Ask Dr. Copyright

Dear Doc:

I know that you have written a boatload of articles about “appropriation art,” where someone just grabs the copyright-protected work of another person, changes it a bit, and then sells it for a boatload of money, never giving the first artist a penny, and how this was totally legal. So how come I hear that Andy Warhol’s foundation just got dinged for copyright infringement for doing exactly that?

Dazed and Confused

Dear D&C:

In a long-awaited decision handed down on May 18, 2023, the Supreme Court voted 7-2 that Andy Warhol (who is dead) and his foundation (which is not) (collectively, as us lawyers say, “Warhol”) were not protected from a finding of copyright infringement by their claim of “fair use.” This is big, because previously, a trial court in New York had found for Warhol, holding that the use of rock photographer Lynn Goldsmith’s portrait of the formerly living artist formerly known as Prince was fair because Warhol had “transformed” it (by adding some colors and silk-screening over it). Then the Second Circuit Court of Appeals (also in New York) found the exact opposite, warning that judges should not try to be art critics (the Doc would extend this warning to actual art critics, as well, but that’s another kettle of rotten fish.).

And so, dear readers, it was left to nine black-robed and somewhat older than the average human justices to make the call. Under our Copyright Law (17 U.S.C. §101, et seq.) if your use is “fair,” then copying is not legally redressable as an infringement. To determine if a use is fair, Congress set up a so-called “balancing test” having four “factors”:

Factor 1: The Purpose and Character of the Use.
Factor 2: The Nature of the Copyrighted Work.
Factor 3: The Amount or Substantiality of the Portion Used.
Factor 4: The Effect of the Use on the Potential Market for or Value of the Work.

Shortly after Congress gave us this very confusing test, Judge Pierre Laval, a very influential legal writer, added his two cents by saying that if the second guy “transforms” the work of the first guy, then the use is fair. (“Toward a Fair Use Standard“, 103 Harv. L. Rev. 1105 (1990))

Judge Laval said, “The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. …[If] the secondary use adds value to the original—if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”

Of course, figuring this out absolutely requires that judges and juries play the role of art critic as they consider new information, aesthetics, and so on! For thirty years, this has been the way cases have worked. Artists “borrowed” (without permission…what the Doc’s Mom used to call “stealing”) from other, often less famous artists. They claimed to have “transformed” what they took. They made the aforementioned boatloads of money by selling the “transformed” art to rich people (like those listed in a Second Circuit opinion about Richard Prince that the Doc discussed in an earlier article). They got sued. Then courts figured out if what had been done was transformative, and thus, fair use.

Enter, Supreme Court. The majority now says that there is a shortcut in the four-factor balancing test (a sort of thumb on the scale, if you will). Just ask if the purpose of the allegedly purloined work is the same as the original. If it is, then there you go…it’s just not fair use! Yes, you still have to check the other boxes, but you already know the answer. 

The Court said that commercial licensing of Warhol’s artwork to publisher Condé Nast, and Goldsmith’s original photo shared substantially the same commercial purpose and where the purpose is commercial (as opposed to educational, critical, etc.), the first factor is more likely to weigh against fair use, absent some other compelling justification. In this case, Warhol’s “Orange Prince” “[had] no critical bearing on” Goldsmith’s photograph and the Foundation did not offer any other compelling justification for its use.

Some commentators have sounded the alarm that this case is the death of art. Artists will no longer be able to build on others’ works, as they have always done. Culture is dead! OMG! (That’s what the dissent said in its opinion.)

“Not so fast,” says the Doc. First, works in the public domain may always be used. Under present law, Copyright lasts a very long time (author’s life plus 70 years!).  If you’re concerned with the limits placed on artists, ask Congress to shorten the term of protection (good luck with that…see, Eldred v. Ashcroft, 537 U.S. 186 (2003)). Or create a compulsory licensing law, like we have for sound recordings. The real answer, as every kindergarten graduate should know, is: DON’T TAKE STUFF THAT’S NOT YOURS WITHOUT PERMISSION!! Appropriation artists, especially those who sell to rich and famous folks, could just have shared a pittance with the artists whose works they took, and none of these cases would EVER have gone to court. Problem solved.

Has someone “transformed” one of your copyrighted works? Have another pressing intellectual property problem? Give the attorneys at LW&H a shout. They’d love to hear from you.

Until next month, 

The “Doc”

— Lawrence A. Husick, Esq.