Editor’s Note: The
full text of the case can be found here. I will not be providing citations in
my discussion below.
The U.S.
Supreme Court recently issued its decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith. The
case concerned a screen print of Prince by Andy Warhol, which was based upon a
photograph taken by Goldsmith. In the case, which the Court expressly limited
to the Warhol Foundation’s licensing of the work to a magazine following Prince’s
death, the Court found that the use was not transformative and that it did not
qualify for fair use protection.
Vanity
Fair licensed from Goldsmith the right to have an artist—Warhol—use the photo
as a reference to create a piece for the magazine (the “Purple Prince”). The
license was for a one-time use. Warhol created the work for Vanity Fair, and he
also created 15 other similar works that were all based on the same photograph
taken by Goldsmith. After Prince’s death, Condé Nast licensed from the Warhol
Foundation the rights to use one of these other Prince works (the “Orange
Prince”). Upon the discovery of Orange Prince, Goldsmith informed the Warhol Foundation
that the she believed the work infringed her copyright. The Warhol Foundation
filed a declaratory judgment action in an effort to have the work declared a
fair use. The district court granted summary judgment ruling it a fair use, and
the Second Circuit reversed the decision. As stated above, the Supreme Court found:
…the sole
question presented is whether the first fair use factor, “the purpose and
character of the use, including whether such use is of a commercial nature or
is for nonprofit educational purposes,” §107(1), weighs in favor of AWF’s
recent commercial licensing to Condé Nast. On that narrow issue, and limited to
the challenged use, the Court agrees with the Second Circuit: The first factor
favors Goldsmith, not AWF.
The Court
did not address whether any of the other Warhol Prince Works would qualify as a
fair use. Instead, it focused solely on the licensing of the Orange Prince to a
magazine, which it deemed as a commercial purpose, and the impact that license
would have on the market for Goldsmith’s original photo because they “share
substantially the same purpose.”
It is still too early to determine
how this case will impact fair use going forward. Some commentators think that
the limited ruling, as described in the quote, lessens the impact. Others, including
those justices in the minority opinion, fear that this could lead to a major
shift in copyright law and curtailing of fair use.
Nevertheless, comic book creators,
particularly artists, should take note of the decision.
First, the Purple Prince Warhol
created used Goldsmith’s photo as a reference. When it was originally created,
Vanity Fair paid Goldsmith for its use as a reference and credited her. The Court
also notes that Warhol regularly paid artists for the use of their works as
reference. In comics, it is common for creators to use photographs as
reference. This decision could encourage photographers, or those who acquire
the rights to their works, to pursue litigation against those who use photos as
reference.
Will using a photo as reference without a license be enough to justify
infringement, particularly if the photo primarily exists to be licensed? The claim
seems stronger today than before this case.
Second, in Goldsmith, the Court found that licensing the art was commercial
use, and thus, when weighed with the other fair use factors, did not constitute
fair use. The Court left open the question of how commercial does the use of
the art have to be in order to weigh against fair use. To some extent all art
is commercial. If you sell your art, it could be found commercial. The Court didn’t address typical artistic
commerce, and suggested a different analysis might result from typical art
sales versus what occurred Goldsmith.
Will use in a comic book be commercial use? I would hope that it would not be,
as comics are a unique art form entitled to First Amendment and fair use
protection, but comics are also a commercial art form. Using photo reference in
your comic could increase the risk of potential lawsuits.
Third, if you utilize the art from
your comics in other ways, you will want to be more careful with the images you
choose. Will using photo referenced art on other materials, such as
merchandise, prints, or posters be a commercial use? Based upon the Court’s
decision, this is likely a yes.
Finally, if you are an artist, and you
are using a photo referenced piece of art in your comic, you may be in
violation of your contract. Most publishing contracts have the artist state
that the art is original to them and will not infringe on a third-party’s
rights. If your publisher gets sued because of the art you provided to them,
you could be forced to pay for all of the damages and legal fees they incur because
of it. This is why the representation and warranties and the indemnification
sections of contracts are so important.
Hopefully, the impact of the Goldsmith decision will not be severely
felt in the comic book industry, but, depending on how it is interpreted, there
is the possibility of increased litigation in the future over photo referenced
artist works.