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 Art on Ice: The Chilling Effect of Copyright on Artistic
Expression

Emily Meyers*

INTRODUCTION

Throughout history, artists have imitated the work of others to learn their craft
and to pay homage to previous masters. In the postmodern context, artists have
departed from this traditional use of others' images. Many artists now use existing
images and objects, both from fine art as well as from advertising and mass media,
to challenge the viewer's conceptions of art and iconography. Some artists argue
that because visual information is so ubiquitous in contemporary society, it is
impossible to create a new image or a piece of art that is entirely original. Such
artists freely borrow, appropriate and rework existing images in an attempt to
reshape their audiences' conception of those images. However, these practices can
often be construed to infringe upon the copyright of the existing image.
Because many artists and scholars of art history lack the specialized legal
knowledge required to understand fully their rights under the existing copyright
system, they fear legal prosecution for their use of existing works or images. These
artists' and scholars' expression is therefore unnecessarily chilled. Furthermore,
many copyright owners misunderstand their rights and aggressively threaten to
assert privileges they may not actually retain. Certainly, this misunderstanding
sometimes works to the user's advantage, for not every right-holder will always
take action against infringement. Still, artists are often hesitant to gamble on the
copyright owner's response, and therefore refrain from using existing works.
Forbearing the incorporation of previous works hampers and chills these artists'
mode of expression.
Although demarcating the boundary between acceptable use and unfair
appropriation may be difficult, if not impossible, to determine in some cases, such a
scope within copyright doctrine must be clearly articulated in order to preserve a
valuable contribution to contemporary visual art and culture. In order to foster a
more creative environment for all, one possible solution would be a system in
which the fair use doctrine is extended so that the copyright owner of a work
retains an exclusive derivative right only for merchandising purposes. In this

J.D. Candidate, 2007, Columbia University School of Law; A.B. magna cum laude History of
Art, 2003, Brown University. Thanks are due to Professor June M. Besek for all her insights. I also
would like to thank my parents, Lynn and Bill Meyers, for their unwavering love and support. All errors
and omissions are of course my own.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

framework, the appropriating user would be entitled to exploit freely the existing
work for any creative or scholarly purpose without fear of legal retribution, so long
as she did not unreasonably commercialize or in any way merchandize her work
without the consent of the appropriated work's copyright owner.
This proposed system would be limited only to "work[s] of visual art" as
defined in the Copyright Act, including the Visual Artists Rights Act of 1990
(VARA). 1 The application of the proposed system to other types of copyright-
protected works has the potential to sacrifice the first author's rights and
opportunity for significant economic gain without fostering a proportionate benefit
to derivative users and society in general. 2

I. APPROPRIATION ART IN THE ART HISTORICAL CONTEXT

The Oxford English Dictionary defines appropriation art as "[t]he practice or

technique of reworking the images or styles contained in earlier works of art, esp.
(in later use) in order to provoke critical re-evaluation of well-known pieces by
presenting them in new contexts, or to challenge notions of individual creativity or
authenticity in art." 3 This definition accurately describes a significant aspect of
twentieth and twenty-first century art in which the referenced work is an
undisguised, blatant and recognizable portion of the new composition. 4 Such
works, by using the appropriated image as the subject rather than merely
referencing its form, style or composition, challenge and invite the viewer to
participate in "discovering the genesis of the [new] work."'5 The value of this
encounter lies in the observer's opportunity to confront a familiar work in a
nuanced context, one in which its conceptual representation is devoid of its
previous connotations and references. 6 This unanticipated juxtaposition of familiar
and unfamiliar challenges the viewer's preconceptions as it shifts the force of the
dominant culture against itself.7 The very images and symbols of the dominant
culture are co-opted by artists to criticize or subvert some aspect of that culture.
Only by appropriating found images can these artists effectively convey their social
criticism. As Rainer Crone, an art historian, observes, "[o]nly a mirror held up

1. 17U.S.C. §§ 101,106A (2000).

2. Other scholars share the view that works of visual art demand special consideration. For
example, Lynne A. Greenberg has argued "that pictorial, graphic and sculptural works, because of their
unique status as material entities, require a different copyright analysis from that applied to other
copyrightable subject matter." Lynne A. Greenberg, The Art of Appropriation:Puppies, Piracy, and
Post-Modernism, 11 CARDOZO ARTS & ENT. L.J. 1 (1992). Greenberg suggests reformulating the
creativity and originality standards with respect to visual arts in order to address the unique challenge
appropriation art poses to the Copyright Act's creativity and originality standards. Id. at 33.
3. Oxford English Dictionary Online, Draft Additions Mar. 2002, http://dictionary.oed.com/cgi/
entry/50010965? (last visited Sept. 30, 2006).
4. Preface to JEAN LIPMAN & RICHARD MARSHALL, ART ABOUT ART 6, 6 (1978) [hereinafter
Preface].
5. Id.at 7.
6. Id.
7. KEMBREW McLEOD, FREEDOM OF EXPRESSION®: OVERZEALOUS COPYRIGHT BozoS AND
OTHER ENEMIES OF CREATIVITY 132 (2005).
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 221
8
without comment reflects society's ills-therein lies the criticism."
However, the practice of appropriation in the artistic realm is by no means
recent. Rather, artists have been appropriating aspects of prior artists' works
throughout history. This practice is so ubiquitous that in 1978 the Whitney
Museum of American Art mounted an exhibition entitled Art About Art that
displayed a variety of examples of artistic appropriation through time. In the
introduction to the catalogue that accompanied the exhibition, art historian Leo
Steinberg wrote:
Basically, art is always about art, and art history is a cumulative progression of what
has come before. Artists, because of their obvious interest in and knowledge of art,
draw on this knowledge and familiarity as readily as they draw on other experience.
An artist may reuse existing images, along with other elements, because they are
available and suitable; and because they may sive the borrower and the newly formed
work a place within the ongoing history of art.

The history of art is a continuum in which new art consistently builds upon old,
either by absorbing or rejecting styles and forms. "Whatever else art is good for, its
chief effectiveness lies in propagating more art. Or: Of all the things art has an
impact on, art is the most susceptible and responsive. All art is infested by other
art." 10 Even as the famed Supreme Court Justice Joseph Story explained about fifty
years after the Copyright Clause was written, "'few, if any, things' in literature,
science and art are 'strictly new and original .... [Every creative work] borrows,I
and must necessarily borrow,... much which was well known and used before."'
In fact, artists are expected to use elements from others to learn and develop
their craft, as well as to pay homage to those whose work they admire. A pupil
cultivates his own artistic skill and sensibility by emulating his teacher's technique
and rendering precise copies of his works. Robert Motherwell, a master of
twentieth century American painting observed, "[e]very intelligent painter carries
the whole culture of modem painting in his head .... It is his real subject, of which
everything he paints is both an homage and a critique, and everything he says a
gloss.' 2
The way in which artists have appropriated others' works has fundamentally
altered aesthetic conventions. Such art challenges the conceptions of "what works
of art represent, of what unifies a work of art, of what materials artists may use[,
and] open[s] to debate the more recent Romantic definition of what constitutes

8. PATRICK S. SMITH, ANDY WARHOL'S ART AND FILMS 126 (1986).

9. Preface,supra note 4, at 6-7.
10. Leo Steinberg, Introduction to JEAN LIPMAN & RICHARD MARSHALL, ART ABOUT ART 8, 9
(1978) [hereinafter Introduction].
11. Marjorie Heins, Coordinator, Brennan Center for Justice at NYU School of Law
Democracy Program, Free Expression Policy Project. Julie M. Boucher Memorial Lecture at the
Colorado Association of Libraries: The Next Frontier: "Intellectual Property" and Intellectual
Freedom, n.2 (Oct. 18, 2002), transcript available at http://www.fepproject.org/commentaries/
coloradointellprop.html (quoting Emerson v. Davies, 8 F. Cas. 615, 619 (No. 4,436) (C.C.D. Mass.
1845)), quoted in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994).
12. Hilton Kramer, An American in Paris,N.Y. TIMES, June 19, 1977, at 24.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

originality and authenticity in the work of art." 13 Many artists appropriate

everyday objects or images in their work, thus conflating notions of high and low
art, and imbuing the ordinary with the spectacular. As one critic observes, Warhol
masterfully employed repetition of existing images to this end by rendering "soup
can after soup can after soup can, Marilyn upon Marilyn, until ' 14
the familiarity
dissolve[d]," revealing "the miraculousness of the commonplace."
Warhol, although one of the most famous appropriators, was certainly not the
first to take objects and images from his surrounding visual culture and use them in
his art. Even ancient and Renaissance works are replete with visual allusions to
existing sculptures and images. However, the way in which artists appropriated
work from visual culture changed in the early twentieth century. As
industrialization increased the pace of the modern world, the visual culture in
Europe and the United States was enriched. In the urban environment, citizens
were saturated with images from advertisers, in magazines and newspapers, and
with the proliferation of both still and filmic photography. Technological advances
contributed to ease of reproduction, which allowed artists and advertisers alike new
freedoms in creating and disseminating their work. At this point, instead of merely
absorbing the form of a figure, the organization of a composition, or an earlier
master's style, artists like Pablo Picasso and Georges Braque incorporated
everything from sheet music to newspaper clippings to wallpaper to cigarette
packages and matchbooks in their art. Picasso and Braque were interested in the
interplay of textures, words and images that appropriating everyday objects
fostered. Like Warhol did a half-century later, these artists, through their
appropriation of others' works, made invaluable contributions to the art historical
continuum and spurred innovative appreciation for the modem world.
Marcel Duchamp, a contemporary of Picasso and Braque, and the most
prominent member of the anti-aesthetic Dadaists, was also experimenting with
existing objects for his artwork. The Dadaists were a group of avant-garde
European artists who, in the aftermath of World War I, playfully attacked the
conventional definitions of what constitutes art. Like his fellow Dadaists,
Duchamp sought to challenge the ways in which art was both conceived and
appreciated. Duchamp is particularly renowned for his ready-mades, commonplace
household objects the artist found and displayed as sculptures. In 1913, Duchamp
revealed Bicycle Wheel, which consisted of an inverted front bicycle fork and
wheel bolted to a stool. Both the bicycle wheel and the stool are thus rendered
useless for anything besides allowing one to watch the wheel turn. 15 To Duchamp,
the ready-made was a mass-produced object "tom from daily life and turned into
art by the artist's simply being audacious enough to call it that."' 16 Duchamp's
other ready-mades include a shovel and a store-bought reproduction of Leonardo

13. CHRISTINE POGGI, IN DEFIANCE OF PAINTING: CUBISM, FUTURISM, AND THE INVENTION OF
COLLAGE 1 (1992).
14. ARTHUR C. DANTO, BEYOND THE BRILLO Box: THE VISUAL ARTS IN POST-HISTORICAL
PERSPECTIVE 137 (1992).
15. MCLEOD, supra note 7, at 128.
16. Id. at 127-28.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 223

Da Vinci's Mona Lisa onto which Duchamp drew a mustache and goatee and
dubbed it LHOOQ. When those letters are spoken aloud in French, the resulting
phrase sounds like a colloquial expression that would translate to "[s]he is hot in
the ass." 17 One legal scholar argues that "Duchamp's ready-mades were less
'unique works of art' than provocative, physical reminders that the separation
18
between art and everyday life was an artificial one."'
Duchamp's most famous ready-made was a white porcelain urinal that the artist
entitled Fountain. On the side of the urinal, Duchamp signed the name "R. Mutt,"
the name of a sanitation company. Later, this piece of appropriation art was in turn
appropriated by Sherrie Levine, who had a urinal cast in highly polished bronze.
Although Levine's urinal is a different model and therefore has a slightly different
shape than Duchamp's, it was produced in "the same year and [by] the same
manufacturer." '1 9 Levine is also known for appropriating the works of other famous
twentieth century masters, sometimes photographing existing photographs, like a
selection of iconic images by Walker Evans. Art historians highlight the political
and feminist underpinnings of the20exclusively masculine works by seminal male
artists Levine chose to appropriate.
Another famous example of controversial appropriation is Robert
Rauschenberg's Erased de Kooning Drawing. The organizers of the Whitney's Art
About Art exhibition hailed this work as "a neo-Dada precedent for the
manipulation of one artist's work by another." 21 Willem de Kooning was a
celebrated master of Abstract Expressionism, the movement that transferred the
nexus of the international art world from Paris to New York in the mid-twentieth
century. As many art historians conclude, Abstract Expressionism comprised the
final chapter of modem art before the art world yielded to post-modernism.
However, unlike his Dada predecessors in appropriation who sought mainly
political ends, Rauschenberg, with Erased de Kooning Drawing, appropriated in a
manner more like Picasso and Braque, for the purpose of achieving a specific
aesthetic. Although choosing to erase a work by the most revered Abstract
Expressionist was certainly aggressive, Rauschenberg, in an interview, articulated
his intent on exploring an aesthetic quandary:
I had been working for some time at erasing, with the idea that I wanted to create a
work of art by that method. Not just by deleting certain lines, you understand, but by
erasing the whole thing. Using my own work wasn't satisfactory. If it was my own
work being erased, then the erasing would only be half the process, and I wanted it to
be the whole.... I realized that it had to be something by someone who everybody
agreed was great, and the most logical person for that was de Kooning. I actually had
a de Kooning drawing that I'd stolen from him once, but that wouldn't do-the act
required the artist's participation. So I went to his studio and explained to him just
what I had in mind. I remember that the idea of destruction kept coming into the

17. Id. at 128.

18. Id. at 129.
19. Sherrie Levine, Interview with Constance Lewallen, http://www.jca-online.com/slevine.html.
20. MCLEOD, supra note 7, at 129.
21. JEAN LIPMAN & RICHARD MARSHALL, ART ABOUT ART 147 (1978).
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

conversation, and I kept trying to show that it wouldn't be destruction, although there
was always the chance that if it didn't work out there would be a terrible waste....
[Flinally he gave me a drawing, and I took it home. It wasn't easy, by any means.
The drawing was done with a hard line, and it was greasy too, so I had to work very
hard on it, using every sort of eraser. But in the end it really worked. I liked 22 the
result. I felt it was a legitimate work of art, created by the technique of erasing.
Erasedde Kooning Drawing thereby adds an entirely new stratum to the concept
of appropriation art. Rather than copy the appropriated original, Rauschenberg
erased the work, leaving faint traces of the erased drawing and the title as the only
vestiges to reference de Kooning's drawing. Erased de Kooning Drawing also
fundamentally challenges the notions of authorship and originality by conflating
the acts of creation and destruction. De Kooning's image was destroyed in its
incorporation into the appropriating work, but Rauschenberg emerges as the creator
of the resulting lack of image.
Although no issue of copyright was at stake in this instance, since de Kooning
willingly gave the drawing to Rauschenberg for this purpose, the questions such a
case would raise regarding not only authorship but also originality and other moral
rights are fascinating. Would the hypothetical court before which such a case was
brought give credence to Rauschenberg's position that the very artistic expression
he sought could be realized only by erasing the work of another? Or that in
conceptualizing an erased work and laboring to achieve it, Rauschenberg exerted
sufficient originality and fixation to establish his authorship in the resulting work?
Would the court argue instead that Rauschenberg's erasure of the previous work
utterly and completely supersedes the original and eviscerates its market potential,
for the appropriated work no longer exists? It is the positing of questions like these
that demonstrates how the contours of the copyright doctrine as it is currently
implemented may be insufficient to accommodate adequately the rights of
appropriation artists today.
By erasing another artist's drawing without permission, an appropriation artist
23
could be found liable for infringing Section 106A of the Copyright Act.
However, even if Section 106A were not at issue, an artist who creates by erasing
other artists' works could be found liable for infringing the first artist's copyright.
For if the work is erased, it no longer remains to be reproduced, distributed or
displayed, or to serve as the basis for any additional derivative works beyond the
initial erasing. In this instance, where an existing work is entirely supplanted with
its derivative, copyright can properly and adequately protect the rights of the first
artist. To use another artist's image in a derivative work is incomparable to using,

22. CALVIN TOMKINS, THE BRIDE AND THE BACHELORS, FIVE MASTERS OF THE AVANT GARDE
210-11 (1968).
23. § 106A stipulates that, "the author of a work of visual art...shall have the right... (A) to
prevent any intentional distortion, mutilation, or other modification of that work which would be
prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of
that work is a violation of that right, and (B) to prevent any destruction of a work of recognized stature,
and any intentional or grossly negligent destruction of that work is a violation of that right. 17 U.S.C. §
106A (2000).
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 225

and particularly destroying, the work itself. In this way, the art-preservation goals
of Section 106A effectively address the concern for the integrity of a piece of art.
But ambiguity persists at the penumbra where the first artist's work is challenged or
re-contextualized in a way of which that artist disapproves. An artist could argue
that his or her work might as well have been destroyed, should she perceive the
appropriating artist's alteration of its message or context as interfering with the
essence of the work. While courts would not countenance a claim founded on
moral rights in this way, the artist of the derivative work could still be found liable
for violating copyright. This seems to be an undue burden on artistic expression.
As long as the physical integrity of the appropriated work is maintained, an
appropriating artist should be free to utilize the image itself.
Rauschenberg, like the other appropriators before and after him, forever altered
the concepts of originality, authorship and representation, and challenged even the
essential meaning of art by pressing the boundaries of accepted artistic expression.
These changes to the traditional artistic mode and conventional view of authorship
put much of this art at odds with traditional copyright doctrine. 24 Even more
problematic is that often these appropriations are subtle, visible only to those with
expertise in both the appropriated and appropriating artists' work, and that many
scholars and critics may disagree over the value of such appropriation. In such a
scenario, allowing judges to rule on the surrounding rights is particularly troubling.

II. THE CURRENT STATE OF COPYRIGHT LAW AND WHY CHANGE

IS DUE

At first glance, some critics might find scant evidence of this chilling effect, for
there seems to be plenty of appropriation taking place and relatively few cases
brought before the judiciary. In fact, legal prosecution of artists for appropriating
existing images or objects is a relatively recent phenomenon. One legal scholar
highlights this fact: "Notably, I have found no documentation before the 1960s of
any American or European artists who were threatened or prosecuted for
intellectual-property 'theft' when they appropriated from the commercial world,
even in the most brazen way." 25 McLeod offers no explanation as to why Pop
artists became the first "copyright criminals," but he does emphasize the situation's
irony, for the Pop artists, unlike the Dadaists or other groups who habitually
appropriated existing works, "were largely apolitical. 26 Pop artists accentuated the
commercialization and commodification of the surrounding culture by producing
artwork that echoed the advertising images with which the modem citizen was
perpetually bombarded.27
Both Warhol and Rauschenberg were sued a number of times for their
unauthorized uses of privately-owned images. Neither artist, however, was brought

24. See Lori Petruzzelli, Copyright Problems in Post-Modern Art, 5 DEPAUL-LCA J. ART & ENT.
L. & POL'Y 115 (1995).
25. MCLEOD, supra note 7, at 129.
26. Id. at 137.
27. Id.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

to court, as both chose to settle the claims with the copyright owners of the
appropriated works. In one example, Warhol was sued by Patricia Caulfield,
whose copyrighted photograph of four poppies Warhol found in an issue of Modern
Photography.28 Warhol enlarged the image and had it professionally silk-screened
onto canvases that were then painted in bright, often unrealistic colors by Warhol's
friends and associates at his studio, "the Factory." The resulting series of
approximately 1,000 works, entitled Flowers, were shown in the Leo Castelli
gallery and eventually licensed as posters. Caulfield discovered Warhol's
unauthorized use when she came across the posters in a New York City
bookstore. 29 One of Warhol's biographers claims that Caulfield was not concerned
about the infringement to her work, but rather that she "had been prompted to sue
him when she heard that Andy was 'rich.' 30 In the settlement, Warhol
relinquished two of his paintings and agreed to pay Caulfield a royalty in artwork
31
or financial compensation whenever he used the paintings in the future.
However, Warhol's concessions failed to appease Caulfield, because she felt her
moral rights had been violated: "The reason there's a legal issue here is because
there's a moral one... What's irritating is to have someone like an image enough
to use it, but then denigrate the original intent." 32 Of course, Caulfield is mistaken
about the enforceability of her moral rights in the United States, but because
Warhol merchandized her image she deserves some compensation. Still, one of the
aims of Pop art is to sublimate these moral rights. By appropriating images from
mass media and other existing sources widely available to a large public audience,
then reworking those images into the realm of high art, Pop artists sought to
address the commercialization and commodification of modem culture. Such
statements would be impossible to express without the use of existing images like
Caulfield's.
Warhol was again sued for his unauthorized use of photojournalist Charles
Moore's series, Red Race Riot, which had been published in Life magazine. 33 The
pictures displayed three men being attacked by police dogs in Birmingham,
Alabama. Warhol's paintings appropriating Moore's photographs were produced
in a process similar to the one for Flowers. Although Warhol transformed Moore's
images by placing them in a new context, in a different medium, rendering a
different composition, Moore wanted to send a message to Warhol and other artists
that "you can't just rip off a photographer's work. '34 Warhol again handed over a
selection of prints from the Flowers series, which McLeod notes as ironic,
"considering the appropriative history of that series." 35 This situation repeated

28. SMITH, supranote 8, at 126.

29. Gay Morris, When Artists Use Photographs,ARTNEwS, Jan. 1981,at 102, 104-05.
30. VICTOR BOCKRIS, THE LIFE AND DEATH OF ANDY WARHOL 197 (1989).
31. KEMBREW MCLEOD, OWNING CULTURE: AUTHORSHIP, OWNERSHIP, AND INTELLECTUAL
PROPERTY LAW 130 (2001).
32. Morris, supra note 29, at 105.
33. SMITH, supranote 8, at 125-26.
34. Morris, supra note 29, at 105.
35. MCLEOD, supra note 31, at 131.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 227

itself a third time with Fred Ward over his photograph of Jacqueline Kennedy for
36
Life magazine.
Rauschenberg reached similar settlements for his allegedly infringing
appropriations. Rauschenberg incorporated found photographs in his collages.
Dennis Brack protested Rauschenberg's use of his 1968 photograph of a man lying
in a pool of blood during the Detroit race riots, which had been published in
Newsweek. Rauschenberg settled with Brack by giving to the photographer and his
agent each a copy of the work in which the photo appeared.37
A second, more costly settlement was required when, in 1974, Rauschenberg
incorporated in his mixed-media print, Pull, two photographs by Morton Beebe,
including the central image of the work of a man diving into a pool. That
photograph had been widely reproduced, and the Nikon camera company even used
the photo in its advertisements. Many art historians cite Pull as one of
Rauschenberg's most important works, which consists of "two pieces of fabric,
cheesecloth glued to silk taffeta, with the image of a man in a swan dive silk-
screened in the center. Around the edges, forming a border, are other offset-printed
images, and there is a small paper bag glued to the fabric near the top of the
print." 38 Beebe wrote Rauschenberg to express his displeasure with
Rauschenberg's unauthorized appropriation of his photographs. Rauschenberg was
surprised by Beebe's reaction, and in his reply to the photographer, Rauschenberg
explained:
I have received many letters from people expressing their happiness and pride in
seeing their images incorporated and transformed in my work.... Having used
collage in my work since 1949... I have never felt that I was infringing on anyone's
rights as I have consistently transformed these images sympathetically with the use of
solvent transfer, collage and reversal as ingredients in the compositions which are
dependent on reportage of current events and elements in our current environment,
hopefully to give the
39 work the possibility of being reconsidered and viewed in a
totally new context.
In 1980, Rauschenberg ultimately settled with Beebe by giving the photographer
a copy of Pull and $3,000 (although Beebe had asked for a minimum of $10,000),40
paying Beebe's legal fees and agreeing to credit Beebe for all future exhibitions of
the work. 41 Beebe claimed he accepted the compromised settlement because of the 42
high legal costs involved and his fear of losing in court on a technicality.
Rauschenberg continued to assert his First Amendment rights and contended that
he admitted no wrongdoing in the settlement. His attorney explained:

36. Sarah King, Warhol Estate Sued Over Jackie Photo, ART INAMERICA, Feb. 1997, at 27.
37. MCLEOD, supra note 31, at 131-32.
38. Morris, supra note 29, at 103.
39. Id.
40. MCLEOD, supra note 31, at 132.
41. See Artnet News, Disputed Rauschenberg for Sale (Feb. 10, 2000), available at
http://www.artnet.com/Magazine/news/artnetnews/artnetnews2- I0-00.asp.
42. MCLEOD, supra note 31, at 132.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

It is the position of Mr. Rauschenberg and Gemini G.E.L. [his printer] that an artist
working in the medium of collage has the right to make fair use of prior printed and
published materials in the creation of an original collage including such preexisting
elements as a part thereof and that such right is guaranteed to the artists as a
fundamental 43right of freedom of expression under the First Amendment of the
Constitution.

Perhaps the most significant consequence of Rauschenberg's settlement with Beebe

44
was that the artist would no longer use any photographs in his work but his own.
Warhol's cases arguably overstepped the bounds of artistic license by making a
vast number of prints that incorporated the appropriated photograph, and then
merchandising those prints without proper authorization for the photo's use in
either instance. However, unlike Warhol's mass commercialization and
merchandising, Rauschenberg's uses were relatively limited, and arguably more
transforming. As the artist himself explained, he used the photographs in an
innovative way to comment on society at large by re-contextualizing the images the
photographs represent. Such a use would likely have been protected under the fair
use doctrine, but since the case never actually came before a judge, an important
opportunity to test the doctrine and help shape the common law was missed. This
demonstrates that litigation's high costs and large investment of time prove a
formidable impediment to an artist's exercise of his full rights under the copyright
regime.
While some barriers to litigation must exist in order to respect the role of the
judiciary, perhaps the fair use standard as it is currently articulated fails to protect
adequately the rights of both initial and subsequent artists. The fact that even a
well-known artist with a strong fair use claim, and more financial resources than
the average appropriating artist, capitulated to the copyright owner of the
appropriated work serves to further chill the expression of subsequent artists who
wish to appropriate.
It is difficult to extrapolate greater significance about the underlying doctrine
from relatively few court cases. Such a dearth could indicate that artists whose
work has been appropriated are kept in check by the construction of copyright, and
therefore sue only rarely. Likewise, the limited number of court cases could
demonstrate the inadequacy of current copyright doctrine to protect effectively all
artists, as opposed to demonstrating its strength and sufficiency. Still, if copyright
worked to provide the optimal balance of appropriated and appropriating artists'
rights, such cases like Rauschenberg's would never have required or threatened
judicial intervention. Some adjustment in the copyright regime and its
implementation is therefore necessary.
Although Beebe feared he might lose his case on a technicality, the contours of
the copyright common law doctrine that have since developed are by no means
clear on this point. The fair use defense is a judicially created exception to the

43. Morris, supra note 29, at 104.

44. DisputedRauschenbergfor Sale, supra note 41.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 229

grant of exclusive rights bestowed by Section 106 of the Copyright Act. 45 Section
106 confers four exclusive rights to visual artists: "to reproduce the copyrighted
work.., to prepare derivative works based upon the copyrighted work; to
distribute copies.., of the copyrighted work to the public by sale... [and] to
display the copyrighted work publicly. ' 46 The fair use doctrine, codified in the
1976 Copyright Act, provides important limitations on the exclusive rights granted
by Section 106. 47 Section 107 provides that "[n]otwithstanding the provisions of
section 106, the fair use of a copyrighted work. .. for purposes such as criticism,
comment, news reporting, teaching.... scholarship, or research, is not an
infringement of copyright."4 8 The equitable doctrine mandates four factors for the
court to consider in determining whether a particular use warrants the application of
the fair use exception:
(1)the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes; (2) the nature of the
copyrighted work; (3) the amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and (4) 49the effect of the use upon the potential
market for or value of the copyrighted work.
50
Since the court must evaluate all four factors, none of these factors is dispositive,
but if one is significantly persuasive, the court may rule on that factor alone.
Additionally, the four enumerated factors are to be considered alongside other
factors like action in bad faith, the copyright owner's right to privacy and the
51
motivation for filing the lawsuit.
The incorporation of the fair use doctrine into the copyright code demonstrates
Congressional recognition of the need for balance between the rights of creators 52
and those of subsequent users, who will in turn create and contribute to society.
Maintaining this balance best satisfies the Constitutional mandate of copyright:
"[t]o promote the Progress of Science and useful Arts." 53 However, because
various key terms remain undefined, such as "commercial," "purpose" and
"character," the fair use doctrine is open to variable interpretation by the courts.
This ambiguity might in some cases deter copyright owners from bringing
meritorious suits, but in others could allow terms to be interpreted to the detriment
of visual artists' freedom of expression.
To be sure, some derivative visual arts users, like Tom Forsythe, have prevailed

45. 17 U.S.C. §106 (2000).

46. Id. subsections (1)-(3) and (5).
47. 17 U.S.C. §107 (2000).
48. Id.
49. Id.
50. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577-78 (1994).
51. Majorie Heins and Tricia Beckles, Will Fair Use Survive? Free Expression in the Age of
Copyright Control-A Public Policy Report, at 3 (2005), http://www.fepproject.org/policyreports/
WillFairUseSurvive.pdf.
52. Greenberg, supra note 2, at 24.
53. U.S. CONST. art. 1,§8, cl.8.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

when challenged in court on their appropriation. 54 In this case, Forsythe was sued
by Mattel for his unauthorized use of Barbie dolls in a series of seventy-eight
photographs entitled Food Chain Barbie. Forsythe depicted the iconic doll nude in
"various absurd and often sexualized positions.., juxtaposed with vintage kitchen
appliances." 55 After analyzing Forsythe's works under the balancing test of the
four fair use factors outlined in 17 U.S.C. § 107, the Ninth Circuit held that
Forsythe's work constituted fair use due to its parodic and highly transformative
nature. 56 The court noted that "[h]is infringement had no discernable impact on
Mattel's market for derivative uses" and that the benefits to the public of allowing
artistic freedom to criticize a cultural icon were great. 57 The fact that Mattel would
be reluctant to grant an artist
58
the license to use Barbie in such a context also
worked in Forsythe's favor.
A recent decision by the District Court for the Southern District of New York
also was decided in favor of the appropriating artist. Controversial artist Jeff
Koons was successful in defending his use of photographer Andrea Blanch's
image, Silk Sandals by Gucci. The photograph had been published in the August
2000 issue of Allure magazine. Koons used a portion of the photo in his painting,
Niagra. The court identified the core issue on the merits as whether Koons, in his
painting made "'fair use' of the portion of the photograph which he copied. '59 The
court ultimately found that of the four fair use factors articulated in 17 U.S.C. §
107, three favored Koons and one was neutral as between the parties; "since no
factor favor[ed] plaintiff, Koons made fair use of the photograph as a matter of
, 60
law.
The outcome in both of these cases indicates that current copyright doctrine has
the potential to be applied with appropriate balance of the two artists' competing
interests. But while the Koons decision bodes well for other artists who wish to
appropriate the works of others into their own art under the fair use doctrine, the
way in which the court's opinion hinges on the "transformative use" concept is
troubling. The court, quoting the Second Circuit's 1994 decision in American
Geophysical Union v. Texaco Inc., explained the role of transformative use in fair
use inquiries:
The "transformative use" concept is pertinent to a court's investigation under the first
factor [of the fair use doctrine] because it assesses the value generated by the
secondary use and the means by which such value is generated. To the extent that the
secondary use involves merely an untransformed duplication, the value generated by
the secondary use is little or nothing more than the value that inheres in the original.
Rather than making some contribution of new intellectual value and thereby fostering
the advancement of the arts and sciences, an untransformed copy is likely to be used

54. Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003).
55. Id. at 796.
56. Id. at 806.
57. Id.
58. Id.
59. Blanch v. Koons, 396 F. Supp. 2d 476, 479 (S.D.N.Y. 2005).
60. Id. at 482.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 231

simply for the same intrinsic purpose 61

as the original, thereby providing limited
justification for a finding of fair use.

Such transformation is in the eye of the beholder. Whereas one person would
ascertain transformation in the artistic expression of a duplication merely by
changes in the context of the image, another could see the second work instead
conveying only the same intrinsic purpose as the first (i.e., both are pieces of art
meant to represent the subject of the image).
Although in this case, the court was careful to note that Koons' use of Blanch's
62
photograph, "whether successful or not artistically, is transformative," in other
instances an artist's fair use defense may fail if the court is unable to see a
successful transformation. Arguably, the more successful the work is artistically,
the easier it will be for an observer to appreciate the transformative aspect. Judges
who likely have little knowledge of art history and contemporary trends are
therefore unfit to be arbiters of the success of an artistic transformation. As Justice
Holmes famously warned, "[i]t would be a dangerous undertaking for persons
trained only to the law to constitute themselves final judges of the worth of
63
pictorial illustrations, outside of the narrowest and most obvious limits."
Here, Koons prevailed only because he successfully articulated and
demonstrated his transformation of Blanch's image. In the affidavit Koons filed in
conjunction with this suit, he explains:

[C]ertain physical features of the legs of that model represented for me a particular
type of woman frequently presented in advertising .... For Niagra, I removed these
anonymous legs from the context of the photograph, and totally inverted their
orientation. I then added these legs to other contrasting images of legs.., and along
with ice cream, donuts and pastries, floated them playfully and "ethereally" above a
liberating landscape of grass, a waterfall and sky. In so doing, I transformed the
meaning of these legs (as they appeared in the photograph) into the overall message
and meaning of my painting. I thus suggest how commercial images like these
intersect in our consumer culture and simultaneously promote appetites, like sex, and
confine other desires, like playfulness. And I did not even strictly copy the legs. I
completely inverted their orientation, painting them to surreally dangle or float over
the other elements
64
of the painting. I also changed the coloring and added a heel to one
of the feet.

The court thus recognized that Koons was using Blanch's photograph "as raw
material in a novel context to create new information, new aesthetics, and new
insights." 65 This is particularly important to artists like Koons who must take
images from their surrounding environment in order for their work to convey their
intended message. Koons explains, "in order to make statements about
contemporary society and in order for the artwork to be valid ... I must present

61. 60 F.3d 913,923 (2d Cir. 1994).

62. Blanch, 396 F. Supp. 2d at 481.
63. Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903).
64. Blanch, 396 F. Supp. 2d at 481.
65. Id. at 481 (paraphrasing an earlier reference to Pierre Leval, Toward a Fair Use Standard, 103
HARV. L. REv. 1111 (1990)).
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

real things that are actually in our mass consciousness." 66 Koons, with the
assistance of expensive legal counsel, was able to articulate convincingly the
reasoning behind his work. Another artist who lacks these resources is likely to
fare far worse in the legal setting.
In a number of prior cases, however, Koons, even with the aid of his superior
legal representation, failed to sway the judge with evidence of transformation to
decide in his favor. 6 7 Therefore, court decisions concerning visual artists' use of
appropriated images offer little comfort to other appropriating artists in light of the
exorbitant legal fees defending such a suit requires, the high costs if the court finds
against the artist, and those other cases, especially Rogers v. Koons,68 that were
decided in favor of the plaintiff copyright owner. Taken together, these facts
constitute more substantial threats to fair use.
In a highly controversial decision, Koons' fair use defense was denied when he
appropriated a black and white photograph by Art Rogers that he had purchased in
a gift shop, and used it as the basis for a larger-than-life-sized color sculpture in his
Banality show. Notably, Rogers v. Koons marks the first instance where a
photographer sued an artist and the case actually reached the court. 6 9 Although
Koons' sculpture differs dramatically from Rogers' photograph, was used towards
a critical purpose, and would have likely have had no detrimental effect on Rogers'
market for the photograph (the markets for high art costing hundreds of thousands
of dollars and gift shop postcards can hardly be conflated), 70 the court found in
favor of Rogers on all four factors of the Section 107 test. The court seemed
particularly troubled that Rogers' photo was appropriated for a sculpture being
produced for sale as high-priced art. 71 Perhaps the court came to this conclusion
because Koons' profits from the piece appeared to the court as a windfall, but there
is no legal precedent to substantiate such prejudice against financial success.
Furthermore, the court's analysis of the effect of Koons' use on Rogers' market is
clearly erroneous. The fourth factor deals with economic competition; "[i]t does
not ask whether the new work, through critique or parody, reduces demand for the
original. 72 The Supreme Court has held that "lethal parody" that "kills demand for

66. Id. at 481.

67. Rogers v. Koons, 751 F. Supp. 474 (S.D.N.Y. 1990); United Feature Syndicate, Inc. v. Koons,
817 F. Supp. 370 (S.D.N.Y. 1993); Campbell v. Koons, No. 91 Civ. 6055, 1993 WL 97381 (S.D.N.Y.
1993).
68. 960 F.2d 301 (2d Cir. 1992).
69. Greenberg, supra note 2, at 24-25.
70. The Court argued that patrons would purchase postcards made from photographs of Koons'
work instead of Rogers' original, and that Koons' sculptures unfairly reduced the market for Rogers to
license creation of a sculpture based on his photo. 960 F.2d at 312. However, a reasonable observer
could concede that, because the physical appearance and the tone of the two works is so markedly
divergent, anyone who was aware of the existence of both Koons' and Rogers' rendering of String of
Puppies would have a preference for one over the other. Furthermore, the likelihood that anyone would
license Rogers' photo for a sculpture is exceedingly slim. Regardless, Koons' expression of the work is
so unique, room for a number of other sculptures on the market arguably exists.
71. Rogers, 960 F.2d at 312 (2d Cir. 1992).
72. Heins and Beckles, supra note 51, at 3.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 233
73
the original" is not the type of harm copyright law is meant to prevent.
Some legal commentators applaud the decision, reasoning that because "there
are no market impediments to licensing copyrighted images," Koons ought not
"eliminate an important source of revenue to photographers" by appropriating the
image. 74 Others, however, read the Second Circuit's ruling in Rogers v. Koons as
"a death knell to appropriation art," 75 because the court's holding was denied
certiorari 76 and therefore "can be used as powerful precedent in other cases brought
against artists working in this movement." 77 Although the court had a substantial
amount of leeway to come to a different conclusion, the fact that the court refused
to engage in any real understanding of the work is yet another testament to why
judges make poor art critics. 78 The overbreadth of this holding is unnecessarily
restrictive to future appropriators. Especially troubling is the court's permission of
the destruction of Koons' sculpture, of which only four were produced.79 Certainly
this conferred no benefit to Rogers or in any way furthered the goals copyright is
meant to foster.
Overall, the examples of litigation on which a decision was actually rendered
serve only to further chill artistic expression because the outcome of a fair use
claim seems particularly unpredictable. This chilling effect is demonstrated by the
perceptions of many artists who would appropriate works, but instead refrain from
this artistic expression for fear of legal repercussions, even when they feel their use
would comport with their understanding of the fair use doctrine. In certain cases,
the chilling effect is so severe that it is functionally censorship.
In December 2005, the Brennan Center for Justice at New York University
School of Law, through its Democracy Program's Free Expression Policy Project,
published a report that examined the chilling effect on artists across all media as a
result of the muddled fair use doctrine. 80 The report, based on research begun in
late 2004, aimed to ascertain "how well fair use and free expression are faring
among artists, scholars, and others who make critical contributions to culture and
democratic discourse." 81 In the course of its research, the Brennan Center
"conducted focus group discussions, telephone interviews, an online survey and an
analysis of more than 300 cease and desist and take-down letters that have been
deposited with the 'Chilling Effects' Clearinghouse. 82 '83 Researchers found that

73. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 591-92 (1994).
74. William M. Landes, Copyright Protection and Appropriation Art, at http://culturalpolicy.
uchicago.edu/conf1999/landes.html.
75. Greenberg, supra note 2, at 25.
76. 506 U.S. 934 (1992).
77. Greenberg, supra note 2, at 25.
78. Id. at 29-30.
79. Rogers v. Koons, 960 F.2d 301, 313 (2d Cir. 1992).
80. Heins and Beckles, supra note 51.
81. Id. at ii.
82. http://www.chillingeffects.org. The website was started "to document the chill" by collecting
and posting cease and desist or take-down letters, as well as to educate users by providing a Frequently
Asked Questions section to help explain the legal terms.
83. Heins and Beckles, supra note 51, at ii.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

almost half of the cease and desist or take-down letters sent each year "state[]
weak.., claims" or seek to suppress material with a "strong or at least reasonable"
fair use or First Amendment defense. 84 Of the fifty-four "instances where the
targeted expression had a strong claim to fair use or First Amendment protection"
or "were likely not infringing in the first place," more than half of the items were
removed. s5 However, the chilling effect due to even frivolous claims conveyed via
cease and desist letters is likely much more significant. Recipients who are
sufficiently savvy to be aware of the Chilling Effects Clearinghouse
86
are less likely
to be intimidated by copyright holders' unfounded threats.
The report concludes that an urgent need exists for accessible and accurate
copyright information. Although many recipients refuse to acquiesce to the cease
and desist letters, many others succumb before the threats of litigation, thereby
depriving the common law system countless opportunities to test fair use defenses
and shape the doctrine.8 7 While cease and desist letters are often successful, even
despite their lack of coercive power, Digital Millennium Copyright Act (DCMA)
take-down notices require no legal 88 proceedings and thus have significantly more
chilling effect on artistic expression.
The report includes dozens of anecdotes and examples of this chilling effect on
artistic expression. According to many of these accounts, the copyright doctrine
serves neither the copyright holders nor the appropriators. One artist notes,
"copyright protection had not helped me at all to get the money that was due me,
89
because it was never quite enough money to pay the attorneys to get it for me."
Even where the copyright regime could have been effectively employed to police
that artist's rights, the system was overly nebulous, and thus prevented the artist
from achieving the remedy she was due.
On the other hand, appropriators view seeking permission to use others' works
as too troublesome and invasive due to the prohibitive expense, time and
interruption of the creative process. 90 Although a handful of organizations exist to
facilitate licensing between copyright holders and persons who wish to reproduce
works, 91 these cover only a small selection of the existing works an artist could
desire to appropriate. For both appropriating artists and art history scholars who
wish to use existing images in their work, the transaction costs of licensing
agreements are too high. These transaction costs are especially high when an artist
draws from multiple sources, and licensing agreements are sometimes impossible
to complete if the image's copyright holder is unknown to the user.92 Many artists

84. Id.
85. Id. at 32.
86. Id. at 36.
87. Id.
88. Id. at4.
89. Id. at 21.
90. Id. at 22-24.
91. See Visual Artist and Galleries Association, http://www.vaga.org; Artist Rights Society,
http://www.arsny.com; Creative Commons, http://www.creativecommons.org (last visited Oct. 1, 2006).
92. William M. Landes, Copyright, Borrowed Images, and Appropriation Art: An Economic
Approach, 9 GEO. MASON L. REv. 1, 20 (2000). Other law and economics scholars like Richard Posner
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 235

believe that to seek permission is to be denied permission,

93
so their interests would
be better served by refraining from asking at all.
Joy Garnett's story is particularly compelling. She draws inspiration from
photographs, often anonymous ones, for imagery in her paintings: "Part of the
subject of my work is the relationship between found sources, such as photographs,
and the transformative act of painting .... The sources are forgotten; that's part of
the process." 94 Garnett had found a portion of a photograph of a man throwing a
Molotov cocktail on an anarchist website and used her painting of that image as the
centerpiece for a gallery show. Only after the show was advertised did Garnett
discover that her painting was based upon a 1981 photograph entitled Nicaraguaby
Susan Meiselas. Garnett explains that she could not have asked for permission:
I didn't even know. How could I ask her permission? I wouldn't have asked her
permission anyway. I mean, implicit in that would be that for every moment of my
creative process, I would have to be concerned with finding the authors of these
photographs, contacting them for permission, and dealing with their attitudes about
permission.95

Although the show continued with the painting in question, later Garnett received a
cease and desist letter stating that Gamett's painting was a derivative work and that
she had pirated the photograph. The letter required her to sign a retroactive
licensing agreement, as well as obtain Meiselas' prior written permission for any
future exhibition, sale or reproduction of the image. 96 Garnett consulted a lawyer
who felt she had a strong claim for fair use. Garnett replied to the letter, explaining
her position as a painter under the fair use doctrine, and refused to sign the
agreement in order to protect her own rights. 97 Gamett was surprised to receive an
aggressive response from the lawyer demanding a $2,000 licensing fee in addition
to the photographers' previous demands.
Garnett says she believes the threats were meant to intimidate her to remove the
images of her painting from her website, "[a]nd it worked.... I didn't want my
Web site pulled. This is what I was really afraid of, because I want to use that site
to send images to galleries, to writers, to critics." 98 In an interesting turn of events,
a number of other artists who knew of the controversy created derivative images of
Garnett's painting and posted them to their own websites all over the world. This
effectively prevented Meiselas from pursuing her rights because now derivatives of
the derivative were posted on thousands of websites. Garnett sees this as an
example of how current copyright is unable to accommodate all aspects of modem
technology and artistic expression. "The idea that you can control what's going on

advocate the use of licensing agreements to solve some of the problems the current copyright regime
fails to adequately address. See William M. Landes and Richard A. Posner, An Economic Analysis of
Copyright Law, 18 J.LEGAL STUD. 325 (1989).
93. Heins and Beckles, supra note 51, at 52.
94. Id. at 22.
95. Id.
96. Id.
97. Id. at 22-23.
98. Id.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

right now
99
in the digital realm with the older paradigm of copyright control is
gone."
While some authors, especially photographers, were displeased by other artists
using their works without proper credit (although the authors did not seek financial
compensation' 00 ), others were excited by the idea of other artists freely
appropriating their work. These artists appreciated that "'we swim in a remix
culture,' where seeking permission for every item that goes into the mix is neither
practical nor logical."'' Jamie Allen, a sound artist and musician explained that
copyright is an unnecessary "aspect of art .... I don't think of ideas that I produce
as being mine per se."10 2 A video artist and professor added that "artists
traditionally, and contemporary artists especially, are appropriating; and a lot of us
do see our ideas as contagious, and want them to be contagious. So we're not as
concerned [about issues of copyright] ... in the art world we kind of appropriate
everything."' 1 3 The painter Richmond Burton echoes these sentiments:
[T]aking from other artists... is a direct acknowledgment of how we work in
painting .... If some people are upset because my work has similarities to what
they're doing, that's their problem. And if they take from me, that's great! . .. After
all, we live in an age of information. It doesn't make sense to limit what you take
in. 104

Misunderstandings about copyright and fair use pose major problems to

copyright owners and appropriators alike. One participant tried to educate himself
about the relevant legal doctrines but became discouraged upon his discovery that
"the more you learn about copyright and fair use, the more of a chilling effect it has
on your creative expression. Greater education about this topic, for artists, seems
to have a chilling effect."' 1 5 Eve Sinaiko, the publications director of the College
Art Association, is concerned about copyright:
[W]e are aware that for both artists who create art and scholars who write about it and
study it, there are enormous tensions and increasing difficulties in this realm.
Misunderstandings of the law, fear of the law, excessively aggressive uses of the law,
or reluctance 10 to
6
assert the law on both sides are causing problems for our
communities.
If an artist wants to appropriate or assert her rights against a subsequent user, she is
likely to be aware of the copyright implications without having the resources to
grasp fully the solutions.

99. Id.
100. Id. at 25.
101. Id. at 26, (quoting Clay Shirkey, a writer, Web publisher, and teacher at New York
University's Interaction Telecommunications Program).
102. Id.
103. Id.
104. Raphael Rubinstein, Abstraction in a Changing Environment, ART IN AMERICA 102, 104
(Oct. 1994).
105. Heins and Beckles, supra note 51, at 25.
106. Id. at 2 5-26.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 237

Even scholars, who are clearly appropriating others' works for the critical and
educational purposes copyright is meant to incentivize, are denied opportunities to
publish or include images if the copyright holder disapproves of the scholar's
thesis. Jonathan Katz, an art historian and expert in lesbian and gay studies,
experienced this frustration firsthand. In his response to the Brennan Center's
survey, he wrote:
I wasn't involved in controversy, because I knuckled under, but in two cases, I've
wanted to publish images of artists' work in the context of an article on the
relationship between their work and their sexuality, and both times permission was
denied. I felt confident that I was covered under fair use, but the publishers felt
otherwise.... Fair use doesn't protect against lawsuits, and publishers are by nature
timid. The effect is that publishers refuse to publish work they deem controversial,
and for those of us who
10 7 work in gay and lesbian studies, censorship has therefore
become a way of life.
Not only do copyright holders thereby censor scholarly publication, but eventually,
the entire stream of the history of art will be sullied by this restriction. Other artists
therefore have less access to new information, both about artists already in the
canon and about those whose work has only recently been recognized. This lack of
information in turn suppresses the copyright holder's own artistic expression.
Fewer audiences have the opportunity to learn about artists, and even museums'
behavior is impacted. 10 8 A scholar writing on Pablo Picasso shares this view:
[S]elf-censorship by publishers has significantly impaired my ability to comment on
and interpret visual material. It is essential that any visual image that is shown
publicly be available for comment and criticism; otherwise we have 10 no
9 free discourse
over things that significantly shape our cultural and political views.
Some scholars have had difficulty in securing rights to images even for works in
the public domain. 110 This has led to a sharp decline in the publication of art
history books, a disastrous consequence for society generally, and obviously
antithetical to the goal of copyright.

Il. A PROPOSED SOLUTION: EXTINGUISH EXCLUSIVE RIGHT TO

DERIVATIVE WORKS

Copyright should be concerned with compensation, not control."' Unlike law,

which can be viewed in terms of discrete transactions, art is discourse, requiring the
continued interplay of a number of contributors. 112 Control over images is

107. Id. at 48.

108. Id. at 49.
109. Id. at 50.
110. Id. at 50, 52-53.
111. E. Kenly Ames, Beyond Rogers v. Koons: A Fair Use Standardfor Appropriation, 93
COLUM. L. REv. 1473, 1477 (1993).
112. Robert Storr, Rosalie Solow Professor of Modem Art, Institute of Fine Arts, New York
University; formerly Senior Curator, Museum of Modem Art; author, Gerhard Richter: Forty Years of
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

anathema to the ongoing artistic dialogue. While all artists require compensation to
fund the resources to create, none should be limited by those resources (or lack
thereof) in choosing what images and objects to include in their work. Scholars
should be able to investigate any area of interest and publish their findings in a
meaningful way that includes images representing the works they discuss. Artists
should feel free to continue to challenge traditional artistic conventions and the
surrounding culture's conceptions by using whatever materials they feel best
convey their message. By increasing the limits on fair use, or by failing to test
them adequately, artistic expression is chilled. The diversity and vitality of our
culture is at stake. 11 3 Some critics have gone so far as to assert, "If these copyright
laws had been applied from 1905 to 1975, we would not have modem art as we
114
know it."
Of course, derivative works depend on existing works from which to
extrapolate, and without sufficient copyright protection, fewer original works will
likely be created. Certainly copyright should not favor the appropriating artist at
the expense of the appropriated artist, as that would bring cycles of artistic dialogue
to a grinding halt. Instead, copyright must effectively balance the incentives to
create originating works as well as the derivative works that enhance or challenge
society's appreciation of the originating work. All art has the potential to shape our
view of the surrounding world, regardless of whether it was independently created
or relies upon an existing image. The goals of the derivative artist in the fine art
context are no less worthwhile of pursuit than those of the appropriated artist, and
thus equally worthy of protection and incentive.
In order to preserve the rights underlying the expression and to ensure there will
be sufficient artistic material to appropriate in the future, a drastic retooling of
copyright doctrine and fair use is necessary. The optimal solution would
appropriately balance the first and subsequent artists' rights, while maintaining a
standard that is clear to artists, copyright holders and judges alike. The solution is
relatively simple: dispose of the originator's exclusive right to create derivative
non-commercial works.
Under such a regime, an artist retains all the rights in her work granted by the
current copyright regime, with the exception of the exclusive right to create
derivative works. All appropriating artists, by their act of appropriating an existing
work, submit themselves to an alternative copyright regime in which they forfeit
not only their exclusive derivative work rights, but also merchandizing rights. The
exclusive derivative work right for all visual artists is sacrificed to achieve a more
free artistic dialogue. Any subsequent artist may therefore appropriate any other
artist's work without fear of prosecution. This way, appropriated artists would be
freed from the task of policing their images, and appropriators and scholars would

Painting (2002), Remarks at the panel Transforming Art: Fair Use Issues, organized by the Art Law
Committee, at the New York City Bar Association (Nov. 10, 2005).
113. Marjorie Heins, The Progressof Science and Useful Arts: Why Copyright Today Threatens
Intellectual Freedom - A Public Policy Report, at 3 (2002), http://www.fepproject.org/policyreports/
copyright2d.pdf.
114. Geraldine Norman, The Power of Borrowed Images, ART & ANTIQUES 123, 128 (Mar. 1996).
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 239

be able to create, liberated from worry of drastic legal retribution. The result would
be an increase in scholarship and artistic expression, allowing for greater diversity
of ideas. Such a system would fall in-step with the Constitutional goals of
copyright.
However, in order to protect the more economic rather than expressive side that
is fundamental to incentivizing artists to create, the first artist would retain her
exclusive right to merchandize the image (e.g., by creating consumer products that
bear the image for sale in museum shops). By appropriating another's work, the
subsequent user sacrifices her right to merchandize, or risks retribution by the
originator if she does. It would be unfair to allow an artist of a derivative work that
is virtually identical to the appropriated .work to merchandize her work.' 15 For
example, an integral facet of Sherrie Levine's photographs After Walker Evans is
that they look exactly like Walker Evans' photographs. If coffee mugs with images
of both Levine's and Evans' works were available for sale in the gift shop, the
consumer would be unable to distinguish the two, and the derivative could easily
supplant the consumer market for the appropriated work. Permitting
merchandising in this way would allow anyone, on the mere pretext of creativity, to
sell artists' merchandise. 16 The appropriated artist stands to lose substantial
licensing fees.' 17
Yet the appropriator would retain the right to sell her work. Unlike consumer
goods where an identical design on an identical coffee mug can easily be
interchanged, in the primary or print markets there are no true substitutes, even for
what may appear to some to be a "non-transformative" work. Take the Levine
example once again: a purchaser interested in Sherrie Levine would not accept
Walker Evans' photographs, even if the images themselves are virtually
indistinguishable. Likewise, someone seeking to purchase a Walker Evans
photograph would not be satisfied with Sherrie Levine's rendition of the same
image. In this regard, authorship is tantamount, for it infuses the appropriated or
derivative work with vastly different significance. A derivative or appropriating
use in this regard will never substitute for the original. Although the first image by
Evans and the second by Levine may be indistinguishable from one another, the
roles each plays in the history of art continuum are unique, and that is what a
purchaser of fine art is buying, in addition to a pleasing image to hang over the
sofa. The same does not hold true for a purchaser of a day planner or coffee mug.
The artist's signature on her work will also help distinguish a derivative from an
existing work or other derivatives, simply by signaling which artist created that
particular piece.
For works where the transformation is more readily apparent in the appearance
of the work, so that one will not be mistaken for the other (i.e., a photograph into a

115. Landes, supra note 92, at 5-6. Landes points out that unauthorized merchandizing of a
unique work of art can have a positive or negative impact on the original work, and therefore the right to
license use of the image for merchandizing properly vests in the first artist.
116. ld. at 22.
117. Id.at 19.
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

sculpture), market forces allow the "better" or more valuable work to fetch a higher
price. In most cases, the appropriated and appropriating works would rarely be in
competition anyway. The market for high-priced fine art is relatively limited, and
most entrants to the market are educated in the art they purchase, or hire an agent
who retains such knowledge to purchase on their behalf. At the other end of the
market, a local artist who appropriates magazine photographs for example, a buyer
of such work is unlikely to buy it instead of the appropriated artist's photograph.
Rather, such a purchaser would be equally likely to buy the appropriated
photograph anyway or not at all. On the internet, the playing field is even more
level, as only their internet connections prevent the appropriated and appropriating
artists from having equal access to the entire market on the web. And, if the
appropriating work is more successful in the marketplace than the appropriated one,
copyright should not penalize appealing and successful artistic expression.
Because the exclusive derivative work right is eviscerated for all artists, the
appropriating artist would also enjoy her right to reproduce her derivative work.
Those reproduction rights can be limited by the definitions for works of visual art
articulated in the copyright code: "a limited edition of 200 copies or fewer that are
signed and consecutively numbered by the author." 118 Any reproduction beyond
this would demonstrate commerciality and therefore not be entitled to the fair use
exception. Such a bright line rule is relatively easy to police. Also, the
appropriator may make flyers bearing her appropriating image to advertise her
work, and post her appropriated image on her website, but may not create consumer
products displaying the appropriated image.
Drawing the distinction this way retains the economic fairness necessary to
permit artists to create, without compromising the significant artistic expression we
seek to protect. The need to evaluate subsequent artists' use of existing images
under the ambiguous fair use criteria is thus averted. All use is deemed fair so long
as it respects the first artist's commercial merchandising rights. By denying the
merchandising rights to any but the primary creator, no pretextual problem exists.
In fact, the Warhol Foundation for the Visual Arts, Inc. uses this system for the
works on which it holds the copyright. Currently, all those who seek to use a
Warhol image for any creative purpose, whether to illustrate a scholarly article or
as part of another artists' work, are granted permission without further
investigation. But the Foundation maintains its right to create tee-shirts, coffee
mugs, calendars and other consumer items that bear a copyrighted Warhol
image. 119
If the appropriated artist disapproves of the derivative use, she in turn is able to
create whatever derivatives she fancies to comment upon and engage with the other
artist's work. The answer is increasing artistic expression, not stifling or
suppressing it. In the visual art context, the act of putting paint to canvas should

118. 17 U.S.C. §101 (2000).

119. Joel Wachs, President, The Warhol Foundation for the Visual Arts, Inc., Remarks at the
panel Transforming Art: Fair Use Issues, organized by the Art Law Committee, at the New York City
Bar Association (Nov. 10, 2005).
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 241

not vest ultimate control for the resulting mark ad infinitum. When a work 120 is
presented in public, it enters the public discourse and takes on a life of its own.
An allusion by a subsequent artist only demonstrates the endurance and vitality of
the image to which the allusion was made. Such visual references can only
enhance the breadth and scope of our culture's artistic consciousness.
Some commentators warn against the erosion of fair use in order to advance
freer speech. Nimmer concedes that the First Amendment "justifies some limited
use of the scalpel, [but] it does not legitimize wholesale amputation in vital
copyright areas."1 2 1 Ginsburg points out that "the fair use doctrine helps ensure
that subsequent authors may build upon not only their predecessors' ideas, but, 122 in
appropriate circumstances, reasonable amounts of their expressions as well.'
While these observations certainly hold true for fair use generally, in the realm of
visual art, the burdens the current fair use scheme places on artists outweigh its
benefits.
As for scholars or others who wish to use another's work in publications they
wish to sell, an affordable compulsory licensing system would prevent unnecessary
litigation or censorship of ideas. Creating a work of art that is in the public
discourse should not license the copyright holder or her heirs to censor all
scholarship surrounding that work. The publication of images of existing works in
magazines and scholarly publications can be analogized to music performance
rights. Similar blanket licenses should therefore apply. Just as anyone may acquire
a blanket license to perform certain songs, regardless of the commentary they make
before and after performing the song, so should scholars have the freedom to
present true images produced by the artists they study regardless of the surrounding
content.
Still, the arenas of scholarly publication must be demarcated from
merchandising. Although a scholar may profit from publication of a book widely
used in classrooms, she may not use the licensed images to create decorative or gift
books. Whereas a history of art textbook would be appropriate for this use, a
coffee table book would not. A simple way to police this boundary could be found
in the ratio of words to images used, as well as the final size of the printed book.
The scholar uses the images in support of her text, rather than aims to co-opt the
artist's market for printed reproductions in books.
Detractors could argue that this solution unfairly limits the rights of the
appropriator, and fails to resolve any of the confusion in the existing system.
Withholding merchandising rights from derivative uses is as arbitrary and difficult
to police as the current transformation standard. Furthermore, under the old
scheme, works that were found to be fair use enjoyed full derivative work rights,

120. Roberta Smith, New York Times Art Critic, Remarks at the panel Transforming Art: Fair
Use Issues, organized by the Art Law Committee, at the New York City Bar Association (Nov. 10,
2005).
121. 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §1.10(D), at 1-152
(2006).
122. Jane Ginsburg, Authors and Users in Copyright, 45 J. COPYRIGHT SOC'Y OF THE U.S.A. 1, 5
(1998).
 COLUMBIA JOURNAL OF LAW & THE ARTS [30:2

including merchandising.
However, some economic rights must be maintained in order to continue to
incentivize artists to create. Surely, many artists would continue regardless of any
economic benefit, for the image of the starving artist is an enduring one. Yet, some
balance must be drawn to incentivize appropriately both the initial and subsequent
creators.
Curtailing the derivative work right also has the potential to impact negatively
the international copyright scheme, both from a moral rights and an economic
rights perspective. Although the United States provides relatively little moral
rights protection at the federal level, 123 other countries, especially those under
European Civil Law, offer a great deal more.1 24 By altering the United States
copyright scheme in this way, American artists' works could enjoy less protection
abroad, and therefore also lose revenue they could have earned in foreign
markets. 125
Despite the pitfalls that curtailing the derivative work right potentially creates,
the system would likely have a positive impact on visual artists. By making all
creative, non-merchandising uses available to any artist, the system would no
longer rely on judges to evaluate and rule upon the transformative nature of a work
of art. The commercial and merchandising distinction is a far more judicially
administrable standard, and requires no specialized knowledge in the complex,
controversial and often esoteric art world. This standard would also resolve the
issues of originality and authorship that have been so difficult to place within the
existing copyright scheme. With the new standard, appropriating artists may freely
realize their artistic expression, and appropriated artists need not fear unfair
commercial gains.

IV. CONCLUSION

If an artist or creator does not have to worry about prosecution for copyright
infringement, she will be able to create in a liberated and unfettered way and will in
turn create more art. This outcome successfully realizes the underlying
Constitutional mandate for copyright.
As Leo Steinberg writes, both the appropriated and appropriating artists play
vital roles in our society's cultural and artistic framework. The rights of the former
may not be sacrificed for the rights of the latter, or vice versa. The very dialectic of
appropriated and appropriating in some way undermines the significance of both of
these roles, for every artistic expression is simultaneously both appropriating and
appropriated:
In all these instances [of appropriation], which could be endlessly multiplied, the

123. See 17 U.S.C. §106A (2000).

124. See Russell J. DaSilva, Droit Moral and the Amoral Copyright, 28 BULL. OF THE COPYRIGHT
SOC'Y OF THE U.S.A. 1, 2.
125. Berne Convention for the Protection of Literary and Artistic Works, art. 5, July 24, 1971, 1
B.D.I.E.L. 715, availableat http://www.wipo.int/treaties/en/ip/beme/pdf/trtdocs-wo001 .pdf.
2007] CHILLING EFFECT OF COPYRIGHT ON ARTISTIC EXPRESSION 243

operative model is that of the borrower, and a borrower is one who takes. But the
record of art reveals that giving, lending, imparting, may be equally suitable
metaphors for the sort of transaction we are considering. There are instances by the
score where the artist invests the work he takes from with renewed relevance; he
bestows on it a viability hitherto unsuspected; he actualizes its potentialities-like a
Brahms borrowing themes from Handel or Haydn. He can clear cobwebs away and
impart freshness to things that were moldering in neglect or, what is worse, had grown
1 6 their environment, a latter-day artist can
banal through false familiarity. By altering
lend moribund images a new lease on life.

By allowing artists to recycle images in this way, our visual culture is enriched,
diversified and vitalized. Only in this way can the Constitutional impetus for
copyright protection be realized.

126. Introduction, supranote 10, at 25.