April 18, 2023
We spent the last two posts diving into Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith and some of the cases leading up to it. You can read those posts here and here.
Now, let’s turn to the oral argument before the Supreme Court and the Justices’ questions for the parties in that case.
As the appellant, the Warhol Foundation went first. Its central argument was that Warhol’s changes to Lynn Goldsmith’s photo of Prince gave Warhol’s work a different meaning or message. Specifically, its lawyer argued that Goldsmith’s photo is a photorealistic portrait of Prince while Warhol’s work is a depiction of the dehumanizing effects of celebrity. Based on this, according to the Foundation, Warhol’s Prince Series made fair use of Goldsmith’s photo.
The Justices had some doubts. They wanted to know how a court should determine whether new work has a sufficiently distinct meaning or message to qualify for fair use. The Foundation responded that Courts could look at a range of things in determining the meaning and message of a given artwork including: (1) evidence from the creators; (2) expert testimony; and (3) the judges own impressions. Justice Alito, however, noted that it could be hard to figure out what “meaning or message” to pay attention to because people might see things not intended by the artist.
The Foundation also faced questions about how to square its position with the fact that copyright law gives the right to create derivative works to the original artist — in this case, Goldsmith. (A derivative work is an adaptation of the original, for example, a translation of or a film made from a book.) In line with this, the Justices wanted to know whether a second artist performing another artist’s song in a way that conveys a different meaning is enough to avoid a claim of copyright infringement. The Foundation responded that it would require looking at other fair use factors. For example, whether the second work competed with the original.
Here, Justice Sotomayor pointed out (rightly) that this pretty much destroyed the Foundation’s argument as the Prince Series definitely competed with Goldsmith’s photograph as an illustration for an article about Prince’s life. The Foundation tried to avoid this by arguing that Goldsmith’s photo and the Prince Series had different audiences (and, compared to Goldsmith’s photos, the Prince Series fetched, um, princely sums).
Goldsmith’s attorney faced the Justices next. Among other things, she argued that a party claiming fair use should have to show that it needed to use the original work. In response, the Justices wanted to know the source for the test she was proposing. Goldsmith’s attorney responded that it came from the Supreme Court’s decision in Campbell. Justice Kagan was skeptical though. She noted that Campbell didn’t actually say that. Rather, it says that “if you need the original work, that’s the paradigmatic case.” Justice Kagan also noted that even if the second creator didn’t “need” the original work, there are plenty of situations where the new work is sufficiently transformative to be fair use. By way of example, Justice Kagan noted that Campbell uses “Warhol as an example of how somebody can take an original work and make it be something entirely different and that’s exactly what the fair use doctrine wants to protect.”
Goldsmith’s attorney also noted movie, music, and publishing industry groups supported Goldsmith’s position and were “horrified” by the Warhol Foundation’s position because it would essentially eliminate the right to control derivative works as set forth in the Copyright Act. She pointed out that the Warhol Foundation’s position would allow someone to create a movie where Darth Vader is a hero, not a villain, and claim fair use.
Finally, the Court heard from the United States government. It argued that the Court should not focus on a work’s meaning or message because it would destabilize long-established licensing markets, which have worked just fine in creating new and derivative works. It also argued that the Court should consider whether the second use has a distinct purpose or does it supersede the original, and, also, what is the justification for copying.
According to the US, both of these factors point against a finding of fair use in this case because the Foundation has never tried to show that Warhol’s copying of Goldsmith’s photo was essential to accomplish a new or distinct purpose. Put another way, the government argues that you can’t use another artist’s work to directly compete with that artist’s work unless there’s a justification for the copying.
Stay tuned. We should have a decision soon.
April 4, 2023
The U.S. Supreme Court should issue a ruling soon in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith. This is the latest Supreme Court case to examine copyright law and the doctrine of fair use which, together, are supposed to both encourage the creation of art by ensuring creators own (and are paid for) their work while also allowing others to use existing works to create new ones. The stakes are high because the potential creative and financial ramifications are huge.
Following up on the previous blog post: how did it all come to this?
The most straightforward answer is that we got here by judges (trying) to make principled decisions about when borrowing is fair use and when it’s infringement. With visual art, to put it mildly, this is tricky.
By way of example, according to the Second Circuit, this:
is fair use of these:
but, these:
which incorporate this,
are not.
The first set of images comes from Cariou v. Prince, a case in which photographer Patrick Cariou sued “appropriation” artist Richard Prince over 30 artworks Prince created that included elements of Cariou’s photos of Rastafarians. The Southern District of New York ruled in favor of Cariou, holding that Prince’s works were not fair use because they didn’t comment on or criticize Cariou’s photos.
The Second Circuit disagreed. It found that the District Court imposed an incorrect legal standard by requiring Prince’s work to comment on Cariou’s work.
Instead, the Second Circuit emphasized that to constitute fair use, the later work must “alter the original with “new expression, meaning or message.” The Second Circuit took this standard from a 1994 Supreme Court case, Campbell v. Acuff-Rose Music, Inc., which involved 2 Live Crew’s adaptation of Roy Orbison’s song “Pretty Woman.” In particular, the Second Circuit held that Prince’s artworks had an “entirely different aesthetic from Cariou’s photographs.” Based on this, the Second Circuit concluded that 25 of Prince’s artworks were sufficiently transformative to constitute fair use (the question of the remaining five works was remanded to the District Court).
In reaching this conclusion, the Second Circuit said that it shouldn’t be read to suggest that any cosmetic changes are enough to mean that something is fair use. Rather, it emphasized the fact that Prince’s images had “a fundamentally different aesthetic” than Cariou’s photos.
While that certainly appears to be true in Cariou, it also may be true in Warhol v. Goldsmith — as the Warhol Foundation has argued — that the Prince Series has a very different aesthetic from Goldsmith’s portrait of Prince. But how do artists (or lawyers or judges) determine how much transformation is enough to put them in the clear? Is it possible to predict how a court will balance the elements that go into a fair use analysis? Is there a way to define or measure exactly how much of a different aesthetic is required? Moreover, when is a secondary use “derivative,” meaning that the original owner controls the right to make additional works, and when is it fair use?
More on this next time.
March 21, 2023
U.S. law has long grappled with when it’s okay to copy someone else’s work. This is a central tension of copyright law, which is supposed to encourage people to create by ensuring they can get paid for their creations while also allowing others to base new works off of existing ones.
These dueling forces are the subject of the legal doctrine of “fair use,” which is at the heart of a case the U.S. Supreme Court will soon decide. The case, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, is being closely watched by artists, collectors and museums.
Some background: In 1981, Newsweek hired Lynn Goldsmith, a photographer famous for her album covers and work with rock stars, to photograph the up-and-coming R&B artist Prince. Goldsmith kept this unused outtake for future licensing:
By 1984 Prince was a megastar and Goldsmith licensed the photo to Vanity Fair. This license allowed the magazine to hire an artist to create an illustration based on the photo for a feature story. Vanity Fair paid Goldsmith $400 and commissioned Andy Warhol to make the art.
Working from the photo, Warhol created 16 silkscreens, which he copyrighted. Vanity Fair used one for its article. The entire collection became famous in the art world as the Prince Series, and was sold and reproduced for hundreds of millions of dollars.
When Prince died, Condé Nast, which publishes Vanity Fair, paid the Warhol Foundation $10,250 to run one of Warhol’s Prince images on the cover of a tribute issue. The magazine neither credited nor paid Goldsmith.
At that point, Goldsmith learned of the Prince Series and told the Andy Warhol Foundation that the series infringed on her copyright in the photo. The Foundation countered that Warhol had merely used her image of Prince as a building block to create something new: he cropped and resized the original image, changed the tone, lighting and detail, and added colors, shading and outlines over it. The result, according to the Foundation, was a new work that “comments on the manner in which society encounters and consumes celebrity.” The Foundation sued Goldsmith for a declaration of non-infringement or, alternatively, a declaration that the Prince Series constituted fair use. Goldsmith countersued for copyright infringement.
The Federal District Court in Manhattan ruled in favor of the Foundation. It found the Prince Series “transformative” because it communicated a message different from Goldsmith’s original photograph. Thus, according to the District Court, Warhol’s use of Goldsmith’s photo was fair use.
Goldsmith appealed to the Second Circuit which, in August 2021, reversed and found that the Prince Series was “substantially similar” to her original photograph and did not constitute fair use.
In reaching this decision, the Second Circuit reviewed each of the four factors considered in a fair use analysis: the purpose and character of the secondary use; the nature of the copyrighted work; the amount and substantiality of the secondary use; and the impact of the second work on the market for the origins.
The Second Circuit found that the Prince Series was not fair use because both the original photo and the Prince Series share the same purpose — they are both visual art. Moreover, in the Second Circuit’s view, the Prince Series isn’t fair use because it doesn’t obviously comment on or use the original for a different purpose. Rather, the Prince Series merely recast the original work with a new aesthetic.
It also was clearly troubled by the fact that the Prince Series negatively impacted the market for Goldsmith’s original photo and the possible consequences of people avoiding paying artists’ licensing fees by creating stylized derivative images.
As much as the Second Circuit examined how the two works are reasonably perceived, did the fact that Warhol isn’t around to explain his thinking impact the court’s thinking? Maybe, but should this matter?
Perhaps more centrally, how do you figure out what’s a new aesthetic and what’s not? Or, how much of a new aesthetic is necessary to distinguish a work as new?
These are very hard questions to answer and the Supreme Court pushed the parties’ attorneys — especially the Foundation’s attorney — on where to draw the line.
More on how we got here in the next post.
March 7, 2023
Not all attorneys do the same things. One of the most significant distinctions is between litigators — attorneys who handle disputes, particularly in court or arbitration — and non-litigators.
Here are some tips for the non-litigator (or non-lawyer) to think about if you see a dispute brewing:
- Is there anything you have to do before filing litigation or arbitration? For example, if there’s a contract governing the parties relationship, does your client have to give notice of the dispute? Is there a clause requiring the parties to try to mediate their dispute before proceeding to litigation or arbitration?
- What documents are likely to be relevant to the dispute and what document retention policies are in place? If employees or consultants are using outside devices or channels (they shouldn’t be), you need to make sure that no documents or information go missing.
- Where would a case be brought? If there’s a contract, does it have anything to say about this?
- What is your clients’ internal position and what’s their external position? DO NOT communicate the internal position to the opposition! This is one of the biggest problems I encounter. In discussions with the other side, while it’s important to say enough so that they know you’re serious and understand the basis for your argument, you don’t have to tell them everything. If you’re ever in doubt as to whether to say something, the best policy is always to keep mum and listen.
- Who is speaking for the client and is the message consistent? It’s not helpful to have your lawyer saying one thing and the CEO saying something else.
- Generally speaking, what are your client’s potential claims or the potential claims against your client?
- Is there anyone else involved or who needs to be notified? Is there a third party that might have played a role? Is an insurance company involved?
- Don’t set deadlines or draw lines in the sand if you don’t mean it.
Aligning on these issues can help a client (or, for non-lawyers, your business) save time and money by either avoiding litigation altogether or ensuring that arguments are properly prepared for litigation if it happens.
February 21, 2023
Following up on an earlier blog post, on February 2, 2023, the Court in Hermès’ trademark suit against the artist known as Mason Rothschild issued a decision explaining his denial of both parties’ motions for summary judgment. If you want a refresher about this case, you can find the earlier blog post here.
On February 8, 2023, after an eight-day trial, a federal jury found in favor of Hermès and awarded the fashion company $133,000 in damages. Fundamentally, the jury decided the digital images were not art, not protected by the First Amendment and, as such, subject to trademark laws. This is an important case as it is the first trial to look at trademark infringement and NFTs.
Let’s dig into both decisions.
The Judge’s Order
There are a couple of interesting elements in the judge’s decision.
Hermès argued that Rothschild’s work was devoid of any artistic value because he could at any time replace the digital images of fake fur bags with other images. According to Hermès, this meant the term “MetaBirkins” referred to the NFTs and not the digital images themselves. Judge Jed Rakoff rejected this’ argument, finding that potential consumers believed they were purchasing ownership of the digital image, not just the NFT. Therefore, he concluded that the term “Metabirkin” “should be understood to refer to both the NFT and the digital image with which it is associated.”
Judge Rakoff also (again) concluded that this case was governed by Rogers v. Grimaldi because Metabirkins originated, at least in part, “as a form of artistic expression,” and the fact that Rothschild may have also had commercial motives didn’t remove First Amendment protections.
In rejecting the parties’ motions for summary judgment, the judge held that a jury needed to decide whether Rothschild viewed the Metabirkins project as primarily one of artistic expression or whether, as Hermès, argued, his motives were purely pecuniary and he fabricated the claim of artistic expression in order to seek refuge in the First Amendment.
The judge also noted that the Second Circuit Court of Appeals hadn’t provided a lot of guidance as to what “artistically relevant,” as used in Rogers, means. Despite this, the judge concluded that the central inquiry in determining whether something is “artistic” is whether “the trademark was used to mislead the public about the origin of the product or the parties that endorse or are affiliated with it.” And that, he determined, required a jury to consider the so-called Polaroid factors. He also noted that the likelihood of confusion under these factors must be particularly compelling in order to abrogate First Amendment protection.
The Jury’s Decision
It’s impossible to know exactly why the jury reached its verdict, but looking at the Court’s Instructions of Law to the Jury and the jury’s verdict sheet, an educated guess (at least on the trademark claim) is that the jury concluded there was a likelihood consumers would believe that Rothschild’s MetaBirkins were sponsored or otherwise connected with or approved by Hermès and that Hermès had proved that Rothschild intended to confuse potential consumers.
Interestingly, in instructing the jury on the applicability of Rothschild’s First Amendment defense, the court seemed to assume that Rothschild’s use of the term “Metabirkin” was artistically relevant.
A few other things here: (1) the judge did not instruct the jury that it should look to the Polaroid factors to determine if something was explicitly misleading; (2) the jury instructions dropped any reference to the Polaroid factors from the discussion of whether the MetaBirkin NFTs were explicitly misleading; and (3) the judge seems to have substituted the “explicitly misleading” language from Rogers with an instruction that the jury needed to determine whether “Hermès had prove[n] that Mr. Rothschild actually intended to confuse potential customers” and, if it had, that he had waived his First Amendment protection.
In its verdict, the jury found Rothschild liable for trademark infringement, trademark dilution and “cybersquatting” (using a brand name in bad faith with the intent of making a profit from a trademark belonging to someone else).
We’ll see if Rothschild appeals (he and his lawyers have stated they will) and, if so, whether he raises those issues on appeal.
