Maybe Duct Tape Can’t Fix Everything: Slippery Standards as Copyright Goes Bananas

Whether one focuses on the word’s connotation of silliness or excitement, or maybe even anger, or analogizes to the raucous and rhymingly-named team from Savannah that makes up its own baseball rules, US copyright law is currently going a little “bananas.” From ongoing debates about the human element (or requirement) of authorship to debates over what constitutes a transformative work to the gauntlet laid down in footnote 2 of Justice Kagan’s dissent in the Supreme Court’s May 18, 2023 decision in Andy Warhol Foundation for Visual Arts, Inc., v. Goldsmith, some strong opinions, and even raw nerves, mark the discussion. 

In fact, lots is happening.  There are moves aimed at criminalizing some creativity usually reserved solely for federal civil copyright consideration. There is also ongoing fallout at the intersection of trademark and expressive works as the Supreme Court has remanded for reconsideration of an earlier dismissal of a toy maker’s claim that a character’s name in Toy Story 3 infringed its Lots of Hugs’ trademark. And, there are still more challenges from authors and creators to the til-now-uncompensated use of their works to “train” artificial intelligence engines, as seen in the recent open letter from the Authors’ Guild to various tech companies. 

Though articles about many of those, or related, issues have appeared here in the past, they present issues that will not be solved, or even too well-defined, in this August blog post. But I will describe what happened when I read a few news reports describing the outcome in Morford v. Cattelan and then followed Justice Kagan’s admonition to “go take a look at the decision” before deciding what I thought about what has been said about that case. Warhol, 143 S.Ct. at 1293, fn.2 (Kagan, J., dissenting)

Morford is an interesting case.

But the entire Morford analysis revolved around the 11^th Circuit’s “abstraction-filtration-comparison” test, described as “initially developed to review claims of copyright infringement relating to novels and plays but also applied in contexts such as software programming.” Id. at 9-10. That test, described in greater detail below, “requires the Court to ‘reverse engineer’ the work at issue,”  where one “’first breaks down the allegedly infringed program into its constituent structural parts … [N]ext, the court sifts out all non-protectible material,’” and “[f]inally, the ‘last step is to compare any remaining kernels of creative expression with the allegedly infringing [work] to determine if there is in fact a substantial similarity.’” Id. at 9.  That test is, for judges, an instruction on how to look at art and understand what you see.

But any approach that, like the 11^th Circuit’s, that parallels structurally basic art criticism methods seems at least somewhat inconsistent with the Supreme Court’s direction in Warhol to “not attempt to evaluate the artistic significance of a particular work.” Warhol, 143 S. Ct.  at 1283. Despite the seemingly neat breakdown of the 11th Circuit’s three-step test into “(1) abstraction, (2) filtration, and (3) comparison,” Compulife Software Inc. v. Newman, 959 F. 3d 1288, 1303 (11th Cir.  2020), each step in the process forces a court into a role not unlike the art critic. The court is being asked to determine what the idea or meaning of the work is (even if the meaning may in fact be multiple, mysterious, or muffled, intentionally or not), separating some meaningfulness element from other elements of the work, and then comparing such elements to one another. While courts may think that is some disciplined test from the approach of the art critic, that approach in fact tracks the art critic’s approach quite closely. ...