The Authors' Take - Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

U.S. Second Circuit Court of Appeals tames “transformative” fair use; rejects “celebrity-plagiarist privilege”; clarifies protectable expression in photographs

by Jane C. Ginsburg

In Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (March 26, 2021), the Second Circuit reversed the SDNY’s grant of summary judgment that Andy Warhol’s silk screen adaptation of a photographic portrait of entertainer Prince was a fair use. The Second Circuit’s decision retreats both from its prior caselaw’s generous characterization of artistic reuse as “transformative,” and from the outcome-determinacy of a finding of “transformativeness.” The court also provided an important explanation of copyrightable authorship in photographs.

Lynn Goldsmith's photograph (L);
Andy Warhol's Prince (R) 

Like other recent decisions, this judgment may signal a taming of “transformative use.” Prior caselaw, particularly in the district courts, seemed to accept almost any alleged new meaning or purpose, or added expression, as “transformative,” and then, having racked the first fair use factor into the defendant’s column, lined up the other three to conform to the first. Appellate courts now may be curbing this enthusiasm, both by adopting a more critical assessment of alleged transformations, and by reviving the independent importance of the fourth factor, market harm. In emphasizing the impact of the defendant’s use on the plaintiff’s ability to license derivative works, the Second Circuit may have begun to redress Cariou’s derogatory treatment of the art world proletariat. The court recognized that depriving photographers of licensing markets, including markets for using their works as “raw material” for other artists to stylize, disserves the overall goal of copyright to promote creativity by enabling artists to make a living.

Furthermore, the court’s exposition of protectable expression in photographs should reassure photographers, particularly photojournalists, whose art consists largely of knowing how and when to seize the moment. Against the contention that such images merely convey a reality the photographer did not create, the court’s emphasis on “the image produced in the interval between the shutter opening and closing,” (at *37) recognizes that “the readiness is all.” (Shakespeare, Hamlet V.2).

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

Beatles documentary reproducing twelve songs in their entirety is not fair use

Author: Eleonora Rosati (University of Southampton and e-LAWnora)

Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch), Chancery Division, England and Wales, 1 July 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv144, first published online: September 2, 2015

In his decision Arnold J ruled, among other things, that the unauthorized use of twelve songs by the Beatles for inclusion in a documentary on their first US concert could not be considered fair use under §107 of the US Copyright Act.

Legal context

The Beatles in 1964

What the High Court had to determine in this case was (1) whether (under English law) a collateral contract to grant a synchronization licence was concluded during the negotiations between the claimants and the defendants; (2) whether (under English law), if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronization licence; (3) whether the exploitation of the documentary in the US (currently subject to consideration in parallel US proceedings) would infringe the US copyrights in the works, or whether instead the fair use defence under §107 of the US Copyright Act would apply.

Facts

In 1964 the Beatles held their first US concert at the Washington DC Coliseum. On that occasion the group performed twelve songs. The 35 min concert was videotaped for subsequent exhibition at cinemas and theatres across the US.

In 2009 one of the defendants (Iambic) acquired a copy of the master tape of the concert video to make a documentary of the concert. Subsequently it transferred the rights to the tape to the first defendant (WPMC). Between 2009 and 2010 Iambic negotiated with the claimants (collectively SATV, holders of the rights to the relevant Beatles songs) for a licence to reproduce and otherwise exploit the works as part of the soundtrack to the documentary. No synchronization licence was executed as a result of these negotiations.

In 2012 SATV discovered that the documentary was being promoted by a means of a website and a trailer. SATV thus brought proceedings in both the UK (where the documentary had been made) following the UK Supreme Court decision in Lucasfilm Limited and Others v Ainsworth and Another [2011] UKSC 39, and the US (this being the defendants' principal target market).

Analysis

In relation to the issue whether a collateral contract to grant a synchronization licence was concluded during the negotiations, Arnold J held that no contract could be considered to subsist between the claimants and the defendants.

Turning to the point whether, if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronization licence, the judge relied on Motivate Publishing FZ LLC and Another v Hello Limited [2015] EWHC 1554 (Ch) to hold that the defence of proprietary estoppel is not available in a case like the one at hand, ie a ‘subject to contract’ case.

Finally Arnold J considered whether the exploitation of the documentary in the US would be eligible for the application of the fair use defence under §107 of the US Copyright Act. Among his preliminary observations, the judge addressed criticism of the fair use doctrine as being ‘indeterminate and unpredictable’ (para 100). He recalled that over the previous decade scholarly research in this area ‘has demonstrated that what at first blush may appear to be an amorphous mass of individual decisions can be analysed and categorized in the same way as other areas of common law (negligence, for example)’ (para 100).

The judge then undertook his analysis of the four fair use factors within §107 as the US Supreme Court interpreted them in Campbell v Acuff-Rose Music (92–1292), 510 US 569 (1994). With particular regard to the first three factors, he rejected the claimants' argument that, to succeed in a fair use defence, the defendant must show that no more has been taken of the protected work than is necessary for the transformative purpose. Instead, ‘what the defendant must show is that the amount taken is reasonable, and not excessive. If no more is taken than is necessary, then that will be reasonable. The defendant does not have to show that he has taken the minimum necessary, however’ (para 107).

The judge also accepted WPMC's contention that ‘it can be fair use to copy the whole of the copyright work where this is justified by the transformative purpose, particularly but not exclusively if the copy is not a high quality one (eg where an image is reduced in size)’ (para 108).

This said, Arnold J ruled, however, that the inclusion of the copyright works in the documentary could not be considered fair use because the Beatles' songs in it ‘are expressive works within the core of copyright protection; the use is a commercial one; the use is only partly transformative; the [c]opyright [w]orks are reproduced in their entirety; the extent of the reproduction is excessive having regard to the transformative purpose; and to permit such use would be likely to damage the market for, or potential value of, the [c]opyright [w]orks’ (para 122).

Practical significance

Besides issues relating to existence of a contract and proprietary estoppel, the importance of this case lies in the appreciation of the fair use doctrine by a court outside the US. In reviewing the relevant fair use factors, not only did Arnold J address the main criticisms against this doctrine but also provided a clear overview of the current law on fair use.

Considering the sometimes contrasting approaches at the level of US courts, this judgment sheds light on controversial aspects of the fair use doctrine. By tackling issues such as transformativeness, Arnold J clarified both that: (1) what is required for a finding of fair use is that the defendant proves that what he/she has taken from the original work is reasonable, rather than the minimum necessary, and (2) reproduction of a work as a whole does not prevent per se a finding of fair use.

Google Books' Library Project is fair use

Author: Eleonora Rosati (University of Cambridge)

The Authors Guild, Inc and Others v Google Inc, USDC SDNY 05 Civ 8136 (DC)

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpt240, first published online: January 8, 2014

In late 2013, Judge Chin issued his much-awaited summary judgment in the long-running dispute between the Authors Guild and Google over the latter's Library Project, and held that Google's activities were protected as fair use.

Legal context

Under 17 USC s 107, the following factors must be considered in order to determine whether the use made of a copyright-protected work may be considered fair: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes (a key consideration in relation to this factor is whether the use is transformative, ie whether the new work merely supersedes or supplants the original creation or whether, instead, it adds something new, with a further purpose or different character); (2) the nature of the copyright work; (3) the amount and substantiality of the portion used in relation to the copyright work as a whole; and (4) the effect of the use upon the potential market for or value of the copyright work.

Facts

Since 2004, Google has scanned over 20 million books—both in-copyright and public domain works—in their entirety (with approximately 93 per cent of books being non-fiction, and the great majority of works being out-of-commerce), delivered digital copies to participating libraries, created an electronic database of books and made text available for online searches through the use of snippets. Although users can search the full text of all the books in the corpus, it is not possible to view a complete copy of a snippet-view book. Participating libraries may download a digital copy of each book scanned from their collections, but not copies from other libraries' collections.

In 2005, five member publishers of the Association of American Publishers (AAP) and the Authors Guild sued Google for copyright infringement over unauthorized scanning of books. In late 2012, Google and the AAP concluded a settlement agreement, which however did not affect litigation between the Authors Guild and Google. Shortly after the conclusion of the settlement agreement, Google submitted a brief to the US Second Circuit Court of Appeals, in which it sought to reject Judge Denny Chin's ruling earlier that year, a ruling that let the Authors Guild sue Google on behalf of all authors whose books were scanned without permission. The Second Circuit substantially accepted Google's submission and held that Judge Chin's class certification had been premature in the absence of a determination by Judge Chin himself of the merits of Google's fair use defence pursuant to 17 USC s 107.

Analysis

Before considering the four fair-use factors, Judge Chin highlighted the benefits of the Library Project, including that fact that it: (a) provides a new and efficient way for readers and researchers to find books; (b) promotes a type of research known as data or text mining; (c) expands access to books, for example by providing print-disabled individuals with the potential to search for books and read them in a format that is compatible with text enlargement software, text-to-speech screen access software and Braille devices; (d) helps preserve books and give them new life, for example out-of-commerce works; (e) helps authors and publishers, by offering links to sellers of the book and/or libraries listing the book as part of their collections.

Overall, the judge found that Google's use of copyright-protected content is highly transformative, and that Google Books does not supersede or supplant books, in that it is not a tool to be used to read books. Although

Google is a for-profit entity and Google Books is largely a commercial enterprise … even assuming Google's principal motivation is profit, the fact is that Google serves several important educational purposes.

These considerations led the judge to conclude that the first fair use factor weighed in favour of Google. As regards the second factor, two features of the Library Project favoured a finding of fair use, these being that most scanned works were non-fiction books, and that the books were published works. In relation to the amount and substantiality of the portion used, although Google limits the amount of text displayed in response to a search, the fact that Google scanned full texts and offers full-text search of books could weigh slightly against a finding of fair use. However, Google does not sell its scans, and the scans do not replace the books. These, together with further consideration that Google Books actually enhances the sales of books to the benefit of copyright holders, were all viewed favourably in respect of the fourth fair use factor.

The judge concluded that, overall, the Library Project provides significant public benefits, and thus granted Google's motion for summary judgment.

Practical significance

Although the Authors Guild has already announced its intention to appeal, Judge Chin's summary judgment order represents an important victory for Google. The decision also provides a significant interpretation of the controversial notion of commercial use in the first use factor. Judge Chin appeared to approve implicitly the Second Circuit in Blanch v Koons, 467 F3d 244 (2d Cir 2006), which held (at 253) that a commercial use should weigh against a finding of fair use only when the defendant ‘directly and exclusively acquires conspicuous financial use of the copyrighted material’. As a matter of practice, distinguishing commercial and non-commercial uses may be difficult, as most publicly disseminated uses involve some monetary gain, whether direct or indirect (William F Patry, Patry on Fair Use, Thomson Reuters, Eagan (MN, USA) (2013) 105–106.)

The decision is also extremely relevant outside the USA, in that it elicits further reflection on three key issues in current EU copyright reform debate. First, there is no mention of orphan works in Judge Chin's opinion. In rejecting the proposed revised settlement agreement between Google, AAP and the Authors Guild in 2011, among other things, the judge held that the questions of who should be entrusted with guardianship over orphan books, under what terms and with what safeguards were matters more appropriately decided by US Congress than through an agreement among private, self-interested parties. Omission of orphan works issues from the ruling might lead to the conclusion that—even lacking specific legislation in the USA—presence of orphan works in libraries does not represent an insurmountable obstacle to digitizing and placing them online.

Secondly, Judge Chin's understanding of text and data mining is that these are activities which fall outside the scope of copyright protection tout court. Unlike current EU debate (especially within the recent initiative from the Commission on ‘Licences for Europe’), text and data mining activities would require neither a licence nor a specific copyright exception or limitation.

Finally, the main issue remains that of copyright exceptions and limitations, as codified in Article 5 of Directive 2001/29. It is unlikely that current EU legislative framework would permit national courts to achieve outcomes similar to that of the US District Court for the Southern District of New York. As such, it is almost unavoidable that the decision on the Google Books Library Project will inform discussions on whether the EU should reform its enumerated system of exceptions and limitations and, if so, whether it should broaden their scope or even opt for an open-ended clause altogether, possibly modelled on the US fair-use doctrine.