18 May 2023

Another Orange One Discovers the Law Is Unfavorable

No, not the usual Orange One. This time, it's multiple layers of dead orange ones: Andy Warhol's "Orange Prince," itself based upon a now-deceased model. The Supreme Court rejected the very limited fair-use defense proposed by the Andy Warhol Foundation (PDF) in a 7–2 decision on this point this morning. This isn't going to be exhaustive, by any means; it's going to point out some bigger-picture issues raised by the particular facts in this matter, in no particular order.

A. It's the exploitation that matters, not the derivative work itself. Here, I'm afraid, the Court was largely confined not by language; not by its own jurisprudence; but by the abysmally poor writing endemic throughout the Copyright Act, and in particular in every single instance in which an exception (in the form of a rule) is stated for the standard established of "Authors' Rights Are Supreme" in § 106. The statute, and hence the case law, relies upon the term "use" where it frequently means "exploitation" — and had anyone involved in drafting the statute had an expletive-deleted clue about how literary and artistic theory distinguish between the two, and did in the early 1970s when the 1976 Act was being drafted, this might not today be such a source of confusion. Section 107 factor 1 should not refer to "use" but to "exploitation" (and for that matter factor 4); "use" should be reserved to describing the entire term of art "fair use." In short, the Court was correct to focus on the commercial-exploitation aspect of this particular dispute, but by continuing to use the term "use" it simultaneously masks the deeper, underlying question: Whether the mere creation of "Orange Prince" by Warhol, and more to the point the rest of the so-called series, changes the fair use analysis as to a hypothetical museum exhibition, as to their use in an instructional text on artistic process, as to limited exploitation via sale of only "illustrations in a magazine/on the cover of a magazine" as allowed in the original license…

B. The stiffs-and-gifts bar needs to get out of the copyright-interpretation business. Once again, an estate has proven to be a bad actor regarding a later use. It doesn't seem to matter which side of the issue estates are on ("alleged infringer" or "extortionistic/overreaching licensor" or "outraged and victimized rightsholder"); when estates get involved, the impetus to "maximize immediate revenue" that is not just a knee-jerk reaction, but the apparent cellular DNA, of the stiffs-and-gifts bar as it engages in estate planning, estate distribution, and trust management result in almost-inevitable screwups. To name just a few particularly obvious examples across the various types of later disputes — obviously in addition to this one! — consider the egregious misconduct of the estates (usually trusts, sometimes otherwise, and by no means excluding their agents and other commercial representatives) of James Joyce, Arthur Conan Doyle, J.M. Barrie, J. Marshall Hendrix, Marvin Gaye, Randy California, Theodore Geisel, and Roy Orbison. No need to go into the historical examples from the nineteenth century…

Bluntly, the usual "fiduciary duty to maximize benefits to the decedants' heirs" impulse governing decedants' estates and trusts is not consistent with the statutory requirements of the Copyright Act. I'd argue that a "fiduciary duty to maximize" also necessarily includes the qualifier "in accordance with other governing law" — but in practice, the weltanschauung restricts consideration of that "other governing law" to tax law. This is a professional blind spot, not to mention a cultural and ethical one. It also runs into a clear and obvious evidentiary lacuna: The creator — the actual "user" — isn't around to answer questions about intent, process, exceptions, personal understanding, or anything else; this leaves us all stuck making inferences, especially regarding the next point. (To preemptively refute one probable response from copyright minimalists, though: The obvious counterproposal is that copyright should die with the author, so that estates never can get involved. Do you really, really want to incentivize putting a hit out on a composer/author/artist/screenwriter just so there would be no risk of an estate overreaching to prevent The Next Blockbuster? If you deny that this could ever happen, you're naïve — and not charmingly so.)

C. Process and product are not congruent sets for determining copyright infringement or defenses. In part, this is a necessary recognition of reality: Neither judges nor lawyers, nor any other part of an ex post evaluation of specific works in the context of specific exploitations being questioned in the courts, are unquestionably competent to definitively perform even the quasi-objective analysis of "substantial similarity." Hell, literary scholars haven't worked out how to do that regarding "The Dover Beach" versus "The Dover Bitch" (no links to text provided precisely because the latter remains in copyright… even though its author is dead, see the preceding point), and they've been trying for longer than the Statute of Anne has been in existence.

That didn't matter all that much to this particular dispute. That is, however, much more in the nature of "dodging a bullet" than of "providing useful guidance," let alone "resolving the problem." This time, it wasn't the creation or initial exploitation that was at issue, even if it should have been; IMNSHO, having actually read the bloody underlying document as it was filed in the District Court, Warhol's personal-and-complete actions more-than-arguably-less-than-certainly exceeded the initial license from the photographer, presuming that Condé Nast was in fact authorized to transfer that license to Warhol. This time, it was a subsequent expansion upon the "nature of the use" contemplated by that license that was at issue. Consider, however, if the actual creation of the works had been ripe and before the Court today; particularly in light of undercurrents in the concurrence and dissent, I'm reasonably confident the outcome would have been different (if only closer and perhaps governed by a plurality opinion without a clear majority for any rubric).

The real problem is that it's artistically and realistically inappropriate to pretend that stale reproductions in court records of the source work and the allegedly infringing work constitute an adequate representation of the dispute. Consider one of the lacunae in Campbell — how one judges a work as a "parody" because it "comments upon" another work. All that does is hide from view the conception of "comments upon"; as an obvious example, consider various controversies over Randy Newman's song "Short People" that have been raised over the years. It also neglects the changing nature over time of "comments upon." And this is an obvious, and easy-to-explain-concisely, example of the inchoate nature of the entire inquiry. Justice Holmes was more right than he said (or, in all probability, could conceive) when he warned against judges "trained only in the law" determining whether a work could be copyrighted (Bleistein). That's an exponential understatement regarding creative process, as the Ninth Circuit demonstrated all too well recently regarding Oh, the Places You'll Boldly Go! when the court attempted to use process notes against a creator who was trying to avoid problems in a way completely inconsistent with any sophisticated, literary-theory-aware understanding of "process" as it concerns "comment upon" and "influence without copying" (Dr. Seuss Enters., Inc. v. ComicMix, LLC, 983 F.3d 443 (9th Cir. 2020)).

*  *  *

It's uncertain what Warhol Foundation will mean in practice, except for this: Any creator who is operating under a license to recast another's work in any fashion needs to do two things. First, and most obvious, is to follow the terms of that license oneself. Second, that licensed creator needs to take affirmative steps to limit the discretion of any trustee, executor, or other successor in interest to exceed the scope of that license. Probably the best way to do so is with affirmative statements in the succession documents (which could, after all, be internal to an IP holding entity and not a formal trustee relationship — and in many instances should be for precisely the reasons stated in point B above), but that's probably insufficient.