You can listen to the oral arguments yourself here: https://www.supremecourt.gov/oral_arguments/audio/2022/21-869
Pia M. Hunter is a Teaching Associate Professor at the University of Illinois College of Law and the Associate Director for Research and Instruction at the college’s Albert E. Jenner Jr. Law Library. She holds a J.D. from the University of Illinois College of Law and a Master of Science from the School of Information Science at the University of Illinois. Prior to joining the law library faculty, she served as Visiting Assistant Professor and Copyright and Reserve Services Librarian at the University of Illinois at Chicago (UIC) where she researched and developed best practices for copyright and fair use for instruction for the UIC campus. In 2013, she led the initiative to create Fair Use Week, an annual celebration that highlights the fair use doctrine and its significance to artists, students, faculty, librarians, journalists, and all users of copyrighted content.
Sara: Welcome to a live recorded episode of Copyright Chat today. I am so excited to bring you the wonderful Pia Hunter. Welcome, Pia.
Pia: Thank you, Sara. It’s a pleasure to be here.
Sara: So if you didn’t know, Pia is a law librarian at the University of Illinois College of Law and a founder of Fair Use Week. Tell us about that Pia.
Pia: Oh, gosh. Fair Use Week is, first of all, it’s so wonderful that it’s, we’re coming up on a 10 year anniversary in February, 2023. I’m truly excited about that, but it is the result of a, a meeting of librarians back in 20 12, 20 13, and we were talking about the significance of fair use and not only how important it is to academics and scholars, but to everyone, to, to artists, to people every day who create content, everyone. And so we were discussing how wonderful it would be to set some time aside each year to acknowledge fair use, why it’s significant in our everyday lives, and promote it to everyone so that we can take up the banner and protect this, right? Because I know that it’s an affirmative defense in terms of the Copyright Act, but there are things we can do under fair use, and we, we use fair use every day. And so Fair Use Week is designed to promote and, uh, inform people about that.
Sara: That is really exciting. I keep forgetting, we’re coming up on the 10th anniversary, and this is a really interesting time p to be talking about fair use because as we know, the Supreme Court is addressing transformative fair use right now.
Pia: I am, I’m not afraid to admit that I am a bit nervous <laugh> about this case. I
Sara: Think I, I think I said that in a nervous tone, <laugh>,
Pia: I think you said, I think your tone certainly reflects my, my feelings on the subject. And I’m looking forward to our discussion because a lot’s been happening lately.
Sara: Yes, a lot has been happening. So if you haven’t been paying attention, let’s get you up to speed. There is a very exciting case involving the Andy Warhol Foundation and a photographer and the late great singer Prince. So this is a really fun case that is up at the Supreme Court. Of course, it started below and in the lower court, um, the Warhol Foundation had one on its fair use claims where Andy Warhol borrowed, I say borrowed in a nice way. Um, the photograph of this famous photographer who took a photo of Prince, and he originally had, had permission through licensing to use the photo for an inspiration in a magazine article. But later on they, they, he had another reproduction and he did not have permission, and he claimed fair use. And in, in the Second Circuit Court of appeals, they reversed and said, Nope, it was not a fair use. And the issue at the Supreme Court was all about purpose and character of the use and whether it was transformative, which is, oh, scary to me because the last time Supreme Court addressed this was 1994. Pia, tell us some more about kind of what the arguments are on both sides.
Pia: Okay. The arguments from the Goldsmith side, that’s the original photographer, the artist, is that basically the Warhol Foundation has not produced this content in any way that is transformative. And when we went into oral arguments, there was a great deal of discussion about factor one, what is the purpose and character of the use? And the justices were really clued into fi trying to determine how the photograph was diff different in what ways from the Warhol piece, which is an artistic rendering and has been produced many, many times in several prints and sold over and over again. There’s also, and on the Warhol side, they’re claiming that it’s a transformative use, that even though the commercial purpose of is the same and similar, that Warhol by taking the photograph and creating a painting from it. And from that painting came several other prints that were licensed and sold and so forth and so on, that this is a completely new work.
Pia: And the justices seem early on to be pushing back against that because if you look at the photograph and you look at the paintings and the prints and the reproductions, you can s it’s obvious that those come directly from the photograph. And this is what’s troubling to me because I think for so many years there’s been a lot of talk about transformative use in terms of a fair use argument. And quite frankly, I think transformative use has dominated to the fact that it has overshadowed some of the other factors that are just as important. So this case may bring some balance back to looking at all four factors, because if you consider all four factors, then this could very well be a fair use. But if you’re basing it solely on whether the, the level of transformative, then we run into, into some difficulties.
Sara: That’s an interesting perspective. I think, um, I agree with you that on one side they’re arguing that, um, it was just the same use, right? So I think that the, the thing that troubled the court here was that on the one hand, this photographer was in the business of licensing her works to, um, vanity Fair and other magazines. And that was the purpose that Andy Warhol also used his work for in this instance. Now, to me though, Andy Warhol in general has very different uses for his works, right? His works hang in many mag in many, um, museums, people come to see his works. They’re not only used in magazines. Now, I’m certain that this photographer also could have her work in a fine art museum, but I do think that there are broader uses for a Warhol work. Um, and a lot was brought up about the other Andy Warhol case, the famous soup can case, right?
Sara: Where the judges said, oh, well, this is not as hard a case in that instance because the soup cans were used for a different purpose, right? And normally the logo on Campbell’s soup cans was used to market the brand. And of course, um, the use by Warhol was to show mass consumerism. Um, one point that the, the, uh, uh, photographers, lawyers made was that he had to have some necessity to use that particular photo. I wonder what you make of that argument, Pial, because the justices seem to be kind of buying into that a little bit.
Pia: They did seem to buy into that a little bit. And the necessity argument is one that I find fascinating because it was ne it was necessary to use the Campbell soup can in its entirety, it’s, it’s it’s logo, it’s symbol. You look at that automatically and you recognize that it is Campbell’s soup. So the necessity argument and Warhol’s subsequent series of that discussion sparked a discussion of consumerism. When you, when I look at the Prince photo, I’m a little <laugh>. It’s funny, I am such a huge Prince fan that when I look at the Prince photo, I think that it’s Prince. So it has to be necessary <laugh>. And I know that’s not a legal argument. It’s more than mentality, I think for me than anything else. But looking at this, it’s, it’s, it seems that the justices are buying into that, that philosophy. I’m not sure how sustainable that really is in the long term.
Pia: He could have picked any number of photos or images to do that exact same thing. It didn’t not necessarily have to be prints, but because it was print, I think that lends itself to the argument about the fourth factor and commercial use and market for the work, because he’s doing what is considered a reproduction. And I know that the, uh, Martinez, Mr. Martinez, who’s the Warhol’s attorney, used the term follow up work. And in my mind, that is the same as a derivative work, which falls to the bundle of rights that is reserved for the owners. So as this goes on, it’ll be interesting to note how they, they, they parse out each factor and really examine what’s happening in terms of the original content. Is it truly a derivative work? What’s the difference between a follow up work and a derivative work? I mean, I think it’s, it’s a subtle nuance there, if there is a difference at all. And they’re gonna have to examine each of these factors closely. So this, this may be something that, that justices appear to embrace now in the early stages, but I think that, that, that may change as time goes on.
1: Yeah, I think that’s interesting. And I, I agree with you that one of the cruxes of the, the issue here was what is the line, or where is the line between a derivative work and a transformative work? Although to me, that’s always been the question, right? That’s always been the million dollar question in these types of cases. It just was made even more salient here because one of the things that they were pointing out is if you have a film, for instance, a movie that is an adaptation of a book, you would never say, oh, sure, that’s a fair use. You would always think they need to get a license because the natural progression of a best seller is, oh, yes, let’s make a movie. And of course, you want the person to be encouraged to make the book in the first instance. And so they need a piece of that economic pie, right, to incentivize creation.
Sara: But, um, in this instance, was the photographer ever going to make a print, a painting print of her photo? I don’t think so. So I really discouraging her in any way. Um, but of course she would be happy to take that license, right? I mean, she would be happy to take a license, especially for her work in a magazine, which I think is where they got caught up a lot during this case. And I wish they had not stuck to only that part, because I know Warhol’s attorney pointed out this was a series, right? Yes. Warhol did not make just one print. He made a series of prints and the copyright was claimed in the entire series. And so only one of those photos, I think it was called Orange Prints, was used in the actual magazine article. And so maybe they could even find, okay, well, that one wasn’t all right, but the other ones were is that, can you split the baby that way?
Pia: I’m not sure that you can. And that’s, that’s an excellent point that you make. And that’s a part that’s been troubling me for so long. Also, the original license, Goldsmith did this painting, took the photograph, licensed the photograph to the magazine for an artist. It did not say Warhol for an artist to make a a, a rendering from the photograph. So he was licensed to do the work. However, in the process, he actually created additional pieces. The Silk Screen Painting series is what it’s called. There were two screen prints on paper and two drawing, and all of these are referred to as the print series. Some of the originals were sold, some reproductions were printed and sold and licensed and sold to other people. So it we’re looking at, it’s, it’s fascinating because I’m still always coming back to the, or the terms of the original license.
Pia: How much leeway did he have in the original license that the magazine purchased from Goldsmith to make a derivative work? Because that’s really what it is. They license access, a use of the photo for someone else to build something upon that. That’s the first thing. And then the second thing, the Goldsmith attorneys are arguing that this case is significant because it’s really fighting about the individual rights of the creator versus someone who has the power and the, the name recognition of Andy Warhol. So because, uh, someone who’s famous decides to take and, and use a work and create something out of it in their own fashion, then that would give those people who are in a financial position or famous artists, uh, more power and authority to use people’s works than say, someone like me who would come along and make a stick figure derivative or something like that. So that’s another issue that I’m, I’m curious to, to see how that’s gonna go.
Sara: Yeah, I think that the argument goes, you know, Warhol makes it, and it’s a piece of art. I make it, and it’s what just not great, right?
Pia: <laugh>, it’s just a photo. So the question becomes how does, how, how are artists able to protect their derivative uses while still leaving fair use on the table for other creators to come and use as well? Because otherwise, what we’re doing is we’re going to squash creativity and people’s desire to create new content.
Sara: Yeah. And that also leads me to think about appropriation art, right?
Pia: Oh, yes. A favorite topic of mine
Sara: Is a whole other variety of art. And is, would this, I mean, if they rule that it has to be some necessary purpose, like with, um, the, the attorneys who are protecting the photographer, does that just quash any kind of appropriation art?
Pia: The potential for that is so great that that is really another part that, that I find troubling. I am not a fan, as you well know of the Richard Prince series, uh, he’s an appropriation artist, started many years ago with the Marlborough ads. He’s done some things with, uh, catcher and the Rye, taking a, a copy of Catcher and The Rye, leaving the print on the cover, the exact same except in place of the author. He’s put his own name. There’s the Instagram v prince that’s going on right now, Cariou v Prince, back from the early two thousands. So this is an artist who specifically takes people’s work and either displays his name on it or does something really, really different. Not different in terms of maybe size, but an exact replica. So a case like this would have a direct effect on the current case that’s working its way through the courts now, gram v prints and, and other sorts of things. And it would, I’m thinking about memes and other derivatives that we take for granted and things that pop up across the internet that people find funny and creative. What happens with those?
Sara: Yeah, what does happen with those? I mean, I think, I think with memes you can make a stronger argument that you’re not usually trying to make any money off of them. Exactly. You might, you might win more on a factor four analysis. And that was one of the things that they pointed to quite a lot, uh, at least, um, the Warhol Foundation attorneys, when they were asked about, well, what about, you know, some really creative new film that is based on a book, but it’s so different, right? Why isn’t that a fair use? And the response was, well, you know, look at factor four. It’s still highly commercial, so that even if it is different, it might still be a derivative. So I wonder if the part of the challenge here was that they were really trying to narrow in on the first factor, but, but we always try to weigh them together, right? Always in my mind, they go together. And so trying to parse them out makes it really hard.
Pia: That’s absolutely correct. And I, in this instance, parsing them out seems necessary because the first cat factor we know is, uh, what’s under discussion now. But then you move on to the, the second factor. This is highly creative, uh, purpose in nature of the work, and, and you’re moving through the factor. You get to factor three, you’re looking at the amount, well, it was used in its entirety. So the, the, the second and third factors are almost sort of, uh, settled. And that brings us back to one in four. How is it being used? How is it the Campbell soup, uh, series that Andy Warhol created? It was an obvious commentary to many. I’m not sure the commentary in this respect is so obvious. Goldsmith claims that the photograph was showing Prince in a, in a sensitive way, a way that he’s not frequently depicted in album covers and other sorts of, uh, photo shoots and different things.
Pia: So she was capturing a certain vision of the artist in vulnerability. And the Warhol claim, I believe, if I remember correctly, is that they were not, they were exploiting that in different ways and, and making, uh, a different rendering of that original work. But I had a discussion with someone who is not into copyright law at all, and showed them the pictures because they’d been hearing so much about the case, and they made a very interesting point. Uh, when you look at the Wizard of Oz in black and white, and my mother in particular is a fan of, uh, old film Warren movies and so forth and so on. And she says, I don’t like the color. I don’t like it when they add color to it, it’s, it’s different to me. And that argument swings both ways because when I showed the, the port the photograph to someone and they looked at the color, uh, that that Warhol added, and the creativity that he placed upon the photograph, that person said, I don’t see much of a difference. They just added color. It’s the same thing. But someone else would look at that same rendering and say, it’s completely different. It’s, it’s different. To me, there’s an aesthetic. So when you’re looking at art in this way, do we have to become art critics to make this type of assessment? And I think that’s why this case is so troubling to me because there, it, some of this really is subjective.
Sara: Well, I think that the Supreme Court justices also were troubled by that. And, and we’re asking, you know, how do we decide this? Right? And, um, do we need expert testimony? Are we supposed to be asking what the artist intended? Right? Some of the early fair use cases kind of looked at the artist’s intent. And then of course, in this case, Andy Warhol’s deceased, so no one can look at his exact intent. Um, so it, it does get pretty troubling because do we want the Supreme Court justices to start guessing and becoming art critics? And the other thing that they were mentioning was, which level of generality are we looking at in terms of the comment? Are we looking at that this was used as magazine cover, and so was this one okay, done, right. That’s the level of generality. But if that were the case, I think that that many of the cases, including the Supreme Court cases, would’ve come out differently, right?
Sara: Because we had the two live crew song. If you look at the Campbell case, um, Campbell versus Acuff Rose from 1994, we had a two live crew song, and we had a pretty woman song. They’re both songs. Okay, we’re done. I mean, that level of generality doesn’t work. But in that case, they said it was a parody of the song and that was why it was fair use. Um, and so what is, what is the, the conclusion here, right? Is it that it’s, uh, different in the way that it is portraying prints? Because it is fine art. I mean, the, the second circuit below seemed to say they were transforming fine art into fine art, therefore we’re done here.
Pia: That, that, that seems to be, that’s how I took it as well. And the other part about the Campbell case is that not only was it recognized as an obvious parody, the commercial use was the same, but the audience was significantly different. So your Roy Orbeson fans are not going to be listening to Luke Skywalker and two live cruise rendition of a song with the same title. So the, the impact on the, the effect upon the market is limited because we’re looking at different audiences. Whereas here, it’s the same sort of thing. It’s going to a magazine and the types of, and the same type of magazine, if not the exact same magazine that was used for the
Sara: Original, I think it was, I think it was, I think it was just the the parent company
Pia: Conde Nast,
Sara: Yes. Yeah, it was the same one because it was Vanity Fair and then Conde Nast. But here’s the thing, uh, it sounds like then you’re, you’re almost getting into the fourth factor and the commercial, um, impact. However, if you read factor one carefully, it says purpose and character of the use, including whether it was a non-profit or commercial use. And so the commercial use can impact factor one as well. So technically the, the court could say, well, maybe it does comment somehow, but it’s the same commercial impact or the same commercial use for the same exact audience. Um, I still wish they would address the other works in the series though, because I don’t think they were aimed at, you know, magazines. I think they were just aimed at the fine art community. And I do think that’s a different audience than people who are interested in that particular photographer’s work. There are a lot more people who are interested in Warhol’s work and his comments on commercialism and society, unfortunately than this artist. I mean, I think that’s just the truth of, you know, what Warhol’s work sell for. And one of the things they briefed was, yes, her work doesn’t sell for as much as his work does, which to me it means they have different audiences, don’t they? I mean, maybe not for this particular magazine, but in general they do
Pia: In general that I agree in general, they have very different audiences. But here there’s not going to be an opportunity for Goldsmith to recover for renderings of this paint of her photograph that Warhol created that are hanging in museums now, that are in people’s private homes now because there is a series of silk screens and then there are the various reproductions, it’s the orange prince reproduction in published in the magazine that people purchase at a newsstand or got, or however way they get their content. That’s what sparked this controversy. And because she, I don’t believe that she would’ve, she wasn’t even aware that this had happened. And so you’re right, the audiences are completely different. Uh, people who paid to have Andy Warhol’s Warhol’s version hanging in their living rooms or museums that are, are, are holding this work now, would not have paid for that photograph. And that’s, that’s, that’s, that’s a great case for the audiences being different, but it’s this one single use in a magazine that could upend the way we are able to look at fair use in terms of these types of works.
Sara: Will it? Because here’s the other thing, couldn’t they just, I mean, to me, bad facts make bad law. Okay? And these are bad facts.
Pia: These are bad facts. These are terrible facts. They’re
Sara: Terrible facts. So couldn’t the Supreme Court just say, okay, we agree that, that, you know, Warhol did comment in a different way, but you know, we still agree ultimately that it was a derivative because of this, this, and this based on these particular facts, right? And so could they, shouldn’t they limit it to this case? Cause the facts are so bad,
Pia: You are making my argument <laugh>. I want them to limit it to this case. The facts here are terrible. Any, any move to make this case new precedent would be devastating for artists everywhere, uh, for creators, for for, for, for people who have existing works, think of how many things would unravel based on this, uh, a radical decision of that nature. And I can see, I’m optimistic because when you hear the oral arguments, you, you listen, I, I, I actually, I listened the first time with my eyes closed, and then I’d used your method, which was very good. Thank you very much. And I read the transcript while I listened a second time, and you can see them wrestling with all of these pieces and really trying to come to an accord and a deep understanding of, uh, the artist’s rights, the rights of the Warhol Foundation. And I can see that they’re casting an eye to a fu to the future to understand how this is going to ultimately affect creators and, and, and people who are trying to make content. Because this case has the potential to, uh, stifle so much creativity and so many new works that, uh, the public will be deprived of having. So I’m hoping that that, is that what you suggest? I’m, I’m gonna call that the most reasonable compromise. I’m hoping that that’s the end result.
Sara: Well, I am too. And I think, um, you know, given the last Supreme Court case, the Google versus Oracle case, you know, I do have hope. I understand that the Supreme Court has overturned lots of precedent, very long standing precedent, even very recently in the abortion case. So I mean, they are, they can do it. I don’t think they’re going to, in this case, I, I’m hopeful that they’re gonna limit it. And if they do, um, decide that, you know, maybe this wasn’t a fair use, that it won’t be as sweeping and terrible, um, as it could be. That’s my hope. But I, I, and I did see them wrestling with the creativity and the free kind of speech issues in the oral argument. And I saw some of the even conservative justices, you know, asking questions along those lines, which made me a little bit hopeful.
Pia: That’s exactly right. And they’re, they’re, they’re looking at all of these different factors necessary or least useful. I, I know that the Goldsmith side is, is presenting almost a new sort of test. That’s the part that I wanted to say mm-hmm. <affirmative>. And that test, if adopted would be devastating. So I’m really hoping that your, your, your recommended compromise is something that the justices can, can, can use to find some sort of middle ground.
Sara: I don’t think there’s any basis, I’m sorry, all due respect to the Goldsmith’s, um, lawyers here, but I don’t think there’s any basis for coming up with some new test based on these terrible facts. It’s, it’s just a bad, it’s a bad way to go. And, and we have lots of precedent out there building on the Campbell case and the Campbell case in, in no respects, as anything has to be necessary, it does say you have to avoid the drudgery if you’re only creating the new thing to avoid the drudgery of coming up with something new. It does say that, but that doesn’t say it has to be necessary.
Pia: It doesn’t. And, but, but facts this bad required some creative and quite frankly, brilliant individual to come up with a new test. That’s the first thing. Otherwise, there’s no argument to make. And the second thing that I wanted to mention is that the government requested leave to argue, and they were granted leave to argue. So now you have the, uh, solicitor general sitting at the table with Goldsmiths. So the government has a vested interest in this. And I wonder how that looks to people who are examining this case from the outside, the fact that the government has taken up the argument on the Goldsmith side. What does that do for, uh, copyright law moving forward? Yeah, what does that say?
Sara: That’s curious, right? Yes. Because, um, it’s, it’s a little bit strange. And what is their interest necessarily? I mean, I, I’m assuming they’re saying our interest is to correct is to protect authors, but you know, we also have the interest of the other side, which is, you know, the limitation on the rights of the authors, which is guaranteed by fair use. And as pointed out, even in the definition of derivative works, it still says as limited by fair use. So where’s the government’s involvement here? Why are they involved in the first place?
Pia: That’s the question I’d like answered. <laugh>, back to the constitution. We go for the creativity and make sure ensuring that people are able to consume this content. That’s where we need to start. Yeah, back to basics.
Sara: We really do need to get back to basics. And I I will expect this, um, decision to come out soon. They haven’t been taking a whole lot of time deciding cases. It’s already been a little while since the oral argument. So, uh, we will definitely keep you posted and maybe we’ll have a, a, a debrief after the opinion. We
Pia: Can have another conversation. I think we have to, don’t
Sara: We? I think we do. So I, um, I hope this, you found this useful and interesting, and I will link to the oral arguments from this, um, podcast episode so you can follow along and listen yourself and come up with your own decisions about where you think this might be headed. I think the Supreme Court sounded pretty rigorous on both sides, so it wasn’t obvious to me who they were favoring. Um, but I’m, I’m, I just hope they don’t do anything drastic. <laugh>,
Pia: I concur. <laugh>.
Sara: Well, Pia thank you so much for joining and, um, we’ll, we’ll speak again soon.
Pia: Yes, thank you for having me. And, uh, fingers crossed.
Sara: Fingers crossed.