The Supreme Court Says the Licensing of a Warhol Is Not a “Fair Use.” —Nonsense, It’s Not Any Kind of “Use.”
Glasshouse Images / Alamy Stock Photo
Supreme Court Justice Sonia Sotomayor called Supreme Court Justice Elena Kagan stupid. Or, if she’s not stupid, then she’s dishonest, said Justice Sotomayor.
Alright, fine, that didn’t happen. The words “stupid” and “dishonest” weren’t used. Actually, Justice Kagan was respectfully identified as “the dissent,” and her shortcomings were described like this: “The dissent either does not follow, or chooses to ignore, this analysis.”[1] That’s a more polite way of saying it. But doesn’t it mean the same thing? It’s harsh.
This happened in the recent case about an Andy Warhol work. Justice Sotomayor wrote the opinion for a seven-justice majority of the Supreme Court. And her dressing down of Justice Kagan wasn’t limited to that one remark. According to Justice Sotomayor:
[T]he dissent begins with a sleight of hand ….[2]
* * *
The dissent is stumped.[3]
* * *
The dissent … ignores, well, pretty much the entire opinion [that Justice Sotomayor wrote].[4]
* * *
The dissent apparently … [commits] a common logical fallacy.[5]
* * *
The dissent would rather not debate these finer points. It offers no theory … [n]o reason ….[6]
* * *
[The dissent’s] account of fair use … is unbalanced in theory and, perhaps relatedly, in tone.[7]
Wait, who’s the one with the unbalanced tone? These attacks on Justice Kagan’s dissent are acid.
Maybe it was the headline-making subject matter that accounts for the harsh tone. The case involves two celebrities: First there is a portrait of a celebrity, namely, Prince; and secondly the portrait was made by a celebrity, namely, Andy Warhol. It’s the kind of portrait that Warhol is known for churning out in his later years. And the case involves accusations of copyright infringement by the very sort of thing Warhol was known for doing. So, aside from any interest the case has for lawyers and legal academics, it is a headline-making case.
Justice Kagan felt compelled to comment on the attacks. Her dissent, with which Chief Justice Roberts joined, remarks:
[T]he majority opinion is trained on this dissent in a way majority opinions seldom are. Maybe that makes the majority opinion self-refuting? After all, a dissent with ‘no theory’ and ‘[n]o reason’ is not one usually thought to merit pages of commentary and fistfuls of comeback footnotes.[8]
Are Justice Sotomayor’s attacks on Justice Kagan’s dissent justified? No. To the contrary, Justice Sotomayor’s opinion for the majority is illogical, and if Justice Kagan “does not follow” its “analysis,” that’s because the analysis is incoherent and impossible to follow. My goal is to explain this in a way that makes sense to non-lawyers. To do that, I will have to provide a short primer on basic copyright law.
That makes this by far the longest piece I’ve yet posted on this blog. But you can skip around: You will find a table of contents at the end of this piece.
TL;DR: Seven of the Supreme Court Justices didn’t make sense, and they mocked the other two for not understanding them.
I. What is this case about?
The case is about not just one but sixteen portraits Warhol made. Here is the appendix to the Court’s opinion, which shows all sixteen of them:
Warhol made these in 1984. The magazine Vanity Fair had given him a 1981 photograph of Prince to use as a reference, part of which is shown here:
This clip of the 1981 photograph is “Figure 1” of the Court’s opinion, from which I have copied-and-pasted it. Vanity Fair got the photo for Warhol thanks to a contract it made with the photographer. That old, one-page contract, typed into a form, has been dusted off, and I am reproducing it here in full, like the important piece of history that it is:
Take a moment to look at what that old contract between the photographer and Vanity Fair says, and you will see that in 1984, when Warhol made and kept sixteen portraits, he went beyond what it describes – beyond “an illustration to be published in Vanity Fair November 1984 issue.” And after Warhol’s death in 1987, his successor, called the “Andy Warhol Foundation for the Visual Arts, Inc.,” kept going. The Foundation sold twelve of the sixteen and gave the other four to a museum of Warhol’s art. Furthermore, the Foundation, posturing as the owner of all the rights in each of the sixteen Warhol portraits of Prince, has happily collected money from those who want to make copies of any of the sixteen – without ever breathing a word to the photographer Goldsmith. When Goldsmith finally caught wind of this, she was not happy about it, and she spoke up.
Justice Sotomayor and the six other Supreme Court Justices who joined with her sided with Goldsmith. Through that majority of seven, the Court found infringement of Goldsmith’s copyright. On the other side, Justice Kagan sided with the Foundation, with only Chief Justice Roberts joining Kagan’s dissent. The two dissenters would have ruled copyright law’s concept of “fair use” eliminated any copyright infringement claim by Goldsmith against Warhol or his successor the Foundation.
II. What did the Court get wrong?
Maybe you already believe the Court got this case wrong. Lots of art enthusiasts have decried the Court’s decision – for example, in the op-ed pages of the New York Times. Regardless of their criticisms, however, the Court is wrong for a different reason than most art enthusiasts think.
The error I have in mind is caused by the Court’s attempt to limit its ruling to a narrow issue. The Court would have avoided this particular error if it had said that Andy Warhol committed a crime from the moment he stepped beyond the narrow license that Vanity Fair got in 1984. (Be advised, if you didn’t know already, that the Copyright Act has criminal penalties.) But the Court didn’t want to say anything about whether Warhol’s creative process violated copyright law. It didn’t want to call into question Warhol’s making of the sixteen original pieces in 1984, nor to question their display in museums or their sale to collectors. So, the Court stridently insisted that it was only talking about something much more specific that the Foundation (having stepped into Warhol’s shoes) did in 2016. This attempt at judicial restraint – this attempt at a narrow ruling – is what Justice Sotomayor said that Justice Kagan was either too stupid to understand or too shifty to address (“either does not follow, or chooses to ignore”).
This insistence on a narrow ruling is the problem. It is incoherent. The problem can be fixed in two ways: Either go all the way in one direction or all the way in the other direction. Either say that no one’s copyright was infringed at any time – not in 1984 and not in 2016 – or say that Warhol violated the Copyright Act in 1984. Whichever way that you want to go, whether for Andy Warhol or against, I leave up to you. But you have to choose, and you have to go all the way.
I am not saying that Justice Kagan, who is all the way for Andy Warhol, is right about that. But at least she might be right, whereas Justice Sotomayor is definitely wrong, because Justice Sotomayor is neither all the way for nor all the way against.
III. The basic idea of copyright law: "Don't copy me."
A. Intellectual property is the power to exclude.
Copyright law is one of the four main branches of intellectual property law. The other three are trademark law, trade secret law, and patent law.
Let’s take seriously the idea that, in enacting the laws for each of these four branches, our legislature aimed to create a kind of property. Start, then, by asking, what is property? We can read Locke, Rousseau, and Proudhon for answers. Or we can turn to this standard understanding of property that is generally accepted by lawyers in the United States: Property is what happens when someone has the right “to exclude others from using a resource.”[9] It is what happens when you have the right to command others who want that resource, “No, don’t!”
Each of the four branches of intellectual property law defines something about which, if you have it, you can command others, “No, don’t!” Omitting a lot of particulars, here is what each branch empowers you to say “No, don’t!” about:
Trademark law: You put a word, or a symbol, or a catchphrase, or a color scheme – a “mark” – on the things you’re selling, to let people know these things came from you. I want to put that mark on the things I’m selling. You: “No, don’t!”
Trade secret law: You invented something, you are using it in your business, and you keep it in a secure place where only people sworn to secrecy can go. I finagled it from your secure place and want to use it in my business. You: “No, don’t!”
Patent law: You invented something. You’ve explained to everyone how to make and use it, and, in exchange for that public explanation, the Patent Office declared that it can be used only by you until whatever year. It’s not yet that year, and I want to use the thing you invented. You: “No, don’t!”
Copyright law: You wrote a text. I want to restate the information you conveyed in your text. You can’t stop my doing that. But I also want to copy the words of your text. You: “No, don’t!” Not until 70 years after you’re dead. Same thing for the story you created, for the music you composed, and for the pictures you made. No copying until 70 years after you’re dead.
These statements oversimplify, but they convey the gist. Now never mind trademarks, trade secrets, and patents. Just for the case of copyright, here are some more particulars.
B. Copyright is the power to exclude in six ways.
While copyright is about copying, it’s also about a few more things than that. When courts want to gesture at the basic idea of copyright, they usually say that the Copyright Act – the statute occupying title 17 of the United States Code – provides authors with a certain “bundle of rights” beginning from the moment when the author reduces her work to a tangible form (e.g., the moment when the author writes the text on a piece of paper). The bundle of rights is found in Section 106 of title 17. Any lawyers who have read this far are probably getting impatient and are thinking, “Just show me the statute already.” To the non-lawyers, trust me that it’s actually worthwhile to read the statute’s statement of the bundle of rights. Here it is – Section 106 – separately stating six rights in the bundle:
[T]he owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.[10]
So there you have it in all its specificity. Of course you need to read the rest of the Copyright Act to get the definitions and the exceptions. But anyway, this is the “bundle of rights” that constitutes copyright.
C. What is the exclusive right "to prepare derivative works"?
To get to Andy Warhol’s portraits of Prince, we don’t have to bother with most of the six rights bundled together here. But we should pause on the second one. It uses a technical term, the term “derivative work.” It says that as a copyright owner you have the exclusive right “to prepare derivative works based upon the copyrighted work.”
Skipping the technical definition of “derivative work,” here is the general idea: If I make a derivative work based on your copyrighted work, then not all of what I made is a copy of your work, but some parts or aspects of it are. There are lots of ways this can happen. Some examples should convey the idea:
1. I make a movie version of the novel you wrote. The movie is a derivative work.
2. You wrote a novel in English, and I make a translation in French. The French translation is a derivative work.
3. You took a black-and-white photograph, and I make a colorized version in which I choose some surprise colors. The artfully colored photograph is a derivative work.
In each of these three examples, Section 106 gave you, the copyright owner, a bundle of rights. The second of the six rights in Section 106 says that before I prepared my derivative work, you could have told me, “No, don’t!”
Supposing that you decided to let me prepare the derivative work. Then there are two copyright holders in the derivative work that you gave me permission to make: you are one, and I am the other. In the derivative work I made with your permission, there are parts that aren’t a copy of your original work. These parts are themselves original, copyrightable material. You didn’t make those parts of the derivative work, the new parts; I did, and the copyright is mine. But that material is stuck onto, or melded with, your material, and you’re the only one who owns the copyright in that. Now a copycat who wants to copy the derivative work can be told, “No, don’t!” by either you or me. As the copycat gets ready to copy the derivative work, you can tell the copycat “No, don’t!” about the derivative work’s parts that are a copy of your work. And I can tell the copycat “No, don’t!” about the derivative work’s other parts, the new material that was my contribution to the derivative work.
D. What happens to copyright infringers? Consider the Richard Prince case.
Talk is cheap, and just saying, “No, don’t!” is easy. It invites the retort, “What are you going to do about it?” We need to have an idea what remedies copyright law provides to us.
Copyright law makes available an array of remedies. Some of the available remedies are alternatives to one another. Other available remedies are cumulative. Some of the available remedies are monetary: You get a judgment that you can execute on the infringer’s property for up to however many dollars that remedy allows. Other potential remedies are injunctive: You get an order that directs the infringer to do something or other, failure to do which will be punished as a contempt of court.
Let’s look at a case that illustrates what might happen to the loser in a copyright case. This case is like the Warhol case. In this case, an artist used someone’s photographs without permission.
The artist is a different Prince than the Prince in the Warhol case. Here, the artist is Richard Prince, who proudly identified himself to the court as a practitioner of “appropriation art.” The photographer is named Patrick Cariou. The photographs are of Rastafarians, taken over several years that Cariou spent in Jamaica. Richard Prince found the photographs in a coffee-table book published in 2000 by Cariou. In 2007, Richard Prince copied them from the coffee-table book and used them as material in 30 pictures that he made and billed as a series called “Canal Zone.” Some of the Canal Zone pictures incorporating material from Cariou’s photographs can be seen on the Gagosian Gallery’s website, here.
When Cariou found out, he sued not only Richard Prince but also the Gagosian Gallery for copyright infringement. And in the trial court, Cariou won. As a remedy, the trial court ordered Richard Prince and the gallery as follows (paraphrasing): “Bring to the courthouse every Canal Zone work that you’ve still got, and if Cariou gives the word, then we will destroy them. And as for any Canal Zone work that you’ve no longer got, tell the buyers – museums, private collectors, whomever – that you broke the law when you made the works and that they will break the law if they publicly show what they bought from you. Tell them that in writing. And that’s not all, because the next time I see you, we’re going to talk about how much money you’re going to pay and how much of the photographer’s legal fees you’re going to cover.” If that sounds harsh, you should read the court’s exact words. They’re in the endnote.[11]
So, losing a copyright case can be really bad.
E. The Richard Prince case also illustrates the liability issue in the Andy Warhol case: the "fair use" defense.
If you clicked on the link to the Gagosian Gallery’s website and saw some of Richard Prince’s Canal Zone pictures there, then you’ve likely guessed that Cariou’s victory did not last. The order was appealed, and the court of appeals disagreed with the trial court. (Pictures of some Canal Zone works are in the court of appeals’ opinion too.) The court of appeals didn’t even get to the question of what remedies were appropriate because it decided the trial court was wrong to find any copyright infringement to begin with. Of the 30 Canal Zone works that used Cariou’s photographs, the court of appeals said that 25 were free of any infringement, and the remaining 5 were possibly free and should be reconsidered by the trial court. The trial court never did reconsider those 5, because the parties then settled.
How did Richard Prince pull off this reversal? Surely he didn’t dispute that he copied from Cariou’s photographs? Recall the bundle of six exclusive rights in Section 106. The first of the six is the exclusive right “to reproduce the copyrighted work in copies.” How can Richard Prince deny he did that? Yes, he also added other things to the photographs. But that only means that he violated not just the first of Section 106’s six exclusive rights, but also the second – the exclusive right to create “derivative works.” Where is there any space to dispute that?
Enter the doctrine of fair use. I like to think of this doctrine as a formal, legal expression of the idea, “You can’t be serious.” Two examples that I’ve made up to convey the idea:
1. You published a widely read book expressing your appreciation of pop art. I think you’ve misunderstood pop art, and I write a magazine article criticizing your book. So that no one thinks I’m misrepresenting you, I quote a paragraph from your book, three or four sentences long, before I proceed to argue that you’re wrong about pop art. You sue me for copyright infringement based on my quoting that paragraph. My defense: “You can’t be serious.”
2. You’ve written a successful science fiction novel in which a main character is a mad scientist, named “Dr. Science,” who has a mind-reading machine. I’m an assistant professor of law publishing in law journals as fast as I can, in the hope of getting tenured. One of my articles discusses, tongue-in-cheek, what laws should exist to govern the use of Dr. Science’s mind-reading machine. Using events from your novel as hypothetical cases, I go off on suitable registration and licensing requirements for Dr. Science’s mind-reading machine, on the ideal criminal penalties for different uses of it, on what new civil claims should be created for different uses of it, on who should have standing to bring a civil action, and on the appropriate burden of proof at trial. And I get my article published in the Journal of Technology Law, where nobody except two other academic journeymen will ever read it. You sue me for copyright infringement based on my academic article’s using the Dr. Science character from your novels. My defense: “You can’t be serious.”
These two examples are easy cases. They show where the idea of fair use comes from. In each case, technically there was copying. Technically Section 106 empowers you to say, “No, don’t!” But only a complete jerk would insist on strictly enforcing Section 106 here. There must be some room for common sense. This is the necessity that leads to the invention of the doctrine of fair use. In these cases, the doctrine of fair use says, “Never mind what Section 106 told you about exclusive rights; that copying is not an infringement.”
Congress wrote the doctrine of fair use into the Copyright Act. But obviously there’s no way to formulate a precise, bright-line rule that expresses the general idea of “You can’t be serious.” Congress just gave some considerations to bear in mind when “fair use” is invoked. Congress listed four considerations to bear in mind without saying which are more or less important or how many additional considerations there might be. Here is how Congress presented the four considerations:
Notwithstanding the provisions of section[] 106 …, the fair use of a copyrighted work, including such use by reproduction in copies … or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.[12]
Unsurprisingly, once the easy cases are admitted and the doctrine of fair use is accepted, harder cases arise. In 2013, the U.S. Copyright Office started maintaining a database of fair use precedents. You can peruse it here.
In Richard Prince’s appeal from his brutal defeat in the trial court, the fair use doctrine is what came to his rescue. The court of appeals separately discussed each of the four considerations and held that for 25 of the 30 Canal Zone works, three of the four considerations went Richard Prince’s way, and the last one carried little weight.
Overall, the appellate judges’ view of the Canal Zone works was dominated by their conclusion that what Richard Prince had done with Cariou’s photographs was, as they put it, “transformative.” Setting aside the 5 Canal Zone works that the court of appeals wasn’t sure of, the other 25, according to the court of appeals, are works that “have a different character, give Cariou’s photographs a new expression, and employ new aesthetics with creative and communicative results distinct from Cariou’s.”[13] This notion of a “transformative” use, which mainly appeared in the court of appeals’ discussion of the first of the four considerations mentioned by Congress, drove the finding that Richard Prince had a winning defense of fair use.
IV. Was Warhol's use of Lynn Goldsmith's Prince photograph a fair use? It matters how the question got teed up.
In 1981, Lynn Goldsmith took photographs of Prince because that’s the business she’s in. After she shot photos of Prince in concert, Prince came to her studio where Goldsmith shot the photo that Warhol eventually used.
Although in 1984 Goldsmith took $400 from Vanity Fair to license the magazine’s use of the photo “as an artist reference for an illustration,” she did not know the identity of the artist who would create the illustration for Vanity Fair. Goldsmith says it wasn’t until 2016 that she realized the artist who illustrated the Vanity Fair magazine article was Warhol. Her license agreement specifies that the “illustration” made by “reference” to the photo could only appear one time – in the November 1984 issue of Vanity Fair – and had to credit Goldsmith, but Goldsmith apparently didn’t bother to look in the November 1984 issue. If she had, she would have seen this:
(This is Figure 2 to the Supreme Court’s opinion, from which I have copied-and-pasted it.)
Fast forward to 2016, when Prince died. Condé Nast, the company that publishes Vanity Fair, decided to put out a special, one-issue, commemorative magazine about Prince. Someone at Condé Nast remembered the Warhol image they had run back in 1984 and reached out to the Foundation to inquire about running it again. The Foundation informed Condé Nast that there were fifteen other portraits of Prince that Warhol had made, and when Condé Nast looked at them it decided to go with the one called “Orange Prince.” Condé Nast paid the Foundation $10,000 to use Orange Prince on the cover of its commemorative magazine:
(This is Figure 3 to the Supreme Court’s opinion, from which I have copied-and-pasted it.)
No one contacted Goldsmith about this use of Orange Prince. She didn’t realize what had happened until she came across images of the Warhol portraits online following Prince’s death. Even then, she didn’t connect the Warhol portraits to her own work until she google-searched her way to an online copy of the November 1984 Vanity Fair issue and saw her name credited there, just as the 1984 license agreement required. She then went into her files and found the old 1984 license agreement. And she contacted the Foundation and complained to the Foundation that her photograph had been used without authorization.
Goldsmith did not go to court, however. Rather, the Foundation responded to her outreach by taking Goldsmith to court, complaining of a shakedown and asking for a judgment declaring that Goldsmith has no interest in Orange Prince or in any of the sixteen works that Warhol made by reference to her photograph. But once she had been taken to court, Goldsmith didn’t limit herself to playing defense. Now she went on the offense. She counterclaimed against the Foundation for copyright infringement. Referring to Orange Prince as the “Infringing Image,” she described it as a modification of the derivative work that was authorized in 1984 – as the 1984 magazine illustration “with color changes.”[14] And, guns blazing, she asked for all the remedies that could be imagined, including a judgment
enjoining the Foundation from further reproducing, modifying, preparing derivative works from, selling, offering to sell, publishing or displaying the Infringing Image and any other Warhol-created works that are substantially similar to the Goldsmith Photo or the Infringing Image …
[g]ranting … Goldsmith actual damages and all profits earned by the Foundation attributable to infringement of the Goldsmith Photo …
[f]inding that [the] Foundation cannot assert copyright protection in the Infringing Image, and any other Warhol-created works that are substantially similar to the Goldsmith Photo or Infringing Image, because they are unauthorized derivative works ….[15]
Goldsmith didn’t ask that Warhol’s portraits be impounded and destroyed, as the trial court had ordered in Cariou’s case. But that makes sense because, remember, the Foundation didn’t even have Warhol’s portraits anymore. It had sold twelve and given the other four to the Andy Warhol Museum. Goldsmith apparently wasn’t interested in adding other parties to the lawsuit – she counterclaimed only against the entity that had dragged her into court, the Foundation; and the Foundation, no longer possessing the works, is not the one to whom an order of impoundment or destruction should be addressed. But Goldsmith sought to strip the Foundation of anything and everything that the Foundation purported to still have. Although the Foundation had unloaded the actual objects, the sixteen tangible works, the Foundation had kept whatever copyright it claimed that Andy Warhol had had before Warhol died, whatever power to say, “No, don’t!”
Because of the way that this got teed up, Condé Nast (the publisher of both Vanity Fair and of the 2016 one-issue commemorative magazine) was never called upon to answer for anything it had done.
V. On appeal, the courts thought they found a way to issue a narrow decision.
In the trial court, the Foundation was victorious.[16] The court of appeals’ decision in Cariou v. Prince, just a few years old at this time, was binding on the trial court; accordingly the trial court issued a decision finding that Andy Warhol’s art is “transformative” in the same way that Richard Prince’s Canal Zone works transformed Cariou’s photos of Rastafarians. That was enough to establish a fair use defense.
Once the Foundation and Goldsmith were in the court of appeals, however, the precedent of Cariou v. Prince seemed to carry less weight. The court of appeals reversed the Foundation’s victory in the trial court and took Goldsmith’s side, finding that this time the fair use defense failed.[17]
But the appellate judges plainly were fearful of what they had wrought. Their opinion – an opinion for the court of appeals as well as a concurring opinion – indicates that the appellate judges were haunted by the memory of the dramatic remedies that the trial court in Cariou v. Prince had ordered. Siding this time with the photographer against the appropriator, they worked hard to try and avoid any implication that remedies like impoundment and destruction should ever be ordered against Warhol’s works.
One of the appellate judges came up with a special device that he wielded to try and avoid any implication that Warhol’s works should ever be ordered impounded or destroyed, or that their public display could be prohibited. After the case was appealed once again, this time to the Supreme Court, that device was embraced enthusiastically by Justice Sotomayor and the six other justices joining her. Thanks to this device, according to Justice Sotomayor, the Supreme Court was doing nothing more than “requir[ing] AWF [i.e., the Andy Warhol Foundation for the Visual Arts, Inc.,] to pay Goldsmith a fraction of” the $10,000 Condé Nast had paid.[18] No less of a remedy than that, but also no more.
VI. The Supreme Court's special trick
You are likely wishing that I would stop beating around the bush and would just tell you what the device is that the Supreme Court enthusiastically embraced. But I have a difficulty. I find it impossible to describe the device coherently. This is my criticism of the Supreme Court’s decision, the illogic that I find in it. So, I will do my best to describe the device, but I must warn you that I do not expect you to find this satisfying.
The device that Justice Sotomayor wielded is a distinction. She distinguishes between multiple “uses” of Goldsmith’s photo, and she says that the Court is only ruling on whether a particular one of those many uses is a “fair use.” So, one “use” is the use that Warhol made of Lynn Goldsmith’s photo in 1984, when Warhol made and kept sixteen pictures based on the photo. A distinct “use” is the use that the Foundation made of the photo in 2016, when the Foundation collected $10,000 from Condé Nast to allow Orange Prince’s appearance on the cover of a special, one-issue magazine – i.e., $10,000 to refrain from saying “No, don’t” to Condé Nast in 2016. This latter use is the only one on which the Supreme Court issued a ruling. According to Sotomayor, the Supreme Court has nothing to say about uses other than that 2016 use. And that 2016 use, the Court held, was not a fair use. But Warhol enthusiasts should have no fear about the safety and security of the original sixteen portraits by Warhol, wherever they may be. Because the original creation of those works, their continued existence, and their display in museums or wherever, is something separate from the use that the Foundation made in 2016.
Let me give you Justice Sotomayor’s own words, so you can judge for yourself whether they make sense:
Here, Goldsmith’s copyrighted photograph has been used in multiple ways: [1] After Goldsmith licensed the photograph to Vanity Fair to serve as an artist reference, Warhol used the photograph to create the Vanity Fair illustration and the other Prince Series works. [2] Vanity Fair then used the photograph, pursuant to the license, when it published Warhol’s illustration in 1984. [3] Finally, AWF [the Foundation] used the photograph when it licensed an image of Warhol’s Orange Prince to Condé Nast in 2016.[19]
In this passage, Justice Sotomayor enumerates three uses of Goldsmith’s photo. I have interpolated numbering into the passage to mark the three. Throughout her opinion, she repeats that only the last of these three is the object of the Supreme Court’s ruling.
VII. The Court is wrong: In 2016, the Foundation did not "use" Goldsmith's photo.
Justice Sotomayor’s insistence that the Court is ruling only on the Foundation’s “use” of Goldsmith’s photo when the Foundation “licensed an image of Warhol’s Orange Prince to Condé Nast in 2016” is incoherent because a licensing is not a use. It is a promise that you will not interfere in someone else’s use.
When you grant someone a license, you are promising to that someone that when that someone uses the work you will not say, “No, don’t!” If you accept a payment for that promise, then the promise becomes enforceable against you as a contract. So, you are not the person “using” a work when you grant a license. You are just standing by while someone else “uses” the work.
Perhaps I seem to be nitpicking. Who am I to say what is and isn’t a “use”? Words will mean whatever we want them to mean. If Justice Sotomayor wants to say that the Foundation “used” Goldsmith’s photo in 2016, then let’s just take note that this is what the word “use” means to her. What’s the problem?
The problem is that we’re asking which uses are “fair,” and there’s no point in saying something is a fair use if it wouldn’t otherwise be an infringement. If we’re not talking about uses about which Section 106 empowers a copyright owner to say, “No, don’t!” then why are we even talking at all?
In 2016, the person who “used” Goldsmith’s photo as copied into the orange image was Condé Nast. By putting reproductions of Orange Prince on the Internet and on the cover of every one of the individual copies of the special commemorative magazine that Condé Nast printed and distributed, Condé Nast “used” Goldsmith’s photo as the photo was incorporated into Orange Prince. Look back at the six exclusive rights that Section 106 gives Goldsmith. Condé Nast violated the first and the third.
In contrast, in 2016 the Foundation did not violate any part of Section 106. All that the Foundation did is collect $10,000 in exchange for a promise to refrain from saying, “No, don’t!”
Does the Foundation even have authority to tell Condé Nast, “No, don’t!”? Or was its demand of $10,000 from Condé Nast essentially a fraud, a demand for money to refrain from following through on an empty threat? It doesn’t matter. Whether or not the Foundation had any authority to say, “No, don’t!” – either way – the Foundation didn’t violate any part of Section 106 by taking $10,000 from Condé Nast.
Let’s look at it both ways. First let’s hypothesize that the Foundation does have authority to tell Condé Nast, “No, don’t!” That is, the Foundation’s acceptance of $10,000 was not based on a sham. After that, we’ll hypothesize the Foundation’s threat of saying, “No, don’t!” is really a sham, an empty threat. Under either hypothesis, we are assuming that, but for a successful fair use defense by the Foundation, Orange Prince is a derivative work in which Goldsmith has a valid copyright. (Because that’s why we’re having this discussion.)
First hypothesis (i.e., the Foundation does have authority to tell Condé Nast, “No, don’t!”): Under the assumption that Goldsmith has a valid copyright in Orange Prince (before the fair use defense has been put forward and won), Orange Prince is a derivative work. Then the best case scenario for the Foundation is that the Foundation can say “No, don’t!” about the new part of Orange Prince, the parts that Warhol made that are not a copy of Goldsmith’s photo. That would be the orange color and anything else that Warhol added or changed (perhaps not much). As for the parts that are reproductions of Goldsmith’s photo, the only person who can say “No, don’t!” to Condé Nast is Goldsmith. In this best case scenario, by paying the Foundation, Condé Nast ensured that only one of the two people who could say “No, don’t!” wouldn’t say it. That’s not much peace of mind for Condé Nast. Goldsmith is still free to go after Condé Nast. The Foundation’s deal with Condé Nast didn’t affect Goldsmith’s right to tell Condé Nast, “No, don’t!”
Second hypothesis (i.e., the Foundation’s threat of saying “No, don’t!” is really a sham, an empty threat): Let’s be more realistic. If Goldsmith is right, then not only is Orange Prince a derivative work, it is an unlawfully made derivative work, because it’s not the illustration that was run in Vanity Fair in 1984, which is the only derivative work that Goldsmith authorized in 1984. The law is that, if a derivative work is created without authority, then any copyright protection for the new bits in the derivative work is forfeited.[20] More realistically, then, Vanity Fair paid $10,000 to the Foundation for nothing at all. The license was a sham.
Now we can see that it does not matter whether the first or the second hypothesis is true. Under either one, the Foundation did not violate any of Goldsmith’s exclusive rights under Section 106 by taking the $10,000 from Condé Nast. The infringer was, rather, Condé Nast. If we want to evaluate a fair use defense that somehow is only about an infringement that allegedly happened in 2016, then we should have summoned Condé Nast to court.
Justice Kagan gets this correct in her dissent. She explains that the Copyright Act’s fair use provision
focuses attention on what the copier does with the underlying work. So when the statute more particularly asks (in factor 1) about the “purpose and character of the use”—meaning again, the “use made of [the copyrighted] work”—it is asking to what end, and with what result, the copier made use of the original.[21]
Yes. “The copier” (Andy Warhol) made use of “the original” (Goldsmith’s photograph) in 1984, and “the result” of that use was an individual, tangible object, the silkscreen entitled “Orange Prince,” plus the other fifteen tangible objects in the Prince Series. The legal issue between Goldsmith and Warhol’s successor, therefore, is a copying that occurred in 1984 – the making of a silkscreen, Orange Prince – and “how Warhol’s silkscreen transformed Goldsmith’s photo.”[22]
Who did Justice Sotomayor say has “no theory” and “[n]o reason”?
VIII. Trying to rescue the Court
Let’s attempt a rescue operation. Let’s try to make sense of Justice Sotomayor’s insistence that the “use” at issue in the Andy Warhol case is a use that occurred when the Foundation took $10,000 from Condé Nast in exchange for a likely meaningless promise not to tell Condé Nast, “No, don’t!” We need to identify a use by the Foundation that would be an infringement under Section 106 were it not for a successful fair use defense.
The best that I can come up with is this. In 1984, Warhol violated Goldsmith’s rights under Section 106 when he used Goldsmith’s photo to make the fifteen portraits of Prince other than the one portrait that ran as an illustration in the November 1984 issue of Vanity Fair – unless, that is, Warhol has a fair use defense. The sixteen portraits occupy a particular slice of space and time: The boundaries of the temporal dimension are set by the works’ creation and their future destruction, and the boundaries of the spatial dimensions are set by all the places the works ever go. When infringement is claimed by Goldsmith and the fair use defense is raised, we must look at the state of the world around the portraits at the particular slice of time and space that would be affected by the remedy for the violation of Goldsmith’s rights in 1984 (absent a successful fair use defense). Whether the fair use defense will succeed depends on the state of the world at that particular slice of time and space.
In this instance, according to Justice Sotomayor, Goldsmith’s remedy would only affect the slice of time and space that presents a payment of money to the Foundation by Condé Nast in 2016 (specifically $10,000) and payments of money to the Foundation by anyone else thereafter. With reference solely to that slice of the space-time continuum, the fair use defense fails, and we say that back in 1984 Warhol violated Goldsmith’s rights under Section 106 by making the fifteen portraits of Prince that didn’t illustrate the magazine article. But if Goldsmith’s remedy would have affected another part of the space-time continuum – for example, if the remedy would have affected the time and place that presents us with the original Orange Prince hanging on a wall to be admired by the public – then the fair use defense may succeed and then we would say that back in 1984 Warhol did not violate any of Goldsmith’s rights under Section 106.
If you think this sounds absurd, then you and I agree. I am open to alternative attempts to rescue Justice Sotomayor’s theory of fair use. But I do not see any.
One difficulty with this rescue operation is that it makes the theory sound bizarre. And here is another difficulty, a more practical one: When presented with an unlimited infringement claim and a fair use defense, is a trial court supposed to issue a multi-part decision that sides with the plaintiff with reference to some parts of time and space, finding infringement and awarding whatever remedies affect just that slice of the universe, but that sides with the defendant with reference to other parts of time and space, finding an absence of infringement and denying remedies that would affect those other parts of the universe? How is the court supposed to know the boundaries, the joints at which one relevant part of time and space ends and another begins?
Justice Sotomayor seems to have anticipated this practical difficulty and provided an answer. She says it is up to the litigant to identify the relevant slice of time and space. And she says that, luckily for the Supreme Court, Goldsmith has helpfully limited her infringement claim to just the slice of time and space that presents a payment of $10,000 by Condé Nast to the Foundation.[23] All the responsibility for identifying the relevant slices of time and space is placed on the shoulders of the copyright claimant. The court merely reacts to the claimant’s delineation of the claim.
But remember the remedies Goldsmith sought in the trial court? She responded with guns blazing.
Apparently at some point on the path between their loss in the trial court and their victory in the Supreme Court, Goldsmith’s lawyers made a strategic decision to pull back and to ask for less. When exactly that happened is not so clear. On my reading of the submissions in the court of appeals and in the Supreme Court, there appears to be some revisionist history about when that happened. But one way or another, by the time Goldsmith was before the Supreme Court, she was ready to commit to a more restrained outcome. In her brief submitted to the Supreme Court, her lawyers wrote: “Goldsmith initially sought declaratory and injunctive relief, but later clarified that request only reaches similar commercial licensing” – i.e., similar to the Foundation’s shakedown of Condé Nast for $10,000. And in oral argument, Justice Sotomayor led Goldsmith’s lawyer to exactly the spot that Justice Sotomayor wanted to confirm was where Goldsmith now stood. The relevant exchange between Goldsmith’s lawyer, Lisa Blatt, and Justice Sotomayor went as follows:
MS. BLATT: … [A]ll we have here is the commercial licensing. But you also have a disclaimer both in the Second Circuit and in the Supreme Court that Warhol doesn’t have a claim – I’m sorry, that Ms. Goldsmith doesn’t have a claim for museums.
JUSTICE JACKSON: Can you --
JUSTICE SOTOMAYOR: Counsel – excuse me. Do you have a claim for the original Prince Series, the original painting?
MS. BLATT: So the – the possession and physical – the – it turns on the license because, remember, Warhol had – there was – these were produced under a license, and so it’s unclear whether all 16 were made pursuant to that license or made as drafts.
And if Warhol wants to – and – and the Warhol – the Warhol Foundation doesn’t even own any of these. So the possession and sale is not – wouldn’t be with respect to them.
But assuming that they were all lawfully created, they can be … you can sell the possession.
JUSTICE SOTOMAYOR: So what do you think –
MS. BLATT: What’s not protected is just the commercial licensing.
JUSTICE SOTOMAYOR: Justice – Judge Jacobs below [in the Court of Appeals for the Second Circuit] said he didn’t think that the Second Circuit’s decision on injunctive relief encumbered the original Prince Series – I’m quoting him, I think – or anything that was hanging in museums and things.
Do you read – what’s at issue here? What use is at issue? Is it the 2000 and ---
MS. BLATT: Only the commercial licensing. And I think 46(a) –
JUSTICE SOTOMAYOR: What commercial licensing?
MS. BLATT: Of Orange Prince in 2016, plus –
JUSTICE SOTOMAYOR: Right, plus.
MS. BLATT: -- the request for injunctive relief for other similar commercial editorial licensing, so in – for magazine usages.[24]
Here we see a litigant having been made to read the writing on the wall and bending to fit her case into the box that the judges want to see it in. The qualifying phrases that I emphasized (“it’s unclear whether” and “assuming that”) were wimpy enough that Justice Sotomayor could ignore them. This only confirms that Justice Sotomayor’s view of fair use is unworkable. No one can expect this kind of unspoken communication between a copyright claimant and the court to be the norm. Copyright claimants are not going to stop coming to court with guns blazing, just as Goldsmith did when she counterclaimed in the trial court. The rescue operation founders.
IX. So what's the bottom line? Who should have won the case?
The problem with the Court’s opinion is its attempt to rule solely on some kind of “use” of Goldsmith’s photo that occurred in 2016 and not on the use of Goldsmith’s photo in 1984. This problem is fixed if the Court just abandons the attempt at a narrow ruling and accepts that it must judge what happened in 1984.
So, what happened in 1984? Was it a fair use, or not? Although Justice Sotomayor won’t say, Justice Kagan and Chief Justice Roberts say it was a fair use. Is that correct? I’m going to save that for another piece that expands my primer on copyright law.
Meanwhile, a few lingering questions can be addressed.
X. A few lingering questions
A. What do you mean by saying “there appears to be some revisionist history” about when exactly, on her way to the Supreme Court, Goldsmith pulled back her claims?
Sorry, this post is already too long. You can choose not to believe me. Please e-mail me if you’re really interested.
B. Didn't Goldsmith have no choice but to pull back her claims, given the statute of limitations?
No. Under the so-called “discovery rule,” the three-year statute of limitations does not begin to run until the copyright owner “discovers, or reasonably should have discovered, the infringement.”[25]
That said, a mind-bending decision by the Second Circuit in 2020 makes one wonder just what the discovery rule still means in the Second Circuit after 2020.[26] While the new situation in the Second Circuit invites byzantine distinctions among what can and cannot be achieved under the discovery rule, the Ninth Circuit is our hero, reassuring us in blunt language that the Second Circuit’s 2020 decision “is inherently self-contradictory” and espouses an “absurdity,”[27] and the Eleventh Circuit agrees.[28] Let’s leave it at that.
C. Well anyway, whether Goldsmith was pressured into it or not, she did pull back her claims. Doesn’t that mean that in this case a narrow decision was all that could be rendered?
No, because you cannot suspend logic.
D. Justice Sotomayor says that Goldsmith’s remedy will include recovering a fraction of the $10,000 Condé Nast paid to the Foundation. Doesn’t that mean the Foundation’s licensing infringed Goldsmith’s copyright unless it was a fair use? How else could the Copyright Act provide that remedy?
If we assume infringement by Warhol in 1984, then one potential remedy among others for that infringement in 1984 is an award of “the profits of the infringer that are attributable to the infringement,” with the burden on the infringer to establish which portion of the profits are “attributable to factors other than the copyrighted work.”[29] Goldsmith can seek that remedy from the Foundation for any profits attributable to the infringement that occurred in 1984. This would include the $10,000 flowing into the Foundation’s pockets in 2016. (Expect the Foundation then to argue that all the $10,000 is attributable to Warhol’s fame, not to anything Goldsmith did with film and camera.)
If, however, Goldsmith wants a remedy for someone’s infringing her copyright in 2016 rather than earlier, then the person she should go after is Condé Nast.
E. Without a successful fair use defense, is the Foundation’s $10,000 license fee really a sham and Orange Prince an unlawful derivative work in which the Foundation has no rights? Doesn’t the 1984 agreement between Goldsmith and Vanity Fair make Orange Prince an authorized derivative work?
Whether the making of Orange Prince, the silkscreen, was authorized by Goldsmith in 1984 is, as Goldsmith’s lawyer correctly stated to Justice Sotomayor, “unclear.” That obviously does not mean that Orange Prince was authorized. To the contrary, I would place my bet the other way.
The sharply circumscribed license that Goldsmith gave to Vanity Fair is non-exclusive. There’s no sub-licensing something like that unless explicitly allowed.[30] To the extent that Warhol’s use of Goldsmith’s work in 1984 was authorized under Vanity Fair’s license, it is only insofar as Warhol was acting as Vanity Fair’s agent. It is like cases in which a computer repair shop, to repair a customer’s computer, necessarily has to make copies of the operating software on the computer: The repair shop benefits from the license its customer enjoys – because the repair shop is then its customer’s agent.[31] Or like when a licensee pays a professional copy shop to make photocopies of the copyrighted material, in which case the copy shop is protected from a copyright infringement claim because the copy shop is the licensee’s agent.[32] Similarly, Warhol, as Vanity Fair’s agent, was protected by Vanity Fair’s license when preparing the illustration for the article in the November 1984 issue. That’s all the protection Warhol got.
When a license has limits, conditions, terms, etc., then, in general, a licensee can get in trouble in two ways. One way is by violating any of the copyright owner’s exclusive Section 106 rights that are outside of what the copyright owner promised not to sue for. In this case, the licensee is in trouble for committing copyright infringement. Another way is by violating a promise to the copyright owner not to do something in consideration of the owner’s promise not to sue for copyright infringement. In that case, the licensee is in trouble for breach of contract but not for doing something unauthorized under the Copyright Act.
So, to answer the question whether the creation of Orange Prince, the silkscreen, was authorized in 1984, you have to ask whether Goldsmith, in that 1984 license agreement, promised not to sue Vanity Fair for copyright infringement if Vanity Fair made that silkscreen. Answering that question with a “yes” seems to me like a stretch, which is why I say I would place my bet on Orange Prince’s creation being unauthorized.
F. If Orange Prince is not authorized, then how serious is the risk of impoundment, destruction, or a court order not to publicly display Orange Prince in a museum? After all, in Cariou v. Prince the court of appeals found no liability so never reviewed the remedies that had been ordered.
It’s true that these kinds of remedies are not automatic. These remedies are equitable. Generally, to get these remedies you must convince the court that a money judgment would not right the wrong, that the hardship to the infringer would not be unfair, and that “the public interest would not be disserved.”[33] If you feel confident of the outcome, you can go ahead and make your case.
TABLE OF CONTENTS
II. What did the Court get wrong?
III. The basic idea of copyright law: “Don’t copy me.”
A. Intellectual property is the power to exclude.
B. Copyright is the power to exclude in six ways.
C. What is the exclusive right “to prepare derivative works”?
D. What happens to copyright infringers? Consider the Richard Prince case.
V. On appeal, the courts thought they found a way to issue a narrow decision.
VI. The Supreme Court’s special trick
VII. The Court is wrong: In 2016, the Foundation did not “use” Goldsmith’s photo.
VIII. Trying to rescue the Court
IX. So what’s the bottom line? Who should have won the case?
B. Didn’t Goldsmith have no choice but to pull back her claims, given the statute of limitations?
[1] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258, 1281 n.16 (2023).
[2] Id. at 1278 n.10.
[3] Id. at 1282 n.17.
[4] Id. at 1286 n.22.
[5] Id.
[6] Id. at 1286.
[7] Id. at 1287.
[8] Id. at 1293 n.2.
[9] William M. Landes & Richard A. Posner, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 12 (2003) (“A property right is a legally enforceable power to exclude others from using a resource—all others (with exceptions unnecessary to get into here, such as the government when exercising its eminent domain power), and so with no need to make contracts with would be users of the resource forbidding their use. If A owns a pasture, he can, with the backing of the courts and the police, forbid others to graze their cattle on it. He does not have to negotiate with them an agreement entitling him to exclusive use; that would be an infeasible alternative because the whole world could threaten to graze their cattle on his property in order to be paid by him not to do so. Conversely, if B wants to have the exclusive use of the pasture, he must acquire it on terms acceptable to A. Thus a property right includes both the right to exclude others and the right to transfer the property to another.”).
[10] 17 U.S.C. § 106.
[11] The trial court wrote:
… ORDERED:
That … Defendants, their directors, officers, agents, servants, employees, and attorneys, and all persons in active concert or participation with them, are hereby enjoined and restrained permanently from infringing the copyright in the Photographs, or any other of Plaintiff's works, in any manner, and from reproducing, adapting, displaying, publishing, advertising, promoting, selling, offering for sale, marketing, distributing, or otherwise disposing of the Photographs or any copies of the Photographs, or any other of Plaintiff's works, and from participating or assisting in or authorizing such conduct in any way.
That Defendants shall within ten days of the date of this Order deliver up for impounding, destruction, or other disposition, as Plaintiff determines, all infringing copies of the Photographs, including the Paintings and unsold copies of the Canal Zone exhibition book, in their possession, custody, or control and all transparencies, plates, masters, tapes, film negatives, discs, and other articles for making such infringing copies.
That Defendants shall notify in writing any current or future owners of the Paintings of whom they are or become aware that the Paintings infringe the copyright in the Photographs, that the Paintings were not lawfully made …, and that the paintings cannot lawfully be displayed ….
That the Parties shall appear before this Court on May 6, 2011 at 11:00 am for a status conference regarding damages, profits, and Plaintiff’s costs and reasonable attorney’s fees.
Cariou v. Prince, 784 F. Supp. 2d 337, 355-356 (S.D.N.Y. 2011), rev’d on other grounds, 714 F.3d 694 (2d Cir. 2013).
[12] 17 U.S.C. § 107.
[13] Cariou v. Prince, 714 F.3d 694, 708 (2d Cir. 2013).
[14] Amended Answer of Defendants, Amended Counterclaim of Lynn Goldsmith for Copyright Infringement and Jury Demand at 13, Cariou v. Prince, 784 F. Supp. 2d 337 (S.D.N.Y. 2011) (No. 17-cv-2532).
[15] Id. at 27-28.
[16] The Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312 (S.D.N.Y. 2019).
[17] The Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).
[18] 143 S. Ct. 1258, 1286 (2023).
[19] 143 S. Ct. at 1277-78.
[20] 17 U.S.C. § 103(a) (“The subject matter of copyright … includes … derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.”).
[21] 143 S. Ct. at 1302 n.7.
[22] Id.
[23] 143 S. Ct. at 1278 n.9 (The Foundation “sought a declaratory judgment that would cover the original Prince Series works, but Goldsmith has abandoned all claims to relief other than her claim as to the 2016 Condé Nast license and her request for prospective relief as to similar commercial licensing.”).
[24] Transcript of Oral Argument at 80-82 (emphasis supplied).
[25] Starz Entm’t, LLC v. MGM Domestic Television Distrib., LLC, 39 F.4th 1236, 1240-41 (9th Cir. 2022).
[26] Sohm v. Scholastic Inc., 959 F.3d 39, 51-52 (2d Cir. 2020).
[27] Starz Entm’t, 39 F.4th at 1244.
[28] Nealy v. Warner Chappell Music, Inc., 60 F.4th 1325, 1335 (11th Cir. 2023).
[29] 17 U.S.C. § 504.
[30] See, e.g., Harris v. Emus Records Corp., 734 F.2d 1329, 1333-34 (9th Cir. 1984).
[31] Storage Tech. Corp. v. Custom Hardware Eng’g & Consulting, Inc., 421 F.3d 1307, 1315-17 (Fed. Cir. 2005).
[32] Great Minds v. Office Depot, Inc. 945 F.3d 1106, 1110-12 (9th Cir. 2019).
[33] The quote is from a patent case. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 891 (2006). But the case is understood to have stated the rule for copyright as well.