Andy Warhol Foundation v. Goldsmith is high stakes, as far as copyright law goes. The fair use case, currently before the Supreme Court, has the potential to radically change how we understand and rely on fair use, so it’s not surprising that the case has generated significant interest. We’ve chronicled the background of the suit and arguments made by the Andy Warhol Foundation (“AWF”) here and by photographer Lynn Goldsmith, here.
Last week, the final set of amicus curiae (friend of the court) briefs were filed. In total, there were 38 amicus briefs filed: 8 in support of the AWF, 20 in support of Goldsmith, and 9 in support of neither party. Our own brief, in support of AWF, is here.
If you add them up, the amicus briefs total around 240,000 words (for context, that’s just a little shorter than A Game of Thrones!). They come from a range of perspectives, with submissions from the “Royal Manticoran Navy: The Official Honor Harrington Fan Association;” Dr. Seuss Enterprises; Senator Marsha Blackburn; individual artists, photographers, photography groups; various media and publishing industry associations; at least 59 law and art professors across a number of different briefs (for, against, and neutral); several library groups and museums; and many others. It’s hard to summarize all of the briefs in a single blog post, but you can read them yourself on the Supreme Court website here.
The U.S. Government’s amicus brief: making art may be a fair use, but selling it isn’t
One brief stands out: the amicus brief submitted by the United States government. Typically, the government will only file an amicus brief when it has a meaningful federal interest in the case, which it identified here as primarily based on the policy advisory role of the U.S. Copyright Office and the U.S. Patent and Trademark Office to Congress and the Executive Branch, respectively. Submitted by the Solicitor General and co-authored by a number of U.S. Copyright Office staff, it argues that the Second Circuit rightly decided the case and that Goldsmith should prevail. If nothing else, it’s worth a read to understand how the Copyright Office staff think about fair use.
The brief largely echoes and bolsters the arguments made by Goldsmith, but reframes a key issue in the case with a new and unusual argument about licensing that we thought worth highlighting. First, the government brief starts by redefining what the case is about, telling the court that the question presented is “whether petitioner established that its licensing of the silkscreen image was a ‘transformative’ use . . . ” (emphasis mine). That is a subtle but important change from how AWF presented the question to the Supreme Court when it decided to hear the case. AWF stated the question as “whether a work of art is ‘transformative’ when it conveys a different meaning or message from its source material.” Goldsmith, in her brief opposing Supreme Court review, framed the question slightly differently but still focused on the original Warhol prints and not their subsequent licensing. She argued that the question is “whether the Second Circuit correctly held that Warhol’s silkscreens of Prince did not constitute a transformative use.”
The government’s brief then goes on to make the following argument: that “the fair-use inquiry focuses on the specific use—here, petitioner’s 2016 commercial licensing of the Orange Prince image to Condé Nast—that is alleged to be infringing.”
The first part of that statement is nothing new: fair use is a fact-specific inquiry. What’s interesting is how the government then goes on to narrowly defining the “use” in question as AWF’s subsequent commercial licensing of the work. The government argues that the court should distinguish between the creation of Warhol’s original prints—which may have been a fair use—and the exploitation of the Warhol print via commercial licensing, which the government argues was not. The government isn’t entirely alone in suggesting this approach. For example, a brief by a number of library organizations suggested that the court might focus on the commercial licensing as a way to resolve this case, and a brief by a number of museums discuss some of the implications of this approach.
The government’s narrow focus on commercial licensing seems like an attempt at a Solomonic resolution for this particular case, and may seem like a good way to achieve a just result for fair use edge cases. But it’s worth pausing to consider some unintended consequences.
It’s a novel approach—we can’t think of a single case in which a court ruled that the creation of a secondary work was fair, but its subsequent commercial exploitation (such as when a work is licensed to a magazine or publisher) was not.
This new approach seems likely to create an awful lot of confusion and uncertainty for creators. It would mean that ownership of rights in a secondary work that rely on fair use would be permanently hobbled; instead of the full bundle of rights that copyright provides (such as the rights to distribute, perform, and reproduce the work), the author relying on fair use to create a new work would be stuck with a more tenuous set of rights, since this new work could at any time be converted from a “lawful fair use” with a copyright owned by the author, to an “infringing derivative” based on its crossing an undefined line of too much commercial exploitation.
This change in status, from lawful to infringing, causes particular uncertainty for creators because of Section 103(a), a part of the copyright act we don’t discuss much. Section 103(a) states that, for a derivative or compilation that incorporates pre-existing copyrighted materials, there is no copyright at all “in any part of the work in which such material has been used unlawfully.” For a work like the Warhol print that is so tightly integrated with the Goldsmith original, Section 103(a) would put the Warhol print into a copyright twilight zone—the Warhol foundation wouldn’t hold any copyright at all, but neither would anyone else. It would effectively give Goldsmith a veto over any subsequent use, though not actually owning rights in the secondary work itself.
This could also generate quite a bit of uncertainty for downstream users who were relying on AWF’s previously valid rights in the secondary work. Imagine, for example, that prior to licensing the Warhol image to Condé Nast, AWF had granted a free license to a number of non-profit libraries, museums, or art history scholars to reproduce and distribute the Warhol image in a variety of educational and scholarly contexts. We presume that this licensing passes fair use muster and so AWF still holds rights. Then, AWF later licenses the Warhol print to Condé Nast and crosses the fair use line. Section 103(a) would then apply to extinguish all of AWF’s rights that underlie the license for scholarly use, converting previously valid, licensed uses into ones that potentially infringe themselves on Goldsmith’s rights.
Perhaps those downstream users could then rely on fair use themselves to continue to make use of the prints, but that puts an awful lot of responsibility on those users to understand and apply fair use themselves so that they are sure to stay within the bounds of the law. It also would require those users to somehow learn of the subsequent infringing use and extinguishment of their license. That kind of notification isn’t something the copyright system is currently well-suited to accomplish. It also casts aside those users outside the U.S. who don’t have any such backup fair use pathway to legitimize their use.
Commerciality and market considerations certainly play an important role in the fair use assessment, and maybe it would have made a difference in this case if Warhol had actually agreed not to commercialize the prints but then later did (there is no evidence of this). But, as it stands, it seems to us that creating a category of secondary copyrighted works that are only sometimes fair use, until they’re not based on subsequent commercial exploitation, isn’t the best option.