Amici: How a painting of Prince could threaten documentary filmmaking

Why are documentary filmmakers so concerned about the Warhol Foundation v. Goldsmith case? A Law Dork Q&A with their lawyer in the case, Caren Decter.

One of the cases from the Supreme Court’s October sitting, Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, asked whether Andy Warhol’s silkscreen Prince paintings are “transformative” such that they are protected as “fair use” against a copyright claim from Lynn Goldsmith, the photographer whose work Warhol used as a reference for his paintings.

Relying on past Supreme Court and lower court cases, the district court in the case had sided with the Warhol Foundation, finding that the “meaning or message” of Warhol’s works was distinct from Goldsmith’s photograph, a key part of the court’s consideration of the first of four factors examined in assessing whether something is protected by fair use.

When Goldsmith appealed, however, the US Court of Appeals for the Second Circuit sided with her, holding that Warhol’s works were not protected by fair use. Specifically, the court held that “the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue” — a holding that obviously limits how a court could analyze whether a work is transformative. With that limitation on its review in place, the court held that, “viewing the works side-by-side, we conclude that the Prince Series is not ‘transformative’ within the meaning of the first factor.”

When the Supreme Court accepted review of the case, it agreed to decide whether the Second Circuit was right about this “meaning or message” question.

The grant prompted several concerned amici curiae — friends of the court — to weigh in, including a group of documentary filmmakers who count Oscar winners and other prominent documentarians among their group. As the brief notes, they are the people behind Last Days of Vietnam, Icarus, The Invisible War, and several other memorable documentaries — including RBG.

Caren Decter, a partner at Frankfurt Kurnit Klein & Selz in New York, is counsel of record on the documentarians’ brief. Decter spoke with Law Dork after last week’s arguments about why documentarians are watching the case — and why the justices should pay attention to their brief.

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Law Dork: So, you represent a group of documentary filmmakers who are very concerned, primarily about the Second Circuit’s opinion in this case, and the impact it would have, if it were to be upheld by the Supreme Court. Why do these documentary filmmakers care about what you say is, and would be, a dramatic change to the way that courts think about fair use law?

Caren Decter: I think we’re starting from the premise that preexisting copyrighted material is a critical element in many documentaries. And documentaries use these materials for a variety of reasons. Sometimes — and this is maybe the simplest case and I think this came out in the arguments — you’re using the footage to actually comment on the footage itself. And we have an example in our brief about the unlicensed inclusion of a 15-second excerpt of John Lennon’s “Imagine” to critique Lennon's secular, anti-religion utopian vision. And we cite a case where that was explored. And that’s an easy case.

But in other cases, and I think this is where the concern of the documentary filmmakers is heightened with respect to what the Second Circuit did in the Warhol case, is that many times preexisting copyrighted material is used to provide context. So, in a documentary about Muhammad Ali’s 1974 trip to Zaire for his “Rumble in the Jungle” with George Foreman, they use the unlicensed footage, and it’s not altered, it’s not changed. That’s sort of the whole point. It’s used to provide context, in a larger documentary that’s providing some sort of larger commentary, not on the footage itself, but on the significance of that fight and things like that.

So, for us, and I think this came out a little bit [at arguments] but not as much as we would have liked to see it highlighted, the real issue that we think about the Second Circuit’s decision that’s of concern is that [under it] … you’re not looking at why it was used in the documentary and what the broader meaning or message is of the documentary, as opposed to just that footage itself. You’re just looking at visual similarity. And [the Second Circuit’s decision] really suggests that it’s all about, ‘Let’s do the side-by-side comparison and if they look similar enough, we’re not going to allow fair use.’ And that’s of a special concern to documentaries, because most of the time that the footage is unaltered.

Law Dork: So, why and how do you think this case — about a photograph being used to form the basis for a series of Warhol works — is going to cause danger to documentarians?

Decter: What we tried to highlight in our brief is, for paradigmatic examples of fair use that are listed in Section 107 [of the Copyright Act] — ones that comment, critique for other purposes — a lot of times the underlying footage is unaltered, because we’re using it to provide some sort of broader criticism, again, not on the footage itself, but more broadly. The concern with the documentary filmmakers about people taking that Second Circuit’s decision and extending it too far, it’s not merely hypothetical. There’s a Southern District [of New York] case, Fioranelli [v. CBS Broadcasting, Inc.], which involves 9/11 footage. In that case, the court is specifically relying on the Second Circuit’s decision in Warhol to say, ‘Look, it’s unaltered, it looks the same, this fails under Warhol.’ And we really wanted to highlight … if they just let it stand, as is, there’s a real danger that courts will interpret the Warhol decision as requiring a side-by-side test of visual similarity. And if that becomes the test, it will really be problematic for filmmakers.

And not just because the fair use test is uncertain and there’s uncertainty. There are real implications for documentary filmmakers of this uncertainty. Most documentary filmmakers obtain [errors and omissions] insurance to protect them in the event of content claims. Most distributors require filmmakers to purchase coverage for the distributors as well. And, for many years, insurers had confidence in covering, at reasonable premiums, content that complied with fair use, as that had been developed for many years after the [Supreme] Court’s [1994] decision in Campbell [v. Acuff-Rose Music, Inc]. But post-Warhol, and now seeing this Fioranelli case, there’s a real concern that insurance companies might decline to extend coverage to documentary filmmakers because of this uncertainty in the case law. And distributors are unlikely to assume the risk of uninsured projects. So, there’s a real concern that many significant documentaries that incorporate preexisting copyrighted footage will not get made, because they’ll not get insurance, and then no one will want to distribute it.

Law Dork: Just to step back a bit. One of the things that didn’t come up a lot in the arguments, but that I think is interesting in light of the Section 107 purposes that you talk about in the brief, and the underlying basis for them, is how these limits on copyright are actually a function of the First Amendment. Can you talk a little bit about that?

Decter: The point we were making in our brief, which raises the First Amendment concerns that you just pointed out, is that fundamental to copyright law is this fact-expression dichotomy. So, what does that mean? The fact of something is not entitled to copyright protection. It’s just the expression. Some people call it the idea. You can’t copyright an idea. You can only copyright the expression of that idea. And that, I think, was really lost [in arguments].

[W]hat the district court did in Warhol, which is how courts [have] instructed [people] to look at photography cases is: What is protectable in the underlying photograph? There’s cases that say it’s the shading, it’s the cropping, it’s the staging. What did the photographer contribute? Because the photographer doesn’t own Prince’s image. What Prince looks like is a fact, right? You can’t copyright what Prince looks like; you can only have rights in the photograph to the extent that — the artistic contributions you made to it. And so what [US District] Judge [John] Koeltl did at the district court is a very careful analysis of what is actually protectable in Goldsmith’s photograph, and what if any of those elements are present in Warhol’s Prince silkscreen. And that got entirely lost. No one touched that at the argument.

You were asking me, what does that have to do with the First Amendment? And that First Amendment protection is embodied in this distinction between copyrightable expression and uncopyrightable facts and ideas.

Law Dork: And so, specifically now to take that to your brief. For documentary filmmakers, if that distinction were to fall apart, what is the concern for documentarians?

Decter: Documentarians often use these underlying works for their factual content. They’re using an earlier photograph of the subject of the documentary to show what that person used to look like. They’re showing a photograph of Time Square 50 years ago to show what that looks like. And whatever contributions the original photographer made is sort of just captured incidentally. And additionally, because of editing techniques — such as camera moves, blurring, collaging, only using it for a brief moment — you’re rendering the original author’s creative content contributions less evident, you’re just really using it for the fact of the photo.

But if under the Second Circuit’s test all that matters is whether the original work and the secondary work look similar enough, the use will always fail [in these circumstances] and you’re completely disregarding this fact-expression dichotomy and the purpose for what you’re using it. That gets completely lost in the analysis, but it shouldn’t be — because that’s so fundamental to copyright law.

Law Dork: I know it’s not your it’s not your brief, because documentary filmmakers are sort of the most sympathetic characters in a fair use discussion, but there certainly were concerns at the court in the other direction: ‘If we go too far in the direction that the Warhol Foundation wants us to go, are we risking making it so that all sorts of follow-on works would get fair use protection and there would basically be no right that a creator would have to their film rights and all of that.’ Do you see any concern with the protections you’re trying to keep for documentary filmmakers making life more difficult for the people who are creating the initial items?

Decter: Well, I think that there was a lot of discussion [at arguments] about whether the Warhol Foundation provided sufficient justification for using Goldsmith’s photograph as the artist reference. What sort of justification do you need? And then when the government stepped in, there was a long discussion between the government attorney and the justices about “Does it need to be necessary, does it need to be essential or necessary, how about useful, how useful, highly useful, just useful?” And I think that matters. I think that gets into the character and purpose and the meaning and message and why you’re using it.

From Justice Elena Kagan’s exchange with her former clerk, Assistant to the Solicitor General Yaira Dubin, during Warhol Foundation v. Goldsmith arguments

Law Dork: And it almost got to that fact-expression distinction, because one point Warhol Foundation lawyer Roman Martinez, a partner at Latham & Watkins, made in his rebuttal was that if there needed to be some reference for Prince to create his work, then using a different photograph wouldn’t work — because then they’d have been in court with that person instead of Goldsmith.

Decter: What all the red flags started raising for me was when the government came in and said, and I think Goldsmith’s attorney might have said this in the beginning, and I think they both backed off when pressed by the justices, that it has to be necessary or essential. How is a documentarian going to show that that specific footage was essential? That’s a really high standard that will be very difficult to satisfy.

Law Dork: Right? Yeah.

Decter: There’s always been this notion that you’re able to pick and choose what you want to use for purposes of commentary and criticism and parody, and all of that, and it’s never been that it has to be essential or necessary.

Law Dork: Is there anything else that you think people should be thinking about? I mean, obviously, it’s going to be months before we get a decision. But anything else coming out of arguments that you think are important for people to be thinking about?

Decter: Well, I think there was a lot of talk yesterday, as well as just overall purpose of copyright law, obviously the balance between protecting the fruits of their labor and their creative endeavors, but also fostering creativity, and striking that balance. And I think this is a case — and really why we submitted brief — about the unintended consequences of a decision that could be read too broadly, that would have the opposite effect of stifling the ability of documentary filmmakers to create really important works that provide important social, historical commentary — the types of works that there's no substitute for.

There was a lot [of discussion] in the argument of, ‘Well, they could’ve — they got the license once, why couldn't they get the license again?’ Even if that were determinative, which we don’t think it is, that’s just not practical for documentary filmmakers.

Law Dork: When your documentary is about a subject who’s not cooperating. Also, I thought, it was interesting in your brief, just the idea that a lot of the times — and certainly, even as a journalist — there are things that you just don't know where it came from, you don't know who to go to even if you wanted to do so.

Decter: Yes, a lot of documentary films are critical of their subject. And if you needed to get a license to be able to do that, and those are some of the most interesting documentaries out there. And there was a line [at argument] about the importance of showing versus telling, and that’s what documentary films are all about.

From Assistant to the Solicitor General Yaira Dubin’s argument for the United States in Warhol Foundation v. Goldsmith

Whether you look at it as criticism and commentary and other paradigmatic examples of fair use; whether you look at it as collages; whether you look at it from a de minimis perspective in relation to the entire film; whether — what we think the most important — what is the meaning or message, and why are you using it, and if it's just for its factual content to provide a broader social commentary, we think that's at the heart of the fair use doctrine and that you shouldn't need to get the sign off from a subject you’re critical of.

Law Dork: Certainly one of the leadoff documentaries that you mentioned in your brief that your documentarians represented was Icarus. Certainly getting the sign-off from many of those parties wouldn’t always be possible.

Decter: Exactly. So I think this is a real concern to our clients. I think it should be, I hope, of interest to your to your readers.

And I think the 9/11 case was just really concerning to people, and how Warhol was applied. And this was just a plea to the Supreme Court to be very careful, in how they word the decision, because it could have real unintended consequences for documentary filmmakers and others who use this preexisting copyrighted material in their works for a variety of purposes, many of which are the purposes listed in Section 107 as the paradigmatic examples of fair use.

This interview has been condensed for space and clarity.