SCOTUS Says Warhol Not So Fast: The Limitations of Transformative Use

Katie and Steve talk to Philippa Loengard, copyright expert and Director of the Kernochan Center for Law, Media and the Arts at Columbia Law School, about the much-anticipated Supreme Court decision in Andy Warhol Foundation v. Goldsmith, which resets and limits the applicability of “transformative” fair use as an exception to copyright infringement.


Episode Transcription

Steve Schindler:  Hi, I’m Steve Schindler.

Katie Wilson-Milne:  I’m Katie Wilson-Milne.

Steve Schindler:  Welcome to the Art Law Podcast, a monthly podcast exploring the places where art intersects with and interferes with the law.

Katie Wilson-Milne:  The Art Law Podcast is sponsored by the law firm of Schindler Cohen and Hochman LLP, a premier litigation and art law boutique in New York City. Hi, Steve.

Steve Schindler:  Hi, Katie.

Katie Wilson-Milne:  How are you? 

Steve Schindler:  How are you? 

Katie Wilson-Milne:  Happy birthday, first of all.

Steve Schindler:  Oh, thank you so much. It’s over now, and I’m glad it’s over but we had a really nice time. And I spent some of it thinking about the latest Supreme Court case.

Katie Wilson-Milne:  Ah, yes. 

Steve Schindler:  And that is the subject of our podcast today.

Katie Wilson-Milne:  That was the weekend activity for many an art and IP lawyer.

Steve Schindler:  Warhol v. Goldsmith. 

Katie Wilson-Milne:  Yeah. And if our listeners remember, we talked about this case in great length on an episode a while ago with Luke Nikas, who was a lawyer for the Andy Warhol Foundation, which is the litigant still. We’ll talk about the ultimate appeal today. And since that discussion, the case was decided in the Second Circuit and was appealed to the Supreme Court.

Steve Schindler:  We did an update on that as well.

Katie Wilson-Milne:  We did an update on that. The Supreme Court granted cert, much to many people’s surprise, on an extremely narrow part of the case, but a critical one, and the decision at long last just came out. So that’s what we’re going to talk about today. 

Just as a brief reminder, the facts of this case are kind of a dispute between a rock and roll photographer named Lynn Goldsmith who took some photographs of the artist Prince in the 1980s, in the early 80s when he was just becoming famous, and Andy Warhol who used one of those photographs to create a screen print series called the “Prince Series,” which will be familiar to many people. It’s much like his Marilyn series or his Elizabeth Taylor series where he takes one image, photograph of Prince, and then creates silk screen prints from it in different colors. So the way these two artists come into contact, what ultimately leads to this litigation, is that Lynn Goldsmith was commissioned by Newsweek in the early 80s to take photographs of Prince. Some of them were concert photographs, some of them were in her studio. One of the studio photographs she took of Prince’s— mostly of his face— was later licensed to Vanity Fair. She licensed it as kind of an artist reference, and they paid her for it. It was for a one-time use, and that artist who was referencing the photograph was Andy Warhol. 

He created an artwork based on that photograph that was in Vanity Fair. I believe it was purple at the time. And then he later created— or around that time created a whole series of screen prints from that image. Fast forward to 2016, Prince passes away, as we all know, and Vanity Fair wants to do a tribute cover to Prince. 

And they go to the Andy Warhol Foundation, which now owns all of Andy Warhol’s intellectual property, and ask if they can license one of the works from that series based on Lynn Goldsmith’s photograph. She sees this cover of Vanity Fair with the Andy Warhol artwork based on her photograph and says, wait a second, that’s my photograph, and I didn’t allow this. I didn’t, first of all, say that Andy Warhol could create a whole series of artworks, and I didn’t say that he could license it, or the Foundation could license it to Vanity Fair. That’s copyright infringement. 

So the Andy Warhol Foundation, in aggressive fashion, decides not to wait for Lynn Goldsmith to sue for a copyright infringement, but to sue themselves for declaratory judgment that it’s a fair use, or that there was no copyright infringement, because there’s no substantial similarity and that they are allowed to license this work. 

And that’s the case that works its way up to the Supreme Court, but the issue is extremely narrow, and we’ll talk about that. We have, Steve, with us to chat about this interesting case, an expert and our friend, Pippa Loengard, who is an attorney, scholar, and executive director at the Kernochan Center for Law Media and the Arts at Columbia Law School. And she actually co-wrote an amicus brief on behalf of herself in support of Lynn Goldsmith in this case. So she’s intimately familiar with all the details. Hi, Pippa.

Philippa Loengard:  Hi, Katie. Hi, Steve. 

Steve Schindler:  Hi, Pippa. 

Philippa Loengard:  Good to see you.

Katie Wilson-Milne:  Great to have you. So, Pippa, what was the issue actually before the Supreme Court?

Philippa Loengard:  As your listeners know, there’s four factors in fair use law that need to be considered, and they’re not limited— a fair use discussion is not limited to those four factors, but Section 107 says that the courts are to look at the purpose and character of the use, including whether it’s for a nonprofit or commercial purpose, the nature of the copyrighted work, the amount and substantiality used of the work, and the effect on the potential market of the work. In the Second Circuit Court of Appeals decision, the court ruled that all the factors were in favor of Lynn Goldsmith. The Warhol Foundation, however, only appealed on that first factor. And I think that’s because in general in jurisprudence over the past 10 years, that first factor has become almost determinative of a fair use analysis

Katie Wilson-Milne:  Thanks to the Second Circuit itself, really.

Philippa Loengard:  Yes, so the Warhol Foundation only asked the Supreme Court to look at this idea of transformativeness and purpose and character of the use, and was that a fair use?

Katie Wilson-Milne:  Just to back up, how did this get teed up for appeal? I didn’t recap this, but the trial court found that it was a fair use, right, basically on all four of the factors, and didn’t feel that it needed to decide copyright infringement because there was a fair use regardless.

Steve Schindler:  Right. And then the second Circuit basically went beyond that and they found that there was no fair use on—

Katie Wilson-Milne:  They reversed. Yeah.

Steve Schindler:  —all the factors. They reversed. And they also reached out to decide the issue that wasn’t decided by Judge Koeltl in the district court, which was that there was substantial similarity.

Katie Wilson-Milne:  Right. So the Second Circuit says there was copyright infringement, there was not a fair use. We look at every factor, and I guess it’s worth saying that that was extremely significant because the Second Circuit and the different Prince, Cariou v. Prince, several years earlier had really gone out on a limb and widely expanded, at least many of us think, the fair use exception to copyright infringement by basically saying like any artwork that transforms even a little bit a prior image is a fair use and isn’t copyright infringement. And that case was about photographs as well, so we had a sense that the Second Circuit was course correcting in this case a little bit, and the Andy Warhol Foundation said, let’s, I guess, go all the way and test to see if the Supreme Court will reverse them. So, Pippa, sorry. Back to you, but I just wanted to give that context.

Philippa Loengard:  Yeah, I think that the problem that the Andy Warhol Foundation saw was this narrowing of transformative use in the Second Circuit and the discussion that ensued. And they were hoping that the Supreme Court would, I think, probably go back to the Cariou v. Prince decision and say, no, that was the correct analysis, because we’d had sort of an intra circuit split, so to speak, in the Second Circuit. 

And although obviously it was phrased differently, the question really was, which side are you on? Which team do you want to sign up for? And I think that the Foundation probably is a little surprised that it went this way, because one wouldn’t have appealed if one thought that they were going to side with Judge Lynch and the Court of Appeals. 

This case has said that effectively without really discussing the Cariou v. Prince case, that’s too much. We need to look at different factors than the Cariou court looked at, and we need to give different priority to the factors, meaning—Justice Sotomayor, who wrote the majority opinion, said we need to look at the original work more than we need to look at the use of the secondary work or the creation of the secondary work. And we need to remember that there are four factors in this test, even though we’re not looking at them right now. There are four of them and they need to be weighed equally. Many feel that the transformative use had sort of overtaken the other factors, so that if a use was found transformative, basically, the other factors folded into that and it was a fair use. 

And Sotomayor is saying, no, that’s not how Congress wrote the statute. And Gorsuch, with whom Justice Jackson agreed in the concurrence wrote, you know, if Congress wants to change this, Congress can change this, but they did write a four-factor statute. And so I think that that’s one of the big takeaways in here, is that we now have parody for all the factors. So that should be an interesting thing for courts to deal with going forward.

Steve Schindler:  Right. 

Katie Wilson-Milne:  And I think like a kind of a return to a textual reading. I mean, I think what we saw in the Second Circuit with Prince, the Cariou case, we’ll call it that to not confuse the different Princes we’re talking about, was sort of a judicial summary of what the court thought fair use should be about, and that was transformativeness. But there wasn’t a lot of grappling with the language in the actual statute, which of course doesn’t refer to “transform” at all. In fact, that’s in the definition of a derivative work, which is absolutely a right of the original author in any artistic work that’s protectable. So I also read Sotomayor’s decision to say, you know, wait, wait, wait, let’s actually go back to the text people before we redefine what we are saying it means.

Philippa Loengard:  Well, I think that that’s absolutely right. I think that the Second Circuit and other circuits, I’m not putting all the blame on the Second Circuit, but the second Circuit in Cariou had focused on meaning and message, and really if not introduced, hyped up this concept that that’s what we’re looking at. We’re looking at if the new work brought any new meaning and message to the original work, that, again, also not in the statute, and sort of harken back to the Constitution’s idea of progress in science and the useful arts by taking that and saying, what does it do for society? 

Does society benefit from the creation of this work? And if it has new meaning and message, then society benefits. It’s a fairly low floor in that decision as to what constitutes progress. Sotomayor is saying, meaning and message isn’t in the statute, purpose and character is in the statute. And purpose and character isn’t meaning and message. So let’s not focus on all this other discussion that’s not textual, and let’s look at what Congress means by purpose and character. 

Steve Schindler:  Right, and of course the Supreme Court kind of is somewhat responsible for that. Prior to the Campbell decision, the rule that came out of the Supreme Court in the Sony case was that any commercial use was presumptively unfair, and that was the message out of the Supreme Court. And Campbell, you know, focused on Pierre Leval’s article and transformativeness, and does the word create new meaning and message? 

And then post-Campbell, you saw a reversal in the Second Circuit, right from Rogers v. Koons with the little puppies, which basically found in favor of Art Rogers and found that Jeff Koons infringed on his copyright to then subsequent to Campbell, you had Blanche v. Koons, right? Where again, Jeff Koons was a defendant but this time the Second Circuit focused on Jeff Koon’s transformation of Andrea Blanche’s fashion photography. And that kind of then set the stage for Cariou v. Prince, and this, as you said, Pippa, this elevation of the first factor and transformativeness, and new meaning and message. And so to some extent, we were heading in that direction as a result, I think, of the Campbell decision. And now it seems like there’s a course correction. The thing that I would’ve preferred a little bit was the court actually saying that they’re correcting course. They made a very narrow decision, but they didn’t overrule Campbell, they didn’t really criticize Campbell. They in fact cited to it a number of times. And so we’re left with a new decision out of the Supreme Court that does seem to refocus the first factor from meaning and methods to the purpose and character of the use.

Katie Wilson-Milne:  Yeah. I think what’s so awkward or unsatisfying about this opinion is that it couldn’t be about the whole issue, right? It can’t be about fair use completely, or about infringement in this type of artistic— I think, sympathetically, “borrowing” and unsympathetically, “theft of prior work.” It was about one factor. 

And so the court really struggles, although, I mean it gets 90 pages out, but struggles to describe this issue and decided only looking at one factor when part of the problem the court is addressing is that no factor should be looked at in isolation. 

There’s just something reading this where you keep waiting for it to be bigger or to say something about the whole fair use analysis, and of course it can’t, because it’s only deciding one factor of four. And if those three other factors favor Andy Warhol, it’s still fair use. So it’s kind of a peculiar posture that the case arrives in the Supreme Court.

Philippa Loengard:  Well, I think that that’s why Sotomayor brought in a little of the fourth factor, soupçon of the fourth factor into the first. So certainly the first factor is supposed to look at whether the secondary use is commercial in nature or for a nonprofit purpose, and then it’s the fourth factor that looks upon the potential market. 

And what Sotomayor did, and which some people have criticized, is said we’re going to look at the substitution market here for Goldsmith’s work versus Warhol’s. Would someone have, you know, would have to make the choice between one or the other, and therefore they were equally substitutable, interchangeable, so to speak. Because you would’ve chosen one versus the other. I think the interesting thing here, and this is highlighted in the majority, and then the dissent, is Sotomayor’s take on that, is we look at the big picture. They both were images of Prince, the rockstar Prince, which were used for licensing to magazines.

And as I mentioned, they were interchangeable. Now, you can say that the quality of the art or the tone of the art, or however you want to say it, are not interchangeable, and I think everyone agree with that, but the upside is you wouldn’t license both of them. You’d license A or B. 

And Kagan is saying, no, no, no, and hearkening back to more of a Cariou standpoint of these are totally different images, of course, you wouldn’t license one or the other. Warhol sells and Goldsmith doesn’t, effectively. Warhol conveys artistic greatness and Goldsmith— she really dismisses photography. Goldsmith is sort of this run of the mill— black and white picture that any Schmo could have taken, so to speak.

Steve Schindler:  Yeah. And actually what was nice, I thought also about the Sotomayor’s majority opinion is she really does spend time on Goldsmith. 

Philippa Loengard:  Yes.

Katie Wilson-Milne:  Yes.

Steve Schindler:  She talks about Lynn Goldsmith, not just as some random photographer but as a sort of someone who is really important, and particularly important as a first female photographer in a male field as a photographer of rock stars. And I think that was kind of a nice feature of the opinion.

Philippa Loengard:  My favorite two paragraphs of the opinion are the first two where she says, yes, Warhol is great, everyone admits that everyone says that, but you know what, it was an all-male cannon, basically, of artists up to a certain point. And hi, Lynn Goldsmith, as she says, is a trailblazer in her own right, and did new and exciting things in photography. 

I’m hoping that the photography community is a little shored up by this decision, because if Kagan had been the majority, I think they’d be trembling in their boots. We already, with AI, are seeing enough threats to the copyrightability of photographs and the manipulation of photographs has been a continual battle in the fair use field. And so if we went with Kagan’s analysis of the value of the photograph, we would be very close to writing that entire chapter out of the Copyright Act.

Katie Wilson-Milne:  I guess to try to be more precise about actually what the court did here, I mean, as you said, Pippa, we had been sort of operating around this new expression meaning or message test that usurped the whole fair use analysis, at least, often in the visual art context. And that really led courts to have to say, okay, well what did the artist mean by this? What were they trying to do? And judges, as we know, are not art experts. The effort of a court to dig into art criticism and understand what an artwork is doing when, as we know, just going to museums it can be impossible as a normal person who likes art to understand sometimes what art is doing was so awkward. 

But that was really what this test required, right? It was just like, is the artist trying to do something new, and then can we explain that inner meaning in what we see in a decision, hopefully based on experts? And I don’t know if that was a sustainable test, and I think that’s one thing when the Second Circuit pulled back in the underlying case here to the appeal and the Supreme Court pulls back, they’re sort of recognizing that that runaway test of meaning or message of an artwork requires all kinds of psychology and art expertise by the court, that just doesn’t seem like what the Copyright Act was originally requiring courts to do.

Philippa Loengard:  Yeah, or it means that we get the artist’s testimony, and artist’s testimony might not be the most reliable source of defining a new meaning or message as, we learned that in—

Steve Schindler:  Once they got the message, so to speak, then their testimony tended to get a little bit more consistent with new meaning and message.

Katie Wilson-Milne:  New meaning. I had new meaning.

Steve Schindler:  Yes, I had new meaning.

Philippa Loengard:  I always call it the Jeff Koons school of new meaning. Yes, between Rogers and Blanche. He suddenly really understood the process a lot better.

Steve Schindler:  He got wisdom. 

Philippa Loengard:  Yes. 

Steve Schindler:  But you know, the other interesting thing is the cases that have come up that we’ve been talking about, because they tend to involve very successful appropriation artists, otherwise they wouldn’t come up, because you wouldn’t have these very expensive works of art that gets sold and damages that could be significant. 

But you have like the photographer, Patrick Cariou, you know, who spends a decade or more in Jamaica studying Rastafarian community publishes a book that barely makes any money. And then Richard Prince comes along and draws— 

Katie Wilson-Milne:  A beautiful book. 

Steve Schindler:  Yeah. A beautiful book, which is sitting on my coffee table. And then Richard Prince comes along and puts purple lozenges on the eyes of a photograph and sells them for a ton of money. And same thing with Jeff Koons. And so there’s always this undercurrent, a little bit, of both class and a little bit of sort of notion of unfairness. 

And you saw that member in the district court decision in Cariou v. Prince with Judge Batts, who was so offended by the whole thing that she ordered the Prince works returned and potentially destroyed. But there is always, I think, that undercurrent of sort of the famous artist sort of coming along and selling works for a lot of money that were taken by someone else.

Katie Wilson-Milne:  Yeah, I think that’s such an important point, Steve, and one, the court here, the Supreme Court, grapples with a little bit, and I think Kagan really doesn’t answer, at least in a clear way for me, which is it seems like part of the new expression, meaning, or message that she finds sufficient and that the district court found sufficient is that it’s a Warhol, right? Like it’s a Warhol, so it’s different. The museum wants it, because it’s a Warhol. Are we looking at the actual artwork? Because clearly it’s Lynn Goldsmith’s photograph, right? It’s a different color, the image is slightly tilted, but it’s clearly her photograph. It’s not a collage. It’s just her photograph with a different color.

Philippa Loengard:  And I think it’s important, I don’t want to interrupt you and please continue, but I do think it’s important to say that because it’s a silk screen he literally took the photo—

Katie Wilson-Milne:  Yes, yes. 

Philippa Loengard:  —and silk screened it. It wasn’t like he redrew the photo in some way. 

Katie Wilson-Milne:  Right. 

Philippa Loengard:  It’s like he Xeroxed the photo and then did his Warhol to it.

Steve Schindler:  Well, the other thing I think then, and this probably this— these facts had some significance in the outcome, because yes, Pippa, exactly, in the first instance in 1984, Vanity Fair understood that it needed to get a license for this photograph, and it paid for that license and accredited Lynn Goldsmith. And so the second time around, they should have been well aware of what happened the first time around. And so all they needed to do was to call the photographer who was alive and say, can we license your photograph again? And they just decided this time around not to do it. I think that was the tactic.

Katie Wilson-Milne:  Yeah. I mean, in the interim, though Andy Warhol created this whole Prince Series without Lynn Goldsmith’s permission and— 

Steve Schindler:  Correct.

Katie Wilson-Milne:  —underlying these decisions, which this court does not decide, because this would be a bombshell in the art world, but underlying this is, is it okay for Andy Warhol to snatch a photo from someone and create this huge body of work, 15 or 16 prints that sell for a ton of money in are iconic, based on this photograph without her being involved? Is the creation of this artwork an infringement? The court doesn’t deal with that, but I think that’s a really big open question even though they try to make it seem like it’s not and maybe we shouldn’t be worried about that.

Steve Schindler:  Yeah. I agree. I think they didn’t want to go there, but in this particular case, too, there was a license and it was specifically for one use. 

Katie Wilson-Milne:  Yeah. 

Steve Schindler:  Right, and that one use, as you suggest, then became an additional 15 uses of a series of works that were created from the same original photograph.

Katie Wilson-Milne:  So the court says, all right, new expression, meaning, or message— impossible standard— departs so significantly from what the Copyright Act actually says, we’re going to go back to the text, look at the first factor as purpose and character of the use, including commercial or nonprofit purposes as the only example in the first factor. So clearly, it’s the only example given, it’s a very important example of purpose and character. That doesn’t lead the court to any kind of new expression meaning or message. That leads the Supreme Court, Sotomayor, to say no, we’re looking at the use. We’re not going to look at what was meant by the artwork. We’re looking at how it’s used, and is its use in some way so different in purpose and character that at least for this factor we wouldn’t call it an infringement? And I think I find that awkward, but also a fair reading of the statute, which in the introduction to the fair use factors, the examples it gives are really isolated uses: criticism, comment, reporting, teaching, scholarship, research, right? Those are the examples it gives for what it means to be a fair use non-infringement. It’s not creating an artwork that looks differently, it’s really isolated, discreet uses. But I don’t know, Pippa, when you put that onto the visual art context, it’s a little awkward, because you have Warhol creating an artwork. You have Richard Prince creating an artwork. That’s a use. And that’s the use that we were all looking at before. That’s what the courts were looking at is, is the creation of this secondary artwork infringement or a fair use? Not, is the use of the artwork on the cover of Vanity Fair an infringement, or is the artwork on a t-shirt an infringement? You know, it was much more like the artwork itself we were looking at. And now the court’s saying, no, no, no, don’t look at the artwork itself. Literally just look at every single use of that artwork, which I don’t know, just to me seems like a pretty big change itself and maybe onerous and uncertain as to how we deal with artwork infringement if we can’t make a definitive statement about the artwork itself.

Philippa Loengard:  Well see, I see it as Sotomayor created a sliding scale and a balancing act, right? And so on one side is this commercial substitution use theory that she has. So if you have a commercial use that could have been filled by the original work, then your scale goes down significantly.

Katie Wilson-Milne:  It’d have to be way more change in purpose and character, you’re saying?

Philippa Loengard:  No, I’m saying purpose and character is in another scale. So then you’ve got your purpose and character analysis. And if I think in her eyes, a sort of Campbell situation where it’s clear parody on the original would bring up the purpose and character side so much as to offset—

Katie Wilson-Milne:  Yes. That’s what I mean.

Philippa Loengard:  —the, yeah, the—

Katie Wilson-Milne:  Yeah. The commercial—  

Philippa Loengard:  —the commerciality. And it brought me back to the solicitor general’s discussion at oral argument about necessary to be commenting on the original work or necessary to have changes versus ideally. And so everything slides on that, on those two sides. So less commercially-substituting or less commercial use. And Gorsuch says this in the concurrence, that if it was for a book on art history, a look at the life of Andy Warhol’s or something like that, that would, even if it was commercial use, it would still be less offensive than this, which was pure commercial, pure money. And if the purpose and character of the purpose of the use was something like— she doesn’t really give an example. No one gives an example of what the middle of the road for person character is. So you’ve got your top of person character, which is straight up parody, commenting on the work, necessary to comment on the work because otherwise it doesn’t make sense. And then you’ve got sort of what she feels I think is the bottom, which is in this case, which is there was no need to take this photo and do this to it without a license. And if somehow you can balance those, then you actually, I guess would have more of a problem than anything, because if they’re even, what do you do? But I guess you call the first factor a wash and you go to questions two, three, and four. But I think that’s what she was doing, this continuum.

Katie Wilson-Milne:  Yeah. Don’t you think the use analysis is different now? I just think we as art lawyers, when we think of analyzing the use, we think of the appropriation art as the use, right? Like, what was Warhol doing? It’s the use by the secondary artist of the original work. But the court isn’t concerned with that here. They’re saying no, no. The use is literally every appearance of the work thereafter, and each appearance could be its own lawsuit, right? We’re not going to make a comment that settles whether this artwork itself is a fair use. That’s not the law anymore, I guess. It’s every single appearance of that work is a use. Which means it could be endless litigation for all of us. I guess it’s good or bad, but it seems like that’s such a different onerous standard for an artist that okay, they can create the work, but they’ll never have certainty about the work itself. It’s like every single time something happens to the work, there could be a new set of facts and a totally new analysis.

Philippa Loengard:  Well, I think that this leads to the real question of this opinion. And some have been saying that this is such a “narrow opinion,” which I disagree with that it won’t have any implications outside of this specific case. And I think that’s sort of taking your argument to the extreme by saying, well, it’s only about the specific use and fine, we won’t license an orange Prince to a magazine again. But I think it’s going to come a lot down to judicial interpretation going forward. And what the legs of this decision is going to be really decided in the district and circuit courts around the country and how they interpret it. Do they interpret that we have to look at every use or do they interpret use more broadly and perhaps not in the intention of Sotomayor, but in this idea that any magazine, any publication use for profit is considered a use, and sort of clump them together.

Well, I guess what I’m saying is I think you’re right. I think that the uses are individual and each can be evaluated differently by this sliding scale, this continuum. Because certainly if she thinks that the Warhol magazine cover made the compensation, the commercial use scale go all the way up, if you had a different use, as Gorsuch says, you’re slowly coming down. So now do we come back to the court and say, well, this was in this book about not Andy Warhol, but modern art. Is that somehow different than if we did it on only on Andy Warhol?

Katie Wilson-Milne:  Or hanging in a museum, right? That’s the underlying fear.

Philippa Loengard:  And in a non-profit museum at that, according to Gorsuch, which leads the whole question of so if it’s a collector, that’s different than hanging in a museum. 

Steve Schindler:  Right. 

Katie Wilson-Milne:  Or gallery. Or gallery, yeah. 

Philippa Loengard:  Or gallery. Yeah.

Steve Schindler:  And then of course, we’re still back to the fact that they only really focus on the first factor, and there are three other factors out there that are often in the mix. And so our discussion, and because of the decision is somewhat slanted, but there are the other factors. 

I mean, the other thing that is kind of interesting to me is, you know, days before this decision came out, and when we knew it was going to come out, Judge Stein in the Southern District of New York decided a summary judgment motion that has been pending for five years in the case of Graham v. Richard Prince. And this was the Instagram series where Richard Prince basically scanned Instagram for photographs and comments that he thought were interesting to him.

Katie Wilson-Milne:  By other people. Yeah.

Steve Schindler:  By other people. Put a comment, usually something nonsensical at the end, printed the whole thing out, and sold them as a series for $90,000 apiece. And I think when that case was first filed by Donald Graham and then another photographer as well, I think many people thought, well, if this is okay as appropriation art, basically taking the identical photograph and adding a comment, then maybe there are no boundaries in terms of appropriation art. And Judge Stein—

Katie Wilson-Milne:  There can never be infringement, you mean? Yeah.

Steve Schindler:  Yeah. And the funny thing is that Judge Stein did decide in favor of the photographers and ruled as a matter of law that there was no fair use by Richard Prince, but with barely a reference to the Second Circuit Warhol decision, and obviously without the benefit of this decision that we’re talking about. And one of the things that strikes me, again, when you look at that, I mean, that’s an actual copy. So I mean, it is the same photograph. So when you look at how much of the original was used, which is one of the factors, in that case— 

Katie Wilson-Milne:  It’s the whole thing. 

Steve Schindler:  The whole thing. And so that’s why I say there are these other factors out there that are going to play into it as well.

Philippa Loengard:  Well, one question I have about that is, so factor number two is “the nature of the copyrighted work.” That seems now ripe for litigation by what do we mean by the nature of the copyrighted work? Is it just that it’s a photograph, which is how it’s sort of been interpreted, or is it a photograph that was licensable to magazines? Is it a basic photograph versus a colored fancy photograph? So I think that—

Katie Wilson-Milne:  Or published or non-published. I mean, there could be all kinds of things that go into nature.

Philippa Loengard:  I think that now sort of, if people feel that they’ve lost on number one or number one has become more constricted, that they’ll go to the other factors and try to expand those as the first contracts. But I thought that Stein was hedging his bets in that opinion and saying, however Warhol comes down and I know it’s coming, this is not fair use. And I think he’s right.

Katie Wilson-Milne:  I think whatever else comes out of this Supreme Court decision, it’s got to be, even though it didn’t deal with any of the other factors at all, like if there’s no other result than a rebalancing of all the factors, de-emphasizing the first factors— so the courts actually start to have to make case law on the other factors, that will be a seismic change and maybe really a great development of copyright law where we just don’t have a lot of recent scholarship or decisions on the other factors in the same way we had around transformativeness. So I think that’s something that we’ll be watching, is just to see how those analyses rebalance, and if the first factor becomes less exciting.

I do think we should talk about two more things. These are perhaps out of order. One is the breakdown of this case was really interesting. And I think we forget as consumers of news and politics that the court decides many really important decisions that don’t align with the same conservative, liberal groups that we normally see in the news. And this was just a really interesting example of that, that Sotomayor, as we’ve been saying, wrote the majority opinion of the court and was joined by seven justices, and the justices that dissented were Kagan and Chief Justice Roberts. And we don’t have to go into a lot of this, but if people read the decision they’ll be fascinated by the sort of battle between Sotomayor and Kagan. And they really go after each other’s reasoning and logic and ability to understand these issues, and I think that alignment was interesting. I don’t know if either of you have insight into sort of how they came out on opposite sides or why they feel so strongly about this copyright issue.

Philippa Loengard:  I mean, I thought that Thomas was going to rule in favor of Goldsmith just from his ideas about property and ownership in general, and Alito in the same way. And they both signed onto the Sotomayor opinion. I guess I sort of thought Gorsuch would go that way, and I think Gorsuch agreed obviously with the underlying pinnings of Sotomayor’s decision, but I think his concern was we want a cabinet to these specific facts. And I sort of understand that, since my personal analysis was going on the specific facts and the question presented, I was interested in Jackson participating in the Gorsuch opinion. I honestly don’t have a read on her. So it wasn’t like it was unexpected from what I had anticipated, but it’s an interesting look as to how she feels on the issues. You know, during oral argument, I thought that Sotomayor and Kagan were sort of on the same line. I apparently could not have been more wrong. 

Katie Wilson-Milne:  That’s so funny.

Philippa Loengard:  I know that opinions can be contentious, but this one seemed a little— perhaps it’s because it’s a field I care about— more than usual. So I was sort of surprised and I guess I was sort of surprised by the women that I think as the two liberal judges on one end the bench going at it, not the two people I would think would be going at it. If you had said that Thomas wrote one opinion and Kagan wrote the other, I could have seen a little more.

Katie Wilson-Milne:  We wouldn’t have 90 pages if Thomas wrote the opinion.

Steve Schindler:  Right. And we’re understating it a little bit. I mean, I don’t recall reading a Supreme Court decision with such kind of expressed almost personal animosity, and sort of belittling and making fun of the reasoning of both the majority opinion toward Kagan’s dissent and Kagan’s dissent toward the majority opinion. It’s as if— I just can’t think of another decision that’s not Dobbs or not a decision like that where the level of personal kind of—

Philippa Loengard:  Vitriol?

Steve Schindler:  —vitriol, yeah, is evident. And there’s been a lot of comment on that in the news and social media, which we don’t really need to go down the road. 

Katie Wilson-Milne:  It’s quite distracting as a reader.

Steve Schindler:  It is distracting. And frankly, I think both decisions would’ve— they would’ve done the readers and society a favor by tamping that down a little bit. I don’t know why it needed to be like that. I also found Justice Kagan’s dissent. There’s this whole interlude about considering the example of the reclining nude. 

Katie Wilson-Milne:  Yes. 

Steve Schindler:  And then this just like series of sort of, you know, The Sleeping Venus from Giorgione in the 1500s. And then basically the point being every subsequent work of art copies from earlier works of art, which of course is true and is important, but it’s sort of also interesting that she picked this series of the sort of reclining female nudes with the now sort of talked about male gaze as a focal point for her decision here. I would not have thought that—

Katie Wilson-Milne:  I found that whole dozens of pages of just like art history recitation to be interesting and true, but perhaps neither here nor there with respect to like copyright law? Like of course yes, I saw a painting of a nude and then I painted a painting of a nude, and then some—

I mean, it’s just like, first of all, some of those are clearly in the idea spectrum, which are not copyrightable, and it’s not the same as you—those are not artists who literally used the exact painting of another artist and just painted over it, right? So none of her examples, or some of them, but few of her examples are actually to me on point enough with this very difficult area of modern appropriation art, where the entire original artwork is actually—it’s not just redone or traced or, you know, an inspiration, it is literally used to create the new work. And her examples didn’t speak to that, at least to me, I didn’t find it helpful.

Steve Schindler:  Yeah.

Philippa Loengard:  I was distracted by her little red hen approach. The sky is falling, the sky is falling. 

Katie Wilson-Milne:  Yes. Yes. 

Steve Schindler:  Right. 

Philippa Loengard:  We’re never going to have art again as we see it. And I think that anytime that you take a very extreme stance like that, like, you know, if we allow this, no one will ever create anything again. It detracts from your argument, because that’s not actually true.

Katie Wilson-Milne:  And also we’re not talking here about— no one’s getting arrested for creating appropriation art. It’s just, is it a copyright infringement, right? Like we have copyright. She brings up so many of the key intellectual arguments about the drawbacks of having exclusive creation rights, right? There are drawbacks. We know them. They’re inherent in our understanding of the First Amendment and incentivizing creation. So I just found her— I don’t know if you feel this way too, Pippa— but I found her to be more sort of setting forth her objections to the way copyright is with respect to the visual arts, not that she thinks she is more fairly applying the copyright statute. I didn’t see her working with the text and saying, no, this is what it means, this is how we balance it with a derivative use right.

The way that I think Sotomayor was. She’s saying, forget the Copyright Act. I’m telling you about the importance of visual art and how we should think about it. And I thought that was just like a strange scope in a case that’s trying to grapple with some of the contradictions in copyright law, which are that we both give meaning to copyright protection, meaning of course we exclude other people from doing it. That’s the definition of copyright. And then when do we not do it while respecting that we still have copyright law? I didn’t get any guidance from her on that.

Steve Schindler:  Right. And that’s the inherent tension and really kind of the brilliance in a way in the copyright act, which comes from the Constitution, which basically says that we’re going to give artists a limited monopoly on their creative works, but for the purpose of advancing the useful arts. And so to achieve that purpose we have fair use, and the concept of fair use, and that— those two things are sometimes intentioned, but they’re both important, and how you balance them is a matter of some opinion.

Katie Wilson-Milne:  And we balance— 

Philippa Loengard:  And going back— 

Katie Wilson-Milne:  Yeah. Go ahead, Pippa. 

Philippa Loengard:  No, but going back to Katie’s point, which I think is also valid, is there are outs, and Sotomayor points to this, for artists. You can’t copyright facts and ideas, and there’s a whole list of other exceptions to copyright so that creation can take place. And fair use really comes into play only after a work has been taken so completely that there is a question as to whether or not this is legitimate. And so it seems to me that it’s impossible for the sky to fall based on a fair use decision. There’s a lot of other pillars holding up the realm of visual arts.

Katie Wilson-Milne:  Right. Where there would not be an infringement at all under those. 

Philippa Loengard:  Right. 

Katie Wilson-Milne:  I think we have to talk, too—and maybe this can be our last big topic— but about the balance in the copyright law between fair use and the exclusive rights to the copyright holder, which include the right to make a derivative work. 

And I think we’ve said many times on this podcast, and I know Pippa, you’ve said this before, like how interesting that the only place in the Copyright Act where the word “transform” appears is in the definition of a derivative work, which is understood to be an exclusive right of the copyright holder. So the Copyright Act defines the exclusive right of a copyright holder to include recasting, transforming, or adapting an original work. That is a right they have. So how can it be that if that is the statutory right, given to the copyright holder, that fair use, it could be found just from a transformation?

That is an inherent contradiction is that they can’t be reconciled in my view, and I think that like at some point the transformative test in the first fair use factor had to fall or kind of reconcile that. But I don’t know to what extent the opinion here explains that contradiction or sort of resets that.

Philippa Loengard:  Well, okay. So Sotomayor says, and she didn’t cite Jane Ginsburg, Shyam Balganesh, and Peter Menell’s brief, but it’s almost word for word from their brief, that to preserve the derivative work right, the degree of transformation required to make a transformative use must go beyond that required to qualify as derivative. So that would indicate that it needs to do more than just recast or reframe the original work. What that line is— 

Katie Wilson-Milne:  And what that means. What does that mean?

Philippa Loengard:  What that means, right, is still unclear, but I do sense that it’s a fairly, and in Sotomayor’s world, a fairly large line. You have to really do something here that makes it different. I will say that there’s some of Richard Prince’s works with the Cariou works that I think really do do that, right? I think that Koon’s work in Blanche v. Koons did that. The original became a small part of a larger work.

Katie Wilson-Milne:  Yeah. It was a collage. 

Philippa Loengard:  It was either colorized or turned upside down and put in a different context. I think there’s lots of ways to do that. I don’t think that Andrea Blanche could say that what Koons did was sort of a derivative work of her shoe photo. So I think that there are ways for visual artists absolutely to do that, but I think it has to do something like that in Sotomayor’s mind. 

It has to really take that original image, and change it both visually significantly. So putting it in a different context with other images— a sort of clear commentary, I’ll be honest, I don’t find that the Jeff Koons work in Blanche v. Koons— I still don’t understand the commentary in that about life and excess, but I’m not sure that you have to. I think that the point is that you don’t recognize Andrea Blanche’s photo as the first thing that strikes you in that work.

Katie Wilson-Milne:  Right. It is part of an entirely new creative work.

Philippa Loengard:  Right. Exactly. 

Steve Schindler:  Right. 

Philippa Loengard:  And so I think that that’s what we’re talking about, that would fit the Sotomayor definition of going beyond that required to qualify as a derivative works. 

Steve Schindler:  Right. Also just to stick to that example for a moment, and I just wonder how the same court would consider it. I agree with you, I think the Blanche v. Koons and Jeff Koon’s use of the Blanche photograph was certainly much more— less of a copy and definitely created some new meaning. But also, again, to the narrowness of this decision, that was a difference also between a photograph that appeared in a magazine and an advertisement for Andrea Blanche and Jeff Koon’s work of visual art that was sold at the Gagosian Gallery. And so I think even looking at this decision, they might also say, well, that’s a different use. 

Katie Wilson-Milne:  Purpose. Yeah, purpose. 

Steve Schindler:  A different purpose and a different use. Interestingly, I think, again, if you go back to the Graham v. Prince case that we talked about a little before in Judge Stein’s decision, that’s also a different use, right? One is a photograph that appears on Instagram and the other is a series of works in a gallery, but they are so identical that maybe it doesn’t matter. 

Katie Wilson-Milne:  The scale. Yeah. The scale tips. I just think one of the most powerful and troubling things when we’re thinking about how copyright law applies to the visual arts is when we look at how it applies to other arts and how different that is. So how do we square the permissiveness we see with some courts in terms of wholesale copying and the visual arts not being an infringement, somehow not being a derivative work issue? With what we see when we make a film from a book, or we license music to make a cover. There are no questions there. How different could a movie by Scorsese be from a novel from someone else? There’s no similar purpose. If you want to see a movie, you’re not reading a novel. If you’re reading a novel, you’re not going to see a movie. The other ways in which we understand these copyright laws to apply to other areas are so different.

And I think for me the book/film thing is just, it’s so striking that I don’t see how in the visual arts we could look at this photograph by Goldsmith and then look at the screen print by Warhol and say, that’s way more different than creating a movie from a book. And we accept that, of course, you’ve got to get a license to create the movie. So is there some fine art exceptionalism that’s developed here? It just, we decide the rules are different for fine art, because it’s special in some way. I can’t make sense of how those norms go together.

Philippa Loengard:  It’s interesting to me, because what immediately comes to mind is Hamilton. So Ron Chernow writes this book, I’ve read it, it is a quite dense book. The fact that Lin-Manuel Miranda used it as a beach read speaks volumes about Lin-Manuel Miranda and his idea of a vacation. So he’s reading this book and he says, I can turn this into a musical. Alright? Now, this is traditionally where you license a work. If you want to transform it, quote unquote in that way, it would be a derivative work. Lin-Manuel Miranda did license the book. He did talk to Chernow. He credits Chernow. So that’s point number one. Point number two is however, he takes that book, and really the book is mostly facts, Alexander Hamilton was born in the Caribbean, he was poor, his mother died, his father left him, his uncle committed suicide. I could rap the whole thing, but I won’t. And so there’s so many ways that he really changed that work. He brings it into the realm of minority characters, he turns it into song. He’s using facts. I mean, all these things, which you would say, hey, if that had been a Richard Prince or an Andy Warhol, well I don’t want to say Andy Warhol, because I think Andy Warhol would’ve licensed it. 

We’re talking about the Foundation now, and that’s a little different. But a Richard Prince or Jeff Koons would’ve said, look at all I’ve done, and here’s Lin-Manuel Miranda saying, no, no, we owe my creation to the work that Ron Chernow did. I am building off that, and that deserves payment and recognition, attribution, a license. And yet that is about as different from Ron Chernow’s book as you can get.

Katie Wilson-Milne:  Right. If you transpose that example in the visual arts there’d would be no court case, right? It would be the case of Jeff Koons and the collage with a little bit of the shoe, like from a magazine in the corner. 

Philippa Loengard:  Right. 

Katie Wilson-Milne:  I mean, it would be even more extreme than that. No one today would ever think that that would be a hard issue in law.

Philippa Loengard:  Right, right. In the visual arts. I don’t know why it’s different.

Katie Wilson-Milne:  It just, it really is. And I think we see in these cases that the standards are applied so differently. And you might say, okay, well let’s go back to Campbell. That wasn’t the visual arts, that was music. But that case, if you read it, the language changes the analysis of fair use. But it’s not that hard a case. It’s a parody, right? It’s a classic First Amendment meets copyright law kind of carve out, which is that they’re making fun of a Roy Orbison song, clearly commenting on it, and creating something absolutely totally new in sound, in style, in audience, in every way possible. 

Philippa Loengard:  And they couldn’t, by definition of parody, but I think it expands past parody, do that without people understanding why they were using that underlying work. 

Steve Schindler:  Right. 

Philippa Loengard:  Okay. I care deeply about this use of underlying work, is there a reason why you were using this? There is no reason why Andy Warhol had to use that photo of Prince other than if it was provided to him. 

Katie Wilson-Milne:  Yes. Could have been any photo. 

Philippa Loengard:  And we don’t know if he even knew about the license and the terms and all of that, but it was provided to him and so he used it. Had someone provided a different photo of Prince, he would’ve used that. And I think that Sotomayor also feels that way. Gives me a little leap of happiness.

You got to use it for a reason, that you can’t just reach out and say, yeah, I like that one and I’m going to take all of it and I’m going to literally copy it without any, to use AI terms, human intervention. I’m going to stick it in a silk screen machine and print it out, and that’s just not okay.

Katie Wilson-Milne:  Right. And I don’t think we can make sense of the derivative work, right? In a doctrine that says that’s no problem, right? And then we’re back to the statute, which I mean, congress could change it, but the derivative work right exists for a purpose and like basic statutory interpretation 101 is that like, if there’s something in the statute, we presume it’s there for a reason.

Steve Schindler:  Right. 

Katie Wilson-Milne:  And then we have a race to the bottom, like who can get there fast enough if we get rid of the derivative work right.

Steve Schindler:  Right. And I think the important thing in Campbell, because remember in Campbell, 2 Live Crew did ask for a license. And of course the holder of the license understood that they were— 

Katie Wilson-Milne:  Being made fun of. 

Steve Schindler:  —they’d be giving a license to be made fun of. And so who would want to do that? And of course they didn’t. But that’s exactly the type of thing that fair use and our understanding of free speech and what it means to exercise that, that all comes into play with Campbell, right? 

And that makes a lot of sense. That’s a lot different from saying, I’m just going to take your thing and make it mine and maybe I’ll say that I’ve recontextualized it, because that’s what I do. And I think that’s a very, very different place to be.

Katie Wilson-Milne:  All right. You have anything else you want to add, Pippa?

Philippa Loengard:  No. I’m interested to see where we are in two years after this has been interpreted by lower courts. 

Katie Wilson-Milne:  Me too. 

Steve Schindler:  Yeah. Thank you

Katie Wilson-Milne:  Thank you so much, Pippa. We really appreciate it.

Steve Schindler:  Thank you for joining us, Pippa. We appreciate it.

Philippa Loengard:  It was wonderful to be here.

Steve Schindler:  And that’s it for today’s podcast. Please subscribe to us wherever you get your podcasts and send us feedback at And if you like what you hear, give us a five-star rating. We are also featuring the original music of Chris Thompson. And finally, we want to thank our fabulous producer, Jackie Santos, for making us sound so good.

Katie Wilson-Milne:  Until next time, I’m Katie Wilson-Milne.

Steve Schindler:  And I’m Steve Schindler, bringing you the Art Law podcast, a podcast exploring the places where art intersects with and interferes with the law.

Katie Wilson-Milne:  The information provided in this podcast is not intended to be a source of legal advice. You should not consider the information provided to be an invitation for an attorney-client relationship, should not rely on the information as legal advice for any purpose, and should always seek the legal advice of competent counsel in the relevant jurisdiction.

Music by Chris Thompson. Produced by Jackie Santos.