The Supreme Court gets involved in fair use rights
Cathy Gellis if Techdirt recaps a case that came before the US Supreme Court in Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith.
Op-ed by Cathy Gellis from techdirt
I’ll start this post with a bit of whimsy before alarming you with the sense of doom portended by the stakes involved with last week’s oral argument at the US Supreme Court in Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith.
In this case the Warhol Foundation is trying to get SCOTUS to overturn a terrible decision at the Second Circuit that found Warhol’s Prince prints to not be a fair use of a photograph earlier taken by Lynn Goldsmith. This case is not just a big deal for the Warhol Foundation, which manages Warhol’s art portfolio, but for anyone else who may ever wish to make a fair use of any copyrighted work that ever came before. Which not only includes other modern artists – the Warhols of tomorrow, his foundation’s lawyer reminded us – or others who would seek to remix obvious visual references in their new works, but basically anyone else ever tempted to create new expressive works (including filmmakers, authors, writers, musicians, and even photographers themselves). Because if the Second Circuit’s new interpretation of how the fair use provision of the copyright statute is allowed to stand, it will fundamentally shrink the vocabulary available to new creators who have new ideas to express.
But I digress into substance. Back to the whimsy: at the hearing, Justice Thomas, who, before the pandemic, almost never asked questions of the lawyers arguing before the Supreme Court, posed an interesting hypo to the lawyer for the Warhol Foundation. He started it out by musing, “Let’s say I was a big Prince fan, which I was in the 1980s…” As his voice trailed off to form his next sentence, Justice Kagan piped up to ask, “But no longer?” At which point the entire court, and the bench, including Justice Thomas, succumbed to waves of laughter, and, for a brief moment, we could all forget how much law and liberty rests, already quite bruised, in the hands of these extremely flawed humans assembled before us.
“Only on Thursdays,” Thomas quipped back, before returning to his hypo. The hypo continued by asking what if he were also a Syracuse fan and took an orange version of the Warhol Prince print, added the line to it, “Go Orange” and waved it around at basketball games. Could he be sued by Warhol for that?
Which brings us back to the heart of this case. The question before the Supreme Court was what the rule should be for when fair use should be found. There was no debate of course about whether there should be fair use; it’s a baked-in part of the copyright statute sitting at 17 U.S.C. Section 107. And, as the Supreme Court has previously noted, it needs to be in there to prevent a conflict between copyright law and the First Amendment, to help ensure the former does not do violence to subsequent expression. What the Warhol side argued, correctly, is that the Second Circuit’s decision rejecting Warhol’s fair use defense, obviated it as a usable defense for subsequent expression, and so it petitioned the Supreme Court to correct that error.
The issue arose because, although the statute articulates four factors courts should consider to determine whether a use of a previous work is fair, they aren’t necessarily exhaustive, nor, as this case illustrates, are they entirely clear. This case is about clarifying how these factors should be applied, or, more specifically, this case is about whether, in finding the Warhol Prince prints infringing, the Second Circuit applied the first factor wrong, and if the fourth factor had something to do with it. (And, if so, how the court should have done better.) The fourth factor, working backwards, is the effect on the market for the original work, and Justice Thomas’s hypo touched on it. The Warhol Foundation initially said that his posters should clearly be fair use, noting that Thomas making them would not implicate the fourth factor. Oh no, said Thomas. “I intend to market these things to all my Syracuse buddies!”
Which returns the analysis to the first factor, which looks at the purpose and character of the new work, with the implicit question of whether it’s the same as the original’s. And that’s basically where nearly two hours of oral argument lingered, as everyone argued about what the word “purpose” in the statute even meant.
The Warhol argument largely boiled down to courts needing to ask whether the new work conveyed new meaning not conveyed by the original. But it also made the wider point that when the subsequent work does convey new meaning that the original did not (and in this case there isn’t really a dispute that the Warhol work captured something else to describe who Prince was as a person that the original Goldsmith work had not) then, fundamentally, it could not be seen to share the same purpose as the original, because that expressive purpose was different. As the argument went on the justices wrestled with who should get to decide if there was new meaning, and what constituted adequate proof of it. But the Warhol Foundation complained that the Second Circuit basically had not bothered to consider whether there was any new meaning at all, and at minimum SCOTUS should direct the Second Circuit to redo its analysis with that question in mind.
Goldsmith, on the other hand, and supported by the government, argued that the “purpose” of the Warhol picture was the same as her picture, which was simply to be a picture of Prince that could illustrate an article in a magazine. And if a magazine could pick the Warhol picture over the original Goldsmith one, then that would indicate fourth factor harm, since the market for the original would now be reduced as it competed commercially with the subsequent work.
But if we are going to be able to have new works that express new ideas that the original works did not, then the Warhol argument needs to prevail. And, even given what Goldsmith argued, it should prevail. Because to the extent that both are pictures competing to be used in a magazine, they aren’t competing with each other as literal portrayals of Prince. In fact, to the extent they are, then it is questionable how strong the copyright claim could even be in the original picture, because the essential fact of what Prince looks like is not subject to copyright; rather, it is the originality that Goldsmith included in the capture of his likeness that said something about him that earned the copyright. And it is Warhol’s changing of those creative elements to say something else about him that avoided the copyright to be a fair use.
Because these two pictures say something different about Prince, the one the magazine editor will choose will be the one that says something about Prince that best complements what the article says about him. As such, the first factor should favor finding the second picture fair use, because its purpose is to say something different about Prince than the original did, and so should the fourth factor also favor a finding of fair use, because the latter will not impinge on the market for the pictures saying what the original did. It will instead create its own market for its own original expression conveyed.
Nevertheless, Goldsmith, and the government, instead argued that fair use should be more limited, and that subsequent uses should only be fair if it was truly necessary to have used the original to make their new expression. But necessity is not a requirement found in the statute. Nor could it be there if fair use is going to serve its purpose of advancing future expression.
To support their argument Goldsmith (and the government) took issue with the fact that one of the exclusive rights of a copyright holder, at 17 U.S.C. Section 106(b), is the ability to license derivative works. Copyright holders complain that too much fair use makes that derivative right too limited to be valuable, but what happened at the Second Circuit with this case, and in the Ninth Circuit with the ComicMix case, is that the right to control derivative works essentially snuffed out the ability to ever make fair uses, because it wouldn’t matter how much you transformed the original since the transformation was essentially always going to be a derivative. However, as the Warhol Foundation argued in response to questions from the justices, the text of the statute prioritizes the ability to make transformative fair uses over the derivative right in order to make sure that the former ability can functionally exist. (See the preamble of Section 106: ” Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following…”)
Fair use is already plenty messy; as Lawrence Lessig observed, fair use is the right to hire a lawyer, as opposed to the obvious and durable shield for subsequent expression even the Supreme Court itself has previously recognized it should be. Both Goldsmith and the government also drove home the point that fair use is merely an “affirmative defense” that someone charged with infringement would still have to put before the court to convince it that their use was instead a non-infringing fair use. But that reality cuts against their read of the copyright statute. For fair use to promote subsequent expression it needs to afford creators fairly expansive and reliable protection in order to sufficiently deter infringement suits against it. If it were too narrow or too conditional, such that anyone creating new expression would have to plausibly fear being forced to spend the money to defend their new expression, then they simply won’t create it because it won’t be worth the legal risk. And that’s what’s at stake here: whether fair use can be applied broadly and reliably to encourage new ideas, or whether it is a more narrow needle that fewer subsequent creators will be able to be confident they can thread, which will inevitably chill their expression.
But any law that deters new expression would offend the First Amendment, with its admonition to Congress not to impinge on free expression. And copyright law is no exception, especially because if copyright law is found to operate in a way that chills expression it would also run counter to the Progress Clause of Constitution, which enables Congress to pass copyright legislation only for the specific purpose of promoting more expression. As the Copia Institute argued in its amicus brief, if the upshot to copyright law, and the practical interpretation of it that the courts instruct, is that new expression is suppressed by copyright, then copyright law would have a constitutional problem on both fronts. So that simply can’t be how courts, including the Supreme Court, should find the statute to work.
And now we wait to see if the justices agree.
