Courthouse Steps Decision: Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith

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Jack Derwin:   Hello, and welcome to this Federalist Society virtual event. My name is Jack Derwin, and I’m Associate Director of the Practice Groups here at The Federalist Society. Today, we’re excited to host a “Courthouse Steps Discussion” on last week’s Supreme Court ruling in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, featuring Professor Zvi Rosen.

 

       Zvi is an Assistant Professor at Southern Illinois University School of Law. Previously, he served as a Visiting Professor at the Maurice A. Deane School of Law at Hofstra University and was a Visiting Scholar and Professorial Lecturer in Law at George Washington University School of Law. He’s also spent time at the United States Copyright Office and in private practice and has written extensively on the development of modern copyright and trademark law. 

 

      As I’m sure he’ll touch on in his remarks, he filed a brief in the case at issue today on support of Goldsmith. After Zvi’s remarks, we’ll go to audience Q&A, so please enter any questions for him into the Q&A function at the bottom right of your Zoom window. Finally, I’ll note that, as always, all expressions of opinion on today’s program are those of the guest speaker joining us. With that, Zvi, the virtual floor is yours.

 

Zvi Rosen:  Thanks, Jack, and good morning or afternoon, depending on where you are in the country. Last week, the Supreme Court gave one of its most significant copyright decisions in decades, really, in Warhol v. Goldsmith. And just like the Court, I’m typically going to say Warhol instead of Andy Warhol Foundation or Andy Warhol, the man—depending on what I’m talking about—for purposes of convenience.

 

      Warhol, of course, was a famed conceptual artist. Goldsmith was a rock and roll photographer. That’s Lynn Goldsmith’s photo on the left. She took that in 1982 of the artist, Prince. Several years later, when Prince had become much more famous, Life magazine wanted to have a section called “Purple Fame.” They received a license from Goldsmith for this photograph to use as an artist reference. Goldsmith did not even know it would be Warhol, but everyone was happy with it. She got paid her license fee for her reference. Warhol made the art. The art was published under the terms of the license. Everyone was happy.

 

      Unbeknownst to Goldsmith but knownst to us, Warhol made 15 more of these artworks of Prince—the so-called Prince Series. These were eventually all sold to private collectors. Warhol died in, I believe, ’86—so pretty soon afterwards. All of this stayed fairly quiet and unbeknownst to Goldsmith until 2016. In 2016, Prince died, and there were numerous commemorative issues put out by major publishers. Conde Nast produced this one. They contacted the Warhol estate—now the Andy Warhol Foundation—and they said, “We want to use the same one that was in the ’85 article in Life.” And the Foundation said, “Well, you know, we’ve got a whole bunch of others, too, from a Prince series.” Not knowing this yet, but now knowing it, Conde Nast said, “Great.” And they ended up using this one, the Orange Prince. And they paid the Andy Warhol Foundation $10,000. Lynn Goldsmith saw this and said, “What the heck,” and sued.

 

      The only real question here is whether this is a fair use of Goldsmith’s photo, and what exactly the use is, is part of the issue we’re going to get to. So what is fair use? Fair use is an equitable doctrine that’s been around for a very long time—really since the 1830s -- 1840s, rather. And in the 1976 Copyright Act, it was defined as having these elements. And it’s -- “shall include” is key. Sometimes, we have the temptation to view these as checkboxes, but for reality, it’s a various series of factors that all help define whether or not something is fair use. And there’s things that you look at. You can add others, although courts rarely do.

 

      The key one here is, “What is the purpose and character of the use?” And you’ll see as part of that, “including whether such use is of a commercial nature or is for non-profit educational purposes?” At trial, the district court found that this was a fair use, looking at some cases that read purpose and character very broadly to include whether it transforms. The Second Circuit reversed, and they read a much narrower read of what transformation means. And this all goes to what the purpose and character of the use is.

 

      What’s the question presented? This was written by Warhol, so recognize that. This is just copied and pasted. “The Court repeatedly made clear that a work of art is transformative for purposes of fair use under the Copyright Act if it conveys a different meaning or message from its source material.” Is that still the case, is effectively what it comes down to. Are we just looking at meaning or message, and what is actually the standard for transformativeness?

 

      Now, where does this all come from? It comes from a case, Campbell v. Acuff Rose Music. This is not the Campbell like Campbell’s Soup Cans that Warhol painted, rather this is Luther Campbell—aka Luke Skyywalker, with multiple y’s—one of the members of 2 Live Crew. And what the Court said there is, “The central purpose of a fair use of investigation is to see whether the new work really supersedes the object of the original or if it adds something new.” Put another way: whether and to what extent the new work is transformative. This is the Supreme Court in 1994 holding that the track “Oh, Pretty Woman” by 2 Live Crew is a fair use, and finding it is a fair use of a Roy Orbison classic “Pretty Woman”—owned by Acuff Rose Music.

 

      In 2013, the Second Circuit decided Cariou v. Prince. This is not the Prince at issue here but rather the appropriation artist. What the Court said in Cariou is that -- noting that “Much of Andy Warhol’s work”—this is a Warhol we’re talking about—“including such work incorporating appropriated images of Campbell’s soup cans or of Marilyn Monroe, comments on consumer culture and explores the relationship between celebrity culture and advertising.” This is the key line from Cariou in 2013, and I think you can pretty clearly read the Second Circuit’s opinion as -- well, the Second Circuit says that Cariou is an outer limit of transformation. I think the Supreme Court is pretty much overruling Cariou.

 

      “The law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some other purpose other than those identified in the preamble to the statute.” Remember, that’s criticism, comment, teaching, scholarship, etc. This is what the Warhol Foundation was hoping the Second Circuit would say on appeal, but instead, they reversed, saying that Cariou was the outer limit.

 

      The opinion of the Court says pretty clearly that, no, that view from Cariou is not for rule. What they note is—and this is something I did mention in my amicus brief—“The statute defines derivative works,” and these are one of the -- a class of works ”where the owner of a copyright of exclusive right to prepare as to include any other form in which a work may be recast, transformed, or adapted.” And the two are not necessarily exclusive, but -- and this is, I think, a line that’s going to be litigated a lot more. “The degree of transformation required to make transformative use of an original”—in other words, a fair use that’s transformative—“must go beyond that required to qualify as a derivative.”

 

      So it’s not enough for something to be transformative; it has to go beyond the transformation required to make a derivative work. Now, what is the test for what’s transformation for a derivative work? I don’t actually know. The Court has never said. There’s a few conflicting definitions, but I think they are actually -- the issue is quite controversial itself. For instance, whether or not a sequel is a derivative work is actually hotly debated. So the Court just left that one be. It wasn’t per se at issue, but a definition would have been helpful.

 

      One of the -- you have this line in Campbell, implicitly, that criticism and comment is key. And this led to what sometimes is called a parody/satire distinction—that a parody takes what is needed -- I mean, it takes original work that is needed to comment on the original—that’s a parody. So if you’re familiar with Weird Al -- the example I usually give when I teach this is that if the skunk smells like nirvana, it’s classic parody. The song takes the song “Smells Like Teen Spirit,” but it comments on it because the whole song is about how you can’t understand the words.

 

      On the other hand, if you take the Weird Al song, “Eat It” and compare it to Michael Jackson’s song “Beat It”, there’s no real commentary on Michael Jackson’s song “Beat It” in the standard sense. I’ve heard people say that it comments on incoherence of “Beat It” but that, of course, gets interesting questions of, how can you hard define what comment means? Well, the Court does say—and this is pretty much quoting Campbell—“Commercial nature is not dispositive, but if there is no criticism of the original, commercial nature is more important.”

 

      Now, we're going to talk in a little bit about how this opinion gets pretty heated as you go deeper into it. What I think a lot of it comes down to is that the majority sees itself as reaffirming and applying the Campbell case to different facts—the facts we have here. To the dissent, this opinion is a betrayal of the Campbell case and the Google case, which is not actually mentioned all that much.

 

      But Google was two years ago. It’s one of Justice Breyer’s last opinions, and he held that it was fair use for Google to effectively reimplement the Java programming language on an Android operating system and copy in, what’s so-called, the class structure of Google. There’s not a lot of discussion of Google in the body of the opinion. Footnote on the same page emphasizes that Google’s about computer programs and really limits Google's purpose and character analysis to it. To the dissent, Google was a dramatic reaffirmance of Campbell. To the majority, Google is a footnote to Campbell, I believe—which the majority literally puts it in footnotes to, perhaps, some explicit fair.

 

      What is the use? What’s the actual use that’s alleged to be fair? This is a key question, actually. So the majority makes clear that the use that has to be fair is the alleged infringing use. And accordingly, because the Court decides that the use in question is the licensing to the magazine, not merely the creation of the Prince series by Warhol, then you have to look at the actual licensing as whether or not it’s a fair use. You are not looking at whether or not the creation of a Prince series, more generally, is fair use.

 

      I’ve heard people say that this is wrong-headed. I know I’ve heard Pamela Samuelson say, “This was a licensed creation of a derivative work by Warhol. Are we really saying that every licensed use has to get additional licensing? I think the takeaway of this opinion is, yes. I think you have to say that if you create a derivative work under a license and you want to subsequently license it in a manner that goes beyond the terms of that original license, it’s going to be analyzed as to whether or not it’s infringing. And so, accordingly, you have to get new licenses if you go beyond the terms of your license even if your creation of a derivative work is what was originally licensed.

 

      I’ve also heard a lot of discussion that factor one, purpose and character, and factor four, market effects, are effectively merging. And this a quote from the opinion saying that, “Taken together, these two elements—that Goldsmith’s photograph and Andy Warhol Foundation’s licensing of a Prince photo share substantially the same purpose,” which is use in magazines, “and Andy Warhol Foundation’s use of Goldsmith’s photo was of a commercial nature—counsel against fair use, absent some other justification for copying. That is, although a use’s transformativeness may outweigh its commercial character, here, both elements point in the same direction.” So in other words, if you look at the magazine licensing and because they’re both for a magazine, that counsels against fair use. It’s not absolute, but it counsels against it. For a concurrence, as we’ll say, it’s pretty much absolute.

 

      Well, what about those soup cans? This is the majority. “Warhol’s…Soup Cans target the logo”—the Campbell’s logo, as a symbol of commerciality. That’s the object of the commentary. “The very nature of a copyrighted logo” -- that it was a commentary. If the copyrighted work only serves a completely different purpose—to comment on consumerism rather than to advertise soup. Now, the majority puts in a footnote, “If someone else licensed Warhol’s Soup Cans to a soup business, that could be different—” of course, that would also be a trademark problem, but we ignore that. Implicitly, the key thing about the Warhol Soup Cans is if they’re not being used for a similar commercial purpose. Now, is this factor four, market effects, or factor one, purpose and character? I think the majority would say that “Well, the fair use factors are holistic. We’re not checking boxes.” I think the dissent would probably disagree with that.

 

      And this is where things start to get a little spicier, as I’ve heard people say. “The dissent commits the same interpretive error as the Andy Warhol Foundation: It focuses on Campbell’s paraphrase yet ignores the rest of that decision’s careful reasoning. Upon reading the dissent, someone might be surprised to learn that Campbell was about parody at all.” And they say—now, this is once again in a footnote—“The dissent makes the same mistake with Google. They fail to read the dissent as a whole. So while the dissent claims that the ‘Google court would have told this one to go back to school,’ it might be easier to just go back and read Google.” So you’re getting the tenor of the argument here.

 

      What the Court is saying there is that -- the dissent is saying Google’s very clear purpose and character is more than market effects. The majority is saying, “No. Google is a computer decision”—same thing. Campbell is a parody decision to the majority. It’s not a broad statement of fair use.

 

      A famous line from Bleistein v. Donaldson Lithographic—that’s a 1903 Holmes decision about circus posters -- it’s not a fair use case. It’s about whether or not they’re copyrightable. But what Holmes said is that it’s a “dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of a work, outside of the narrowest and most obvious limits.” It’s just saying that circus posters are still copyrightable, even if they’re just being used to advertise a circus.

 

      So the Court -- granting the district court’s conclusion, Orange Prince reasonably can be perceived to portray Prince as iconic, whereas Goldsmith’s portrayal is photorealistic. You have to look at the specific use. We shouldn’t be in the business of trying to figure out what paintings are saying and making aesthetic judgments. The use is commercial licensing. The purpose is to illustrate a magazine. The majority notes that a photo by Goldsmith was actually used by People magazine for their Prince commemorative issue. So this is all about commercial purpose not aesthetic purpose—the major holding of this case.

 

      Once again, there’s a majority on the dissent. “The dissent thus misses the forest for a tree. Its single-minded focus on the value of copying ignores the value of the alleged works. It ignores the statute’s focus on the specific use alleged to be infringing. It waves away the statue’s concern for derivative works. It fails to appreciate Campbell’s nuance. And it disregards this Court’s repeated emphasis on justification. The result of these omissions is an account of fair use that is unbalance in theory and”—I assume this is being quoted—“perhaps relatedly, in tone.”

 

      What the majority is saying is, “Read Campbell. It’s a narrow decision about parody.” And of course, the dissent does not think that. The dissent says, “No. It’s about what fair use is all about.”

 

“The dissent’s conclusion that whenever a use adds new meaning or message or constitutes creative progress in the opinion of a critic or judge”—and I think that’s meant to be read with a little bit of an edge—"the first fair use weighs in its favor. And this does not follow from its basic premise” of decisions. “Fair use instead strikes a balance between original works and secondary uses, based in part on objective indicia, including whether the use is commercial and the reasons for copying.” So this is really a fundamental disagreement on the purpose of fair use. And you’ll see in the dissent, it’s really focused on the purposes of fair use, whereas the majority is taking a textualist approaching, commerciality matters, parody versus satire matters, criticism and comment matters.

 

      We have a six-page concurrence from Justice Gorsuch, joined by Justice Jackson. This mostly stands on its own. It’s very textualist, very modest. The Court says -- the concurrence, rather, says, “Purpose and character asks us to assess whether the purpose and character of that use is different from and thus complements or is the same and thus substitutes for a copyrighted work. It’s a comparatively modest inquiry focused on how and for what reason a person is using a copyrighted work in the world, not on the moods of any artist or the aesthetic quality of any creation.” Put another way: there is no room for aesthetics. We are just looking at the reason for the use of a work. Take all of the subjective inquiries out and make it simply about the reason for the use—in other words, the purpose and character of a use.

 

      The concurrence makes very clear—and the majority does, too—this does not comment on the public display of a Warhol Prince series, use of them in an art book, commenting on them,” or anything else. This is just about the actual magazine licensing.

 

      Concurrence -- “under the law Congress has given us, each challenged use must be assessed on its own terms.” I saw Aaron Moss at copyright lately define this whole decision as “let’s get hazy.” And it’s not incorrect to say I think this is going to be a good decision for lawyers. Every fair use case -- there is no bright line after this case. There is very much, what is the purpose and character of the use? Just because you can say it transforms the work, that is not enough.

 

      The dissent -- and, like I said, this gets heated, and I have a few examples of that. "It is not just that the majority does not realize how much Warhol added; it is that the majority does not care. In adopting a posture of indifference, the majority does something novel, though in law, unlike in art, it is rarely a good thing to be transformative. Before today, we asked the purpose and character of the copier’s use by asking the following question: Does the work add something new, with a further purpose or different character, altering the original with new expression, meaning, or message? But today’s decision—all the majorities’ protestation notwithstanding—leaves our first-factor inquiry in shambles.”

 

      What the dissent is really saying here is, until today’s decision, we had a way to determine whether something is of fair use based on the creation of a work—not on what’s being done with it later—with this question, “Does it add something new?”—further, purpose, meaning or different character. After this, that’s not the case. If you’re a museum, a library, an appropriation artist, anything else, the factors that go into your creation are not enough. You’re going to look at the purpose and character of the alleged infringing use and the nature, if it may matter. Whether you create it and hang it in your studio, versus licensing it to Nike for a sneaker commercial, is going to matter for purposes of fair use. Whereas, in the dissent’s opinion, it wouldn’t have mattered before.

 

      This is going to lead us to the infamous footnote two of the dissent. This is the one that’s gotten more media attention than probably the whole rest of the opinion. This is a straight quote, like most of these slides, but as before, I’ve added some organization. “One preliminary note before beginning in earnest. As readers are by now aware, the majority’s trained on this dissent in a way majority opinions seldom are.” And that’s true. I’ve actually omitted a lot of the commentary from the majority opinion. I’ve only given you some highlights. “Maybe that makes the majority opinion self-refuting? After all, a dissent with no theory and no reason is not usually thought to merit pages of commentary and fistfuls of comeback footnotes. In any event, I’ll not attempt to rebut point for point the majority’s varied accusation; instead, I’ll mainly rest on my original submission.” I think that’s, perhaps, Kagan saying, “I wrote this, and then the majority commented on it.”

 

“I’ll just make two suggestions about reading what follows. First, when you see my description of -- that my description of a precedent differs from the majority’s, go take a look at the decision. Second, when you come across an argument that you recall the majority took issue with, go back to its response and ask yourself about the ratio of reasoning to ipse dixit. With those two recommendations, I’ll take my chances on readers’ good judgment.”

 

      Like I said, this is getting pretty spicy, as some commenters said. I don’t entirely agree. I’ve read these decisions. And it’s true, I think both of them are, I think, being a little selective in how they quote Campbell and Google. But I don’t think either one’s -- but I don’t think the majority’s reading of Campbell, especially, is invalid. I think subsequent cases and subsequent commenters read Campbell broadly as saying it’s all about meaning or message. And like the dissent said, “You’d be forgiven from reading the dissent for forgetting that Campbell is a parody case.

 

      Now, this is really a battle not about which -- it’s a battle about how to read Campbell, and the majority of the Court says you read it narrowly. The dissent says, “We have read it broadly, and we should continue to do so.” It is true that Google reads Campbell broadly, and part of what the majority is doing is reading Google as a computer case and a computer program case, which is also what the Second Circuit held. The Second Circuit originally was decided before Google was decided. Warhol then asked for reconsideration, and instead of changing their opinion, the Second Circuit, “Look, I’ve read Google, and it’s a computer case.” And that was part of what’s at issue here. Is Google this computer case? I believe Justice Kagan did not think that when Google was decided, and clearly still does not think so. Clearly, Justice Sotomayor did, and I think that’s a lot of what’s going on here.

 

      There was a lot of backstory with Google. Google took a very long time to be decided. There was a lot of speculation that Justice Breyer wanted to write about the copyrightability of computer programs and didn’t have the votes and, accordingly, made it a fair use decision. I’ll also note that when she was working at the solicitor general’s office, Justice Kagan worked on Borland v. Lotus, which ended up being a 4-4 opinion of the Court deadlocked about the copyrightability of computer program interfaces. And you can see in her papers from Clinton Library that she was urging a narrower approach to copyrightability of computer programs. 

 

      To wrap up, what the dissent really says is, “Why do we have fair use, anyway?” Fair use is not just about public availability, it’s about creating new works. Nothing creative happens in a vacuum. The dissent spends a long time looking at how various works are created from earlier works, and in the eyes of the dissent—much more than the majority—fair use is about creating new works. And I think that it’s probably fair to say that the dissent and the majority have a different conception of fair use. I’ll just close on -- with the dissent on aesthetics. Then we’ll go to Q&A.

 

      “The majority does not see it. And I mean it literally. There is precious little evidence in today’s opinion that the majority has actually looked at these images, much less engaged with expert views of their aesthetics and meanings,” which frankly, I don’t think the majority would disagree with. What I think they would disagree with was whether or not it matters.

 

      “Whatever new expression Warhol added, the majority said, was not transformative. Apparently, Warhol made only modest alterations. The description is disheartening. It’s almost as though Warhol is an Instagram filter, and a simple one at that. What’s all the fuss about? The majority wants to know. No wonder the majority sees the two images as essentially fungible products in the magazine market—publish this one, publish the other. What does it matter?” I think it’s fair to say that you have fundamentally different views on the importance of aesthetics. And I think one takeaway is going to be that aesthetics are secondary and the commercial purpose is primary, going forward. Although, we’re still going to look at it, unlike the concurrence, which wouldn’t look at it at all.

 

      So with that, let’s jump to the Q&A, if that works. I don’t know if Jack has anything he was going to say before that.

 

Jack Derwin:  No. It looks like we have a few questions already. So Zvi, if you’re prepared to just take those as they come? If you wouldn’t mind reading them aloud so the rest of the audience can hear what you’re addressing, feel free to go ahead.

 

Zvi Rosen:  Sure. So the first question is from Michael Rossman (sp), I believe. “Can you opine on why the Court took the case to decide only one of the fair use factors? But the Second Circuit concluded that the other three factors all militated against fair use.” Well, it’s always dangerous to talk about why the Court took a case. It only takes four votes, of course. I do think -- and I think Justice Sotomayor—even though she was gone from the Second Circuit by then—was well aware of some of what was going on there with the Cariou case and all the debates about what transformativeness meant and I think, to a degree, what was seen as some chaos about what transformativeness really means. As to whether or not there was a true circuit split or not, I’m not sure.

 

      If you want to write a decision that clarifies that Campbell was a parody decision and Google was a computer decision, this is a good vehicle for it. I’ve seen people who, even otherwise, don’t love this conclusion, know these were not really great facts for Warhol, with the magazine licensing—which, by the way, Goldsmith was not just complaining about the magazine licensing, which was $10,000. There was millions of dollars at issue, regarding the creation and sale of a Prince series. And at argument, there was some discussion as to what, really, the license issue is. I have to think the Court took it because they wanted to cabin transformativeness, or at least, that was what some people wanted to do. Just a guess, but that’s my best answer.

 

      I have a question from Jeff Miller (sp) here. “What impact will the decision have on the issue of potential copyright infringement of generative AI?” I’m going to take that to mean the use of generative AI engines to create new works. And as a bit of background, generative AI is when an AI is trained on already existing copyrighted works—often, many of them—and then it creates new works based on a prompt, as I understand it.

 

      Some. So there’s a couple of cases that do seem more relevant and which are not explicitly overruled in terms of the Google image search case, the Google books case, etc., the Perfect 10 cases—which, I guess, is a Google image search. All of those said that it’s transformative because the purpose and character is to enable search rather than to be used in a -- as opposed to original use to display the images.

 

      I tend to think how you read this decision is going to impact that because this decision clearly says commerciality does matter. But you’re going to look at not just commerciality but the nature of the license. I tend to think this is not a death blow for generative AI. I think that’s generally the consensus of people. But I don’t think it’s necessarily going to help them either. I think a holding the other way -- like, the dissent would pretty much be a death blow to the lawsuits against generative AI, like the Getty Images search against Stable Diffusion  and the like. I think this is a moderate win for the copyright holders, but I don’t think it necessarily changes the landscape that much. It depends how you -- it depends whether this is held to impact those cases involving, like, the image search cases. I tend to think it’s not going to be determinative, but it definitely keeps those cases alive.

 

      Got an anonymous question here. “Is the following an accurate representation of a Warhol decision impact on the follow-on uses of fair use works? A work may be fair use upon a moment of creation but any follow-on license independently, such that you have to -- so you can have a fair use of the former not the latter?” Yes. “If so, is this different from a pre-Warhol status quo?” Yes, potentially, depending on which case you follow but generally. Certainly if the dissent says it is. “Also, if so, what does this mean for copyrightability if fair use works or creative such works doesn’t, in fact, have an exclusive bundle of rights? How does this not significantly limit the reach of fair use by giving the initial copyright holder the ability to control downstream use of works?” It does. I think -- under the dissent’s view and the view of others, even if you create something and it’s fair use -- and certain parts of this opinion at least suggest just some of Warhol’s uses were fair. They certainly do not hold that all of Warhol’s uses were not fair, but they still say this is not a fair use—this downstream use. So this absolutely limits downstream uses of fair uses.

 

      Now, that may -- the question becomes -- and the criticism of this is that this leads to permissions culture—that you have to get a license, and the license is going to determine the scope not just of your current use but of future uses as well. Now, whether it’s a bug or a feature, I think, is going to depend on your view of the justice of that, but I do think that’s the reality going forward. So, yes, this does limit the ability to use fair uses downstream.

 

      Now, a question from Kevin Madigan of Copyright Alliance. “What comes next in the case procedurally? Does it go back to the district court to decide infringement?” I’ll admit, I’m not -- I know the Court affirmed the Second Circuit. I’d have to go back and read what the Second Circuit said, which I know reversed the district court. The majority just says, affirmed, so whatever Second Circuit said -- which, I believe it goes back. But I believe the Second Circuit also held that it was not substantially similar. So if they held it’s not fair use, if they held it’s not substantially similar, I think the only thing left is damages, right?

 

      However, you may also have an infringement inquiry for the Warhol series, which I do believe was at issue—the actual Warhol’s -- I said paintings earlier, but they’re actually, I think, silk screens. I think they’re going to go back to the district court to decide damages for the magazine licensing and to decide whether the Warhol series is infringing or it’s of fair use, which is going to be a much more complicated fair use question, and this decision explicitly does not decide. 

 

      A question from Kevin Parks, who has written a wonderful book on the history of music copyright. “To what extent do you think Pierre Leval is responsible for the whole transformativeness inquiry/mess?” So that’s a great way to put it, and in my amicus brief, I talked about this.

 

      Pierre Leval is a judge—I think he might be a senior judge now—on the Second Circuit. But he was a district judge when he wrote that we should -- fair use is all about whether or not it transforms, and the Supreme Court adopted this in Campbell. As Kevin notes, it’s a poor choice of words because they use transformative to define what a derivative work is. I’ve seen people advocate it should have been called a public use or something like that. And I agree; it was a poor choice of words, and the framing of transformative was probably a mistake. And it was an unforced error.

 

      Something I went into in my amicus brief is how there was discussions, and how Melville Nimmer urged that there not be factors. And Nimmer, of course, wrote the treatise on copyright. They were briefly taken out in Congress, and then they were reinserted later on. And Leval, you can see him later bemoaning the fact that Nimmer’s suggestion was not followed. So I think that Leval is certainly -- bears some responsibility for choice of transformativeness as a word and the failure to distinguish it from a derivative work. I think the lack of a definition of derivative work, I think, is also a part of the problem here. 

 

      A question—I’m sorry—from [Yuechao  Nie], I believe—I apologize if I got that wrong— saying, “I just wonder why Justice Kagan did not explicitly respond to the distinctive voice of the  majority between derivative work and transformative work.” I mean, that’s a great question. I think the question suggests an answer, which is that the dissent doesn’t have a great answer for how their definition doesn’t eviscerate the exclusive right to create derivative works. I think under this reading, it’s hard to imagine many derivative works that are -- unless you have a very narrow definition of derivative works, which you may.

 

      I will say, I think the dissent might define derivative works as simply about a transformation of form and not substance. I think that might be how they do it. I think the majority views it as a very narrow definition of derivative works. I think the lack of the definition of derivative works is part of -- the lack of -- we have a definition in the statute, but it’s not -- but it’s just a definition that raises more questions—reform, adapt, or otherwise transform. That’s a broad definition. What does that mean? Because that’s a broad definition, I think it’s hard to really get to any sort of answer to that question. 

 

      Oh, a question from Thomas Dillon (sp). “The United States’ international obligation under the Berne Convention is to limit exceptions to certain special cases, which fair use seems not to satisfy. But I do not think there was any discussion of this in the opinion. Is this insularity not rather odd?”

 

      That sounds like it’s written by a non-American because to every non-American, the insularity of the Supreme Court is rather odd. From the perspective of the rest of the world, absolutely, it’s odd. From reading the Supreme Court’s jurisprudence on copyright, it’s not at all odd and, in fact, entirely in character. I’m not sure if that’s helpful or not, but it’s true. I do think you could certainly say the majority opinion and concurrence are more consonant with Berne than the dissent, and I think there is, perhaps, an opinion that the view of transformativeness in the dissent is not consonant with Berne. But for better or for worse, I don’t think it’s odd the U.S. Supreme Court is not so interested in the Berne Convention. It’s perhaps a relative effect the U.S. -- I mean, realize, the ’76 Act was drafted before the United States entered Berne. The article that argued for transformativeness was written before the United States joined Berne in ’89. Campbell is only two or three years after the United States joined Berne. I mean, I just don’t think it was on the Court’s mind when they wrote Campbell.

 

      A question from Jonathan Reish (sp)—I believe I got that right. “You mentioned that the result of this case could be a lot of work for lawyers. Warhol was underlying plaintiffs. It filed a case of declaratory judgment.” That’s true; I did mention that. “It seemed like Warhol was trying to confirm that Warhol had good and strong title, and Warhol lost. Does this case broadly call into question the quality of title for millions or billions worth of modern or postmodern art that’s based on transformative works?”

 

      Somewhat, yeah. I think that -- now, of course, the Court does not decide about the underlying artwork and whether the work is subject to impoundment or destruction, for instance. I don’t think that a court would want to decide that. But what about licensing of modern and postmodern art for, say, advertisements and the like? Quite possibly. Or use in the background in a movie. I don’t know. I think that -- I don’t want to prognosticate too much, but I think that a lot of people will read this Court’s and I believe the concurrence at the Second Circuit and the concurrence here to be extremely wary of saying the original Warhol series is not a fair use but also that you can’t do anything with it beyond selling the artwork. And licensing it for other purposes is likely going to be a bigger problem.

 

      Question from Loren Perez (sp) or Perez. “If a third-party creation is a fair use of original work, then why would you need a license to use the transformative work downstream, even if commercially?” Well, the dissent agrees with you. But the majority says the purpose and character of the alleged infringing -- the purpose and character of the use means the alleged is going to look at the alleged infringing use and that fair use is not an inquiry into the use and creation of a work but the alleged infringing use and, implicitly, that just because you created the work and it was fair use does not mean that every use of it is a fair use. There’s arguments and counterarguments there, but that’s the holding of the Court, one way or another.

 

      Last question—anonymous attendee. “What is the implication of this ruling for appropriation art? Is it functionally dead unless done for non-commercial educational purposes?” I don’t think, necessarily, but I do think it’s functionally dead for purposes of licensing and other than creating art. And I do think that it’s now in something of a gray area, even for its creation. I do think some of the stuff Richard Prince is doing—and you can look some of it up, but it’s really -- I mean, like, taking people’s Instagram photos and adding an additional comment and then printing it out and framing it and selling it for tens of thousands/hundreds of thousands of dollars—I don’t know. But I do think if you look at how this Court distinguishes Warhol’s Campbell’s Soup Cans from this case, the Court is definitely leaving the door explicitly open to appropriation art. But I think what you can do with it is definitely limited after this case.

 

      I don’t see any other questions, and we’ve gone on for a while. I want to thank you for the opportunity, and feel free to look me up on social media if you have further questions.

 

Jack Derwin:  That was fantastic. Thank you so much, Zvi. Do you want to shout out your Twitter handle or anything for [crosstalk]

 

Zvi Rosen:  Oh, yeah. Sure. Z-V-I-S Rosen, R-O-S-E-N on Twitter. Believe it or not, I’m not the only Zvi Rosen on Twitter.

 

Jack Derwin:  Fantastic. And thank you to our audience for tuning into today’s program. You can check out our website at fedsoc.org or our social media @fedsoc to stay up to date. Thank you very much.

 

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