to a broad scope of political branch discretion, and confident that judges committed to various ideologies and legal theories can agree in reasonable and circumscribed decisions.  In this way, the Warhol majority explains its ruling as an interative development of existing precedents and a straightforward application of statutory text.  The dissent invites readers to review the precedents and read the text differently.  Neither opinion returns to first principles and opens a destabilizing inquiry into their contemporary implications.

Sunstein noted that a minimalistic opinion may fail to provide "justification or guidance for the future" in "wider judgments."  The majority does not even draw much of an explicit distinction between submitting art to a magazine for a fee -- where the art is based on a photograph to illustrate a magazine article or cover about the photograph's subject -- and either displaying similar art in a nonprofit museum or art history textbook.  Thus, Justices Gorsuch and Jackson wrote a concurrence to point out that the first fair use factor might favor such a use in an appropriate case.  The majority is unwilling even to state that a critical book review necessarily benefits from the first factor, because certain quoted passages might satisfy consumer demand for part of the book and therefore lose the benefit of the first factor. 

The majority does offer guidance on a number of important topics.  It concedes that when a creator uses only a tiny portion of what came before or hides whatever is created in the classroom or private quarters, the "plausible derivatives" test may support a fair use under the first factor.  It approvingly cites cases stating that reproducing a photograph that is "the story" unaltered alongside a news article could be a fair purpose, as could altering a photograph for parodic effect.  It reaffirms a decision from 2021 that it could be a fair purpose to make use of "primarily functional" computer software elements to create a new programming "environment" with "shared interfaces" and the ability to attract programmers from earlier coding environments.  It even analyzes Andy Warhol's Campbell Soup Cans from 1962 (part of a series continuing through at least 1969) as having a purpose and character consistent with a fair use because advertisements have a different purpose and the series "target[ed]" the ads, presumably for being "ordinary."  Finally, the majority declares -- with no precedential or theoretical support -- that film adaptations are unfair uses. (The Court ruled in 1911 that a film could be an infringing dramatization of a book under the copyright act of 1891, but fair use did not come up.)

There can be no presumption that a particular type of work is a fair use or even has a fair "purpose and character," for the majority.  As noted above, even book reviews are now at risk even though they were one of the first types of fair uses recognized, alongside abridgements.

The dissent argues that despite the guidance provided, the majority's minimalism and solicitude towards authors' commercial aims will leave subsequent authors and musicians in a very uncertain position as to quoting others' original work.  Were Warhol's Marilyn Monroe series of paintings and screenprints all infringements?  The dissent is unsure, althugh the majority notes that Warhol paid to license the photographic source material of some of his works, so the scope of said licenses might be important.  How could future artists or musicians possibly rely on fair use if even an "avatar" of a bracing and revolutionary form of recontextualizing art worthy of museum exhibition and inclusion in art history's pantheon, had an insufficient legal justification for the "purpose and character" of (at least some of) his works?  No matter, say the majority and the concurrence: a narrow question was asked, and answered.

The majority opinion, like the Campbell case it applies, adopts an analysis from a Harvard Law Review article by Judge Pierre Leval.  Leval argued that the further removed the purposes of the user are from those of the original author, the more excusing an unauthorized use will advance the aims of copyright law .  On the other hand, subsequent authors who share purposes or characteristics of their work with the original author's work threaten to divert income from him or her and harm the mechanism with which copyright adds to knowledge via incentives. 

The central question under this approach is whether an interference with a "plausible derivative" is made by the subsequent author.  As Leval's article put it, any "reasonably substantial" loss of revenue due to the substitutionary effect of a use may negate its fairness. In the Google Books decision, Leval expanded on the proposal:

Even if the purpose of the copying is for a valuably transformative purpose, such copying might nonetheless harm the value of the copyrighted original if done in a manner that results in widespread revelation of sufficiently significant portions of the original as to make available a significantly competing substitute....

There must be a meaningful or significant effect "upon the potential market for or value of the copyrighted work." 17 U.S.C. § 107(4).

However, Leval's discussion of derivative substitution in his article and in the Google Books opinion dealt with the fourth fair use factor.  The Warhol majority's use of significant-impact-on-plausible-derivatives to inform the first factor will lead to confusion between the purpose and character factor and the effect on value of markets factor, the dissent argues.  The majority denies this, leading to various skirmishes in the footnotes.  The most clarifying statement by the majority is that a significant effect on derivative markets may be correlated with but is not a cause of a purpose and character that is unfair (for being too close to that of the original work).

This analysis by Leval, mediated by its reception in Campbell, is about the sum total of the influence of legal scholarship on the majority opinion.  As with the First Amendment issue and the postmodern art briefs, this was a minimalist move, as legal scholarship is rife with theories about the history and optimal development of fair use. 

In the Warhol concurrence, however, legal scholarship makes a tantalizing appearance.  It is suggested that while fair use may not be viable for the Warhol foundation due to losing the first factor, a defense of outright noninfringement may have had more success.  The Nimmer on Copyright treatise appears for the proposition that "even when two works are substantially similar, if both the plaintiff’s and the defendant's works copy from a third source (reworking, say, a traditional artistic or literary theme), a claim for infringement generally will not succeed."  This, for me, evoked an opinion by then-judge Gorsuch on copyright infringement, in Meshwerks, Inc. v. Toyota Motor Sales USA, Inc. (10th Cir. 2009).  There, the plaintiff digitally sculpted lines and frames initially derived from Toyota vehicle measuresments, for purposes of painstakingly generating all the fine nuances of a vehicle's appearance in a computer-based model.  Its infringement claim against Toyota for subsequent unauthorized uses ran up against a "bedrock" principle of copyright law that aspects of the plaintiff's model attributable to copying the underlying object had to be ignored, and could not form the basis of a claim.  The shape of a vehicle was unprotected or owned by Toyota, not owned by the plaintiff who first traced it.  Analogously, the concurrence seems to suggest that the Warholized image of Prince (which the dissent describes as resulting in "isolated and exaggerated ... differently-colored, out-of-kilter lines around Prince's face and hair") might be noninfringing once Prince's features are ignored.  Scholars (who unfortunately the Court does not engage with to provide more guidance to those using images of people for various purposes) explore this as the "photograph as database" theory, with the photograph as a mirror, repository, or taking of data points preexisting in the world. 

It is, in a way, appropriate that Warhol's work should cause us to reevaluate the dynamic between the creator as generator of meaning and the creator as consumer of meaning.  The majority opinion paints Warhol and similarly situated artists (like Richard Prince or Jeff Koons) as grabbing value from others, as being engaged in "wholesale takings."  Warhol described what he was doing as driving the seemingly strong meaning of ordinary images to a vanishing point.  Repetition, iconography, discoloration, and the like produce a distancing or alienation effect (Verfremdungseffekt or priyom ostraneniya).  The comforting and community-binding aura around popular images takes on a different hue.  Richard Prince and Koons achieve something similar in cases they lost in pertinent part, in the rulings on Graduation and the String of Puppies.  This kind of art will continue to be possible to release without a license, but perhaps only if the source images are obscured in such a way that the alienation effect is not really achieved.  Thus, Richard Prince and Koons prevailed (under pre-Warhol standards) as to works jumbled up or covered over in larger collages and the like.  Warhol, in this way, bans a type of Warholist art.