Kernochan Symposium 2023: Panel 1 - Creators and the Derivative Works Right
[PIPPA LOENGARD] Good morning, everyone. Thank you so much for coming. If you can take your seats, we will get the show underway. Thank you.
My name is Pippa Loengard. I'm the executive director of the Kernochan Center. And we are so glad to welcome you to what I counted was our 15th annual symposium, "Rearrange, Transform, or Adapt: The Derivative Works Right After Warhol vs Goldsmith. Obviously the decision has had quite a ripple in the IP world as evidenced by this packed crowd today.
So before-- I won't further, though, I want to thank the one person who I don't think is in the room for whom all of us-- [DOOR SLAMS] oh great, thanks. And whom we wouldn't be here without. And that is our program coordinator, Samara Weiss. Who if you're eating or drinking, Samara had a hand in it.
When she watches this back, she will know our appreciation.
So before we get started, I want to go over a few logistics. You should have all checked in at the tables at the front and gotten a schedule of the day and a primer on derivative works so that you have that in front of you and those are fresh in your mind.
If you wish to receive CLE credit, the table is right across from the doors of this room. We only offer unfortunately New York CLE credit. But you should have signed in by now. If you haven't, now would be a good time to do that. You also need to sign out at lunch and then resign in for the afternoon panel. And as you know, we're giving 4.5 credits for today's symposium.
If you have any questions, we have students outside who will be happy to help you. One of the main things, of course, is the bathroom. That might be the most important thing of the day. I will tell you that they are just straight out the doors, past the elevators. Turn left through the double doors and they are on your left, men's and women's. And there's also vending machines to the right should you need a snack.
A list of suggested readings, relevant materials, is available online on the Kernochan Center's website. You've got a link when you registered. You can also scan the QR codes on any of the posters in the lobby to get those. Also on there are full bios of all our speakers. And we hope that if you have any questions, please let us know if you have any trouble getting those.
The Wi-Fi here is open and does not require a passcode. Just use the one marked Columbia University, and you should be good to go. I didn't mention one thing about the materials. We did not print out the Warhol Decision for everyone. It's quite long, and we are assuming that you have some familiarity with the case or you probably wouldn't be here.
So if you do need it, it is in our materials online. And you're free to look along as we go. But there will be some base assumptions about your knowledge of the decision.
Finally I ask that everyone, speakers and questioners in the audience, speak into your microphones. This is for disability purposes. We will be transcribing this event. This event will show up online on the Kernochan Center website in the coming, probably week or 10 days. And we want to make that accessible to all our viewers. So I do ask that you both identify yourself and your organization, if it's appropriate, if you're asking a question and you speak clearly into the microphones.
Now on to the reason why you're all here, our wonderful panels. We are so excited to have these three great panels today. Each and every one of our speakers is phenomenal. We will start off the day by talking to attorneys and academics who represent the interests of creators from film to music, photography to writing. They will each discuss the importance of the derivative work right in their industry. And what they feel the implications are of the Warhol Decision.
The second panel has three law professors discussing how the court addressed the derivatives work right. And it works right in the Warhol case. And after lunch, of course, we have two judges who will weigh in on the issue of fair use and derivative works from the bench and discuss the case and other cases of note.
Without further ado, I am going to introduce our first panel, which I am lucky enough to moderate. I'm actually going to be sitting over there during the panel. It's not because I don't want to be in the middle of things, but I can't see slides if I'm sitting here.
So each of our presenters today works with creators on a regular basis. Aimée Wolfson is the Executive Vice President of Intellectual Property and Deputy General Counsel of Sony Pictures Entertainment. Jacqueline Charlesworth is an attorney who focuses in the music space and a former General Counsel of the Copyright Office, where she was instrumental in drafting the Music Modernization Act.
Terry Hart is the General Counsel of the Association of American Publishers. And Eva Subotnik, a former Kernochan fellow and my classmate here at the law school, is a professor at Saint John's School of Law here in the city. And she's written on a myriad of copyright issues that photographers find particularly challenging. I should note that as I mentioned, you can find fuller biographies online in the materials.
Our panel is going to explore the ways that the creative industries utilize derivative works and how the Warhol Decision may impact these uses. As we know, many of the great fair use cases have involved the arts, whether it's a musical parody in Campbell v. Acuff-Rose or literary license in Dr. Seuss Enterprises v. Comicmix.
Just last week, the Central District of California revised an opinion issued before the Warhol Decision, was released to include new analysis about whether or not a tattoo based on a famous photograph of the Singer Miles Davis was a transformative work. Before Warhol, the judge considered it was. Now the court has declared it was not. So the discussion today could not be more timely.
The majority opinion in Warhol alluded to each of the industries represented on this panel, noting concerns that each might face if the Second Circuit's decision was reversed. And while the dissent argued that the building on existing works is the cornerstone of artistry in these fields, it is better to understand-- but to better understand the opinion and dissent and the concurrence-- I don't want to leave out Judge Gorsuch, Justice Gorsuch-- I think it helps to really know these creative industries and their practices.
And so who better to explain than the panelists today. Thank you so much.
[AIMÉE WOLFSON] Good morning. I'm Aimée Wolfson. Thank you to the Kernochan Center for the opportunity to speak with you today. Of course, these comments are my own and are not attributable to my company or my trade organization.
But it's important to note that the Motion Picture Association-- move it closer-- filed an amicus brief in support of neither party in the Warhol litigation. Our interest was not about the specific result in the case. So much as ensuring an appropriate, balanced framework for assessment without championing one artist over another.
As content creators, we very much need to know what are the rules when art is on both sides of the equation. I hope to provide a practitioner's perspective on how, in the wake of the Warhol Decision, we can try to navigate and make sense of the First Amendment and copyright guardrails that the fair use statutory provision is designed to ensure.
So we start with the simple and unassailable proposition that the transformative use test must not be confused with or substituted for the four-factor fair use test. But the posture of the Warhol litigation as it arrived at the Supreme Court both presented and reflected a bias in fair use jurisprudence; that is, an unbalanced and almost myopic focus on the first factor, and more specifically, the transformative use test.
Indeed the sole question presented for the court to decide was "whether a work of art is 'transformative' when it conveys a different meaning or message from its source material," even "where it 'recognizably derived from its source material..." As the question presented makes apparent, the big issue was this. Ever expanding transformative test jurisprudence seemingly introduced a tension, or at least a potentially uncertain continuum, between transformative fair use and the exclusive right to make and control derivative works.
As a reminder, the first fair use factor in the copyright statute provides that courts must consider "the purpose and character of the use, including whether such use is of a commercial nature." In Campbell v. Acuff-Rose, The Pretty Woman case, the Supreme Court adopted the term transformative from Judge Laval's seminal article and incorporated it into the first factor consideration.
Building on justice stories 1841 Folsom v. Marsh opinion and importantly, in the context of two live crew's pair work, the Campbell court focused the first-factor analysis on whether the new work merely supersedes the objects of the original or "instead adds something new with further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is 'transformative.'"
But while the word transformative does not appear in the first statutory fair use factor, only in judicial precedent, it does appear in the statutory definition of what constitutes a derivative work and thus defines the scope of that exclusive right of copyright holders. Hence the tension and potential confusion as to at what point, a transformative fair use might impinge on the exclusive derivative work right.
As Justice Gorsuch noted in his Warhol concurrence, you don't want to put a statute at war with itself. Confusion does not serve my industry where the derivative work right is so important.
You see here 20 years of Oscar Best Picture nominees. The green bars illustrate the significant majority of these critically acclaimed films are derivative works. And across the same 20 years of top 10 domestic theatrical Box Office gross, the green bars show an even greater percentage of the most financially successful films are derivative works.
We need to know that we can confidently invest in acquiring rights or building franchises on our own original creative material. And by taking that financial and creative risk reap rewards that allow us to continue investing in and creating new productions. But motion picture and Television Producers are on both sides of the fair use and derivative works equations. We regularly rely on fair use in our productions, and we vigilantly protect and defend our exclusive rights.
We are in the culture business. Which means we both create, hopefully iconic, cultural content and we comment upon the cultural content of others. We need to know the rules of the road to support creative talent who want to engage in these cultural conversations.
So let's explore this tension with a hypothetical question that takes these considerations to extremes. I hope by now you have all seen Greta Gerwig's brilliant Barbie movie. The question I have is this: Could a filmmaker have made the Barbie movie without rights? I'm not suggesting that you could, but I'd like to play it out.
On the pro side, the film is a serious and persistent commentary. It's unusual in that it's not a documentary or a biopic or a true story. Rather it's an entirely fictional narrative. Gerwig's film pointedly explores the world and culture that the copyrighted doll has spawned. The outfits, the characters, the props and sets, the narrative of their creation and exploitation, they are all real, or real enough.
It's worth reminding ourselves that comment or criticism is not reserved only for finding fault or criticizing. It can also encompass a positive, celebratory analysis or review of a work, or an effort to connect it to the culture in which it exists. Now typically, we are making fair use determinations involving a scene or two or maybe one short clip. It is exceedingly rare, I don't even know if -- it might even be unprecedented for a feature film to sustain a persistent level of comment upon the copyrighted material that it is exploring.
In my opinion, there is hardly an element or a moment in the film that doesn't directly address Barbie's pervasive cultural impact, both within the doll's merchandised world of play and in the construction of modern American culture. The imagined narrative structure that engulfs the Barbie character is perfectly encapsulated by Billie Eilish's transcendent musical theme, which ties the fictional heroine's specific journey to the doll's cultural impact on contemporary questions about gender and purpose.
Which is to say, one doesn't have to work too hard to extrapolate or discover commentary as an ex post rationalization. It's very much the point of the film. So for the sake of this exploration, let's assume that I've offered a fair assessment of the film's status as commentary.
Can you make this film without underlying rights relying on fair use alone? How would you advise your hypothetical studio? And has the Warhol Decision helped you in reaching a conclusion?
Luckily, we have some prior case law on which to lean, two cases in particular. The 2001 Wind Done Gone case out of the 11th Circuit and the Ninth Circuit's 2020 decision on the Dr. Seuss - Star Trek mash up book titled, Oh, the Places You'll Boldly Go.
In SunTrust Bank v. Houghton Mifflin, the 11th Circuit held that Alice Randall's novel, The Wind Done Gone, had a viable fair use defense to the claim that it violated the derivative rights of Margaret Mitchell's Gone With The Wind.
Randall's novel presents the flip side of Mitchell's fictional saga, exploring the same situational narratives from the perspective of the earlier novels African-American characters and following those characters into newly imagined futures. Randall transparently renames Mitchell's characters, and iconic scenes are described. For sure, The Wind Done Gone functions as a parodic commentary on Mitchell's fictional novel, which sanitized the brutality of slavery, offered a biased narrative of the South, and perpetuated racial stereotypes.
As the court summarized, The Wind Done Gone is more than an abstract fictional work. It is principally and purposefully a critical statement that seeks to rebut and destroy the perspective, judgments, and mythology of Gone With The Wind. Randall's novel thus serves as a comment on Mitchell's specific work, not just the historic times that she depicts.
That said, the court also rightly acknowledged that Randall took a lot-- and I mean a lot if anyone has reads a book-- from Mitchell's work. Recognizing this huge taking in assessing the first factor, the court acknowledged the transformative conundrum, writing, "The issue of transformation is a double edged sword in this case. On the one hand, Randall infuses the borrowed elements with new meaning and message."
But the court also conceded that The Wind Done Gone success as a pure work of fiction depends heavily on the copyrighted elements appropriated from Gone With The Wind to carry its own plot forward. By that, the court means the second half of the book functions as a sequel, allowing Mitchell's thinly veiled characters to experience completely new plot extensions.
And typically, one assumes that more changes constitute greater transformation. But for a parody to avoid being a derivative work, The Wind Done Gone court seemed to suggest that staying closer to the original would have signaled an even greater degree of comment, rather than operating as a sequel.
So how can we assess Randall's work? Is it fair use, or is it an unauthorized derivative work? The transformative test just can't and couldn't answer that question without a robust, four-factor analysis. Interestingly, the Eleventh Circuit's analysis of the third factor was longer than that of the first.
Reading Campbell as instructing that no factor should be considered in isolation, commercial issues were discussed in the third- and fourth-factor analysis. As a result, the court did not issue a conclusion of fair use, but it found the defense viable. And thus, the court very much could determine that the district court's preliminary injunction was unwarranted, remanding the case for further proceedings, and the estate dropped the case shortly thereafter.
In a clearer case, Dr. Seuss Enterprises v. ComicMix, the Ninth Circuit had no difficulty reversing the district court and declaring that the challenged mashup of the Dr. Seuss classic book was not fair use. Like the Wind Done Gone case, the clear conclusion was based on a four-factor analysis. With respect to the first factor, Boldly wasn't critical of Seuss. It joyfully occupied the same space, with generous infusion of Seuss' other work, The Sneetches.
The defendants didn't even articulate how their offering was a parody, just that it was, air quote, "funny". Note to self, the defendants did not consult counsel prior to creating their work. The illustrations and text were slavish copies of the original that meticulously imitated them. The court held that the mashup did not transform the original merely because it included some new elements. It merely repackaged the original. Add in robust fourth-factor usurpation analysis with telling facts and terrible defense witnesses, and the result was clear.
So with these two circuit cases as factual and jurisprudential guideposts, does the Warhol Decision advance our understanding and help us resolve our Barbie hypothetical?
Well, the Warhol cart was unfortunately stuck with an appeal only on the first factor. And as the question presented, was phrased only on the transformative test, recent case law's overreliance on the transformative test needed a course correction. And the majority provides it by infusing the first factor with what the court itself distilled to three subcomponents.
Specifically addressing concern for the derivative work right, footnote 22 of the Warhol Decision concisely summarizes the other contexts that should come into play. One, the degree of difference in purpose and character; two, commercial nature; and three, justification. And when you read what the court means by these three concepts across the span of a very lengthy decision, it sure sounds a lot like factors 1, 3, and 4 of the fair use statute, albeit in the order of factors 1, 4, and 3.
Switched it up a bit, commercial is definitely in the first factor. And yet, we start to even get to the idea of usurpation if not market harm as the fourth factor. Because there is a lot of interplay between and across the factors, in the same way that the Campbell court recognized when it was assessing factor 3 that a parodist's justification for the extent of the copying hearkens back to factor 1 and the facts bearing on this third factor were also tend to address the fourth. I am not surprised that Campbell and now Warhol articulate this more blended, holistic approach to the factors when discussing factor 3 in particular.
As a practitioner who must advise on this regularly, the third factor is clutch. In the real world where one has to risk assess the likelihood, viability, and resiliency of potential claims, we of course look for and confirm any commentary component to a use. But factor 3 tends to be what drives the practical guidance. Are you taking what you need to make the comment but not excessively more?
Typically, as I've said, it would be extremely hard for a film like Barbie, so saturated in protected iconography, to satisfy that standard. Barbie comes as close as I have ever seen. But without the right to make a derivative work, filmmakers would be unlikely to make such a major investment on a bet that a court somewhere down the line might agree. The practical advice then becomes, would you be able to make the film that you want to make if you can't borrow everything that you want?
When what might be viewed as a derivative work attempts to rely on fair use, it could become an artistic compromise. Could the filmmakers make do with less? Would Barbie have made as much of an impact if it hadn't been so saturated with Barbie iconography that was real? Would living with less have fully communicated the level to which Barbie culture is infused as a mirror to our own?
We have an inkling of what that might have looked like. These are shots from the Aqua music video for Barbie Girl. Just doesn't look as pointed or real if we go back and forth. And knowing that all of these elements from Barbie really were part of the doll's decades' long history only enhances the sense of really what we're taking from the comment that Gerwig is making as opposed to genericizing. That was a trademark case, but you get the point.
And of course, studios enhance the odds of becoming a successful event film or iconic with major advertising, merchandising, and co-promotion campaigns. Audio visual works require thousands of assets and images, not just one. It would be a big risk to rely on earlier cases such as the walking mountain case where the Ninth Circuit declared Mattel's argument that artist Tom Forsythe didn't need to show the whole Barbie as absurd. And you just have to say you wish that they'd said the whole enchilada, [LAUGHTER] but that is just my favorite photo.
So as much as I appreciate these wise words of Banksy-- and by the way, Kagan's dissent attributes a version of this quote to Stravinsky, only doubling down on the point. I haven't seen this to be true in the audiovisual space. In a lot of circumstances, you might need to have permission in order to get to greatness. Of course, every situation is a case-by-case assessment, and that is an important attribute of Warhol's use driven analysis. It drives a conversation, a conversation about licensing.
Licensing can support the creative freedom necessary to create the art that will matter most. And of course, it can also come with its own constraints and controls, and that's something you have to manage with the filmmakers. Ultimately, the Barbie musical theme and the Warhol majority, both focus on purpose and ask the same question, "What was I made for?" If you haven't heard the song, please, please Google it. It's excellent.
If the answer is parody or commentary, the Warhol decision restores a holistic approach where transformative uses can be assessed because of their purpose, not based on artistry or new elements alone. But is there any purpose or justification for use of another work if, like Warhol's Orange Prince, there is zero intention to comment in some even abstract way on the work being borrowed?
There might be other ways to defend the secondary work such as distilling down to protectable elements, substantial similarity, any other defenses you can think of. But that's for another case because the issue on appeal didn't present a holistic copyright question. And so with that, I look forward to the rest of today's discussion. And thank you for your attention.
[JACQUELINE CHARLESWORTH] Good morning. I'm Jacqueline Charlesworth, and I just want to thank everyone who has worked so hard to put this together for inviting me here today. It's great to see so many familiar faces talking about one of my favorite topics, and specifically about music.
Although music, by which I mean both musical works and sound recordings, is governed by the same copyright act as other creative works, it occupies its own special territory within our copyright system. And yes, we music lawyers really like that. Music has an immediate emotional resonance that is unique.
A memorable musical phrase can serve as inspiration for and a core component of a new work, whether it's audio only or audio visual. Even a brief accept from a song, for example, a few notes comprising its hook can be instantly recognizable and compelling to the public. What is more, every creator out there has access to the tools to incorporate earlier works, musical works, into their own at their fingertips, and those in the throes of creative passion may not appreciate the risk of borrowing.
This sounds like a recipe for lots and lots of music litigation involving questions of fair use. But that's not the reality. Yes, there is a good amount of litigation involving claimed copying, but fair use claims involving music are relatively small in number, especially when one considers the enormous volume of music derivatives, both professional and home made.
In a 2018 article called "Fair Use Avoidance in Music Cases," Professor Edward Lee confirmed based on empirical research that the fair use is rarely litigated in copyright cases involving musical works apart from a few parody cases. He identified only a single ruling on fair use in his article, and that case arose from a spoken word interlude.
As the second data point, there are fewer music cases listed in the Copyright Office fair use index than cases involving visual art, films, or photographs.
Indeed, in the high profile disputes, we'll hear about, for example, the Blurred Lines case or the Led Zeppelin case no fair use defense was even asserted. Why would this be? I would suggest a few reasons for this phenomenon. First, I would characterize the dearth of precedent in this area as not so much a question of fair use avoidance as litigation avoidance, which is made possible by the well-established industry protocols for licensing of derivative uses, to which I will turn in a moment.
In addition to more substantial uses, the custom and practice of the industry is to license even brief excerpts of music that in the case of other types of works might attract a fair use defense. Even if a party is successful in establishing copying of portions of a prior work to create a commercial hit song, say, for example as the Gaye Estate did in the Blurred Lines case, it is difficult to see, whether pre or post Warhol, how a fair use claim involving a commercial work would be likely to succeed absent a claim of parody or some sort of commentary.
And here I part ways with Professor Lee who thinks that the lack of fair use precedent is puzzling. I don't agree with that because I think the answer is that most important or commercial uses are licensed. If use of an underlying work is so extremely abbreviated, lasting less than a second, for example, as to be unrecognizable to the average audience as a taking, a defendant might be better off asserting a de minimis defense.
A de minimis defense was upheld by the Second Circuit in the 2016 VMG Salsoul v. Ciccone case where plaintiff sued Madonna for copying a .23-second segment comprising three horn hits and using a modified version of this snippet in her hit song Vogue. The court determined that no ordinary listener would discern the appropriation.
On the other hand, there is the earlier 2005 decision of the Sixth Circuit in Bridgeport Music v. Dimension Films in which that court held that there is no de minimis defense at all to sampling a sound recording. So even with a very tiny snippet, there is still a fair amount of risk, particularly with the sound recording, depending where you are, that a court would find that it was not de minimis even, let alone fair use.
The second reason I see for the dearth of litigated fair use disputes in music is that music that is the part of music that is music does not translate easily into words, which is the instrument of legal analysis and of our legal system. It requires experts to parse and attempt to explain to lay judges and juries how and why music has been copied or not, typically competing experts, which adds a layer of unpredictability on top of the already precarious concept of fair use.
If there are lyrics involved in the taking, it is more feasible for a court or a jury to assess whether the use is parodic, as in Campbell, or otherwise offers commentary on the underlying work. But if you're speaking only of musical notes or instrumentation, how would you demonstrate that a secondary use comments on or criticizes those elements? Even under the more forgiving pre Warhol standard of transformativeness, how would you articulate that the claimed new message or meaning? It is difficult to imagine a musicologist explaining to a judge or jury how some notes parody other notes.
The unique conventions of the music industry are especially apparent when it comes to the treatment of derivative works. Although the basic tenets of copyright stand as tall trees in the dark forest known as music law, it is a thick tangle of undergrowth that largely defines and regulates the creation and market for music derivatives. Drawing on the Section 106 rights of reproduction distribution performance display, and of course, the right to create derivative works, the music industry has devised subspecies of the exclusive rights listed in the Copyright Act to distinguish [DOOR SQUEAKS] among and authorize the exploitation of music and follow on works.
I assume most of you are familiar with the synchronization right or right to authorize the reproduction of music in timed relation to visual content. This well-recognized form of exploitation representing some combination of the reproduction synchronization-- excuse me, reproduction and derivative works rights is nowhere to be found in the Copyright Act. Yet, record companies and music publishers have whole departments devoted to reviewing and negotiating licenses for sync uses in television, film, and commercials.
The sync right is also the basis of catalog-wide licensing deals with YouTube, TikTok, and other online platforms that exploit user posted content, which often includes music. Indeed, an elaborate rights clearance and management system has developed around these sync uses, most notably YouTube's content ID tool, which allows rights holders to monetize or block the use of their content in lieu of sending takedown notices under the DMCA.
And then there is a somewhat more obscure concept of grand rights in a musical work, also not mentioned in the Copyright Act, which addressed the right to perform the work in a dramatic context, for example, in a musical or theatrical production. As grand rights are not included in a blanket performance license issued by ASCAP or BMI, those seeking to create and stage dramatic performances of musical works need to apply to the copyright owner for a negotiated license.
No doubt you are all familiar with the common practice of sampling an existing sound recording to incorporate into a new recording, though perhaps less familiar with its sister act, interpolation, which refers to the similar use of an excerpt of a musical work either in connection with a sampling of a sound recording or by rerecording that piece of the musical work for a new work.
The licensing market for samples and interpolations is highly evolved in the industry. Depending upon the use, which may involve just a memorable phrase or hook from the underlying work or a significantly longer selection, the license might call for a one time buyout just a payment or an ongoing share of royalties or the grant of a partial copyright interest in the new work to the owner of the original one.
In sum, despite its idiosyncratic sub rights and rituals, there are well-traveled paths through the woods of music law that serve as thriving marketplace for music derivatives. Rather than spend time and money litigating on certain issues of infringement or fair use, industry players tend to negotiate licenses to resolve potential claims. In many cases, it is less expensive to agree to a license than litigate in federal court.
Rights holders with a large catalog of works will likely be on both the giving and receiving ends of these sorts of transactions. So logically, unless the stakes are very high, it makes sense to keep the money in the industry. Although Warhol's clarification of transformative use may be helpful to the occasional music owner facing a claim of fair use overall, I believe the market for music derivatives can be expected to behave much as it has.
That said, there are few aspects of Warhol worth highlighting in relation to music, including whether some of the few fair use music cases might turn out differently today. In offering these thoughts, I want to clarify that I do not see a line, fine or otherwise, between derivative works and works deemed to constitute a fair use. Most, though not all, claims of fair use involve the use of a pre-existing work to create a derivative.
So in my mind, the question is not whether the derivative line has been crossed, but whether the derivative at issue qualifies as a fair use under the statutory test. Although I was not surprised that the Supreme Court granted certiorari, a dispute involving the works and legacy of Andy Warhol would not have been my first pick as the case for the court to revisit the fair use doctrine.
Justice Kagan's caustic dissent to the majority opinion might best be summed up as, "But it's a Warhol" In rereading Justice Sotomayor's majority opinion however, I believe it was likely strengthened by having to grapple with Kagan's evidently passionate belief that art has intrinsic merit and meaning that can be ascertained by a court, albeit with the help of an expert or two, and her related view that courts can and should do just that in assessing whether a use is transformative.
Needless to say, Warhol passed Kagan's transformative test with vivid, flying colors. Accordingly, the most significant correction made by the majority opinion was not just reining in the concept of transformative use generally, but reining in the very sorts of subjective judgments of transformativeness that Justice Kagan found so compelling.
Although surely never intended by the Campbell court or Judge Lavelle in his famous article, in some pre-Warhol cases, the question of transformativeness had been reduced to whether the secondary user altered or added meaning to the underlying work. Indeed, this was exactly what the foundation argued in Warhol and something that can be said by some expert somewhere of virtually any derivative work.
Invoking the enduring wisdom and democratizing approach of the court's 1903 Blitzstein Decision, justice -- Thank you. Sorry for that. This microphone doesn't want to behave. It has to move -- Justice Sotomayor's majority opinion flatly rejects attempts to evaluate the artistic significance of a particular work. Warhol is clear that the district judge should not assume the role of art critic.
This command was expressly followed in one of the first fair use decisions to follow Warhol -- which was mentioned by Pippa -- Sedlik v. Von Drachenberg or Kat Von D, the tattoo artist, which involved the unlicensed use of a photo to create a tattoo.
On a motion for reconsideration, the district court rejected the tattoo artists fair use defense, explaining that the court's prior analysis had improperly asserted the aesthetic character of the resulting -- excuse me -- assessed the aesthetic character of the resulting work instead of focusing on the purpose of its use as required by Warhol.
This is a marked development in the law of fair use. Assuming other courts similarly retrain their focus on fundamental transformative categories such as criticism, commentary, and parody as such can be reasonably and objectively perceived, I am hopeful that we will see more predictable outcomes in fair use and fewer outlier cases going forward.
I'm reminded here of a 2017 case, Estate of Smith v. Cash Money Records, in which the estate -- this is one of the few "music" -- and I put that in quotes because it really involves spoken word -- "music" cases -- in which the estate of deceased jazz musician Jimmy Smith sued popular recording artist Drake and various music companies for inclusion of a 35-second, unlicensed use from a spoken word track that has taken from one of Smith's albums and was included on a Drake release.
The excerpt was reproduced largely verbatim but with Smith's original statement, and I'm quoting, "Jazz is the only real music that's going to last," edited to become "[O]nly real music is going to last." The court found that this use transformative because in the court's words, "Drake had turned Smith's brazen dismissal of all non-jazz music into a statement that real music with no qualifiers is the only thing that's going to last."
In so doing, the court dismissed the Smith's estate objection that the typical Drake listener would have not recognized the obscure original Smith recording, let alone perceive the supposed commentary on it. With all due respect to my music attorney colleagues who won this case for Drake and his cohorts, this was a prime example to me of transformativeness gone awry. I hope that under the clarifying light of Warhol, this case would come out differently today.
By contrast, although it didn't make the music community happy, an earlier 2008 case, Lennon v. Premise Media Corporation, made more sense in concluding that a 15-second use of John Lennon's Imagine in a documentary film questioning the theory of evolution was a fair use. The musical excerpt, which followed several speakers expressing negative views about religion was accompanied by a display of Lennon's lyrics saying, "nothing to kill or die for, and no religion too."
The court held that the use of Lennon's music was transformative because it was for purposes of criticism and commentary. I don't see anything in Warhol that would change this outcome. The Warhol majority accepted Goldsmith's invitation to remove the Warhol elephant from the room or ignore the elephant, from Justice Kagan's perspective, by excluding Warhol's original creations from consideration and considering only the magazine uses.
While it is difficult to predict how the resulting emphasis on specific commercial purpose will play out in the courts going forward, it seems that in future cases, there may be less focus on the process of preparing the derivative and more on the particular uses of the derivative, more slicing and dicing within the fair use analysis as it were.
Prospective plaintiffs, music and non-music alike, may become more particularized in their pleadings, and we may see more splintered fair use analysis as courts sort through the different manifestations of the same unauthorized work.
Such an approach is evident in a pre-Warhol case in which recording artist Nicki Minaj successfully defended against one of the claims in an infringement action brought by musician Tracy Chapman, Chapman v. Maraj -- which is Minaj's actual last name -- after Minaj experimented with one of Chapman's songs to create a new track.
Chapman declined Minaj's repeated requests to license the derivative, and it was excluded from Minaj's fourth coming album. Somehow though, the unlicensed work was sent to a DJ who played it on his show. Sued over both the creation and distribution of the unauthorized derivative, Minaj argued that her use of Chapman's song for the purpose of exploring the possibility of a new work for her album was fair use.
The court agreed, holding that Minaj's artistic experimentation qualified as fair use, especially given the industry's general practice of providing a proposed track to the original artist for approval before seeking license, which is a practice that Chapman followed herself. But it does not appear that Minaj asserted a fair use defense with respect to the distribution claim, meaning the distribution to the DJ. And the court did not grant her judgment on that.
Would Warhol have changed the outcome here? It's hard to see that it would have, given the court's finding that the unreleased track was only incidentally commercial and was not usurping any market for Chapman's work.
Last but not least, as we move into the campaign season, it seems appropriate to highlight one final aspect of the Warhol decision, namely the majority's reiteration of the distinction between parody and satire, a significant point that is less prominently articulated in Campbell. This distinction exemplifies what I view as a, perhaps the, core principle of fair use, that there has to be a reason that you are using the underlying work to achieve your purpose.
That work, not just any work that might be a useful vehicle for your expression. On the modest roster of fair use cases involving music, the handful of parody cases stand out, led by Campbell, of course. In Campbell, there couldn't be much of a question that 2 Live Crew was targeting Roy Orbison's well known song. The lyrics were pretty graphically clear.
But in another case I litigated a while back, Henley v. Devore, the distinction between parody and satire was critical. In that case, a California senatorial candidate, Chuck Devore rewrote the lyrics to two Don Henley songs taking aim at Barack Obama and Barbara Boxer and posted videos featuring the altered songs as campaign ads.
Because the ads mocked Obama and Boxer rather than the songs themselves, the district court determined that they fell on the satire side of the line and rejected the defendant's defense of fair use. More recently, a New York Court ruling on a motion to dismiss, relied on the Henley decision to reject a transformative use claim in a case brought by musician Eddy Grant against Donald Trump.
Grant sued over Chomsky use of his song in a 2020 animated campaign add depicting Trump on a fast train and Biden on a handcar, with Grant's music playing in the background. As the unauthorized use of music by politicians seems to be a perennial election seasonal affliction, it is a good thing for musicians that the Warhol majority doubled down on the parody-satire distinction. And with that, I will pass the baton to Mr. Terry Hart.
[TERRY HART] All right. Well, thank you to all for coming out. Thank you to the Kernochan Center for inviting me to speak here. My name is Terry Hart. I'm the General Counsel at the Association of American Publishers. We're a national trade association that represents the leading US publishers in trade, education, and scientific and scholarly publishing.
And I'd like to talk about what, if anything, did we learn from Warhol from the book publishing perspective, and specifically about derivative works?
So I'm going to focus on three key areas that the Warhol court touched on in its decision -- transformativeness, commerciality, and the fourth fair use factor -- to see what questions did they answer and what questions did they leave for another day?
So first, just a little bit about publishing in general. I like to note that publishing is the original copyright industry. One of the earliest subject matters of copyright was, of course, books. But even today, copyright serves as a very important legal foundation for the work of publishers. And that includes both an appropriately balanced fair use doctrine. Publishers make use of fair use in the ordinary course of their work. But also a meaningful derivative works right.
And that was what really motivated AAP to file an amicus brief in the Warhol case. We filed in support of Lynn Goldsmith. When the court granted cert, looking at the issue and how narrowly it was drawn, it didn't really strike us as terribly important to get that right. We thought courts were generally getting the question right, at least in terms of books and derivative works.
But the concern was that there was a lot of room for the court to get things wrong and really undermine the derivative works right or do a lot more damage with this doctrine of transformativeness. And so we filed in order to make that point. And up here, I have some of the popular derivative works that publishers engage in -- adaptations, translations,
for education publishers, there's all sorts of supplementary materials and instructor solutions manuals that they rely on the derivative works right in order to make their business work.
So fortunately for us, I think the court did get it right in recognizing this tension between the transformativeness inquiry in the first fair use factor and the derivative works right.
They noted that an overbroad concept of transformative use could narrow the exclusive right to create derivative works and really shone a light on this tension, which if anything else, is really I think the key takeaway from for publishers from the Warhol Decision.
But I wanted to look a little bit more closely in how this plays out with looking at certain factual situations that frequently come up in the fair use space. And starting with the ones most analogous to the facts in the Warhol case, which involves taking an original work, modifying it in some fashion to use to make a new creative work.
And in the book context, we have a number of cases where the court came out and found no fair use. So for example, we have these KinderGuides from Penguin Random House v. Colting, which involved basically the court finding that this was an unauthorized derivative work of classic novels. The Seinfeld Aptitude case, where of course, the district court decision was written by then Judge Sotomayor also found infringing.
Then two Dr. Seuss cases that have come up in the courts. One in the ComicMix decision that Aimée had mentioned earlier. And then another where the defendant had positioned this as a parody on Dr. Seuss, but the court found that, no, it fell again on the satire side and was not a parody.
And then you have cases where the court did find fair use. Again, Aimée mentioned The Wind Done Gone. In the middle here is a critical look at L. Ron Hubbard and Scientology, which incorporated a lot of quotations directly from L. Ron Hubbard and his published works for its criticism. And then, of course, the concert posters from the Grateful Dead that were in the Bill Graham Archives case.
So two things to note about all these cases, both the infringing ones and the fair use. I think, while certainly, there's a lot of robust discussion and different opinions about how someone might personally come out and might have come out to a different outcome, I think generally, at least in the publishing sector, there's an acceptance of how the courts came out on those issues and an acceptance that there's some logic there, there's some consistency there and how these courts have been applying fair use in the derivative works.
And there's also to, I think, an understanding that Warhol probably would not have led to different outcomes in these cases if they would have been heard post-Warhol. I think there's a really good chance they would have come out the same way.
So let's take things one step further, and let's talk about an application where an original work, again, is used in a new creative work, but that work itself hasn't been changed in any fashion. It's been used verbatim into a new work. How would that come out under Warhol? That's a little bit farther from the question Warhol was considering.
But it did touch a little bit on this factual situation. In a footnote, it noted that in theory, yes, you could have a "transformative use or transformative purpose separate from the question of actual transformation of the work itself." But then it said, "In practice... these two may overlap." So not incredibly helpful, not incredibly insightful.
But I think, fortunately, the lower courts have done a lot of good work here. And in particular, I like to point to the Fourth Circuit's decision in Brammer v. Violent Hughes, Productions in 2019 where it actually discussed this situation to some degree and labeled these types of uses documentary uses. The use is important to the accurate representation of historical events. They often have scholarly, biographical, or journalistic value, frequently accompanied by commentary.
And so I think that that's not just helpful. We look at the use of these works as sort of artifacts, historical artifacts, where they're being used for a different purpose than what they were created for. And I think that aligns with the discussion of transformativeness in Warhol. And so to the extent that courts are looking at that situation, I don't think Warhol necessarily changes where the lower courts have been coming out there.
So finally, the last situation is what are sometimes called functional use cases. And this is probably the farthest from Warhol we could get. That's where not only is the original work not being changed or altered in any sort of aesthetic fashion, but there's also no creation of a new work. The works are being used for some other functional or technological purpose independent of the creation of the new works.
And I put up just some illustrative examples of these cases that have come up, both on where courts have found infringing and where courts have found fair use. In the fringing side, there's been a number of cases with press clipping or media clipping services that have been found to be infringing. On the fair use side, of course, you have the book scanning cases; you have the search engine cases that were found to be fair use.
And the big question mark, I think, that a lot of copyright experts are looking toward is the use of copyrighted materials to train AI models. There's a lot of cases that have been filed that are starting to go through the courts. And presumably, the defendants there will be relying on fair use in order to show that the use of the copyrighted materials is permissible. And so that will be a big test, I think, in the functional use case.
What does Warhol maybe tell us about this? On the one hand, they do at times cite to some of these functional use cases, sort of implicitly endorsing at least the transformative purpose that was found in those cases. So for example, they discuss a number of transformative purposes that includes providing otherwise unavailable information about the original, which was the purpose found in the Google Books case.
So maybe some implicit endorsement to the extent that the purpose can be found consistent with the purposes in Warhol. But on the other hand, you do have this language that serves as a counterweight, where the majority is cautioning courts not to look at any use that they find innovative or creative, and thus thereby transformative.
You still have to go through the transformative analysis and can't skip over that. If you happen to think, "Oh, this is really innovative. This is really creative. Of course, let's allow it, case closed."
So I think it remains to be seen what the impact, if any, Warhol would have on those types of cases.
Commerciality, turning to that, another key area of the Warhol discussion on the first factor. Going into Warhol, of course, we already knew that that's part of the first fair use factor. And we knew also to avoid presumptions on either side, that is that just because a use or a user is not for-profit, that doesn't automatically mean fair use or that the first fair use factor favors fair use.
And on the other side, of course, just because it uses commercial, that doesn't bar fair use. In the publishing industry, of course, that second presumption is really important because most publishers operate for profit but still rely on fair use.
So what did Warhol add to that? I don't know. Not much. [CHUCKLING] I mean, they said, "Yes, it's part of the first fair use factor. It's not deposit dispositive. It is relevant. So have at it." So thinking through then, why did they mention commerciality? Why did they have this discussion in the first instance?
I think in my mind, maybe it's the case that there was some observations of lower courts maybe skipping over commerciality or treating it sort of as a non-factor. Maybe the Supreme Court wanted to reiterate that, yes, this is a factor that courts must consider. Even if it's not dispositive, don't give it short shrift here.
So what effect would that recognition have? And thinking through this, I think there's two potential effects here, going back to the two presumptions that we want to avoid: One is, to what extent is there a commercial penalty under the first fair use factor where a commercial use will-- how much weight will that have against fair use?
And then on the other hand, to what extent is there a non-commercial privilege where the non-commercial nature of that will allow for fair use? So I thought, going back to the Supreme Court's previous discussions of commerciality, it seems like they've already set a pretty strong guidepost. They've been very clear, don't put a lot of weight on commerciality. Look at the examples of uses in Section 107. A lot of those are for-profit.
The Campbell court quotes Samuel Johnson, "No man but a blockhead ever wrote except for money." And again in Google, Justice Breyer reiterated, "Let's not put too much weight on commerciality."
So I don't think we're going to see that so-called commercial penalty increase after Warhol. I think we've got a clear stopping point. We don't want to put too much weight on it going forward.
But on the other hand, maybe there will be less weight on the non-commercial uses coming out of Warhol.
Here's some quotes from-- the first is from Harper & Row in a previous Supreme Court decision pointing out that whether a user exploited a work without paying the customary, a fee is considered commercial. So that automatically sweeps in a lot of non-commercial users where they may be making a use of a work in lieu of licensing it.
And then we have other holdings from lower courts that I think narrow the non-commercial privilege. So perhaps we'll see a continued narrowing of that and less emphasis on the non-commercial nature playing a role in the first fair use factor.
I would note, I personally don't think that's troubling. I think that's consistent with other aspects of the Copyright Act. So for example, if you look at the public performance right, the 1976 act changed the 1909 for-profit performance right to a general performance right.
And if you look at the legislative history, that dropping of for-profit limitation was driven in part by technological advances, the maturation of the nonprofit sector -- it's a lot more professionalized -- and the impact that nonprofit uses have on commercial markets. And so just as the Copyright Act has sort of placed less of a privilege for nonprofit uses there, I think that remains consistent with its application in the fair use context.
So finally, I want to discuss the fourth fair use factor. Of course, Warhol only considered the first fair use factor. But with the first fair use factor, the fourth fair use factor plays a big role in fair use. And so Warhol discussed it a little and what is the impact of that. Harper & Row, of course, had this famous quote that the "last factor is undoubtedly the single most important element of fair use." Both the concurrence and the dissent in Warhol also cited this point.
So what did Warhol say about the fourth fair use factor? They actually, I think, made a very helpful insight here. This is one excerpt from their discussion on the fourth fair use factor. Even though it's not part of their holding, I think really helpful. And basically, what they're pointing out here is there's a lot of similarities, there's a lot of correlation between-- especially looking at the commerciality of a use under the first fair use factor and the purpose of the use and the fourth fair use factor.
And you're looking at substitutability in both instances. In the first fair use factor, it's substitutable purposes. In the fourth, market substitution. But what Warhol says is be careful. These are not the same analysis. These are not different, even though there is a strong correlation. You're looking actually at two different things.
We're not, for example, asking in the first factor whether the secondary use is causes economic harm. And so I think that's a key insight from the court's discussion of the fourth fair use factor that will be very helpful when courts look at Warhol, even though it only focused on the first fair use factor.
But on the other hand, I think some bad news that comes up from this, one of the many debates between the majority and the dissent. They're talking here about a book to film adaptation and which factor is doing the work there. Is it the first fair use factor? Is that the fourth fair use factor?
And particularly, the dissent mentions the fact that, oh, a film adaptation, the filmmaker wants to reach different buyers in different markets consuming different products. And that raised a red flag to me because I don't know if they necessarily meant this, but it called to mind some other court decisions where courts have made errors, in my view, in applying the fourth fair use factor.
And it's a common error, particularly when you're talking about derivative work markets and licensing work markets, where they may be misconstrue what the market is, leading, I think, to erroneous fair use determinations.
So what am I talking about? So the error here is-- and using the example that came up in Warhol with film adaptations -- the error under the fourth fair use factor is comparing the market of the film adaptation itself to the end user audience with the market of the original work itself, the book that the movie is based on.
And so looking at, say, oh, well, does the adaptation serve as a substitute to the original work? Or in other words asking, well, if people go to see the movie, are they less likely to buy the book? I think that's a serious error in the fourth fair use factor. Instead, when you're looking at especially derivative work markets, licensing markets, the correct focus of the market analysis is on that derivative works market itself, the market for adaptations.
So under the fourth fair use factor, the proper focus should be, will an unauthorized film adaptation of an original work substitute for authorized adaptations of the original work? And I think clearly, in most instances, the answer will be yes, they'll be presumably market harm unless there's some sort of further transformative purpose like a parodic character or something like that. So hopefully, courts don't look at the dissent's discussion there and continue to make this error under the fourth fair use factor.
But I just want to stay a little bit more on this question of the fourth fair use factor because in looking through these cases, again, I went back to Campbell, the 1996 Supreme Court discussion. I thought they did a really good job of highlighting the complexity of this analysis. And it's also a great reminder that the Campbell court did not hold that Pretty Woman was a fair use.
It remanded on that issue. And in part, because of this issue under the fourth fair use factor where they said, yes, the market for derivative markets for critical works is not cognizable under the fourth fair use factor. But that doesn't mean that's the only derivative market at play here. They noted that in addition to being a derivative parody, Pretty Woman was also a derivative rap version of the original work.
And that's a proper focus of inquiry under the fourth fair use factor, and which would weigh against finding a fair use if there is evidence of substantial harm. So the Supreme Court remanded with that being one of the issues for the lower court to decide. But the case, the two parties settled before any further proceedings. So with that, I thank you. I leave you with my favorite quote from Warhol and thank you all, and turn things over to you.
[EVA SUBOTNIK] Good morning, everybody. Nice to be back at Columbia. Thank you for having me. My contribution today is co-authored with Professor Jessica Silbey of BU. And what we're doing today, what we hope to do today is to present what the derivative work right or the adaptation right as it's sometimes called has meant to photographers who may be impacted by the Warhol Decision.
The basis for our comments today is our body of research on photography and photographers, which includes a 2019 qualitative study of approximately 30 working photographers that we co-wrote with Professor Peter DiCola of Northwestern.
And it's neat to circle back, after hearing from my co-panelists, to the industry at the very heart of the Warhol decision, photography. In short, the relationship to the adaptation right described by the photographers we spoke to, that we interviewed, what it means to them, what it encompasses is complicated and nuanced.
Now, as a preliminary disclaimer -- it seems everyone has issued one, so here's mine -- we are not claiming in these remarks that the photographers we interviewed are representative of all working photographers or that we necessarily agree with their views or that their views necessarily represent the state of the law leading up to the Warhol Decision.
What we can do is present the variations we noticed across the range of in-depth interviews we conducted. Our research methodology is explained in our publications. And in short, we feel confident that the themes that we're describing were not idiosyncratic of particular individuals but representative of shared practices, behaviors, and beliefs.
OK. So with all of that out of the way, we think it's fair to say that from the perspective of our interviewee photographers, the line between adaptive reuses that are acceptable without permission or payment and those that are not is whether the new art made from the photograph is truly the new artist's own, distinct from the old work. That is to say from the underlying photograph.
This means that the new artist has made their own work, has spent their time and effort producing something new in the world. Now, while this may sound impossibly subjective and reflects some important parts of the legal line between infringing derivatives and non-infringing fair uses, we think it's more complicated
but also more objective -- that is, we think there are explainable rules according to the photographers, again, whether or not we agree with them or think that they should be part of our law.
After sharing some specifics with you from our data, our conclusion is that photographers' practices are both overinclusive and underinclusive as to what would count as an infringing adaptation under law.
So let's wade into some specifics. On the easy side are conditions under which nearly everyone thought permission and payment were necessary. So if it's a reuse by someone who is or whose use will be morally repugnant to the photographer or a pure commercialization of the exact same image, for example, a reuse beyond the scope of a previous license or use by a big company who regularly licenses images and should know better and can pay.
In the first and third of these examples, we see distaste for the identity of the user being a factor. But that's not typically part of the formal infringement analysis. Now, directly relevant to the dispute in Warhol itself, our photographers did describe being paid when their photos were used explicitly as the basis of an illustration or magazine cover that would be a realistic rendering, albeit in a new form.
For example, Rick mentioned that he used to get these wonderful assignments from the old Wall Street Journal. "Remember," he said, "they used to have all those dot drawings? Well they would hire us for a magazine day rate to go and do that." I pulled up an image that I could find. I did look, I might say, for a dot drawing of Andy Warhol himself. I couldn't find one. But if anybody happens to know of one and wants to send it our way, that would be wonderful.
OK. Rick remarked more generally that people do in fact buy photographs to use as the basis of a drawing. He said that this practice frequently extended to uses for magazine covers. And he cited a well-known magazine publication that he said, quote, "had covers that would be drawings." And those drawings would be based on a photograph, and the photographer would get paid the same thing as if the cover had run a photograph.
Now, this practice does seem to provide some evidentiary support for what the majority says in the Warhol Decision, "A photographer may license her creative work to serve as a reference for an artist, like Goldsmith did in 1984 when Vanity Fair wanted an image of Prince created by Warhol to illustrate an article about Prince."
But the language employed by the court does not fully capture the degree to which the photographers we studied do not always, did not always expect that every reinterpretation of their work by others would be licensed and paid for. They expressed a range of attitudes and practices depending on the context.
So for example, when somebody asked one of our interviews-- I'm sorry-- so for example, when we asked one of our interviewees, "What if somebody took one of your pictures and made it into some poster that's not a photo anymore but something else?"
Kim said, "If somebody took a picture that inspired them to create a poster or help an institution or help bring awareness, cancer or something like that, I would probably be fine with it. I'd probably feel proud that it created that much emotion that people would want to use my image for the purpose of inspiring others to help."
I'll just say as a side note that I am quoting in my spoken remarks as closely as I can. But when I timed these remarks, I found out that if I don't repeat all the uses of like in all of these quotations, I will save myself probably 20 minutes. So I am not going to repeat the likes, but they are in there. OK. Oh, I'm going to go back to Kim.
So Kim also noted that if the use was-- this is a contrast. "But if the use was transformed to something for someone just to make money, then, she said, "I would probably be ticked off. I would probably still reach out to the person who used it for whatever inspiration. I'd say, 'Hey, that's not cool. But I'm cool with it because you're doing a really good thing. And I'm going to back you. And I'm happy to back you. Just give me attribution that is that this is my picture.'"
The photographers were highly self aware that they themselves had difficulty articulating an exact line of demarcation. So Ali said, for example, "I don't have a particularly hard-line stance." And she underscored that her general attitude is everyone should be making art. But she offered a contrast. So, "if someone were to lift my photos and use them in a Breitbart news article, I'd be livid because I'd think I don't want to have any association with that. Or if someone was to do something really disparaging or really bigoted, I'd be really upset about that."
"But," she said, "if someone said I included this in a painting or I drew somebody--" someone, somebody, "from one of your photos, and that wouldn't really bother me because I'm thinking, thumbs up. I think it's just, if it's encouraging other people to do creative work, that's good and that's fine with me."
Some of our interviewees admitted feeling a little flattered by good artists who were inspired by his images and made them into new commercially valuable work, but commercially valuable work that was no longer exploiting his work per se. This is a quote from our interviewee, Alejandro.
He said, "They were good artists. They took one of my images. They made it. They were inspired by my image. They took another image. And they put it in a form such that although they were commercially exploiting a work, they were not selling my work per se." That's what we understood him to mean.
So the distinction here seems to be between selling my image per se, an objectionable use, and making or selling some new art that uses or is inspired by an original photo, and that would be more acceptable. The key seemed to be whether the second artist was making something new, and to our copyright scholar ears, recognizably their own, not whether the second work was based on or adapted from the first one.
In contrast, when we asked about the Shepard Fairey AP controversy over the Hope poster a few years back -- and this was, to be clear, our go-to example to probe the photographer's tolerance for derivative works since the Warhol case would be a few years to come-- Alejandro said this.
He said, "He's--" Shepard Fairey-- "creating something new, right? But it's not entirely new. I mean, there's go to be a nod at, there has to be something to the artist, or the original work--" Sorry. I'm going to start in the middle again -- "it's not, it's got, I mean, there's got to be a nod at, there's got to be something to the artist, or the original work that was, I would call it appropriated from.
You know, because it didn't exist before. And, OK, so you have to put another layer on top of it. It's like sampling tracks, right? But you still have to acknowledge that there is a creator-- I mean, you know, it's like, all you have to do is something like copyright so-and-so with permission from the artist, the underlying artist."
What does Alejandro mean here? In some ways, perhaps he's tying his ethical compass to the recognizability principle that was so much a part of the Second Circuit's Warhol decision less so the Supreme Court's. But in other ways, he seems to be emphasizing attribution and the importance of credit and influence in making an innovating art forms.
Related to this is when a second artist falsely presents their new work as an original artwork, as Shepard Fairey was seen to do according to one of our interviewees, Craig. Those artists are seen as breaching ethical norms, which for some, is synonymous with infringement.
So Craig said, "I think to present something as an original artwork, particularly as a portrait photographer, if you're going to present my portrait of somebody as your own original artwork, I'm going to have a problem with that."
By contrast, he said, "To present your work--" meaning, the second artist. For the second artist to present their work-- "in a way that clearly references the underlying work--" and here he used the example of drawing a Hitler mustache on a Trump photograph, his example-- "that would be more acceptable appropriation because unlike the Shepard Fairey example there's no disguising that the underlying photograph was the source material for the second artist."
Indeed, one photographer, Noreen, actually sued a painter for creating a painted version of a photo she had taken. It was done in a photorealistic style that looked like her photo, and the painter was actually selling it. Eventually, the case settled out of court for a monetary sum, but also an agreement that if the painter exhibited it again, he would have to put in that the reference image was hers.
Now, as is probably evident from what I've said so far, the desire to remedy a right-- sorry-- the desire for a remedy to right a perceived wrong varied, and in some cases deviated from a strict copyright as monetization approach.
Martha indicated that credit was sufficient. By contrast, Michael said, "So, and do you take credit home to feed your family?" Different feelings.
For some, photographers inspired adaptations by fellow travelers in the professional photographic community would not be problematic. So for example, Linda said that she would not be troubled by this kind of thing because the use was done by somebody who's actually working. They're not taking somebody else's work. I guess, it's a-- I'm sorry. I didn't set this up.
In restaging-- the example that we asked was restaging a similar scene in a new location from an underlying photograph-- if performed by a working photographer would not be troubled troubling to Linda. She said, "[Be]cause they're doing their own thing. They're actually working." "They're not taking somebody else's work..." They're shooting their own photograph. "I guess it's like continuing a conversation, like borrowing your beats, like sampling... a new song."
These views carried over to the comments of another photographer, James, who insisted that permission be sought to transpose one of his photographs into a painting when asked, "What if somebody made a painting of your photo?" Answer, "We have a problem." But by contrast, he didn't mind copying the kind of copying or being inspired by that occurs in restaging a photograph and making your own, even when the new photographer is mimicking the style of the first photograph.
And here's some back and forth that's too hard for you to see, no doubt. But basically we ask the question: What if another photographer used their own camera or phone to make a photograph of a scene in a way that attempted to make the photo, the new photo look like yours? And James, our interviewee, said essentially, knock yourself out. And when asked why, he said, "I've been inspired by other photographers myself."
OK. So you may notice that despite this being a symposium on the derivative work right, much of the evidence that we've offered up does not actually invoke that vocabulary, which may in and of itself be interesting. The photographers we talked to cared much more about market substitution of the original photograph not remakes or new art inspired by their photos.
They cared about how their photos were being recontextualized and reused. And they cared about being seen as original artists, as being referred to and recognized as authors so that the taking without citation was offensive to both artistic practice and their professional norms. And this means that when other artists are making art, be it Shepard Fairey or perhaps Warhol, the rerendering of the photograph and erasing of the original artist, the photographer, was problematic.
Now, in the course of going back to our data to study this question for today in more depth, we did do some additional work on the history and practice of the use of the artist reference, which our photographers did recognize. And as many in this room may know, when photography was born, it not only became an art form in and of itself, but it became a tool for many artists. Here are some examples.
The evidence in the Warhol case about the Goldsmith Vanity Fair transaction to use her photos as an artist reference reflects this age-old practice. However, to our mind, the Supreme Court decision distorted the relevance of this historical practice, the use of the artist reference. The variation in our data and the variation in the professional practice does not inevitably lead to the conclusion that all uses of artists' references must be licensed in order to avoid liability.
Artists' artistic references are permission to use, a ticket to entry. And importantly, they are the beginning of an artistic process. The artists' references are just that, they are references. Whether they produce market substitutes or appropriations of images that retain the likeness created by the original author, or by contrast, they are starting points for something newly authored is a highly variable determination.
And whether courts want to accept it or not, resolution of the question of whether the use of an artistic reference produces an infringing work, or a fair use, cannot avoid aesthetic judgment, which perhaps should be informed by the professional practices of working artists. It should not depend on the mere existence of the permission to use the photo as a reference.
To conclude, although the Warhol court might have made it seem otherwise, photographers do not view every adaptive use of their photographs as constituting infringement as an initial matter. The rules of their aesthetic and professional practices are both overinclusive and underinclusive of the legal rules defining an infringing derivative work.
If we had to conclude with a legal determination, we would say that working photographers hew much more closely to the derivative work as a substantially similar copy, but one actually appropriated from as opposed to inspired by the first work. Furthermore, new uses of the original work that may derogate its subject matter or its meaning and that may associate the original photographer with a message of which they disapprove are objectionable, too.
We do not say that these are the right rules for copyright law to reflect. We simply say that the concerns of working photographers for the use of their photos does not comfortably track the policies and rules of our copyright law has instantiated over time. Moreover, the mere use, we think, of an artistic reference by Vanity Fair and Warhol does not by itself, make the Warhol Prince Series infringing derivative works. Thank you.
[PIPPA LOENGARD] So as you probably can tell, we are running over. So what I'm going to do is-- I know there's questions. We have a refill of coffee outside if you'd like to go get that as discreetly as possible. Please feel free. But we don't want to delay the start of the next panel. So I'm going to moderate the questions. And Robert.
[AUDIENCE MEMBER] Can you please-- if I'm not mistaken, you began your presentation with Greta Gerwig's film Barbie and with the question of whether or not permission was needed whether or not permission was actually obtained [INAUDIBLE, BACKGROUND NOISES] but that was a question.
So I'd ask you if you're familiar to reflect upon the case of I believe it was [INAUDIBLE, BACKGROUND NOISES] v. Paramount Pictures in California, which deals with two issues, whether or not permission was needed to make the original Top Gun movie and whether or not permission was needed-- from the authors of a magazine article, and whether or not permission was needed to make the second Top Gun movie, Top Gun: Maverick [INAUDIBLE, BACKGROUND NOISES] litigated right now.
[AIMÉE WOLFSON] Does this work?
[PIPPA LOENGARD] That's a good question. Let's see.
[AIMÉE WOLFSON] All right. Well they told me I could avoid questions. [LAUGHTER] As a pending case, it's an important case for my industry. That case involves, for those unfamiliar, statutory termination, I think, 35 years under 203. That's very different from the proposition that we've been discussing here because the underlying work, the article that was purchased as the supposed basis for Top Gun was a nonfiction article.
And Top Gun is, of course, completely fictional. I think the only thing they took was the title Top Gun, "top guns." But that is, of course, how folks in the fighter pilot academy are referred. So I don't want to get into the specifics of that. I think Paramount has very good positions on that. But it's so different when you're talking about true stories or inspired by, nonfiction material that's freely available, public domain facts in the real world. I don't think that they're--
The copyright on that kind of material is relatively thin. There are different reasons why motion picture studios might acquire nonfiction material. But you really have to be clear. If you're talking about it in a litigation context, distilling out the expressive content and whether there's substantial similarity is just a whole other set of issues kind of beyond the scope of this topic. I'm sure that will be the topic of another Kernochan Center symposium.
[PIPPA LOENGARD] Any other questions? Anne?
[AUDIENCE MEMBER] As far as I am aware, as a student, there is no precedent on this question. But I was curious if any of y'all have any thoughts on derivative of derivative works. So I'm thinking of something like the Fifty Shades of Gray movies, which were adapted from Fifty Shades of Gray, which started out as a Twilight fan fiction or if an artist was to make a collage that commented in some way on Andy Warhol's Orange Prince, which of course, we all know was a derivative of Lynn Goldberg [EDITOR NOTE: GOLDSMITH].
Do you think it's somewhat of a poison pill that if there is infringement down the line that the third product is infringing, or do you think actually that if it's commenting on some things, even if it's not the first matter of infringement, It'll probably be fair use.
[AIMÉE WOLFSON] I'll jump in because you referenced movies. Your question, those are two very different examples. Ultimately, whether it-- calling something a "derivative" is loaded. It's a loaded copyright term with a specific meaning as opposed to inspiration. Fifty Shades of Gray is nothing like Twilight. I think everybody can kind of agree on that. It is so far removed. It might have been the inspiration.
And what I always say to our filmmakers is, if there's even a whiff of a question, I say, tell me your creation myth. What was the spark that brought you this idea? And they'll say, oh, I'm totally inspired by X. And I say, OK, well, in copyright world, you cannot be colloquial. My example is, OK, someone is eating a ham sandwich and says, I wonder if that pig could have talked. Huh, and that was my inspiration for writing Babe, the movie about the talking pig.
It's your inspiration. It is irrelevant in copyright world. So when you talk to writers and creators, they love talking about their creative process. Our job is to translate that into what's relevant under the law. And that's very, very different. They know when they are really pulling too much from someone else's work.
[JACQUELINE CHARLESWORTH] Yeah, I would just maybe add. I think in music, sometimes the questions are closer. And you'll have cases, whole big cases brought about. Ed Sheeran was inspired by this and wrote a song. And then because this, as I mentioned earlier, you have such brief portions can result in liability.
This isn't really a fair use question. It's really just a copying question. But a derivative of a derivative if you make another derivative could potentially infringe the other two works. It depends. Or it could be a fair use. It really would depend on the facts.
Any other questions? All right. I am going to then let folks have five minutes to use the facilities. I want to thank our panelists for these really intriguing looks at the case and the derivative works right. And we will see you back at 11:45 to start the second panel. Thank you.