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.
 This is something Jeff Trexler at the CBLDF has been mentioning as a problem for a while.