Infringing Uses, Not Works
By
By
Timothy J. McFarlin[1]*
We need to rethink how we talk about derivative works after Andy Warhol Foundation v. Goldsmith. Courts and scholars commonly use the term “infringing work” to refer to art like Warhol’s Orange Prince after a ruling that it has infringed someone’s copyright. But the Supreme Court held that whether Orange Prince infringes the copyright in Lynn Goldsmith’s photo of Prince ultimately depends on how it is used. Orange Prince on the cover of a magazine about Prince infringes Goldsmith’s copyright. Orange Prince on a museum wall may not.
Use, then, is the key. Because any work can conceivably be used in a noninfringing way, I argue here that there is no such thing as an infringing work. Conversely, and more controversially, there might also be no such thing as a per se noninfringing derivative. Again, use is key. A work incorporating a prior copyrighted work will necessarily infringe unless it is used in a noninfringing way, such as within the scope of a license or as a fair use.
By clarifying how infringement—at least post-Warhol—is about uses not works, this piece will help courts and scholars better understand and apply the law moving forward, particularly as to controversial derivatives like fanfiction and AI-generated images. To put it bluntly: over 3,000 judicial opinions have said “infringing work.” From here, it should be zero.
Is there such thing as an infringing work? Prior to the U.S. Supreme Court’s decision in Warhol v. Goldsmith,[2] it seemed that the answer was an uncontroversial and resounding “yes.” Courts have used the phrase in over 3,000 decisions,[3] with the typical logic being that a creative work (like a painting, book, or film) that infringes on someone else’s copyright is ipso facto an infringing work.[4] But Warhol turns this logic on its head.
How so? Justice Sotomayor’s majority opinion focused on whether the challenged use—a reproduction of Andy Warhol’s Orange Prince on the cover of a Vanity Fair tribute to Prince—infringed the copyright in Lynn Goldsmith’s photograph of Prince.[5] Implicitly, then, as Justice Gorsuch’s concurring opinion noted, a different use—such as displaying Orange Prince on an art museum wall—might not infringe Goldsmith’s copyright.[6]
Under this approach, Orange Prince cannot per se be infringing; infringement necessarily depends on how Orange Prince is used.
My aim here, then, is to highlight Warhol’s distinction between a derivative work and its uses and to explore some of the further implications.[7] The first is that, although an unauthorized creation of a derivative is a prima facie infringement of the original work,[8] it should also be considered a presumptively fair use of that work. This is because (a) most, if not all, derivatives can be used in a fair (and thus noninfringing) way, like a museum display of Orange Prince, and (b) federal copyright is not infinite, so all uses of a derivative will eventually be noninfringing.[9] To wit, even though Orange Prince on the cover of Vanity Fair is an infringing use now, it will cease to infringe once the copyright in Goldsmith’s photo expires.[10] A derivative work is thus not itself infringing; only certain uses of it are infringing, and only over a finite span of time.
Though the expiration of the copyright in the original work may be far off in any given case (typical copyright duration is an author’s life plus seventy years),[11] it’s still vital to keep expiration in mind, particularly given judges’ immense discretionary power to order the destruction of “copies . . . found to have been made or used in violation of the copyright owner’s exclusive rights”[12] Otherwise a court may improperly target a derivative’s existence instead of more narrowly guarding against its unfair use, contrary to Warhol. And this concern is not hypothetical, per my discussion below of a recent Order to destroy copies of a Lord of the Rings derivative.[13]
A second implication of Warhol’s use-focus is the conflict it seems to present with 17 U.S.C. § 103(a)’s edict that “protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.”[14] Here, then, any part of Orange Prince in which copyrighted aspects of Goldsmith’s photo have been unlawfully used is not itself copyrightable.
The Supreme Court did not discuss the relationship between its use-by-use approach and section 103(a), and scholars have reasonably pondered how that approach can be reconciled with section 103(a)’s apparently all-or-nothing approach to a derivative’s copyrightability.[15] I suggest here that the most sensible (or perhaps least nonsensical) way forward is to determine whether a derivative was created with an intent to use the original work unfairly.[16] If so, then the original was used unlawfully and there should be no copyright in any part of the derivative pervaded by that original work. Conversely, if the derivative was created with a good faith intent to use it lawfully (e.g., within the scope of a license, with the intent of mere personal use, for a noncommercial sharing within a fanfiction community, or for some other potentially noninfringing purpose),[17] then the original work was not “unlawfully used” within the meaning of section 103(a), and a later unfair use of the original should not nullify copyright in the derivative.
And here’s how this interpretation of section 103(a) fits into my thesis of infringing uses, not works: even derivatives created with an intent to unlawfully use another’s copyright-protected material should not be deemed per se infringing for all uses. Section 103(a) merely declares that their creators will not be rewarded with their own copyright protection. It does not command that all uses be judged infringing.
The key distinction, then, is between copyright protection and infringement. I think the Warhol Foundation should retain its copyright in Warhol’s aesthetic additions to Goldsmith’s photograph because, as detailed below, they were apparently all created under a license from Goldsmith, even though there was a later use that infringed because it exceeded the scope of that license.[18] Conversely, and as also detailed below, the unauthorized Lord of the Rings derivative likely should have no protection of its own, as the evidence strongly suggests that it was created with an intent to engage in unauthorized commercial competition with the Tolkien Estate.[19] But this does not mean that all later uses of that derivative—such as free sharing within a fanfiction community—must be deemed infringing.[20]
So, when presented with an infringement claim against a derivative—whether it be Orange Prince or a Lord of the Rings sequel or one generated using artificial intelligence, as discussed below—a court should adjudicate it solely on a use-by-use basis. If a particular use or uses are found infringing, any injunction should be narrowly tailored to those uses and no others. Similarly, destruction should only be considered in cases involving works where the risk is high that the injunction will not be obeyed. Even then, at least one copy should be preserved—impounded with the court if needed—until the infringed copyright has expired.[21]
And when faced with a claim that an infringing use has nullified the copyright in a derivative under section 103(a), a court should determine whether that derivative’s creation was driven by an intent to use the original work unfairly. Even if it was, it would not make the derivative itself infringing for all uses, it would only stop the derivative’s creator (or the creator’s transferee) from controlling others’ use of the derivative’s added aesthetics. In sum, courts should only target and discourage discrete infringing uses, not the creation and existence of derivative works themselves.[22]
Before we proceed further, an important caveat: I’m generally agnostic here as to (1) whether Warhol’s approach is how fair use has always worked, or at least is supposed to have worked, or if it’s a new mode of analysis, (2) whether a use-by-use approach is, on balance, better or worse for our copyright system, and (3) how much it all truly matters. Others are debating these larger issues,[23] and these debates should continue. Instead of weighing in on them directly, my goal here is simply to illuminate the implications introduced above. This will hopefully both inform the larger debates and ultimately prove at least of some service in our quest for copyright’s elusive but essential balance: an exclusionary right broad and long enough to foster and protect creativity while still narrow and short enough not to smother others who seek to build upon that creativity.[24]
Part II below further details how Warhol urges us to focus on infringing uses, not works. Part III discusses how this focus should inform the scope of equitable remedies such as injunction and destruction. Part IV then tries to reconcile a use-based focus with the rule prohibiting copyright in parts of derivatives in which preexisting material “has been used unlawfully.” Part V opines on how a use-based approach could impact generative AI technology. And Part VI considers the converse implications: contrary to other scholars’ understanding, or at least their preference, I argue that there might be no such thing as a per se noninfringing derivative (or that it may effectively only be one that directly comments on the original work). So just as an “all” approach to whether a derivative infringes is problematic, so too is a “nothing” approach, at least post-Warhol.
The thrust of the Supreme Court’s majority opinion and concurrence in Warhol is that the Court’s only proper focus was on the challenged use—namely the appearance of Orange Prince on the cover of Vanity Fair’s 2016 issue commemorating the life of Prince—and no other uses.[25] The majority took care to note that it “expresse[d] no opinion as to the creation, display, or sale of any of the original Prince Series works,” which include Orange Prince and the fifteen other derivatives of Goldsmith’s photo.[26] Now, while this might be chalked up to Goldsmith’s decision to “[abandon] all claims to relief other than her claim as to the 2016 Condé Nast license and her request for prospective relief as to similar commercial licensing,” per the majority’s footnote, and therefore limited to the procedural details of this one case,[27] Justice Sotomayor’s opinion indicates otherwise.
First, though Justice Sotomayor could have refrained (due to Goldsmith’s narrowing of her claim) from discussing other uses of Orange Prince, she did discuss them. And she did so in a way that highlighted their likely noninfringing nature: the Court’s own reproduction, public display, and distribution of both Orange Prince and Goldsmith’s photo within its opinions was covered by fair use, Sotomayor noted,[28] just as that doctrine would likely cover using Orange Prince for the purpose of teaching.[29]
Second, Justice Sotomayor also discussed the difference between an infringing and noninfringing use of Warhol’s iconic Campbell’s Soup Cans.[30] Reproducing, publicly displaying, and distributing the “Campbell’s Soup” logo in a series of paintings for collectors and museums was likely noninfringing, Sotomayor posited,[31] while licensing the work to a competing soup business to be reproduced, publicly displayed, and distributed in grocery stores likely would be infringing.[32]
While Justice Sotomayor probably saw this as a necessary explanation for why Warhol’s Soup Cans were mentioned as a paradigmatic example of fair use in the Court’s Google v. Oracle ruling just two years earlier,[33] as contrasted with its decision on his Orange Prince, it still served to highlight the use-focused nature of the Court’s infringement inquiry more generally. In other words, the example further clarified the Court’s core view of copyright infringement as applied to derivative works: no derivative is per se infringing for all uses, nor is it necessarily noninfringing for all uses, even a derivative as iconic and famous as the Cans. Context matters.
And as to Justice Gorsuch’s concurrence, joined by Justice Jackson, its main purpose was to expound on that very point:
[W]hile our interpretation of the first fair-use factor does not favor the Foundation in this case, it may in others. If, for example, the Foundation had sought to display Mr. Warhol’s image of Prince in a nonprofit museum or a for-profit book commenting on 20th-century art, the purpose and character of that use might well point to fair use . . . . Under the law Congress has given us, each challenged use must be assessed on its own terms.[34]
Last, I think it illuminating to quantify the opinions’ terminology. Justice Sotomayor wrote “infringing use” once, “particular use” once, “challenged use” twice, “use at issue” six times, but “infringing work” not at all.[35] Justice Gorsuch used “challenged use” eight times and “particular use under challenge” twice.[36] The only time “infringing work” was used in any opinion, including Justice Kagan’s dissent, was once, in the concurrence.[37] And even there it was only in the context of discussing whether Orange Prince had prima facie infringed Goldsmith’s photo—i.e., was it substantially similar to any of the photo’s protected elements, such as angle, light, and shade—not as to whether Orange Prince’s appearance on the cover of Vanity Fair was infringing, which, again, depended on the affirmative defense of fair use.[38]
This all is, I think, a relatively straightforward understanding of the Court’s majority and concurring opinions, particularly as to their use-focus, so I won’t belabor it.[39] I’ll instead proceed to discuss some implications.
The Warhol decision was strictly concerned with the affirmative defense of fair use, and only one of the defense’s four factors at that.[40] But as I indicated in Part I, its implications are broader. In particular, Warhol’s use-focus should help federal courts more precisely tailor the scope of equitable relief—involving orders of injunction and destruction—when faced with infringing uses of copyrighted works. In sum, such an order should be tailored toward the particular use or uses litigated and no others, and it should not target the existence of a derivative itself.
To illustrate, in December 2023, Judge Stephen V. Wilson of the Central District of California issued both (1) a worldwide injunction against the further publication of the Fellowship of the King, a work of fanfiction written without the Tolkien Estate’s consent, as well as (2) an Order that the writer, Demetrious Polychron, “[p]ermanently destroy all physical and electronic copies of the Infringing Work.”[41] Polychron’s prior aggressive actions (unsuccessfully suing the Tolkien Estate’s licensee, Amazon, for allegedly infringing his claimed copyright, as further detailed below[42]) likely and understandably drew that court’s particular ire. But it’s provocative cases like these that truly put copyright’s principles to the test.
As to that provocation, and as recounted in Judge Wilson’s summary judgment Order, the record was replete with proof of actual copying and substantial similarities to protected elements within Tolkien’s Lord of the Rings trilogy.[43] For example, the Fellowship of the King “made use of hundreds of characters from [the Lord of the Rings books], including inter alia Samwise Gamgee, Rosie Gamgee, Tom Bombadil, Aragorn, Arwen, Legolas, Gimli, El[e]ssar, Galadriel, Elrond, and Sauron.”[44] So this was a slam-dunk case of prima facie infringement.
This was also a very strong case against fair use, given the commercial and competitive nature of what was apparently the only use at issue: Polychron’s sales of the Fellowship of the King on retail sites in which the Lord of the Rings books were being, or could have been, sold.[45] Not only that, but Polychron sued Amazon, which had created a Lord of the Rings prequel television series under the authority of the Tolkien Estate, claiming it was infringing his copyright.[46] Polychron’s suit was quickly dismissed, but it was no surprise that the Estate soon sued Polychron, requesting all available monetary and injunctive relief.[47]
In sum, Polychron’s Fellowship of the King was an unauthorized derivative which was directly competing with the copyright-protected Tolkien originals and being asserted in litigation against authorized derivatives.[48] On the surface, then, Judge Wilson seemed eminently justified in bringing down the full weight of copyright law. Why not enjoin all uses of the Fellowship and order the destruction of all physical and electronic copies?
Well, here’s why: not all uses of the Fellowship will necessarily infringe when viewed under the lens of Warhol. And that’s true even in a lopsided case such as this. But the Warhol decision was issued just months before Judge Wilson’s Order here,[49] and it did not discuss remedies. Though Warhol was cited by the Tolkien Estate in arguing that commercializing the Fellowship of the King could not possibly be a fair use,[50] Warhol does not appear to have been cited by Polychron in opposing the Estate’s requested injunction, nor does it appear that Judge Wilson considered how Warhol might apply in that context.[51]
So here’s how: first, whether a derivative work, like the Fellowship of the King, infringes copyright must be judged use by use, per Warhol.[52] The sharing of the Fellowship of the King for free and within a fanfiction community would present a strong case for a fair (and therefore noninfringing) use.[53] The retention of a copy for Polychron’s own private, personal joy would pose yet a stronger case.[54] So the injunction should have targeted only the commercial sale of Fellowship of the King, the sole use litigated in the case.[55]
Second, it appears that the infringed works may now be out of copyright in New Zealand, where the Lord of the Rings copyrights apparently expired on January 1, 2024.[56] So the injunction, issued by a U.S. court and applying only U.S. copyright law, should not have been worldwide in scope.[57]
Third, even in the U.S., the infringed works’ copyrights will expire: likely in 2046 for the Fellowship of the Ring, 2049 for The Two Towers, and 2050 for the Return of the King.[58] So the court should not have ordered the destruction of all copies of the work, given that at some point all uses—even commercially competitive ones—will be noninfringing.[59] A sensible alternative, if the court thought there to be a substantial risk of noncompliance with the injunction, would have been a more limited order of destruction, one coupled with the impoundment of a copy to be preserved until the infringed copyrights have expired.[60]
Now, in the digital age, an indefinite number of copies of Polychron’s Fellowship are already out in the world, in the possession of people outside of Polychron’s control.[61] This includes a copy attached as an exhibit to the Tolkien Estate’s own pleadings.[62] So, yes, the court’s Order is not truly eliminating the work. But that isn’t the same as saying that the Order is proper.
The Fellowship of the King is not an infringing work. Warhol instructs us that there is no such thing: no derivative necessarily infringes as to all uses for all time. The Fellowship was simply used in an infringing way. So Polychron should have had the opportunity to retain possession of a copy of his work—or at least regain it, from impoundment, upon the expiration of the Tolkien copyrights—and then one day resume use.
Judge Wilson’s Order should have been more limited. And other judges, when issuing orders of injunction, impoundment, and destruction, should take heed of Warhol’s use-based approach.[63]
But one further injunction-related issue merits discussion: could the logic of trademark law’s “safe-distance rule” justify Judge Wilson’s Order in the context of copyright?[64] This rule permits a judge “to issue injunctions that sweep even more broadly than the Lanham Act would permit against a manufacturer who has not already been found liable for trademark infringement.”[65] To my knowledge, the Sixth Circuit is the only court to have been expressly asked to apply the safe-distance rule to a copyright case, and it declined to do so, writing that “the rule was crafted to address the fact that, in the trademark context, an infringing mark is likely to confuse consumers” and that “[t]he same concern of limiting confusion of different products is not apparent in the copyright context.”[66]
Implicitly, though, the D.C. Circuit seemed to apply something akin to the safe-distance rule when it upheld an injunction against an infringer of Disney’s copyrights in Mickey and Minnie Mouse, one that also prohibited future infringements of not just the mice, but also of other characters not previously at issue in the case, such as Donald Duck, Huey, Duey, Louie, Pluto, Goofy, and Roger Rabbit.[67] There the court wrote that when “liability has been determined adversely to the infringer, there has been a history of continuing infringement[,] and a significant threat of future infringement remains, it is appropriate to permanently enjoin the future infringement of works owned by the plaintiff but not in suit.”[68]
In light of the above, I think judges should have some leeway in the context of copyright to go beyond the litigated issues in crafting an injunction, but under Warhol, not to go beyond the type of use litigated. To wit, instead of enjoining Polychron from “[c]opying, distributing, selling, performing, displaying, or preparing derivative works based on any copyrighted work by Professor J.R.R. Tolkien including The Lord of the Rings,”[69] Judge Wilson should have enjoined only the “selling” of derivatives based on Tolkien’s works.
Now, I do think it’s fine for the injunction to cover all such works of Tolkien’s, even if Polychron didn’t previously use a particular book or character. In that sense, I agree with the safe-distance logic implicitly applied by the D.C. Circuit,[70] and I think it passes muster under Warhol. But going beyond the litigated use not only runs contrary to Warhol, it conflicts with the safe-distance rule itself: namely, how it’s rooted in market competition, which private use (for example) would typically not affect.[71]
Applying a safe-distance logic to enjoining otherwise fair uses would also ignore copyright’s limited duration. A trademark has no expiration date; as long as a mark’s owner does not abandon its use, it can exist indefinitely, and its owner can thus indefinitely protect it from confusingly similar competitive uses.[72] But upon a copyright’s expiration, the law of copyright places absolutely no limits on competition.[73]
For example, what if Polychron comes up with an idea for another Tolkien-derived novel, one that could become very popular? Under Judge Wilson’s Order, Polychron must (to avoid contempt of court) delay writing it until Tolkien’s copyrights expire, at which point the injunction will also expire or can at least be dissolved upon request.[74] But in the meantime what if the inspiration leaves him, or worse, he becomes incapacitated or dies? Society would then lose the opportunity for that novel, and the progress which our Constitution champions would be stifled.[75] However, if Polychron could at least lawfully write the novel now, it could still be published when the Lord of the Rings copyrights expired, even if he died before then. This would enure to society’s benefit, in line with copyright’s proper balance.[76]
This discussion of the safe-distance rule ultimately reinforces, to my mind, the distinction between uses and works after Warhol. The former can be infringing and, if they are, they should be enjoinable; the latter can and should be neither.
But what about 17 U.S.C. § 103(a) and its edict that “protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully”?[77]
Here this means that any part of the Fellowship of the King in which the copyright-protected aspects of Tolkien’s Lord of the Rings have been used unlawfully is not itself copyrightable. The prevailing judicial interpretation of this is that if Tolkien’s material “pervades” Polychron’s book, then none of the book, not even the characters and situations Polychron created, will be protected by copyright.[78]
Warhol did not discuss the relationship between section 103(a) and its use-by-use approach, and scholars have reasonably pondered how that approach can be reconciled with section 103(a)’s largely all-or-nothing approach to a derivative’s copyrightability.[79] For my part, I see two viable interpretations.
The first is that if and when the owner of an alleged copyright in a derivative has been judged to use copyright-protected material unlawfully, the alleged copyright will at that point be deemed invalid. But this devolves quickly: what if, as may have been the situation in Warhol,[80] the creation of the derivative was licensed, but its later use exceeded the scope of the license and was therefore unlawful? Should the Warhol Foundation, from this point on, lose all ability to control the reproduction, distribution, adaptation, and public display of Orange Prince, even though its creation was lawful and it was apparently used lawfully between 1984 and 2016?[81] Perhaps, but it seems extreme and beyond the intent of Congress, whose apparent concern was deterring the creation of unauthorized derivatives.[82]
The other interpretation, then, one likely closer to the spirit of section 103(a), is that “used unlawfully” should be judged as of the time of the derivative’s creation. How would this play out? Courts, I think, must make some determination of the intent of the derivative’s creator in order to decide whether another’s copyright-protected material was “used unlawfully.”
Was the derivative created with the intent to engage in unauthorized competition with the original work? If so, then the original was used unlawfully and there should be no copyright in any part of the derivative pervaded by that original work. Conversely, was the derivative created with a good faith intent to use it lawfully, e.g., within the scope of a license, with the intent of mere personal use, for a noncommercial sharing within a fanfiction community, or for some other potentially noninfringing purpose?[83] If so, then the original work was not “unlawfully used” within the meaning of section 103(a), and a later unfair use of the original should not nullify copyright in the derivative.
This latter approach, I think, best reconciles a fraught relationship between use-based infringement and section 103(a)’s categorical exclusion of certain derivatives from the protection of copyright. Yes, it ventures into a derivative creator’s intent, which will always be a challenging inquest,[84] but I think that challenge is relatively small compared to the ramifications of the first interpretation, where later uses (including those by the heirs of a derivative’s creator) could effectively nullify a copyright previously thought to be valid. So it seems the lesser of two evils post-Warhol.
However, even derivatives created with an intent to unlawfully use another’s copyright-protected material should not be deemed per se infringing for all uses. Section 103(a) merely declares that their creators will not be rewarded with their own copyright protection. It does not command that all uses be judged infringing.
We should distinguish between protection and infringement. Polychron likely should have no copyright protection of his own in the Fellowship of the King, as the record strongly suggests that Polychron created the Fellowship with an intent to unfairly use it in unauthorized competition with the Tolkien Estate.[85] But that doesn’t mean that all its uses (e.g., teachers excerpting it for a copyright class, fanfiction communities sharing it for free, or even Polychron’s own purely personal use)[86] will necessarily infringe.
In sum, the Fellowship was likely created with the intent to unlawfully use Tolkien’s works, and those works pervade it, so it should not have its own copyright protection. But whether other uses of the Fellowship infringe the copyrights in Tolkien’s works must still be judged on their own merits. So, if today someone (even Polychron himself) downloaded the Fellowship from the court record and shared it within a fanfiction community, then that use of the Fellowship would likely be a noninfringing fair use of Tolkien’s works.[87] Again, under Warhol, we should talk of infringing (and noninfringing) uses, not works, and section 103(a) does not suggest we speak otherwise.
While others are diving more directly into the topic of artificial intelligence and copyright,[88] it’s hard not to contemplate how Warhol’s use-focused approach will impact this groundbreaking technology, so I’ll venture a few thoughts. The main one is that by ensuring we speak of infringing uses, not works, we can help promote a balanced reaction to AI and its outputs.[89]
The AI systems that are causing the most copyright-related consternation are the ones available to the public—the most prominent to date being ChatGPT, Dall-E, Midjourney, and Bing—which anyone with an internet connection can prompt to generate words and images that, so far at least, are often substantially similar to copyright-protected works.[90] For example, the New York Times has shown examples of how prompts can cause these platforms to generate derivative images.[91]
The prompt “popular movie screencap” for instance, allegedly caused Midjourney to generate an image of the Marvel character Iron Man.[92] The Midjourney-generated image is likely prima facie infringing; it is substantially similar to the protected elements of the Marvel character Iron Man’s visual appearance and was likely actually copied from published images of Marvel’s Iron Man character.[93]
So, the key issue post-Warhol is how the public is using images like this Midjourney derivative. Are users turning around and selling it? Are they using it as a substitute for an image of Iron Man that they would otherwise have purchased from Marvel or its licensees? If they are, then the AI platforms will run the risk of contributory liability under previous Supreme Court rulings like Sony and Grokster.[94] But if not, and if instead these images are being used, at least to some extent, in a way that doesn’t compete with the original works, then that would seem to be a “substantial noninfringing use,” the prescient phrase from Sony.[95]
This factual inquiry is essential, and it’s one that might be missed if we don’t appreciate the impact of infringing uses, not works. It’s all too easy to frame the question as being whether people are using Midjourney to generate infringing works. And the answer to that is an easy yes, in the prima facie sense. But as Warhol instructs, this is not the end of the inquiry: even prima facie infringements can be put to noninfringing uses.[96] The focus must ultimately be on whether and to what extent the images or other derivatives are being used fairly or unfairly once they have been generated. Only then can AI’s outputs be properly judged in line with Warhol.
This use-focused output inquiry is likely also relevant to the related but distinct question of whether the unauthorized reproduction of copyrighted works involved in training AI systems—i.e., copying at the input stage rather than the output stage—constitutes infringement.[97] If unauthorized copying at the input stage can ultimately be shown to be but a means to the end of generating outputs that the public is using in substantially noninfringing ways, then Warhol could, albeit indirectly, impact the fair use analysis for AI’s inputs as well.
And given that the destruction remedy has been sought against not just the input copies and the output derivatives, but against entire training models,[98] Warhol’s use-focused inquiry could indeed help determine generative AI’s continuing existence.[99]
I’ve so far discussed how Warhol instructs against an “all” approach to infringement, i.e., that certain derivatives are infringing works, period, no matter how they are used. But there’s also the converse: a “nothing” approach. That is, there’s a belief among proponents of a broad fair use right (to which I’m admittedly sympathetic) that certain derivatives are noninfringing from the moment of creation and can never infringe no matter how they are used.[100] I think that can’t be right either after Warhol.
Returning to the details of that case, the Warhol Foundation sought a declaration that all sixteen images in Warhol’s Prince Series were fair use, and U.S. District Judge Koeltl granted that relief, ruling on summary judgment that the entire Prince Series was protected by fair use.[101]
In light of Justices Sotomayor’s and Gorsuch’s opinions, we can see how Judge Koeltl’s ruling essentially mirrored the overbroad relief granted against Polychron’s Fellowship of the King. Just as Judge Wilson’s Order went beyond the litigated use as against the derivative,[102] Judge Koeltl’s Order went beyond the litigated use in the derivative’s favor.[103]
And that went too far. Not every use of every image of the Prince Series will necessarily be fair under one unified analysis. Each image has some aesthetic differences from the others, which should first be considered.[104] Next, the use of each should also be considered, particularly whether and to what extent each image is being used in commercial competition with Goldsmith’s photo. As Justice Gorsuch noted, a display in a museum is not exactly the same as a display and distribution on a magazine cover.[105] So in order to have properly adjudicated the Foundation’s requested declaration, the district court should have analyzed each work’s aesthetics in the context of the particular use or uses threatened by Goldsmith’s infringement claim.
Judge Koeltl instead found that all sixteen images in the Prince Series were “transformative works” under the same analysis, thereby implicitly finding all of them noninfringing for all uses.[106] In this thinking, the judge was not alone. Many courts and scholars prior to Judge Koeltl have promoted this concept of a “transformative work,” taking that term from Campbell v. Acuff-Rose, a fair use ruling in favor of the group 2 Live Crew’s derivative version of Roy Orbison’s song “Oh, Pretty Woman.”[107] They’ve typically applied it to derivatives that, though still substantially similar to protectable elements within the original work (otherwise they wouldn’t be derivative), have otherwise expressed a substantially different meaning or message than the original, either via modified aesthetics, the context of the use, or both.[108]
But even Campbell concluded with a caveat. Justice Souter wrote that the answer to whether 2 Live Crew’s derivative infringed the Roy Orbison original could depend on if it would be used in competition with an authorized rap version of “Oh, Pretty Woman.”[109] In sum, the context of the use still mattered despite the derivative’s substantially different aesthetics.[110]
Warhol demonstrates the importance of Campbell’s caveat. Justices Sotomayor’s and Gorsuch’s opinions effectively instruct that labeling something a “transformative work” can’t mean that it’s noninfringing for all uses.[111] At most, the label is a judicial determination that a derivative work’s aesthetic changes or additions to the original work are significant.
Now, this might mean that all expected uses of the derivative are likely to be noninfringing—nobody expects the Warhol Foundation to actually license the Cans to a competitor of Campbell Soup Company—but that isn’t the same as declaring the Cans to be a per se noninfringing work.[112] As Justice Sotomayor put it, “not all of Warhol’s works, nor all uses of them, give rise to the same fair use analysis.”[113] We should recognize the possibility, as Sotomayor did, that even a venerated work like Warhol’s Cans could potentially be used in an infringing way. Again, context should always matter, despite the understandable desire for the more clear-cut and expansive approach evoked by the term “transformative work.”
I do think, however, that some derivatives target the original work with aesthetics which so directly critique, parody, or otherwise comment on the original such that these derivatives will be effectively transformative for all uses. That is, it’s not just that the derivative will likely be deemed fair for all expected uses. With some derivatives it’s difficult or impossible to conceive of any unfair use. The Wind Done Gone critiquing Gone with the Wind[114] and the Coors commercial parodying the Energizer Bunny[115] are two good candidates for this category of derivative work.
Now, because the courts treat fair use as an affirmative defense,[116] a user of even these derivatives still must prove that a reasonable observer would perceive the critique, parody, or comment in any given context.[117] But, again, as to this limited category of work, this will likely be an easy burden to meet in every context. In a practical sense, then, I think it’s accurate to refer to these as “transformative works.” But for precision’s sake, and to discourage the flip-side term “infringing work,” I still suggest something like “transformative for all conceivable uses” as the preferred terminology.
But what, again, about Orange Prince? It may well have been created with Goldsmith’s consent,[118] and if so, why isn’t it a per se noninfringing derivative? In 1984, when Vanity Fair paid Goldsmith for a license to have an artist use her Prince photo as a reference, Warhol created Purple Prince, which was ultimately used in connection with a Vanity Fair feature on Prince that year.[119] The other fifteen images in the Prince Series, including Orange Prince, may have been created at that same time as part of Warhol’s process and perhaps as different options for the magazine’s editors.[120] If that’s true, then why isn’t Orange Prince noninfringing for all uses for all time?
The reason, I think, is that derivative works are by definition prima facie infringing.[121] Even when the creation of a derivative is authorized—commonly called “licensed” in copyright-speak—the existence of that license is treated by the courts as an affirmative defense.[122] In other words, even a licensed derivative is prima facie infringing of the original work, such that the burden of proof will ultimately be on the user to prove both the existence of a license and that a given use is within its scope.[123]
This is ultimately why I think the Warhol case couldn’t have been an easy “there was a license” win for the Warhol Foundation.[124] Even if the Foundation could prove that Goldsmith authorized the creation of Orange Prince in 1984, that wouldn’t automatically mean that its use on the cover of the 2016 Prince tribute issue was within that license’s scope. Even a licensed derivative may infringe if its use exceeds the scope of the license.[125] This is true even for a derivative work whose continued use is permitted by law after the termination of a license. Even then, the terms of that license will continue to govern the scope of permissible uses.[126]
After Warhol, the use of derivative works, even those whose creation was licensed and those that incorporate transformative aesthetics, is the ultimate issue when analyzing infringement. To help curb the extreme of an “all” approach, i.e., labeling a derivative an “infringing work,” and to best strike a balanced understanding of Warhol’s implications, we should take care to avoid the opposite extreme of a “nothing” approach.[127] Said another way, just as we should speak of infringing uses, not works, we should also speak mainly of transformative uses, not works.
Copyright is inherently messy.[128] A society that protects free expression while also enforcing exclusionary rights in intangible aesthetics must, I think, abandon hope of perfect labels like “infringing works” and “transformative works.” We should recognize the messiness of the enterprise—the imperfect realities of use-focused infringement after Warhol—if we’re going to make the best of it.[129]
In this way, the Warhol litigation is perhaps a fitting microcosm. Is Orange Prince infringing? It depends on how we use it. Is Warhol a good decision? That may similarly depend.