Symposium 2023: Rearrange, Transform, or Adapt: The Derivative Works Right After Andy Warhol Foundation v. Goldsmith

The Kernochan Center's annual symposium, in a full day with three panels of distinguished guests addressed the many questions about the derivative works right which remain in the wake of Warhol v. Goldsmith.  
October 20, from 10:00 AM - 3:30 PM: Rearrange, Transform, or Adapt: The Derivative Works Right After Andy Warhol Foundation v. Goldsmith.

Readings

Speaker Biographies

9:30 - 10:00:  Registration and Continental Breakfast

Panel 1 - Creators and the Derivative Works Right
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.
[APPLAUSE]
When she watches this back, she will know our appreciation.
[LAUGHING]
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.
[APPLAUSE]

[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.
[LAUGHTER]
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.
[APPLAUSE]
[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.
[APPLAUSE]

[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.
[APPLAUSE]

[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.
[APPLAUSE]

[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.
[LAUGHTER]
[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.
[APPLAUSE]

10:00-11:30:  Creators and the Derivative Works Right

  • Aimée Wolfson, Executive Vice President of Intellectual Property and Deputy General Counsel, Sony Pictures Entertainment
  • Jacqueline Charlesworth, Esq., Charlesworth Law
  • Terry Hart, General Counsel, Association of American Publishers
  • Eva Subotnik, Professor of Law, St. John's University School of Law

Moderator: Pippa Loengard

Panel 2 - The Derivative Works Right in Warhol v. Goldsmith
Kernochan Symposium 2023: Panel 2 - The Derivative Works Right in Warhol v. Goldsmith

[OFER TUR-SINAI] So welcome again, everybody. And I'm delighted to moderate this wonderful second panel, which is going to be a panel of academics. So we'll start by having each of these wonderful speakers sharing with us some of your thoughts about this fascinating case.
Later on, we plan to have more of a conversation between the speakers as well get a chance to respond to each other's talk. And then, in the remainder of the time, we'll open it to questions. So this is the game plan. I'll introduce the speakers now very briefly. If you want to learn more about them, you can check the materials online.
So, the first speaker is going to be Professor Shyam Balganesh from Columbia Law School. Then the second speaker will be Professor Lateef Mtima from Howard University School of Law. And finally, we will have Professor Pam Samuelson from the University of California Berkeley School of Law. So without further ado, I'll invite Shyam to begin.
[SHYAM BALGANESH] Thank you, Ofer I'm going to try and-- I've heard some complaints about it not being loud enough. So I'm going to use the lav as well. So hopefully you can hear me very clearly now. OK. Great. Thank you all for coming. I am acutely aware of the fact that we're eating into the lunch slot. So, as I said to Lateef and Pam, our job is to keep you entertained enough so as to not be hungry. So we will endeavor to do that.
So the paper that I'm going to be talking about today for the symposium is co-authored with Professor Peter Menell at Berkeley, and it's an attempt to make sense from the Warhol majority opinion of the existence of a standard to demarcate the line between 106(2) and 107. And our account is that there is, in fact, a standard that can be discerned from the majority opinion on how to parse the line between a derivative work right and transformative use.
So let me start by presenting the obvious problem and the need for reconciliation, which no doubt all of you are very familiar with, which is that 106(2) obviously talks about the exclusive right to prepare derivative works. And then the derivative work in section 101 is defined to include the word transformed at the very end.
So it must be based on a pre-existing work, in which a work may be recast, transformed, or adapted. Then Campbell v. Acuff-Rose, which adopts Judge Pierre Leval's 1990 article, uses the word transformative to describe in its discussion of the first fair use factor, the manner in which to assess certain kinds of substituted effects.
And the precise language from Justice Souter is that it asks the first factor. In other words, whether and to what extent a new work is transformative. So the need for a reconciliation obviously comes about statutorily and textually from the fact that the idea of transform is embedded in 106(2) and also in the way in which Campbell v. Acuff-Rose builds the idea of a transformative use into the working of fair use.
OK. So moving from there, though, before we jump into the reconciliation and Warhol. I want to say a little bit about the legislative history. We've talked about the statute, we've talked about what Campbell says. So a couple of things to note.
In our reading of the legislative history -- going back to the supplemental report of the Registrar and then the House and Senate reports in 1976 -- what we see in the Congressional description of what courts should be doing with the 106 set of rights is there's a constant reference to 106 rights needing to be understood in the broadest possible terms.
That the exclusive rights were structured in broad terms multiple times, including in the discussion of the derivative works right. But this is a more general statement as to the working of Section 106 more generally.
Then we come to section 107, where obviously there's a recognition that it's something of a delegation to courts to decide the cases on a contextual common law basis case by case.
But I think one of the things to highlight is that in drafting section 107, Congress did not want courts to remain completely unguided. This is in contrast to what Congress did, let's say with the originality standard, where Congress puts in one word -- "original" -- in the statute, and then says the judicial standard is hereby incorporated.
Instead, what Congress does in 107 is specifically to highlight what courts had been doing before in an effort to continue to have courts doing that into the future. So it was a guided delegation to courts. And I think what I want to highlight at the very outset is that in developing the transformative use standard in Campbell v. Acuff-Rose, no doubt building on what Judge Leval had said in 1990, Justice Souter recognized this.
Justice Souter recognized that what he was developing in that case was an attempt to integrate the common law function of judging, which had been delegated with the statutory guidance. It wasn't an unbounded discretion.
And so, for example, you see him referring to the role of the preambular categories. Recognizing that, yes, Congress says they're not to be given any special status -- in the sense of being exempt from the four factors -- but nevertheless, he says, well, we can look to figure out justification.
And so what's important, I think, to recognize is that a large part of what we see coming into Warhol has its roots methodologically in what Justice Souter did in Campbell v. Acuff-Rose, which is developing an account of how the statute and the legislative history are to be melded with the judicial function.
And, in particular, one of the elements that Justice Souter highlighted in his opinion with specific examples, such as the nature of the parity when it is used for a private use versus when it's used for an advertisement versus when it's used for some other broader non-commercial purpose is the commerciality role, which he says, comes from the legislative history where Congress makes clear that commerciality was explicitly included into the first fair use factor and which courts cannot ignore.
Now, of course, he says it's not to be dispositive. But he melds it into his account of how transformativeness is to be assessed in the first fair use factor. I highlight this to note that therefore, we should understand Campbell v. Acuff-Rose not as having been a pure common law decision, which was unconstrained. But rather a decision, which in a methodologically nuanced way, sought to melt together the statute the legislative history. And very importantly, no doubt, the judicial function therein.
And I think Justice Sotomayor carries this forward in her majority decision.
So moving on. So if you'll indulge me in a moment of immodesty, we believe that the court adopted a framework that we had advanced in our amicus brief, which we called the "Go Beyond Test" in the amicus brief that Peter and I filed along with my colleague, Professor Ginsburg to suggest that the way to draw the line between 106(2) and 107 was to look at the same kinds of considerations one does for a derivative works right, but to try and emphasize that there is a quantitative and qualitative aspect beyond it.
And I think our reading -- Peter and my reading -- of the opinion that comes out of Justice Sotomayor's embrace of this is that it incorporates this standard and operationalizes it with three distinct elements.
And that's what I want to highlight. That the "Go Beyond Standard," as we read the majority opinion, has three different components, which I think help us make sense of the line between the derivative works right and fair use.
Now, I want to say one thing at the very outset because we're just following on the heels of a panel, which discussed a lot of specifics and the way in which lawyers and creators work, I'm under no illusion that obviously Justice Sotomayor's opinion provided little more than the outline of a standard. It's not a detailed, 15-step framework for this. So I'm not going to try and advance that case.
But I also believe very strongly that this issue was at the forefront of the way in which she framed the working of section 107 transformativeness idea, vis-a-vis the recognition that, in this case, we were dealing with a derivative work. And there are clear observations in the opinion to this effect. OK.
So in our account, balancing the two -- the derivative works right and transformativeness -- involves three components. The first one is an independent justification for the fair use, which she emphasizes drawing on what Campbell v. Acuff-Rose had very strongly emphasized, in turn, drawing from the 1990 Pierre Leval article.
She connects that then to the second component, which flows from it, but is nevertheless distinct. And I'll describe in a minute. The requirement of a distinct purpose. And here this is where the majority opinion makes it into a differentiation based on the unit of analysis that there is not really an emphasis on understanding whether this is a transformative work, we're trying to understand whether it's a transformative use.
And then there's the third component, again coming from Campbell v. Acuff-Rose, which is that the balance of a sliding scale between commerciality and transformativeness is particularly acute when we're talking about derivative works, which tend to talk about a licensing market, where the nature of the substitutive effect is going to be slightly different.
So let me start with the first one, justification. So the idea of justification obviously has its origins in Judge Leval's article in 1990, which Justice Souter adopts in Campbell v. Acuff-Rose. And Warhol categorically endorses the idea of a justification but expands on it by introducing the idea of an independent justification.
And the reason why I emphasize this is it's apparent in the majority opinion that when Justice Sotomayor is talking about an independent justification, she's emphasizing the need for the independence of this justification because she has derivative works in mind.
So here's what she says. When I highlight this, this is straight from the slip opinion: "An independent justification like this is particularly relevant to assessing fair use where an original work and copying use share the same or highly similar purposes, or where wide dissemination of a secondary work would otherwise run the risk of substitution for the original or licensed derivatives of it."
So she's asking not just for a justification, but for an independent justification, which needs to rise to a higher level. So she says this is essential because the nature of the substitute of effect is an effect on the licensing market. But this obviously raises the question: What is such an independent justification? How exactly do we discern it?
Well, here we tease out, to some extent, from what the court says is not an independent justification. To come to the conclusion that what we're really looking for is something of a persuasive reason to account for the targeting that is independent of the market for the original.
That is not just trying to rely on, even if we don't use the wording "free writing" that is not taking effect if the popularity or the recognition that there is an established market for the original.
A persuasive reason that is beyond that in some ways is what she's looking for. She's categorical that new meaning or message does not cut it for this independent justification. Later on, she talks about how AWF had failed this standard based on a new meaning or message.
And then, also, the majority points to how the notion of an independent justification is altogether disregarded by the dissent. And there's a specific footnote where she describes how the dissent's failure to do this is at odds with Campbell v. Acuff-Rose, which is controlling the majority's opinion.
So the first component is an independent justification for the derivative market that cannot just be relying on the popularity of the underlying market for the original work. So even though we're recognizing not a direct substitution, this independent justification is critical because we're moving into the licensing market.
OK. Now we come to the second component, which is the distinct purpose. So here, there's no doubt that the distinct purpose requirement is closely tied to justification, but it's a subset of it. And here the point is that the distinct purpose element is what causes Justice Sotomayor to, among other textual reasons, focus on the fact that the unit of analysis for fair use is the use.
And I think it's important to recognize one critical thing where there had been some misunderstanding up to this point. After Warhol, in our reading, which I think is correct, there is no such thing as a transformative work. There is a transformative use. The statutory and the legal category is a derivative work.
A derivative work can rise to the level of a transformative use depending on how it is used. But that unit of analysis, which the concurring opinion by Justice Gorsuch gives a textual basis to-- I think is absolutely crucial and flows from this idea of needing to separate out the working of the statute's protection for a derivative work and fair use, which is about the use.
And what the court, I think points to is that transformativeness is not necessarily about the content and the underlying work. But it's about its purpose. It's not just the fact that there is a work for it to constitute a fair use.
We have to look at the context for the work. What is the work being done for? Is the work being injected into the marketplace? Is the work a parody? Is the work an advertisement? Is the work commercially marketed, or is the work a simple doodle that I put in my back pocket?
That's a critical component, which goes into the identification of a purpose. It's not about recognizability anymore, which used to be some of the ways in which we tried to understand the notion of a purpose. It's not about whether you can see the underlying work in the derivative. It's about the purpose that I think flows very much from the justification and the recognition that what we're trying to do is bifurcate these two markets.
I want to throw in an additional component because I think here some law and economics-oriented scalars are reading a little too much normatively into the opinion. And here I point to what some of the recent reporters in the ALI restatement have done, which is that distinct purpose has nothing to do with direct competition.
Distinct purpose has to do, yes with a substitutive effect. But the substitutive effect that the court talks about is not a substitute of effect in terms of direct market harm. Why? I think Justice Sotomayor makes very, very clear that this is the way in which to bifurcate the existence of the first fair use factor and the fourth.
To talk about market harm would conflate the two and do exactly what the dissent was complaining about. And that's the reason why this has nothing to do with competition. So the distinct purpose is about the unit of analysis and the nature of the bifurcation of the market, which brings me now to the third part, which is the fulcrum of balancing commerciality and transformativeness.
And I think it's important to recognize that Justice Sotomayor and the majority carried forward the recognition that fair use was not an unconstrained common law doctrine. Congress had not just told courts, "Go for it." Congress had told courts, "Go for it as you had been going for it before. And here's how we see you having gone for it before."
So the guidelines played a certain important role. Footnote 6 is very, very important. There's a citation to the legislative history, which explains why Congress put in the word "commercial" into the first fair use factor. And then Justice Sotomayor validates the Campbell sliding scale, which is to say transformativeness is to be balanced against the commerciality.
And if you go back and read in extensive detail Justice Souter had set out how to assess this commerciality. There's a beautiful illustration that we may disregard as dicta, where he says, well, even when it comes to a parody, yes, a parody is meant to make you laugh. But it can make you laugh for different reasons.
It can make you laugh at the dinner table. It can make you laugh because you're with an audience of a few other people. Or, it can make you laugh because it's part of an advertisement. If it's part of an advertisement, it's heavily commercial. And while it may be transformative, well, you have to weigh that commerciality against that transformativeness.
And I think that's particularly crucial for derivative works. Because begin to ask the question, why was the derivative work created? Was there a commercial purpose behind the derivative work? Because it's no longer just about the creation of the work. We've taken a transformative work off the table. We're asking what was the work created for.
I think Justice Souter anticipated this very question. And the last thing I will say about this commerciality versus transformativeness idea, which comes from Campbell, is that there's no inconsistency with Oracle. And I think that Justice Sotomayor goes to some length to show that there is a complete validation of this commerciality idea in Oracle as well.
What she says is, look, I'm not suggesting that commerciality is meant to be dispositive. But in Oracle, the court makes very, very clear. Here's what Footnote 18 she points to. She says, "It's to be weighed against it to the extent to which it has a different character."
Footnote 8 and Footnote 18, she specifically points to how Justice Breyer had identified commerciality, but balanced the two and concluded that it was not a relevant element to eliminate fair use in that case. Not that commerciality was irrelevant. So in a sense, the fact that she's bringing this in for derivative works doesn't show an inconsistency with Oracle.
But more than anything else, I think it suggests a re-emphasis on parts of Campbell that had been ignored. And very importantly, does so for the context of a derivative works right. So let me just conclude by saying, I want to be very clear. I don't think the majority opinion is offering you a 15-point test.
But what it is speaking to -- and this I think is the crucial component -- it's speaking to Courts of Appeal on how exactly to operationalize that line further. And judges have tried, there are some judges who have waved their hands and saying, oh, this is just inconsistent. So here I refer to the Seventh Circuit.
And there are other opinions such as one of my favorite-- and I see Judge McCune. The ComicMix case trying, having to come up with it. I think Warhol opinion tells us how to go forward with a framework to operationalize that by taking off a large amount of conceptual confusion that had muddied the area, including this idea of a transformative work. OK. Look forward to the conversation. Thank you.
[APPLAUSE]

[LATEEF MTIMA] OK. Does it matter which side? Oh, I guess it works. OK. Let's see if that's working. I'm usually tech-challenged. One of the-- first off-- well, before I say anything else, if you came for the PowerPoint, you can get a refund at the front--
[LAUGHTER]
--because I don't use it. I'd like to thank the Kernochan Center for this wonderful program and in particular, Professor Loengard for the invitation to be here. This is a fantastic opportunity and I'm very much looking forward to not only the presentation, but the opportunity to chat with these two brilliant scholars.
So I want to open like this, with a quote from the court: "This copyright case involves not one, but two artists." Not one, but two artists. And that's the reason as to why we -- myself and others at Howard and the Institute for Intellectual Property and Social Justice -- that's why we got into the case, and why we filed an amicus brief.
Because when-- you heard a lot of things about the case and from certain sides, you wouldn't get the feeling that there were two artists here. It seemed as if there was this one great artist, Warhol, and then somebody who just took a photograph and didn't do anything great with it.
Now to be fair, I think that this to some extent flows from our prevailing undue emphasis on economic incentives as the rationale for having a copyright system in the first place. In other words, if we have a system that tells us, well, listen, the reason why we have copyright is that first of all, if we want to get the best and the most really anything out of artists. Well, first of all, you've got to bribe them.
Secondly, once you've paid them, you have to very carefully watch them and reign them in every five minutes. Because they're going to continuously try to squeeze every extra penny out of it. Out of any time that anybody wants to use it and do anything with it in any way, shape, or form.
Well, if that's the way that we think about copyright, and that's the way that we think about creators. It's not surprising that when someone else comes along and says, well, I want to do something with a pre-existing work-- I want to do some follow-on activity.
It's not surprising that some in the legal community, including obviously Justice Kagan in her dissent, automatically presumes that what the secondary artist, what the follow-on artist wants to do, that we definitely have to be on that person's side. Because what are they doing?
They're helping us to reign in the original artists because the original artist is trying to grab everything for themselves. The original artists is almost an adversary in terms of society's interests. And of course, if somebody else comes along, and they want to do something contrary to what the original artist wants to do, well, of course, we're on that person's side.
The enemy of my enemy is my friend. But when we think about the reasons as to why we have a copyright system from a broader perspective, from something that doesn't rely solely on economic incentives, but thinks about broader and additional interests.
Well, we recognize that original artists-- any artist for that matter, well, they're not the enemy. They're really partners in this enterprise of trying to encourage people to engage in creative endeavors be they original artists or be they subsequent artists.
We think about the fact that what we're trying to do is to not focus only on the economic incentives that some artists -- many artists -- may be interested in, but to recognize that artists are interested and motivated by a variety of things -- sometimes money -- but in most cases, it starts with the need to say something.
I have something I want to say. I have something I need to say. And not only do I need to get it out, but I also need to know that I've made a sound. if I just express it, and nobody hears it while I'm the proverbial tree in the forest.
So it means that I not only need to say something, but I need to have an audience. And then society being the audience-- yeah, we need you to speak. But what we want to encourage you to do is we want you not just to express per se, we want you to express in such a way that you're going to say things and do things that will ultimately be beneficial to society.
I mean, when I'm stuck in a faculty meeting that seems to go on for a lifetime. [AUDIENCE CHUCKLES] I can express my displeasure the way that I might often do under my breath with profanity. But that's not too particularly creative and it's certainly not at all original.
So yes, society wants me to express. But they want me to express in ways to channel that intellectual energy in ways that are going to be beneficial to society. Yes, the original creation is useful. Yes, the follow-on work is also beneficial. And yes, society has an interest in artists doing what they do. But artists have an interest in society serving the role as audience.
This is not an adversarial relationship. This is a mutually reinforcing symbiotic relationship, and that's what copyright is all about. Trying to promote and preserve and balance all of these interests, which takes us to one of the key mechanisms that copyright employs in order to achieve this balance is, of course, the Fair Use Doctrine.
I know you're all wondering when is he going to get to it. OK. I've arrived. So in fair use, we are trying to do this sort of a balance. But of course, fair use applies to all of the exclusive rights. And what's happening when you apply fair use to copying, for example, it's different.
I mean, we allow somebody to copy work for a particular purpose. It's not likely to completely eclipse the copyright owners interest in reproduction. But with derivative works, there's a different type of tension. And that's what you've heard about all throughout this morning.
If we allow a particular derivative use as a fair use, the stakes are a bit higher. Because as we've seen, that can preclude the original artist's ability to create that derivative work herself.
In other words, if you want to write a story to see what would happen if Batman was back in time in the Old West, that could preclude Bob Kane, if he was still around, his ability to do the same thing because that story has already been done.
I'm not saying that we should not ever allow that. That's what the fair use mechanism is here for. To see whether or not, under what circumstances, we can allow such activity. But we see why the stakes are higher. Through fair use, if we allow an unauthorized derivative work, we could be not only allocating the right to create that work to someone other than the author and all of the revenues that may flow from that.
But we're also allocating to the secondary creator the decision as to whether or not that type of work can be done at all. So the stakes are a bit higher. And that's why when we are looking at fair use as being applied in connection with the derivative work right, we have so many nice factors to consider.
And indeed, when we're considering whether or not this secondary work if it also constitute a derivative work, and we're looking at transformation, well, one of the reasons as to why we would allow it if it is sufficiently transformative along with satisfying the other factors is not because we are trying to take something away from the original artist.
It's because we know that by encouraging this follow-on activity, we know that society is getting something. We're not taking sides between the first artist and the second artist. We're taking the side of society as a whole.
We know that when the secondary work is transformative, we know we are getting something that is a new and further purpose. We know that we are getting the work moving in a different direction. We know this from the easy cases -- the examples that we get in the statute. Examples of transformative uses for commentary, for critique, for teaching, parody.
We know that as a result of allowing this activity, society is going to have the expressive benefits of the first work. And we know we're also going to get expressive benefits flowing from the secondary activity. So I call those the easy cases because the statute gives us examples, and we also know what we're going to be getting as a result.
But now we come to the hard cases. The hard cases in which, yes, I've taken the original work. I've added something -- I've done something to it. But it doesn't fit into one of those categories. And now we have to determine that if it doesn't fit into one of those categories, are we going to allow it?
And this is where I think the Warhol decision gives us some guidance. Gives us in effect a new playbook. It does for me two things, OK? The first thing that it does is it tells us that, first and foremost, we have to confirm that when someone says, I am working with this. I'm using as raw material.
I want to come up with something that I believe is transformative. We have to confirm that transformation is actually occurring. This shouldn't be controversial. It seemed to me that when we were having conversations about the cases that reached the Supreme Court, it seems as if this was a controversial point.
In other words, what some people -- and I think is a big part of what Justice Kagan is saying in the dissent -- is that, of course, it's transformative.
I mean, after all, and you've heard this again and again. After all, it's a Warhol, OK? That ought to speak for itself.
In fact, how dare you ask the question? Well, I would quote from another artist-- musical artist-- Jazz Scat Singer Eddie Jefferson. For those of you who don't know him, you can Google Eddie Jefferson.
It's a Warhol. His response would be, "So what?" [CHUCKLES] OK. Google, it's a real cool song. There's nothing wrong with us confirming. And that's one of the first things that the two big things that I think that the Warhol case does. It says, hey, secondary post-hoc subjective unless, of course, you're going to say I was doing something transformative.
I guarantee you if I took Andy Warhol's Orange Prince and I doodled into it and they caught me, I'm going to say I was doing something transformative.
[LAUGHTER]
Right? So I think it's fair to simply say, OK, I hear you. I may want to subscribe to your newsletter, but I'm not going to take your word for it. All right. And I think that that's one thing that Warhol makes clear.
The second thing that Warhol does for us,
the second big thing is we know that in these cases because they will involve overlapping purposes, the fact that the secondary artist wants to do something expressive and the first artist is doing something expressive. So this is not your-- what I call, utilitarian transformation cases like putting a piece of art in an internet search engine, in which we know that there's a different purpose.
No, these have overlapping purposes. And basically what Warhol says is in these close cases-- and you want to do something artistic. But there's already an artistic work in existence. Basically, I read the decision as saying when in doubt, get a license.
OK. Now this point-- people who are the artists in the room, what do you mean? When in doubt, get out. But let me just quickly say, let's look at the downsides and let's look at the benefits. The downside of this is, well, I'll have to ask to get a license. And one risk is the original artist might say no. OK.
But again, Eddie Jefferson. So what? So what if they say no? Just because the first artist says no, it doesn't mean that you no longer have your fair use argument to fall back on. In addition, even if you lose that argument, we now have eBay.
eBay says that, OK, it's not a fair use. But it doesn't necessarily mean that we're going to enjoin you. So far downside doesn't look too bad. If I ask the original artist might hold me up for a lot of money. Could be, OK. But also could not be.
I mean, sometimes the original artists, not being particularly well-known, is very happy to see someone else making use of the work and sees some benefits coming from their.
Now, let's take a look at the benefits of this. Because so far I don't see the downside as being so problematic.
First of all, this gives the original artist at least a say. OK. What do you think about what I want to do? It's not a veto. We know that because of eBay. So we know it's not a veto. Original artists might get a few bucks. OK. That's also good. But the most important thing-- and this was the main reason as to why we got into this case-- is because the one thing that we know the original artists will get is attribution and recognition.
There are two artists here. This is especially important if the original artist is from a marginalized community: from an outside community, from a community whose work mainstream society might not know about. OK. We could run the risk of inadvertent misattribution.
We look at this work, we see it for the first time. It's doing all this wonderful, incredible stuff. And we think that the person who came up with all of this stuff is the secondary artist. We don't know that maybe 10% of it is the secondary artist.
We don't know that maybe what happened here was that the secondary artist went someplace like Jamaica-- [CHUCKLE] --saw a cool genre, thought that this would be great to bring back to America and add some popular riffs. And we think that this artist is just an incredible genius.
But if you got to get a license, we know one thing that's going to happen. It's going to be attribution, and people are going to know who did it first. And for me, that was why we got into this case. The fact that it appeared as if people were just dismissing this lowly woman photographer. And thinking that all that happened that was wonderful happened when Andy Warhol put his imprimatur upon it. That was the risk.
And let me close with this. The reason why that is such an important risk to consider, because once again, it's not only the fact that it's a risk to the original artist. It's a risk to our society as a whole because when we allow artists who are perhaps unknown, who are from smaller communities, who are from marginalized communities.
When we put them in the position that they look at what they've done, that their contribution ends up being ignored. It's not only that they don't get paid, it demoralizes them. It debases the quality of their contribution, and then they start rethinking, do I want to keep making art or do I want to go back and work in the post office where at least I'll get an honest day's pay for an honest day's effort?
I think especially since I don't have any slides, I think I'll stop there. Thank you.
[CHUCKLES]
[APPLAUSE]

[PAM SAMUELSON] So could someone help me get-- I don't-- There's no keyboard here to get the-- Oh, there it is.
[CHUCKLE]
And now for something completely different.
[CHUCKLES]
OK.
[BANG]
[LAUGHS]
So the question-- the question I'm starting with is "Did the Solicitor General Hijack the Goldsmith Case?" And the answer to that is "yes," and the US Supreme Court let him get away with it. OK? That's a real takeaway of this particular thing.
[CHUCKLE]
There was dishonesty in the Solicitor General's brief. The same dishonesty showed up in the court's opinion because they all pretended that the case was only about the 2016 license, when in fact, it had been litigated from the get-go as a case about the 1984 creation.
And so if you kind of try to understand what is going on between Sotomayor and Kagan, it's Kagan is actually still talking about the original creation, which was the issue in litigation. And the Sotomayor decision only is talking about the one 2016 license.
So one thing I have to emphasize here is that the Supreme Court decision tells us virtually nothing about the distinguishing line between derivative works and fair use. It tells us something about fair use and maybe that has some spillover effects for derivative works.
But since the court didn't address the issue that was actually in litigation, and the issue on which the Supreme Court granted cert. You can't say, oh, yeah, they said everything about transformative works as derivative works. Because they didn't address the issue at all.
So it's really important to understand that everybody who briefed the case except the Solicitor General and Goldsmith's merits brief addressed the creation issue, and the Solicitor General basically said no, you don't even need to get to that. OK.
So what was the case about? So Goldsmith saw the Orange Prince at oral argument before the Supreme Court. The foundation's lawyer basically said she asked for millions of dollars as compensation and insisted that the Warhol Foundation had no copyright at all.
And they were confident that they were going to win on fair use or not substantial similarity. And the counterclaim did emphasize the 2016 license but also claimed that all 16 works were infringements and that Andy Warhol owned no copyright at all.
And all of Goldsmith's briefs until her merits brief asserted that the 1984 creation was infringement. It was only her merits brief focused on the 2016 license. And you see the Supreme Court saying that Goldsmith had abandoned her larger claims. And that is true, but why?
It's because the Solicitor General basically said the only issue that is before the court is whether The Andy Warhol Foundation's purpose in granting the 2016 license to Conde Nast was that grant of a license transformative.
Now, the Second Circuit had held all 16 works were unfair and non-transformative. And all of the briefs, as I say, focused on the creation issue. And the Solicitor General said, Warhol's creation of those works in 1984 may have been fair use. Didn't say it was, but it hinted that in fact, it was fair use.
But the Solicitor General said, even so, every subsequent use of such a work must be assessed as a fair or unfair use. And that's a relatively novel doctrine. We've usually assumed that if something was a fair use, that the copyright in the secondary work is basically unencumbered by the first work. That's kind of what we have been thinking for a long time.
But what happened was that in the meetings with the Litigation Counsel in the case, the Solicitor General let it be known what the Solicitor General was going to argue -- only the 2016 license is at issue here. And so Goldsmith counsel decided to scrap her larger claim so that she could win on this one narrow issue -- $10,000 is better than nothing.
But with the Solicitor General prepared to argue that the creation of the works might be fair use. She actually thought she might lose. And so I think it was a reason to do it. So the brief that I worked on for Authors Alliance to the Supreme Court really was focused on what I consider to be deep errors in the Second Circuit's Goldsmith ruling.
And I've listened a listed some of them here. I think one of the things that was most disturbing is that you couldn't tell what the test was. So is it recognizable similarity? Is it overarching purpose and function? Where did function come from? Is it same overall purpose at a high level of generality? What is a distinct artistic purpose fundamentally different in artistic distinct purpose? And what about the essence?
So there were really too many case. Moreover, the Second Circuit's decision ignored the relevance of the license. So Andy Warhol was commissioned under a license to make a transformative work. A work of art, that was his job. And he succeeded in that.
And so to my mind, at least one, and maybe all 16 were authorized derivative works. Warhol was not a party to the license between Vanity Fair and Goldsmith agents. There's no evidence that he knew of any restrictions that it might had.
And another thing that's concerning about the Second Circuit's decision was that it entirely ignored the implications of Section 103(a). So 103(a) just to remind yourself says, more or less, that if the infringing parts and the non-infringing parts are interspersed, there is no copyright whatsoever in the work.
You can't just say, well, it's encumbered. No, there's no-- the secondary artist has no interest in it at all. And so the Second Circuit said, oh, we're really not saying that it's a road that's an infringing derivative. But it says, oh, it's unfair. And oh, it's substantially similar.
So what is it going to be? It has to be an infringing derivative work. If it's an infringing derivative work then, Warhol has zero interest in the work. So I think the Supreme Court decision mostly fixed the Second Circuit's errors on these things.
I think it says new meaning or message may be relevant, even if it's not as dispositive. I think they didn't do the recognizable, similarity, overall high-level purpose similarity. And they didn't use purpose and function, thank God. And the Supreme Court was able to avoid the 103(a) and scope of the 1984 license and which of the works were authorized derivatives because they focused only on the 2016 license.
Now, I think if you want to go back and check out what I'm talking about, read page 37 of the merits brief. Because the page 37 of the merits briefs suggests that the Goldsmith lawyer herself basically thought that all 16 works might have been created under the license, OK?
So you have actually Goldsmith giving up her larger claims, and I think that's really significant. So I think-- first of all, there's some good news is here, which is that-- [CHUCKLE] the court basically avoided some really tough issues, and appropriation art lived to see another day.
So I think there would have probably been a lot more litigation if Goldsmith won on the creation issue. Maybe a lot more appropriation art if the foundation won outright. So here you have the new artists now have to think about it, and maybe that's actually a good thing. And so that's good news.
Now, to me, the kind of really super interesting question is, what is the status of the Warhol works now in terms of their copyright?
The foundation brought a declaratory judgment action to say, I own the copyright in them.
Before the Supreme Court, Goldsmith abandoned her claims in respect of the 1984 and implicitly her opposition to the foundation's summary judgment motion that the creations were fair uses. And yeah, she's going to get some money for this. Although she is ineligible for statutory damages or attorney fees award.
But to what extent is further licensing of Warhol's works encumbered by the photograph? Only licensing to magazines. I don't know. Any commercial use? Well, I think Shyam would say yes. I don't think so.
Because Footnote 12 of Sotomayor's opinion really suggests that if there was a book about the Warhol style, that the foundation could probably use it there. And that was certainly the point or one of the points in the Gorsuch concurrence.
But if Goldsmith is no longer contesting that the Warhol works were lawfully made under this title, good news for museums. They can now display their copies without fear that Goldsmith is going to change her mind and try to take down all the display of the Warhol works.
But must they get Goldsmith permission to make postcards or posters? I don't know the answer to that question. I think another super interesting question is, how much of the Second Circuits and analysis in Goldsmith should be ignored because Goldsmith abandoned all of the claims on which the Second Circuit focused except the 2016 license.
So it seems to me that the Second Circuit might need to issue an amended decision to conform to the Supreme Court's analysis just on the 2016 license, rather than having all that dicta out there about the creation.
OK. Couple of things.
I think it's probably a case that new meaning or message has been demoted. Different purpose, elevated. Same purpose, demoted. Commerciality somewhat re-elevated. But I don't read the decision as basically reinstating the commercial presumption. And remember that the Google v. Oracle case gave very little weight to the commerciality.
Obviously, it's more risky if the work competes, and a finding of transformative purpose is still important. Although it may not have the kind of spillover effects to the other factors as in the past. So that's going to be, I think, a possible consequence of this.
And a few other concluding thoughts:
This kind of use-by-use analysis is something that we haven't thought about before. And so that's actually going to be a thing. So I'll just pose a couple of questions here. But we all like this-- the Wind Done Gone case. That's a really good case.
But could Alice Randall license a movie version of the Wind Done Gone or is this encumbered by the Mitchell estate's copyright in Gone With the Wind. I don't think we ever had thought about that question before, but I think we have to think about it now.
It could be that you just say that the use-by-use has to happen when there was a license as opposed to was a straight-out fair use. But we don't know the answer to this question and it opens up a whole new can of worms that we haven't seen in litigation before.
One of the things I want you to understand is I'm a real big believer in the derivative work. OK. I wrote an article about the origins of it. I scoured the legislative history at least as much as Shyam has. And my article on the quest for the sound conception of the derivative work right is something that I suggest that you take a look at.
But based on that and my reading of the Fair Use cases, I think that there is this kind of sliding scale. Sometimes there's going to be a little bit too far this way, sometimes it's going to be a little too far this way. And we'll just have to go through it.
But how transformative is it? How much you took in relation to your purpose? And to what extent is there interference with a foreseeable derivative work market or conflict with the investment-based rationale for granting derivative works in the first place.
Those things seem to me to be the critical questions in trying to of find that dividing line between those two things. So as I said, something completely different.
[CHUCKLES]
[APPLAUSE]

[OFER TUR-SINAI] It's OK. Thank you, Pam. Thank you all the speakers. So I'd like to open it up to the panelists now, first and foremost to respond to anything that you've heard someone else say. But also if it's something you want to add, but please keep it brief so that we have some time for questions.
So I see that--
[CHUCKLES]
--Shyam wants to respond to Pam. But maybe, too, Lateef as well. So come on.
[SHYAM BALGANESH] Great. Thank you both Lateef and Pam for those comments. So I'm going to I'm going to start by making the obvious clear. So it's clear I disagree, Pam, with--
[LAUGHS]
--your account.
But let me just focus on a couple of the disagreements. One specifically-- because this was sort of foundational-- your claim that the opinion says nothing about derivative works right or virtually nothing of importance.
I think it's hard to understand in light of the fact that multiple times the majority talks about the derivative works right. And very importantly, chides the dissent for failing to understand 106(2). I'll draw your attention everyone to Footnote 17, which is on page 37 of the excerpt. Where she says specifically, Justice Kagan does not understand the implications of 106(2) and would have that be treated under the fourth fair use factor-- necessary implication?
I am doing it under the first factor. So 106(2) was front and center in the way in which Justice Sotomayor was framing the reasoning over here. So that's just the first thing-- I think the multiple times there's a clear allusion, not just to direct substitution, but the licensing effect is an indication that it's about the derivative works.
Now the second one that I wanted to also disagree with is that I don't think we are suggesting for a moment that Warhol is resurrecting the commerciality presumption. But here's where I think commerciality had preceded before. Commerciality had receded into a footnote.
And I think what Warhol does is it says, treat it as important as transformativeness. And here I just really want to reemphasize that I think the key to understanding Warhol is going back and reading Campbell. I think Justice Souter's unrecognized genius in the case lies in the way in which he operationalized the idea that Judge Leval had developed in the context of specific examples.
So just to read, I was talking about this advertisement example. This is exactly from Campbell. This is what he says, "The use, for example, of a copyrighted work to advertise a product even in a parody will be entitled to less indulgence under the first fair use factor inquiry than the sale of a parody for its own sake-- category 2. Let alone one performed a single time by students in school."
So what he's telling you is that a parody, even though it has a -- remember his words -- "natural claim to transformativeness." Does not end the inquiry. You have to assess it against commerciality. And I think that's exactly what Warhol is doing here again, as well.
All right. I have a comment on this, but I'll shut up.
[CHUCKLES]
[PAM SAMUELSON] So most of what I think Shyam thinks is dicta-- relying on dicta. And dicta can be powerful, and we'll see how it plays out in the future. But again, the court only ruled one thing which was that the 2016 license was not transformative. A lot of dicta in there. A lot of people are going to try to make as much as possible out of that dicta.
But the court did not reach the transformative, fair use infringing derivative work issue at all. OK. They didn't reach it because the Solicitor General persuaded Goldsmith's lawyer to give it up. OK. So I think that again, I see the beautiful argument that you put together. I just think it's wishful thinking.
[LAUGHS]
[SHYAM BALGANESH] Can I just add one quick--
[OFER TUR-SINAI]Yes, of course.
[LAUGHTER]

[SHYAM BALGANESH] I mean, there is literally only one court in the country that can say our dicta is not relevant, and that is the Supreme Court in a subsequent opinion. So the Supreme Court's dicta-- and a large part of Campbell was also dicta. Because at the end of the day, it was remand. But we rely on it. So the dicta is going to be the law for all of the lower courts.
[LATEEF MTIMA] Oh, sorry. How do you--
[SHYAM BALGANESH] Push back.
Is it-- oh, good.
[LATEEF MTIMA] Well, the cool thing I like about this conversation is that I always wanted to see copyright on Jerry Springer.
[LAUGHTER]
So thank you both because now I finally got to see that. No-- I actually liked things from each of your perspectives. Because of course, obviously, given the fact that we submitted an amicus brief in support of Goldsmith, we obviously were happy with the ultimate result.
And some of the things that you've pointed out that it now gives us some guardrails. And it says, hey, look, if you want to do some follow-on work, we're not saying you can't, OK? But here are the things to consider. And when in doubt, you should ask permission. And I like that because it opens up room for the original artists.
But I also like your observations, Pam, in terms of let's not read too much into the opinion for this reason. Because I think you're rightly focusing also on the interests of the secondary artists. And I'm mindful of the fact that, OK, this time, the secondary artist was a big guy. But I'm also mindful of the fact that the next time, it may be the other way around.
As I was thinking about this case the other night, something hit me. I said, hey, what if I took Warhol and I said, I don't think orange is enough. I'm going to do tri-color. I'm going to do red, black, and green. OK?
Now, first off, I would imagine many of you would say, if all I did was to take Warhol and just change the colors. My guess is most people would say, I don't think that's particularly transformative. But what if after the fact, I explained to you, and I'm not telling you whether or not I really believe this at the time. Because that's going to be dispositive.
But what if I tell you, well, the reason why I did red, black, and green is because although Prince is very famous for his work, primarily in rock music. Prince, after all was an African-American. And that oftentimes is not focused in on. And red, black, and green has particular significance in the African-American community.
And so that may be the reason why put red, black, and green on it was I wanted to reconnect that part of Prince's identity. Now am I also commenting on the original work? Perhaps. Because maybe I'm saying, why did he take orange? Well, did he take orange in such a way? Is that supposed to mean something and is he ignoring?
So this is why I take something useful. It's the cool thing about being on the social justice side. [CHUCKLE]. Like I said, we're not on the side of any particular artist. We're on the side of society as a whole. So much as I'd like to see more Jerry Springer, I just think that both of you have some really good points.
[PAM SAMUELSON] So I'd like to add something about section 103(a)--
[LATEEF MTIMA] Yeah.
[PAM SMAUELSON] --which is-- and this was actually something that over dinner last night, Lateef and I actually agreed upon, which is that 103(a) has such a potent effect and it's not necessary. So there are other copyright laws, where the second work may be encumbered, but they don't lose everything.
And I can think of rationales for the way that 103(a) is written. But one of the things that the Campbell v. Acuff-Rose and others of the decisions that say you don't have to issue an injunction, don't realize if the court says that a use is unfair and is in fact infringing, you can withhold injunctive relief, but it doesn't stop the automatic operation of 103(a) to say no copyright whatsoever if there's intermingled infringing and non-infringing expression.
And so that's actually something where I would like to see some legislative action to at least make it possible for courts to say that there's enough social value here that we want, in fact, the second work to have copyright, even if it's encumbered by the first work's copyright. And therefore, some compensation has to be paid.
But the many articles that have been written about, oh, let everybody do a derivative work, just provide some compensation. They just don't think about Section 103(a), and 103(a) is out there. It's like a time bomb. And the fact that Warhol created these works in 1984, and we don't even find out that Goldsmith now claims that they're all infringing until 2017, that's a big deal.
[SHYAM BALGANESH] Can I just-- very quickly. I promise to be quick this time.
[OFER TUR-SINAI] Very quickly.
[SHYAM BALGANESH] I want to say I agree with what both Pam and Lateef said about 103 in particular. I'm just not sure that the legislative solution is the right one because the mistake to the extent there is a mistake, comes from the judicial interpretation of 103.
Which applies the penalty rule to derivative works, but not to compositions. By the idea that you could segregate out the two and only deny protection to a part. That not being applied to the derivative comes from a judicial and so. but I agree with you. It has the same--
[PAM SAMUELSON] -- the text of 103 is pretty strong.
[SHYAM BALGANESH] I think it was ambiguous. Anderson v. Stallone says that there are two plausible interpretations and then adopts the Nimmer position. So, I don't think there's a case for saying that it's clear meaning, unless, of course, you're Justice Thomas.
[CHUCKLE]
But I mean, OK. So we could disagree on that. But the other thing that I will say is I do think that Lateef's point is a very important one that's gone submerged ever since eBay. And it has an interesting lineage actually, all the way to Judge Leval's 1990 article, which is transformative use, fair use cases tend to be close cases.
And the denial of an injunction is an absolutely crucial component of the judicial arsenal to give effect to downstream creativity. These are close judgment calls. So to the extent that Judge Leval and then Justice Souter and then Justice Sotomayor are saying, courts, engage in this judgment, they're also saying a critical component of that judgment is the remedial elaboration that you have on the back end.
And I just I don't think that has been sufficiently robustly dealt with. I remember I went back and listened to the oral argument in Campbell v. Acuff-Rose. It turns out there was only one Justice who had read the Leval article at oral argument, and it was Justice Ginsburg.
And at oral argument, this is raised, but not the injunction point. And her exact response to the lawyer is, "Oh, I see you've read Judge Leval's article. But you take the sweet, but not the bitter from him."
[CHUCKLES]
And I think there was a recognition early on, and Justice Souter incorporates that into a footnote. It's gone under the radar. And I think it is an important way of thinking about equity between the parties.
[OFER TUR-SINAI] Well, thank you all. And just to spur the discussion a little bit further, I want to touch upon the issue that you all touched upon, which is the focus on the particular licensing transaction rather than the creation of the works.
And I want to bring a question which I want to hear your thoughts about. So the role of transformativeness plays when this is the type of inquiry that we are making. So I guess my broader question for you is, how do you see the holding of the case? Is this a decision about transformativeness at all considering the focus on the commercial licensing transaction? And I'm sure we have differing opinions on this question here. But I guess if we're not comparing the works, perhaps "transformative" is not even the right term to use. Maybe "different" is a better term to use. What's transformativeness have to do with anything that happened in this case?
And on a related note, I wonder what do you think about what I view as a gap between the narrow holding of the case, considering the focus on the license transaction. And the reasoning, which is extensive and it has become even more extensive, not to mention intensive due to the back and forth between the majority and the dissent.
And could this result in a misreading of the holding by lower courts? I mean, I gather we have to wait for the next Supreme Court case. But when will we have the next Supreme Court case? So I'm concerned perhaps that the two case that people mentioned before is already a signal for what's coming, or at the very least, if not a misreading by the lower courts but an unintended chilling effect on follow-on creativity.
And to the extent you see a problem here, do you think that we academics and lawyers might have any row in mitigating such a chilling effect? So if anyone wants to address this. I'll be happy.
[PAM SAMUELSON] Well. So I think that my previous slide actually had my thought-- can you just go back one thing?
I think that there is a kind of shift in emphasis that I think is reflected in the Goldsmith decision.
But I see it as basically having retained transformative as a critical element. And they didn't abandon that at all. But we're going to pay more attention to different and same purposes-- the extent of transformation.
And how much commercial is there? I don't think it's as weighty as the transformative thing. But we'll see what happens. I think I've taken a look at the cases that have followed this so far, and in the Thomson Reuters case against Ross, the first of the generative AI cases to make it to a decision.
The lawyer for Thomson Reuters tried to make a great deal of Goldsmith. And the court said, no. To me, this is more like the Google case. And so I think the Google case maybe just went a little bit farther on fair use than anybody really expected.
And maybe the Supreme Court cuts it back a little bit in Goldsmith. So you have to basically even it out, and basically say, don't overemphasize this one, and don't overemphasize this one. Let's try to find a middle ground.
[OFER TUR-SINAI] Does anyone else want to respond?
[LATEEF MTIMA] Yeah. Well, I'll just say quickly that I think that certainly, one thing you should not take from this opinion is that the court is in any way discouraging transformative activities. because the whole opinion is really saying, OK, the more transformative the better?
The more transformative, for example, the less we have to worry about the commerciality of it. The mere fact that it is highly transformative doesn't mean we ignore commerciality. And so the more transformative, the better ground you are on.
And so I think that's one thing for sure that there's no way that we're saying we don't want follow-on uses. We're saying we want them in closed cases. We want you to ask permission. But ultimately, that is the direction that we want artists to go.
[OFER TUR-SINAI] OK.
[SHYAM BALGANESH] I would just add very, very quick note. I have no doubt that the opinions themselves are going to cause a significant amount of confusion. I think that's part of the reason why you see the concurring opinion by Justice Gorsuch saying, here's a little bit of a blueprint of how to understand the majority.
But I think there's no doubt that that's going to have multiple readings and we see some of them over here. But on the transformativeness question though, I think it's important to recognize-- and this goes all the way back to Judge Leval in 1990. That transformativeness was not meant to be the core fulcrum behind the idea.
I keep forgetting, and maybe he'll tell us the reason. The title of the article was "Toward a Fair Use Standard." It was not "transformative use." There were multiple other components that were built into that standard, including justification, which figures very, very prominently?
Justification is built into the idea of the standard. So to take the idea of transformativeness and then understand it in the narrow sense of a derivative work, that's where I think the mistake lies. And I think we see this, for example, in his own decision in Google Books, which was not necessarily transforming the content but it was in the purpose that was seen to be transformative.
So I think there's not a clear connection to the work itself that is needed each time.
[OFER TUR-SINAI] OK. Thank you so much. We'll take some questions from the audience now. Does anyone have questions to any of the panelists, Jane?


[SIDE CONVERSATION]

Yes.
[AUDIENCE MEMBER] OK. I think that you agree that transformativeness now addresses the use and not the work. And I think Pam is absolutely right to concentrate on section 103(a). However, I think when you look at the text of 103(a), you end up with a situation that is highly problematic, although not the same one that you suggest.
Because 103(a) says, "Protection for a work employing pre-existing material in which copyrights exists. Subsists does not extend to any part of the work in which such material has been used unlawfully, which leads to the following problem..."
I completely agree that the Supreme Court didn't say anything about whether any of the additional silkscreens were fair use or not. So suppose the Warhol Foundation now wants to register those silkscreens. Well, what about 103(a)?
We don't know whether the silkscreens have been used unlawfully because there hasn't been a claim, at least for the moment. We don't have a ruling as to whether any of the uses of the silkscreens other than licensing for a magazine are our lawful uses or not lawful uses.
So what are you getting a registration for? I think this is highly problematic. And another thing that's problematic is that if you don't know whether you have a registration, you also don't know with or without a registration if you have what the basis of your copyright interest is.
Let's say the Warhol Foundation wants to license some use-- not magazine uses. But other uses-- coffee table book, whatever. Well, can they do that? So I think that we have a whole lot of uncertainty based on focusing on the use rather than the work.
Having said that, I always found your position problematic. That if the work is fair use, then you can freely exploit it. But if it's fair use because it is, for example, a non-commercial educational use, to then turn around and say, well, it's fair use. So now I can do anything I want with it, is also problematic.
So I think that the reason why a use has been deemed "fair" has to play into what the creator of the secondary work can do. Finally, I'm not sure that it's completely devastating not to have a copyright in your secondary work that-- for which some uses might not be infringing. Because that's basically the system under Section 115.
You have a statutory license that gives you the privilege to do a cover version, but you don't have a copyright in the cover version unless you negotiate with the composer.
[PAM SAMUELSON] Just to respond briefly. I think what the use-by-use fairness thing makes us do is think about some things that we haven't thought about before. And I actually think it's a novelty. There may be some ways to try to refine it.
But I think that for the most part, people have assumed that if it's fair use, that you can at least exploit it in the way that you would exploit that work normally.
And so I don't know that Alice Randall ever tried to grant a license for a motion picture version. But that just struck me as an example of something where I think we wouldn't have thought about it before.
I think we have to think about it now. And so that's going to be-- I think, a new line of things. And I agree with you that there can be some equity issues here. It's just that it's just unexplored territory.
[SHYAM BALGANESH] Can I just jump in? One quick thing that Jane's comment raises, which I think ties into the core argument you're making, Pam, which is I think a large part of this can, there's a direct line from here to the Neely case that the Supreme Court just took cert on a couple of weeks ago; which is look at the large part of what was going on with the original creations by Warhol. They're way back when.
So the only thing that would have triggered a claim, regardless of what jurisdiction is a discovery rule-- figuring out when its existence was. But then we have the circuit split of what can you recover only for the last three years? If nothing had been done with those additional silkprints, then there's no basis to bring them in.
And I can't but help think that must have played some role in the SG's intervention, rather than just limiting it on for a completely unstrategic purpose. And I think maybe we'll get some resolution around that. But I think that was crucial-- the fact that there is now a statute of limitations type situation that you can only have a three year look back.

[OFER TUR-SINAI] I think we have time for one more question, unfortunately. So please.
[AUDIENCE MEMBER] Thanks. Oh, yeah. Professor Samuelson before I ask you my question, I think I should honestly disclose that some years ago when I was a freelance photographer, Lynn Goldsmith was my agent. But that's not going to affect my question.
[CHUCKLES]
You mentioned that the Solicitor General's Office was able to reframe the entire proceeding. So this is my question, unlike in Cariou v. Prince, where you had a similar situation in that there was a photographer and then there was a so-called appropriation artist who took his work and made alterations.
Here it's a little bit different because Andy Warhol himself was also a photographer. And in fact, I used to see him all the time with his camera taking pictures. So instead, he could have had the opportunity to photograph prints on his own-- take his own pictures, and then make his own silkscreens of that.
Lisa Blatt did not argue this before the Supreme Court, because I guess-- because of, you pointed out that the Solicitor General re-framed the case. But do you think that affects your thinking about this case at all? And anyone else can feel free to respond, too. Thank you.
[PAM AMUELSON] So I think the issue of the 1984 creation was a genuinely hard one. And the fact that Warhol sort of wore more than one hat, I think is an interesting sidelight to it. But there was both a question of fairness at the time.
I think Eva's talk in the previous session said artists reference license doesn't necessarily mean that whatever is produced is an infringing derivative work. And so there was enough ambiguity about I think the significance of that license.
And again, Warhol was not a party to that license. So if it bound anybody, it bound Vanity Fair, not him. And Goldsmith's lawyer in brief-- merits brief says maybe all 16 were actually created under the license.
I've always really assumed that what happened was that Warhol got the photograph and did the drawings just to get to know the face. And then said, OK, now that I know the face, I'm going to do several iterations so that I can give Vanity Fair a choice about do they want this one for their article on the fame thing or do they want that one?
And I think that's a reasonable interpretation of what happened. We obviously don't know because Warhol has been dead for a really long time. But it seems to me that it was plausible that's sort of what happened at the underlying thing.
And if that's true, then it looks to me like all 16 were authorized derivatives. But they're authorized derivatives now encumbered by Goldsmith's photograph and how encumbered we'll have to find out.
But I'm hoping that actually there'll be a settlement when it gets remanded. Because this is the right outcome. It was probably the right outcome at the get-go. But then we wouldn't have had this fascinating case.
[CHUCKLES]
[OFER TUR-SINAI] So we will get one final question from Judge Leval.
[THE HON. PIERRE LEVAL] How do I make-- is this working?
[OFER TUR-SINAI] Yes.
[PIERRE LEVAL] I had something to say about 103(a), but I'm not going to trespass on lunch because I'll have the opportunity this afternoon. So--
[OFER TUR-SINAI] OK. We appreciate this.
[CHUCKLES]
[APPLAUSE]

11:45-1:00:  The Derivative Works Right in The Andy Warhol Foundation for the Visual Arts v. Lynn Goldsmith et. al.

  • Shyamkrishna Balganesh, Sol Goldman Professor of Law, Columbia Law School
  • Lateef Mtima, Professor of Law, Howard University School of Law 
  • Pam Samuelson, Richard M. Sherman Distinguished Professor of Law and Information, UC Berkeley Law School 

Moderator: Ofer Tur-Sinai

1:00 - 2:00:  Lunch (provided)

Kernochan Symposium 2023: Panel 3 - From the Bench

[PIPPA LOENGARD] Good afternoon, everyone, and welcome back. If you could take your seats, that would be wonderful. We're going to start our third panel. The only people who shouldn't take their seats are those who want CLE and didn't sign in, because now is the time to do that before the program starts. And I will just say a reminder now to sign out after this panel.
Also, there is a reception following the event. That will be in the seventh floor. Go left at the elevators. Go up to the elevators, turn-- go up to seven on the elevators, turn left, and you will be at Case Lounge, where our reception will be held. And we look forward to seeing you there. But I know that many of you came for our big ticket item here, so I'm going to sit down and shut up now. Take care.
[JANE GINSBURG] Thank you, Pippa. And thank you for organizing this event, and thank you to the fantastic panelists that we had this morning. And it's wonderful to see so many of you -- many of you are former students -- to see so many of you here.
So this panel features Judge Margaret McKeown of the Ninth Circuit and Judge Pierre Leval of the Second Circuit, well-known, I imagine, to all of you. So we're going to just address a series of questions, so they're not going to make prepared speeches, remarks. But I'm going to ask them questions, and then we should have some time at the end for your questions.
So starting with Judge Leval. After Campbell and Acuff-Rose some lower courts latched on to new meaning or message, taking it out of context to excuse this fair use, almost any use that added something new to the copied material or changed its context, thereby setting up the tension between the derivative works right and fair use. But over time, as you predicted, appellate courts looked somewhat more critically at what is meant by a transformative use. And it seemed as if the pendulum, if it had swung way out, was coming back.
Under those circumstances, do you think the court should have taken the Warhol case, especially having limited its inquiry to the first factor? So let me start with you, and then I'll ask Judge McKeown for her views on the same question.
[CHUCKLING]
[THE HON. PIERRE LEVAL] It's not as if this is--
[JANE GINSBURG] Got your mic on? OK.
[JUDGE LEVAL] It's not as if this is extemporizing. These questions were-- we looked them over before, and we discussed what the questions would be. But you've departed from the
[LAUGHTER]

You've left off the last line, which is, what difference do you think the Warhol decision will make?
[JANE GINSBURG] Fair enough.
[JUDGE LEVAL] And that's where I'm prepared to start my answer.
[LAUGHTER]
[INTERPOSING VOICES]
--the question that you never asked.
[LAUGHTER]
So I think-- well, I think the Warhol decision as I see it, is-- the majority's decision is broken up into two parts. And the first part is the part that essentially consists of a locking of horns with -- a rebuttal of -- locking of horns and overpowering by virtue of having seven votes to two of Justice Kagan's dissenting opinion.
And the second part is the part in which the majority concludes that the use by the Warhol Foundation is not a fair use. And I think there are very strange things particularly about the second part of the opinion. The first part I think is very, very faithful to prior Supreme Court authority, particularly the Warhol case.
And in that regard and with respect to its treatment of the Oracle against Google case, I think that the opinion is very respectful and stays within the scope of prior Supreme Court authority pretty generally, I mean, at least doesn't depart from it in a way that contradicts it in any way. And I think that part will have very great effect on the understanding of the fair use law.
As to the second part, I don't think it will have an awful lot of effect. So to understand the first part, I think we have to go through three events and consider three events in their sequential order.
And the first event is the Campbell against Acuff-Rose case, and Campbell against Acuff-Rose set forth two requirements, two important requirements for satisfying the first factor for achieving fair use. And the first one was transformativeness, and the second one was justification for copying.
And it's not entirely clear whether the second one is a separate factor or whether it's a means of whether it's an interpretation of what transformativeness should mean. But in any case, it's an intellectually separable concept. And the court called this a targeting requirement, and it said about justification that if it criticizes-- if the segment criticizes or comments on or sheds light on the original and by implication or if it's in some sense about the original, then that's part of what it goes to establishing justification for the copying.
And the court went on to say, "If it does not shed light on the original, the claim to fairness in borrowing from another's work diminishes accordingly if it does not vanish." And the court called that the targeting requirement. Now, the interesting thing about this was that second requirement at the time went practically unnoticed.
And I think the reason that it went unnoticed was that it was couched. As this was a parody case, it was couched in terms of the difference between parody and satire. And so people reading it generally thought, well, that's about parody and satire.
Most of the cases are not about parody and satire, so we don't really have to think about that much. Actually, it was about justification for the copying, not just about parody and satire. But it went unnoticed for a while. And as Jane said in the part of the question that she did read--
[LAUGHTER]
--that there was a tendency among a lot of courts if they found something that they thought was transformativeness, there were changes. There were changes. Some courts regarded that-- I think it was mostly district courts. I don't think there were too many court of appeal's opinions -- that was true. But there's a tendency to give an awful lot of weight to the simple fact that there was something that you could call a transformation. But that would change especially with the arrival of the Warhol case and its resolution in the Supreme Court.
Event number two was Google v. Oracle. Now Campbell, of course, as I just said, had talked about the importance of justification. And that justification would normally consist of some kind of commentary or something that makes it about the work that is copied.
Well, Google v. Oracle came along, and it found fair use in something in which there was no commentary and no reflection on the original. It was just taking the original for purposes of making convenient uses of it that would be efficacious. But of course, when it's software, software by its nature doesn't comment. Software doesn't talk about things. It's a tool.
And a very important part of Justice Breyer's opinion in the Google case is to talk about the fact that software is different. He says it again and again and again. And he quotes the work of a famous judge, my dear friend and, I think, one of the greatest judges in the federal courts in recent times, Judge Boudin, who talked about, who said that "applying copyright law to computer programs is like assembling a jigsaw puzzle whose pieces don't quite fit."
[CHUCKLING]
And at the end of the opinion-- well, before I get to the end of the opinion, the difference-- the different nature of software was so significant that Justice Breyer's opinion took this almost unheard of step of sending, of giving great importance to Factor 2. Nobody's ever given great importance--
[LAUGHTER]
--to factor 2 until this case, when he said, well, when you're dealing with software, that gives great significance to Factor 2, and made it a strong factor in making the determination. And coming to the end of the opinion, he summed up saying, the fact that computer programs are primarily functional makes it difficult to apply traditional copyright concepts in that technological world. In doing so here, we have not changed the nature of those concepts. We do not overturn or modify our earlier cases involving fair use.
So the message of that Google v. Oracle case was, this taking of software was a fair use. But software is different. The normal rules of copyright don't apply and cannot apply to it.
So event number 3 is the Warhol case, and at least as this first part of the Warhol case is best understood by focusing on the majority's rejection of the dissent. Now, the dissent relied heavily on its reading, its very personal and, not in my view, warranted reading of Campbell and Google. Justice Kagan acknowledging that Warhol did not comment on or shed light on the Goldsmith original. But that didn't matter in her view, in view of Warhol's very-- what she deemed Warhol's very muscular changes to the original Goldsmith photograph.
And as for Campbell's insistence on a justification in the nature of shedding light on the original, the descent barely mentions it. And she just makes a very casual reference to the so-called targeting requirement, and she mentions it really only to say that the Campbell opinion acknowledged that there could be exceptions, which it did. The Campbell opinion did not present that as an absolute requirement, but something to which there could be exceptions. But that's all she had to say about that, was that Campbell said there could be exceptions.
And the dissent invoked the Google case, where fair use was found without targeting. The dissent interpreted as meaning that the Google case had essentially written out of the law Campbell's insistence on the importance of targeting and of commenting on criticizing or, in some sense, being about the original work. So the majority unequivocally rejected the defense, the dissent's interpretations of those two cases.
The majority opinion in Warhol goes to great lengths repeating, quoting, quoting verbatim at length the language from Campbell that talked about, when there is no reflection on the original, the justification for the copying is diminished, if it does not altogether vanish.
And then, when it came to the interpretation of Google v. Oracle did -- as Justice Kagan suggested -- did Google v. Oracle essentially do away with the targeting requirement. Justice Sotomayor made a point of referring to the fact that the Supreme Court noted that software was different and so draws the conclusion that we cannot treat the Google v. Oracle case as having read the targeting requirement out of the Campbell case.
So there had been a great deal of debate in the world of consideration of fair use as to what is to be done with works of art that take somebody else's work of art and then use it to make a different work of art that don't comment on the original, but that are using the original work as raw material or just using it in some way to create a new work of art, which is the work of the second user and has nothing really to do with the first, except that it uses it.
And I think it's-- I think one can only treat the Warhol opinion as settling the proposition that that is not a use that favors fair use. That is a negative with respect to assessing the first factor and very likely will be determinative as to whether the thing is found to be a fair use.
The majority said about Google that-- about the dissent's reading of Google that the dissent simply didn't read the opinion as a whole. So I think we inferior courts are no longer at liberty to disregard the need for justification in copying. So that's it for my first question.
[LAUGHTER]
[JANE GINSBURG] Well, Judge McKeown, you want to elaborate further?
[THE HON. MARGARET McKEOWN] Sure. Well, thank you. Thanks to Columbia Law School for inviting me here. I agree with Judge Leval that the starting point for all this is Campbell. And one of the mysteries is, well, we had Campbell, which was pretty clear. Why do we even need Warhol? Well, there's a reason.
You remember back, of course, Campbell was a parody case. And there were some who thought Campbell was limited to parody, which it clearly was not. If you look at all the cases since Campbell, less than 20% actually involve parody.
So what you had is the district courts and the circuit courts were basically off and running on, what does Campbell mean? And really, it was all focused on, what does transformative mean? I hope we now have a little more nuance and texture on that because we've been debating that for a number of years now.
And it came to be that, really, any new meaning or any additional aesthetics all of a sudden were transformed into transformative, and that, of course, couldn't be right. I like to think that the Ninth Circuit and the Second Circuit brought a little bit more of guardrails to all of this. In the Ninth Circuit, we have about 40% of the US copyright docket. And then a significant amount, of course, is here in New York and the Second Circuit.
So the question is, well, should the court -- Jane's question -- have taken the case because it was limited to the first factor? Well, my answer is, absolutely. I'm delighted that the court took the case. We've seen a lot of academic articles belittling fair use, saying its billowing goo and acting as if there are no guardrails, which isn't really true.
But the truth is that courts were and have been all over the map on fair use. So go back and read a lot of these decisions, and then you say to yourself, well, can I bring a principle from all these decisions? Not necessarily, and it might depend on what circuit you're in.
The Seventh Circuit criticized Cariou, and courts have struggled, how do you analyze fair use. And of course, a lot of this, as we know-- the hard work is done in the district court because that's where the facts are on the table, and that's where the cases are first presented.
So I went back to look at the district court opinion in Warhol, and the court there found that Warhol's art was of a very different character because it brought new aesthetics. And it gave the photo new expression. So I would say, well, that was Exhibit 1 for why it was important for the court to take the case, because they wanted to bring us back to first principles, to the justification, and the targeting that we first saw in Campbell.
So as we look at it and you look at cases over the years, most often, the first factor focused on transformativeness. And if the court found that something was transformative, it almost seemed like the other factors just fell onto the table. On the other hand, if they found that it was not transformative, then, of course, the fair use would be eclipsed. And that's not right either.
So that was really one of the difficulties in looking back over all these opinions. And I think that the good thing about Warhol is it gives us both context and language to invoke under the first factor. We now have a purpose-driven inquiry, and it channels our discussion in a different way than we've had over the years but in a way that I think is quite clear.
So you might say, well, I thought Campbell did that. And Campbell did. But apparently, it didn't do it strongly enough because here we are, and we needed Warhol. So transformation in that language I think has really muddied the waters, and we now have clear language from the court.
As Judge Leval alluded to, if a commentary doesn't have any critical bearing on the substance or style, then that kind of fair use diminishes. And also, you see a lot of language in both circuit, district court cases over time that says, let's look at what new expression is there.
One of the things I think the Supreme Court has been most helpful in its language is saying that new expression may be relevant to whether copying use has a sufficiently distinct purpose or character. But without more, it's not dispositive. Whereas in some of the cases over time, this new expression has become dispositive.
So I do think we now have some new guidelines, or at least more explicit guidelines, for the lower courts to use. Let me comment also, as Judge Leval did, on Google v. Oracle. I kind of view Google v. Oracle as the Bush v. Gore of the copyright.
[LAUGHTER]
Why? OK, remember in Bush v. Gore, the court said, "Our consideration is limited to the present circumstances, for the problem of equal protection in elections' processes generally presents many complexities." Well, that's certainly true of fair use and copyright. There's many complexities.
But the focus in Google v. Oracle was on the Java programming and the use of the APIs, the Application Program Interfaces. So even though there is not such an unequivocal statement, like we had in Bush v. Gore, it seems to me that the court almost made the same statement in different language. And the court talked about rapidly changing technological, economic, and business-related circumstances. They even commented there in Google v. Oracle on the fourth factor and public benefits, posing some questions, which they didn't answer but say they could be of interest down the road.
So I think that there is not a lot to be mined from Google and Oracle, other than how Justice Sotomayor and her majority laid it out, that it was talking about something very different. It was talking about software. And obviously, software is not always the same, as some of the other literary and other types of work that are presented under copyright.
I also thought that it was interesting with respect to the dissent in Google v. Oracle. Justice Thomas said, "Computer code occupies a unique space in intellectual property." And I think he agreed with the majority on that point, at least, because the majority had said, when you're looking at computer code, you're almost always looking at something that's functional.
So there didn't need to be much of a debate in Warhol between the majority and the dissent on Google v. Oracle, but there was. And I think that the majority pretty well closes the story on that. So in short answer to your question, for those of us who have to figure out what fair use is once it's gone through the trial court, I think that it's a good thing that the court took the Warhol case. We hadn't had a case quite like that in many years.
And also, I think it gave the court an opportunity to lay to rest some of the misconceptions that we've seen floating around about transformativeness. And as someone said earlier, well, works aren't transformative. Its the uses that are transformative. So we have a slightly altered lexicon and language that we can use. And if we didn't have the Warhol opinion, we wouldn't have this seminar, so--
[LAUGHTER]

[JUDGE LEVAL] I'm inclined to think that Google v. Oracle will have a little bit longer tail, viewing it as a precedent in which the Supreme Court has said that there can be a transformative use, a use that would satisfy the first factor that would be a fair use without, in any way, commenting, without commenting on the original or shedding light on the original, but that would be something that doesn't, in any way, invalidate or cabin or lessen the force of what was said in Campbell about the need for such targeting.
I think that there's going to be, particularly thinking about AI, there's going to be a whole range of cases. And there already have been some, one of which I think I had--
[LAUGHTER]
--the secondary use in the Google Books case when Google copied these millions and millions of books into a database. Now, the first use of it was a use which, in my view, did conform to the targeting requirement because it was to enable a user of Google Books to go to a particular book, which is the one that claims to-- each book is the one that claims to have been infringed by the taking of it.
And the user could go into the program and find out certain facts about that book, like snippets and how often it uses certain words and the snippets that give a sense of how it treats the word that the person is looking for to help the person decide whether that's a book that she wants to read.
But then the secondary use was called the Ngram use, where all that material was ingested into the computer system for the purpose of producing a graph that showed over the last hundred years, decade by decade, things about word usage, such as when the United States was referred to in the plural, the United States are, and the change to, the United States is, all kinds of uses like that. And that is not in any way commenting on the particular book, or it's not even about the book that the plaintiff is talking about.
So particularly, when we go into the era of AI, we're already there. And what happens in AI is that the computers ingest gargantuan amounts of material, much of which is under copyright for the purpose of producing all kinds of information that has nothing to do-- particularly that in some cases will have little to do with the particular work that was copied. I think that's going to be another area that will reflect the Oracle v. Google decision that you can have a taking that can favor the taker under fair use without targeting. So I think it's going to have a further tail.
[JANE GINSBURG] Obviously, that's an extraordinarily contentious topic.
[LAUGHTER]
As for the cabining of Oracle and Google, Justice Thomas also suggested that the court had produced an opinion for declaring code only, so not even just for software. Although, he, of course, was in dissent. The court did emphasize many times that the subject matter was far from the core of copyright.
With AI, AI ingests works that are squarely in the core of copyright. So what it does with them is a separate question. But as to what is the subject matter at issue, I think that there is a significant difference between Google and Oracle and the passel of pending AI cases.
So I guess that it remains to be seen how much of a long tail Google and Oracle has, whether it can, in fact, be confined to subject matter far from the core of copyright, is functional, interoperable software. But now that we've gone off script--
[CHUCKLING]
--actually, Judge Leval also anticipated a question that I was going to ask later. But let me ask it of Margaret-- of Judge McKeown now, which is the raw material, the defense. Judge Leval suggested that the raw material defense may not carry the day in the way that it has in the past if it's not accompanied by some kind of justification other than, "I'm an artist, and I'm using other people's stuff." So what do you think the Warhol case tells us about the raw material defense?
[JUDGE McKEOWN] Well, we know that there are a number of cases that have upheld a defendant's use of raw materials as fair use, even if there's no critical comment or reference to the original. As I read the majority in Warhol, they didn't reference the raw material issue directly. But [INAUDIBLE] did, so I guess that's what prompts the question.
But I don't see how the majority would make raw material irrelevant in and of itself. You'd need to look again at the purpose and character. So obviously, just because I used raw material makes it fair use. That can't fly. And in a way, the raw material's like this Mobius strip. You just keep folding yourself back on itself as you talk about raw material.
But I think that courts you do need to be cautious about the old admonition that courts are not art critics, and I know we will talk about that when we're talking about raw materials. There's a couple of cases, and I think of one in the Ninth Circuit earlier citing Campbell, Seltzer v. Green Day. And it was a concert video, and it used a photo of some street art in the concert video. Sometimes, it was called a Scream Icon.
But when they did the concert video, there was commentary of the concert video. And the idea of it had to do with religion and Christianity and a defaced Jesus, which really had nothing to do with the photo one might have taken off of the street art. The court cited Campbell and said that the video was for a different purpose and was transformative.
But I think the important thing there is it's not like the analysis ended on the first factor. The court then marched through to see, how did it fit within the overall video? What was the commerciality and in terms of market substitution and that sort of thing?
Now, with the benefit of Warhol, I think the language might have been slightly differently nuanced. But it's not clear that the outcome would have been different. So seems to me that raw material's are just one aspect of a challenged work. And one thing, we get sunk in the Warhol decision because it's only Factor 1. And we forget that we have all these other factors that we're supposed to be considering.
And I think very few courts are going to hang their hat on just Factor 1, one, because they don't want to get reversed. And two, because in fairness to the arguments, there is more to fair use than just Factor 1. So it certainly could be that Factor 1 could weigh against fair use, for example, but it's an insubstantial use. Or the market isn't impacted, or there's other factors.
So while Warhol telescopes this whole conference into Factor 1, I don't want to forget the other three.
[JANE GINSBURG] Well, that's exactly the question I was going to ask, which is-- I'll ask Judge Leval, how do you think lower courts are going to sort out the remaining factors, especially given the criticism, voiced by Justice Kagan, that the majority collapsed the first and the fourth factors. Justice Gorsuch says, no, the first factor inquires, what is the purpose. And the fourth factor inquires, what is the effect. And that's how you can keep them straight. Do you think that, in practice, it will be-- how workable will it be to keep them straight?
[JUDGE LEVAL] Well, they necessarily have some overlap there. How the secondary user has used the first and what effect it had on the market are two different questions, but they both can involve the likelihood of superseding the likelihood if the copying work is perceived as one that's intended to offer itself as possibly superseding competition with the first. That is perfectly proper consideration to be included in the first factor, and it will also be considered in the fourth factor.
If the events haven't occurred yet, it will be assessed in the fourth factor as what's likely to happen to the value of the copyright if this proceeds further. If it has happened already, there'll be an assessment of what effect it has had on the value of the original user's copyright. But I agree with that part of Judge Gorsuch, his opinion.
And I don't-- I mean, there are a lot of confusing things about the Warhol decision, but it didn't suggest that the other factors are irrelevant. It concluded, if I recall, by saying something to the effect that the others have been sorted out below. And the only one that was in question before us is the first factor. So that's the one we're talking about, but we're certainly not saying that the others don't have an important effect. Indeed, at times, the Supreme Court has called the fourth by far the most important, certainly is important. Whether it's the most or not is angels on the head of a pin.
[JANE GINSBURG] So neither of you think that the court taking cert only on the first factor will have the effect of continuing the outsized importance that the first factor has received up 'til now?
JUDGE McKEOWN] No, I don't think so. If you go to the end of the Warhol opinion, the court says, the four statutory fair use factors may not be treated in isolation one from another. So that does get obscured in the first 38 pages--
[LAUGHTER]
[INTERPOSING VOICES]
--report is talking about. But I do think, as Judge Leval said, it's important to look at the Gorsuch concurrence because I think that will be useful, just in thinking about statutory interpretation. So it does add something to the opinion. But in my view, the court didn't say anything about its precedent, that the fourth factor has been deemed the most important. Obviously, there's a relationship between commercialism and Factor 1 and the market effect or other potential market value in factor 4.
But I think you'll continue to see courts go to prior precedent and say, Warhol said nothing about Factor 4. It did not collapse 1 and 4, despite the descent's suggestion to that. So I think you'll continue to see courts focusing on Factor 4, and that's because you have-- I think you can lose, potentially, under Factor 1. But with all of the other factors, you could potentially win in this whole constellation of fair use.
And the question of market analysis, it's a case-by-case determination. So I don't think it's in any event answered up front by the commercialism aspect of Factor 1. And in the prior panel, it was mentioned that now this commercialism has been heightened to a degree. But it is a matter of degree, and it's not like a yes or no. It's not like some binary decision. Oh, it's commercial, therefore -- it is a question of degree because there's commercial and there's commercial.
[JUDGE LEVAL] I do think, in answer to your question, that there is some likelihood of misunderstanding in the lower courts. I think it happens all the time, that the Supreme Court talks about the issue that's before it. And then people give outsized importance to what the Supreme Court said there. It's not unusual, but it's not good judging.
Litigants will use it-- try to use it to their advantage to give more importance to it if it favors them. And sometimes, that bamboozles courts, but it usually straightens itself out in the end. I mean, I think it's sufficiently clear, as Margaret was saying, that the other factors weren't being pushed out the door. They just weren't the ones that were involved in this case. So I trust, over time, judges will understand that.
[JUDGE McKEOWAN] I mean, I think the reason they weren't involved is they weren't challenged. They weren't before the court in the Supreme Court. So you had these other three factors that were not [MIC INTERFERANCE]. So I agree that it's not often we get a big copyright decision. So everybody's trying to-- it means something for everyone.
And there will be a lot of lawyers trying to read things into it, and I remember being a lawyer and trying to shake and squeeze language out of Supreme Court and circuit court decisions to try to see what they meant. And we'll see a lot of that. But I think you have to have some faith that both the trial court and the circuit courts will try to see the opinion for what it is. It's not the be all and end all of copyright law, but it sure does go a long way in giving us a little clearer language, I think, in which to benchmark the decisions.
[JANE GINSBURG] After Warhol, as was already said a couple of times this morning, it seems that there are three elements to assessing the first factor. One is the purpose of the defendants or the let us say the second author's use relative to the first author's actual or potential exploitation of the work. The second, which we've been discussing, is the commerciality of the second author's exploitation. And the third is the justification, including whether the defendant's work shines light on or is, in at least some sense, about the copied material.
So although Judge Leval, I think, started an answer to this question, I'll return to it, which is, must the second author always have a justification, even in the absence of competing uses? Or is it enough to say, we're operating in completely separate markets, so that's all that matters?
[JUDGE LEVAL] Well, to start, I'm not quite sure, Jane, whether you are intending to eliminate transformativeness from the surviving factors after the Warhol opinion. You named three, the purpose of the defendant's exploitation relative to the plaintiff's actual or potential exploitation of the work and commerciality and the defendant's justification for copying. You didn't say anything about transformative.
I certainly don't think that it was the intention of the Warhol majority to exclude transformativeness to which Campbell gave such importance from the factors that will survive to be considered in connection with fair use.
[JANE GINSBURG] I should have clarified that those elements, at least the first and the third-- I think those are the elements that the court looked at in determining whether or not the use was transformative.
[JUDGE LEVAL] OK, well, I guess one gets confused with the diction, and it can be confusing. I mean, the majority opinion certainly gave a lot of attention to whether there was what we normally think of as a transformative use.
Justice Kagan had made much of the changes that Warhol made. And she had talked about the shifting of the angle of the head and the printing in high contrast so that all the modulated shaping disappears, and you only have black and white, and how that had the effect of transforming it from a portrait of a human being, with the human being's insecurities and all that, to a portrait of a-- then cutting off the neck and shoulders, so it was a balloon floating there, and how this transformed it from a portrait of a human being to a portrait of the celebrity publicization machine.
And Kagan gave that tremendous importance as transformative. And the majority opinion says, yes, well, there are these changes. They are indeed there, but they're not really that big a deal in terms of transformativeness.
And in the end, what you have here is two different largely photographic portraits of the famous singer Prince, and they compete in the same marketplace. So I think those are very definitely a continued-- all that continues to be-- I don't think it changes. I don't think it changes the perception of the first factor from what it was, as perceived by the Campbell opinion.
Now, the second part of the opinion, which poses the question whether essentially it turns on the fact that the marketing by the Warhol Foundation of the work to magazines, the same essential potential market that Lynn Goldsmith had for magazine covers, and making that largely determinative of the Supreme Court's decision and turning attention away from whether Andy Warhol had made a fair use-- I thought that was a very curious-- this is what I referred to in my first answer, the second part of the opinion.
And I think it's very, very odd. I don't-- not quite sure what the reasons for it were. I think they may have been two reasons. I can imagine the Supreme Court just not wanting to take on the celebrated Andy Warhol and say-- and I can imagine the justices having said in their conference, "Can we just lay it on the foundation and not tangle with this icon, Sonia? Figure out a way to do it!" which she undertook.
Or maybe it had something to do with not wanting to tangle with the points that Pam was raising this morning, about not wanting to get into the implications for Section 103 and whether the decision would cost Warhol a copyright over his own aspects of the work, the aspects that he created of the work. But it seems to me that it just doesn't work.
The case came to being because the foundation sued for a declaratory judgment that the work made by Warhol, which had been licensed to a magazine, was a fair use. Now, if it was a fair use, then it was a fair use. And it was not an infringement. And if it was not an infringement, there's no way that-- if it's not an infringement, then there's no copyright liability.
So the Supreme Court, as I see it, couldn't really get to imposing liability on the Warhol Foundation without coming to the conclusion that, if this had been done by Warhol himself, it would not have been a fair use. And the majority comes very close to saying that when it's rebutting Kagan's arguments.
So I don't think it really works. I don't understand how one can take this as not having had any reflection, even if it stopped short of coming out with an outright declaration that Andy Warhol did not make that-- had he been the one who had licensed this to Vanity Fair, it would not have been a fair use. That seems to me to be implicit in the Supreme Court's judgment, even though it says it's not reaching it.
But a few further words that occurred to me this morning when Pam was discussing the question of Section 103, which is, this case is in a very peculiar posture because, while the question whether Andy Warhol-- had he been the one who had been still alive and had marketed this to Vanity Fair in exactly the manner that his successor, the Foundation, did, that question had enormous importance, it seems to me, for whether the Foundation can be liable for the fair use.
If the use is a noninfringing use, it's the same use. The Foundation made the same use that, by hypothesis, Andy would have made licensing it to Vanity Fair for use a second time. But while it has importance for that case, it seems to me it would not have had any importance whatsoever for whether Andy Warhol and consequently the Foundation owns a copyright in the work. Because when Andy Warhol made the work, he made it under a license. So he did not make it illegally, assuming this, of course, depends on how you interpret the license.
And if you interpret the license, as I think is sensible to do, as not just a license to make a single image, but a license to create a work that will be used one time, but in the course of creation, gives the artist the opportunity to do sketches and trial runs and, and Warhol did 16 of them-- and I think it's a fair interpretation, although apparently not the one initially taken by Goldsmith.
But I think it's a fair interpretation to say that, in creating those 16 works, Warhol did not commit an infringement of copyright, if only for the reason that he was licensed to make a work of which there would be one usage that would be under the license. And nothing that he did violated that term, as making the 16 trial runs was not a violation.
So I think Warhol would not have-- I think Warhol would not have fallen under and I mean there would be no contention that the making of these works was an infringement of copyright if-- so I don't think it would-- I don't think it would have borne on Warhol's use of the 16 works or on the licensing of the one to the-- I don't see how there would be any good argument that there had been taken place 15 violations of Lynn Goldsmith's copyright.
[JUDGE McKEOWN] I just add that I think that's why you see all these disclaimers. We can't have a famous artist exception that's talked about. I would just say with respect to the licensing, to me there's a bit of a morality play going on here. And I read that between the lines. You got a license once. You could have gotten another license, but you didn't ask.
And so that is often the kind of morality issues that often underlie these copyright cases. And the court doesn't come right out and say that, but I certainly see that in the discussion. And of course, we have to read between the lines when we're figuring out, well, what was the first license for.
And as Pam said, are we really looking at all of these prints, and we're not talking about them? And was the Supreme Court talking about X, and the case was about Y? I guess we'll never know. We only know what the decision is appended to, which is basically the single license, the Orange Prince.
[JANE GINSBURG] Just picking up on morality play, and this relates to Eva's photographers, the Supreme Court in five different places in the Warhol opinion alluded to Lynn Goldsmith's getting or not getting credit. They didn't then draw out further implications from that. Or does that mean that it's not so fair if Lynn Goldsmith, having got credit the first time, didn't get credit the second time? Credit seems to be extremely important, both as Eva and as Professor Mtima indicated, that's often what creators really care about.
Do you think that credit should be taken into account? I know this was not one of the questions we prediscussed. But since we opened it up, do you think that credit should be taken into account in a fair use evaluation, not simply mentioned, but actually figuring in the analysis?
[JUDGE McKEOWN] Well, [CHUCKLES] it seems to me to be a real double-edged sword. You say, well, the artist gave credit and then ripped off the work.
[LAUGHTER]
I don't know, as Professor Mtima said, if that really gives you a lot of solace. Or you could say, well, they never gave credit and then did what they did. So that's also bad. So I'm not sure that credit, other than as a factual backdrop, really fits into the criteria that the Supreme Court has laid out.
But I don't want to preclude it or preclude any argument because there may be some good bases for that. But I do see that credit thing as a double-edged sword.
[JUDGE LEVAL] I also see it as a red herring because it's not really what the copyright law is about. Judges tend to write opinion in which they put emphasis on facts that make their decision look good, even when those facts are irrelevant. I mean, you see this all the time in horrible murder cases, where the facts of the case really have nothing to do with the issue, which might be whether a court correctly interpreted some sentencing provision to allow something or not allow it.
And when the majority, the persons writing the court decision are coming to the conclusion that the court erred in not giving a more severe sentence in thinking that it was prohibited from doing so for reasons having nothing to do with the facts of the offense but just with the meaning of the statute, they will write an opinion, which, at length, they talk about how bloody and gory and horrible the murder was when it's totally irrelevant.
And I think there's a little bit of that here with the credit. An infringement doesn't become less of an infringement because credit is given, nor is it more of an infringement because credit is not given. So I don't think it really matters, but it tends to affect persuasiveness.
[JUDGE McKEOWN] Labor.
[JANE GINSBURG] I mean, I'm not sure we'd all agree that credit is merely a matter of atmospherics. But moving on to [CHUCKLES] the questions we agreed to talk about, this one is for Judge Leval. The defense analysis is arguably at odds with Justice Holmes' warning that judges should not make decisions of law based on the judges assessments of artistic quality. If Justice Kagan's opinion had been the majority opinion, how would this affect the future development of the law for cases of similar appropriation?
[JUDGE LEVAL] Yeah, I think that was quite an important issue in the case. justice Kagan was extraordinarily contemptuous of the majority. I mean, she showed her enormous sophistication in understanding and being well-educated in matters of art and literature and painting and knowing the origins of the Romeo and Juliet story and--
[CHUCKLING]

--tracing lines of painters using the same theme from Giorgione to Titian to Manet and so forth and expressing contempt, and then with respect to her contention of the great genius of Warhol, expressing contempt for the majority for not being alert to this, and what's worse, seeming to have no interest in it. The majority was only interested in the question of law.
[LAUGHTER]
But more to the point of your question, it's easy enough when the person who is found to be at fault for having infringed fair use is a universally recognized famous artist treated as a kind of a genius, very widely so. And it's easy enough to say that this is a great artist. He must have made-- he must have been making great art. Great artists make great art, and people who aren't great artists don't.
So Justice Kagan also had a line in the opinion that was dismissive, I thought very unfairly so, of the plaintiff in Goldsmith. There was a line that said something to the effect of "Why would anybody be interested in--" in any event.
Easy as it is to say that a famous artist has done what should be recognized as great art, what happens in the next case when the person who has done what Warhol did, and I don't mean with the license, but the person who has taken another work to make a successive work of art-- when the taker is an unknown, which is very frequently the case, given Justice Holmes's admonition, don't be-- you're judges. You're not art critics.
Don't be out there making your judgment as to whether something has artistic merit or not. Are judges going to say, well, I'm coming to the conclusion that this use of the plaintiff's work had no artistic value, had no importance, nothing of value in the changes made, nothing of value in the-- of artistic value or social value. I don't think judges would do that.
I think that if Kagan's decision, if Kagan's position had been the majority position-- so this was now the law-- you would now have essentially, the situation would be that one can take an artist-- any artist can take any other artist's work. And as long as they make some changes that they can argue were transformative changes, that all of that will pass. Now, whether that's a good thing or a bad thing is perhaps open to disagreement, but I think it would be an enormous change from what the law is now.
[JANE GINSBURG] Judge McKeown.
[JUDGE McKEOWN] Oh, I'll just add that over the years, you can go through many opinions. And many judges have invoked Holmes' admonition and then gone on--
[LAUGHTER]
--to be an art critic. And it may be that because some of the language used in the past was like, is it a new expression? But we now have some limitations on that, so it remains to be seen whether judges will talk about the art critic world as a way of background, but not necessarily by way of judgment and whether Warhol will cabin judges and how they talk about artistic expression. So come back in 10 years, and we will see what the impact of Warhol has been.
[JANE GINSBURG] But I think that the emphasis that the majority put on whether or not the use was transformative as opposed to whether the work was transformative may make those explorations of artistic merit less likely because the-- while the Second Circuit in determining whether or not the use was transformative did get a little bit into art criticism in making a distinction between having as the subject of the work a single work.
So you are doing your artistic thing on only one person's work, as opposed to doing your artistic thing on many different or several different artists' work. It's a very bad joke in copyright law that copying from one source is infringement, and copying from multiple sources is research.
[LAUGHTER]
And that aspect of the Second Circuit's decision veered a little bit in that direction. The advantage of comparing the uses is, is this use the same kind-- is this exploitation the same kind of exploitation? Then you don't have to examine the artistic merit or lack of it of the work.
Having said that, I'm not-- what we'll see in 10 years is the extent to which courts actually maintain the difference between the transformativeness of the use and the transformativeness of the work.
Go ahead.
[JUDGE McKEOWN] Well, I mean, I just thought some of the language traded back and forth where the majority said that the [INAUDIBLE] account of fair use is unbalanced in theory and perhaps relatedly in tone. And then, of course, the dissent comes back and says, well, majority plants itself in the "I could paint that" school of criticism--
[LAUGHTER]
--which brought to my mind when I was practicing law. And we had an art historian partner, who had purchased some very interesting contemporary art. And as the partners were looking at the price tag of some of this contemporary art, there was a lot of, "I could have done that," or, "My kid could have done that."
But I thought it was interesting that there was fairly pointed language between the majority and the dissent on a lot of the points that Jane has asked us about.
[JANE GINSBURG] Do you want to add anything to that? OK. All right, so at this point, we have a little more than 15 minutes. I think we can open it up to all of you for questions. Josh.
[AUDIENCE MEMBER] Does this work? Is this working now? Does this work now? Yes.
[JANE GINSBURG] Yes.
[AUDIENCE MEMBER] So in Google v. Oracle, the Supreme Court went out of its way to talk about the role of the jury because that was a jury trial. And they said, the jury heard this, and the jury heard that and made its conclusions based on it.
In Warhol, you have a district court judge on summary judgment deciding things one way, the Second Circuit, three judges going the other way, and now the Supreme Court also dividing. And I'm curious, what do you think the role of the jury is to play in this system?
In particular, I note that the Seventh Circuit and the Ninth Circuit model jury instructions for fair use just are the factors. They're just the factors straight out of the statute with none of the discussion that you've all been having. So I'm curious, what does the jury to do when you say, OK, you come in and decide some of these factual disputes?
[JUDGE McKEOWN] Well, I'm a big believer in the jury system. And you see a lot of summary judgments that basically say the historical facts are not in dispute. And therefore, summary judgment is appropriate, and here is the decision on summary judgment. But I don't think that courts are inclined to give more texture than the legal factors and leave that-- in cases where there are facts that are in dispute, to leave that to the advocacy of the lawyers, and also to the testimony, because then-- you know.
As we know, a number of cases are resolved up front on fair use. We don't even know if there is a copyright-- well, something that's copyrightable or if there's an infringement because you may be able to be up or out on the fair use decision. So I don't see that this case disturbs that. That wasn't really a focus that was brought to the Second Circuit or then up to the Supreme Court as to whether there should have been a jury trial on all of this.
So I don't read anything in here that changes the calculus of how we view this now in terms of whether or not summary judgment is appropriate or whether there's factual disputes that really require a jury trial.
[JUDGE LEVAL] I think that's an unbelievably difficult question for a judge to face. I can only say, I was very gratified that I never faced that question as a district judge because there are so many issues that come up. There are so many moving parts in a fair use decision. And while certainly there might be circumstances, there are circumstances where some of the issues are clearly factual issues that are appropriate to submit to a jury, whether the work was transformative-- that question is hard for me to see how that's a suitable question to give to a jury.
I think it's very hard to generalize how a district judge should deal with that in a jury trial. I think it would be desirable for the district judge to design special interrogatories for the jury to isolate questions that clearly called for decisions of fact and then perhaps leave the rest-- I think the district judge should leave itself a good deal of room to override the jury's verdict if the district judge thought that it simply came out wrong, notwithstanding accepting the jury's verdict on the things that clearly were facts.
But it's hard to give a simple answer to a question that really is tremendously complicated I once had a jury, a copyright jury trial, fortunately didn't deal with the fair use issue. But it was interesting. There was a time in our history, about 30, 40 years ago, when practically every book written and every movie made was about a sniper in a football stadium. And--
[CHUCKLING]
And the writer of one book that had not been published had sent it to-- had sent it to a movie studio at a time when the movie studio, like all the other movie studios, had a movie in the works about a sniper in a football stadium. And in order to judge the case, the jury was going to have to-- the jury was going to have to read the plaintiff's book and about six or seven different treatments of the movie script. The movie company had had the foresight to immediately erect a Chinese wall and keep everybody involved in the movie away from any contact with the book.
And what I suggested to counsel-- I said, we can only do this if you'll approve. But what I think would be a good idea would be to say to all the jurors, this is going to involve reading a book and six book-length--
[LAUGHTER]
--scripts. And if that doesn't appeal to you, you can go home.
[LAUGHTER]
And they thought that was a good idea. So we did that, and 9/10 of the jury pool went home. And then the questions we asked, they were questions that I put to the jury, to the remaining jurors, like, "Tell about your reading habits." And these were people who said, "Nine books a week--"
[LAUGHTER]
--that kind of thing. And then we also conducted the trial by first having brief opening statements. Then send the jury home with all the reading material for a week. And then resume with, again, more opening statements and then the trial.
And the jury had all these written materials in the jury room. And after they rendered their verdict absolutely correctly, I thought, in favor of the defendant movie company, they went home. And my clerk went into the jury room and collected all those books that they left there, and there were about a thousand little post-its and--
[LAUGHTER]
Anyway, that doesn't answer your question.
[LAUGHTER]
[JUDGE McKEOWN] On the other hand, if you told them all you have to look at is this photo and [CHUCKLING] the Orange Prince, they'd all be, "I can do that." And of course, we've had 200 years of jury trials in fair use cases. So probably have 200 more.
[AUDIENCE MEMBER] Thank you. Thank you so much for this really wonderful panel and a genuinely illuminating day. My name is Noam Elcott. I teach art history-- Modern Art History at Columbia. And I have a question around one element that is-- I have been following the Warhol trial in various legal issues of late. I'm no lawyer by training.
The one issue that is front and center in 107, in the legislation, factors and rather prominently in the background of the Supreme Court case in the actual majority opinion and especially in the use of images, as I understand it, unlicensed, the-- but never ever gets treatment in any of these discussions as far as I can tell, and that is fair use of images in scholarship. And as you probably know or may--
[JUDGE LEVAL] Fair use what?
[AUDIENCE MEMBER] Of images in scholarship. And I said, as you may know. You likely know, but you actually may very well not know. The rule within art history is that no matter what the reproduction of images for scholarly use, it's effectively never considered fair use. So there is almost no university press that will publish a scholarly book, even when the images are in black and white, of color paintings, even when-- I mean, really, pretty much almost under any circumstances without clearing rights.
And for an average art historian, that could be for a very famous tenured, wealthy professor, but also for a graduate student, who has nothing. That can run in the thousands of dollars, for which, obviously, no one is ever receiving a fraction of that in book royalties.
And I wonder-- I mean, on some level, my question is a very naive one, which is, why is this seemingly huge gap-- why does this persist? And then an equally naive question is, what can be done to fix this? As I understand it, among the problems is there's no constituency to raise this issue. No university press is going to go to trial on behalf of some junior professor someplace and risk massive exposure against, say, the Picasso estate or Warhol Foundation with massive financial resources.
So it never goes to trial because the university presses simply won't allow books to advance without having cleared the rights so effectively there is no fair use of images within scholarship. And yet, as best I can tell, the Supreme Court has no problem reproducing many copyright images without any permission.
So we have something of a quagmire because there seems to be an obvious legal solution. Or at least as a matter of law, there seems to be an obvious answer. I may be wrong here. I'd love to be corrected. But there's no way to implement it, as best I can tell. And I was wondering if you have any thoughts or guidance on this issue.
[JUDGE LEVAL] Yeah, well, you raise a very understandable frustration. And I think that if one simply looks at the law as it's established, it's very easy to imagine art historical texts that would make what should absolutely be considered a fair use because they would conform to all of the factors that have been regarded as important. On the other hand, it's also easy to imagine some art historical publications that would be seen simply as an opportunity to sell a book showing the work of Andy Warhol.
And the problem, as you say, is that the presses are unwilling to assume the risk. Now, maybe they should be a little more aggressive about efforts to get permission to do so, either on payment of a modest amount of money or even without it. But I think that if people would run the risk, there'd be litigation. And then you'd have some guidelines that would give framework.
But it's understandable. If I were running a press, I'd be afraid to do it, too. But the law has a lot of uncertainties in it. They're very unpredictable, and I can understand why the universities that don't have gigantic budgets are unwilling to run the risk.
But there certainly are very strong arguments about that the illustration of pictures that are designed to illustrate a critical point about the art history being discussed. It doesn't compete. It doesn't really-- well, I mean, it competes with the derivative market of books, of coffee table books about this artist's work. The further it gets from that, the easier a road you would have to establishing fair use.
[JUDGE McKEOWN] Yeah, I agree with Judge Leval. It's a difficult question because, of course, educational use is spelled out in the fair use section.
Just two comments with respect to the courts reproducing-- these, of course, are reproductions of exhibits submitted to the court by the parties, so presumably with their permission. So we see that.
I had a case involving Dr. Seuss and ComicMix, and we saw a lot of the various images reproduced. And it brings to mind a case I had involving a catalog raisonné for Picasso and the collision between European standards and US fair use standards. In that particular case, we said that the European standards couldn't trump a US fair use standard. So the case went back to its resolution.
But we have seen cases like this, and we have seen university presses and, of course, in the early days, the libraries getting sued because of-- and universities getting sued because of students copying some piece of paper. So there are cases. There are precedent. But you raise the real practical problem is, what are the economics of this? And perhaps that can be another seminar for your center to take a look at.
[JANE GINSBURG] Well, I think Justice Gorsuch actually mentioned scholarly publishing as an example of a use that might be fair. And the court did say that with respect to the same work by the defendants, some uses might be fair, and others might not be. The court did not then spell out the majority, did not spell out which is which. But there are some suggestions in Justice Gorsuch's opinion. You would want to say something about commerciality?
[JUDGE LEVAL] Yes, I was prompted listening to the discussion this morning of commerciality to suggest a critique of how the subject of commerciality has been treated, which is that one tends to refer to the issue as the commerciality issue and doing it that way. And what the statute says is, including the purpose and character of the use, including whether it is commercial or nonprofit educational use.
And I think it would be a little less misleading, rather than calling it the commerciality issue, to call it the-- but this would take a longer time and be a nuisance and a pain, to call it the issue of commerciality, as opposed to nonprofit educational use. But my point is that, especially when you look at the prefatory examples that you look at, an awful lot of them and an awful lot of the things that are most widely accepted as fair uses are commercial uses: newspapers, textbooks, and history books, and things like that.
And when a newspaper publishes the remarks of a politician, that's commercial. Book reviews are published by newspapers, which is commercial. And it seems to me that the issue would be better understood if commercial were not seen as a black mark, as a mark disfavoring fair use. But what you have is a kind of a spectrum from the ultra commercial down to ultra-ultra social benefit, not-for-profit thing.
And where is the neutral point? The neutral point should not be below simply commercial in the sense that the artist was engaged in a remunerative occupation. Like, 2 Live Crew was performing its music for money. I mean, the whole purpose of copyright is that artists can earn a living from being artists, and creators can earn a living from creating.
And it seems to me that there is this supra commercial advertising. I can see advertising is on the negative side of the balance. But I think the neutral point should not be that everything that is on the commercial side is a negative. And in order to go below the neutral point, you have to be into doing it for free, for not-for-profit social benefit kinds of things.
But maybe the neutral-- the simple fact that the thing was being done for money and profit is not a negative. It's only if it goes into supra commercial-like advertising that it becomes a negative factor.
[JANE GINSBURG] Before we close, I'm going to use moderator's prerogative to allow one more question. Ed Claris?
[AUDIENCE MEMBER] Thank you.


Oh, thank you. I wanted to ask a question about the transformative use versus the work that's transformative and ask you whether the Warhol decision sheds light on the Google Books decision in terms of how we think about the output of what Google Books was doing, which was a search result, and whether we need to apply that new way of looking at transformativeness to situations that may come up in the AI cases or otherwise.
[JUDGE LEVAL] Well, as I said earlier, one of the questions that arose in the Google Books case was the Ngram function, which I spoke about. And the Ngram function was one that did not-- where the use, the copying use was not for the purpose of shedding light on the particular text that was taken, but it was nonetheless found to be a fair use. That was the secondary use.
Now, I'm not sure that it was necessary to reach that at all in view of the fact that the taking was already justified by the first use, which was for to permit users of the Google Books website to get information about the particular book that had been copied. But I think that illustrated by a holding or perhaps a dictum if it was deemed unnecessary of a court that there could be uses that would be fair uses without commenting on.
But in this particular context of feeding all the data into the computer for the purpose of producing these studies, that didn't reflect directly on the work being copied. But otherwise, maybe if I had a week to think about it, I think of more to say. But--
[LAUGHTER]

[JANE GINSBURG] I take it that one of the implications of Ed's question is, if you're looking use by use, about where the output is about the copied work, that's fair use. But then there are these other uses that maybe they should or shouldn't be bootstrapped to the about use. So there's the Ngram use. And then there's other internal uses of the data that Google makes without any output.
And Pam was talking about this last night. So Google Translate is immensely benefited by that huge database that was created by the books, by copying all those books, that these haven't been litigated. And I don't want to ask any questions that would get the panel into prejudging what may well come before it.
But I take it that that's lurking behind your question. Just because one use has been found to be fair, what about the other uses that all derive from this, the common nexus of operative facts? So I guess we'll have to stay tuned on that. All right, so Pippa, do you want to--
[PIPPA LOENGARD] I'm over here.
[JANE GINSBURG] Yeah. Do you want to close us up?
[PIPPA LOENGARD] So I want to thank everybody for coming today for your participation and attention. We've had such dynamic speakers and so much wonderful information shared. So thank you. We hope you found it as rewarding as we did.
And we will host you all upstairs on the seventh floor for a reception, and it's well labeled. Just take the elevators up to seven, and you can't get lost. And please sign up for CLE if you require it. And we'll see you next year.
[JANE GINSBURG] I'll see you there.
[JUDGE LEVAL] We can go by John Ford.
[APPLAUSE]

2:00-3:30:  From the Bench

  • The Hon. Pierre Leval, Senior Judge, United States Court of Appeals for the Second Circuit
  • The Hon. Margaret McKeown, Senior Judge, United States Court of Appeals for the Ninth Circuit

Moderator: Jane Ginsburg

Information Regarding New York CLE Credits:

Columbia Law School has been certified by the New York State Continuing Legal Education (CLE) Board as an Accredited Provider of CLE programs. Under New York State CLE regulations, this traditional live classroom for transitional and non-transitional CLE Program will provide 4.5 hours of New York CLE credit in the Areas of Professional Practice category. This CLE credit is awarded to New York attorneys for full attendance of each individual session of the Program. Attorneys seeking credit must affirm arrival and departure times with a signature in the registers. On sign-out on departure, attorneys should also submit their completed Evaluation Form, furnished at the Conference. This attendance verification procedure is required by the New York State CLE Board. Please note the NYS Certificates of Attendance will be sent to the email address as it appears in the register unless otherwise noted there.

 

Persons seeking a hardship scholarship should register using the student code CLSKC and then separately complete their registration by submitting a scholarship request, no later than October 18, 2023, to the program coordinator, Samara Weiss, at [email protected]. Requests, which will be answered, should detail in a few sentences the basis of the applicant's need and the background to his or her interest. Please understand that without a complete scholarship request, the applicant may be notified that the scholarship registration has been cancelled.  Scholarship requests submitted in a timely fashion and indicating reasonable need are always granted. Scholarship recipients are required to pay no more than 25% of the standard registration fee and, contingent on approval from the event’s primary sponsors, are often admitted free of charge.