What do we want copyright law to do, and who do we want it to protect? At the end of the day, those are the questions driving the decision in Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith. Behind all the analysis of market factors, review of decades-old licensing agreements, and the surprisingly rancorous back-and-forth between Justice Sotomayor’s majority opinion and Justice Kagan’s dissent, these two questions emerge: Should copyright law protect individual creativity or the public’s right to use? And if the former, which individual is being protected, the original artist or the person inspired by it?
The Goldsmith decision addresses one particularly technical question: does the first factor of the fair use test in Section 107 of the Copyright Act, the “purpose and character of the use,” favor Warhol’s later creation as being a fair use? The court appeals had held it did not. But in any case, it is taken as a given that Warhol created a derivative work from Goldsmith’s picture of Prince. Whatever the original license from Goldsmith to Warhol covered—and the parties and Court spill much ink on that question, with significant potential effects for later courts trying to apply this case—the question before the Court was whether the Foundation’s subsequent licensing of Warhol’s image to a magazine for use in a Prince retrospective act as an infringement of Goldsmith’s original work. Or was it a fair use? But what was not before the Court was a different question: Should Warhol’s work even be treated as a potential infringement of the derivative work right at all? If not, the whole question of fair use becomes moot.
Nevertheless, the question before the Court was the narrow one directed to the fair use factor, not the meaning and scope of the derivative work right. Therefore, within that specific framing of the question, I think Justice Sotomayor and the majority get it right. Sotomayor correctly states that a fair use is not one that should displace the original within the market—it is meant to do something else, whether comment, critique, report, teach, or be used for research. Fair use, at least as originally conceived by Justice Story, was to protect the market value in the original publication. As Justice Story wrote, “If so much is taken, that the value of the original is sensibly diminished, or the labors of the original author are substantially to an injurious extent appropriated by another, that is sufficient, in point of law, to constitute” infringement. Folsom v. Marsh, 9 F.Cas. 342, 348 (C.C.D. Mass. 1841). The point that Justice Story makes, and which is picked up by later courts and ultimately the 1976 codification, is that a “fair” use seems to do more than merely expropriate the commercial value of the original work. It is directed to some other use, some “transformative” use in the words of recent case law. Justice Sotomayor hones in on that point, and in doing so she breathes new life into the importance of the “exemplary uses” listed in Section 107. Prior fair use cases before the Court, including Campbell v. Acuff-Rose Music and Metro-Goldwyn-Mayer Studios Inc. v. Grokster Ltd., all but jettisoned the “exemplary uses” in the statute from their analysis.
Nevertheless, Justice Kagan’s dissent gets to the heart of the issue. We have fair use, she says, in order to promote creativity and artistic progress, not merely to promote public availability. The question before the Court was too narrow, and Kagan really wants to answer that broader question. Should Warhol’s transformation really fall within the scope of Goldsmith’s original rights in the first place? In other words, was Warhol’s “Orange Prince” really a derivative work at all? And here we turn to the questions I posed above: Is copyright supposed to protect the author, or the public? And does it protect the original creator, or the later creator?
I have previously written about the divide between the Anglo-American conception of copyright as a means for protecting book publishers and the continental European idea of “author’s right” as protecting the original creator’s control over usages of his work. To summarize that divide here, copyright is a more flexible construct that tends to favor public usages of a work while protecting a market for allowing those works to reach the public in the first place. In other words, allow authors and publishers a means to distribute their works without going out of business from copycats, but the public is then rather free to do what it wishes with the work. Author’s right, on the other hand, views a work as a creation of the author such that the author can do with it as he wishes—including choosing whether to publish it or not, and to license the use or adaptation of it by others.
The problem, as the Goldsmith case demonstrates, is that Congress and the courts cannot decide which of these two constructs modern American copyright law should adhere to. The traditional fair use test developed under a regime of Anglo-American copyright which had a limited scope of the types of derivative works protected, with specific, concrete rights granted to authors against an otherwise generally permissible right to adapt the original work granted to the public. But the 1976 Copyright Act describes the author’s derivative work right as covering all recastings, transformations, and adaptations of a work. This is much more akin to the conception of author’s right, and the public’s right to fair use suddenly seems much more in tension with this broad derivative work right.
So while Sotomayor answered the narrow question—was Warhol’s use “transformative” within the meaning of the fair use clause—her opinion actually reflects an adoption of the derivative work right as superior to the fair use defense in a way that reflects the continental European view of author’s right. Kagan, on the other hand, appeals to the older Anglo-American view of copyright in which the fair use doctrine was originally created by Justice Story to preserve public access, use, and developments by later authors.
Whether one or the other of these visions of the purpose of copyright law is correct is a hard question. Certainly there are tradeoffs in choosing between copyright and author’s right. I have traced before how author’s right has some analogies to older conceptions of Roman property law (though whether the French cases that developed this right were intentionally relying on concepts of Roman property law is unknown). Copyright in the Anglo-American legal tradition is much more ends-oriented: how do we make the market for new works work? And of course many, both traditionally and now, have a deep skepticism in the propriety of any copyright law. But at least in the American context, I think the general popular expectation that the public and later creators can make broad use of the original work relies more or less on the traditional American conception of copyright as an economic construct, not a moral right of the author.
And yet, Justice Sotomayor’s majority opinion is a strong statement in favor of the principle of author’s right within American copyright law, as introduced through the broad derivative work right created by the 1976 Copyright Act. In many ways her opinion goes against both the popular understanding of copyright law and the tendency of prior Supreme Court decisions on fair use. That may explain both how the outcome surprised many commentators and some of the eyebrow-raising footnotes through which the two opinions converse. In effect, Justice Sotomayor may have answered the question presented by the parties to the Court regarding a specific technical factor in the fair use test—but I do not think that was the question the American public or Justice Kagan thought the Court needed to answer.
