Lessons for Artists and Business Teams from the Warhol Case

By: Sophia Allen

As you may have heard, the United States Supreme Court recently issued an opinion in Andy Warhol Foundation for The Visual Arts, Inc. v. Goldsmith which discusses the complex topic of fair use. You may be wondering how this new case law affects you and your business. Therefore, we have identified relevant takeaways for three key groups impacted by this decision: (1) original creators; (2) intermediary artists; and (3) business teams.

1. Original Creator: For the sake of this post, the original creator is the party who is creating the original work. In the Warhol case, the original creator was Goldsmith. Goldsmith is the photographer who captured an original photograph of Prince.

2. Intermediary Artist: Again, for the sake of this post, the intermediary artist is the party building from the original creator’s work and making the secondary work. In the Warhol case, the intermediary artist was Andy Warhol. Warhol created a purple silkscreen portrait of Prince based on the original photo taken by Goldsmith. He also created other versions, including the orange silkscreen, which we will discuss below.

3. Business Team: This is the party who is publishing or using the original creator’s and/or the intermediary artist’s works. In the Warhol case, the business team was Vanity Fair, and later, Condé Nast (parent company of Vanity Fair). Originally, Vanity Fair obtained a license from Goldsmith to use her photo of Prince as a reference for Warhol. Vanity Fair then printed Warhol’s final creation, the purple silkscreen, in its magazine. Years later, Condé Nast printed a second version that Warhol had made – the orange silkscreen – with permission from Warhol’s successor (AWF), giving rise ultimately to the Supreme Court case.

The Takeaways: What does this case mean for each group?

Original Creator: Good news! You are the “Goldsmith” in this equation, and you have prevailed! This case strengthens protections around how and when the fair use defense can successfully be asserted. Goldsmith’s win, however, does not mean that you are inherently protected. The key takeaway for you is: your licenses must be specific and limited to provide you with the greatest protections. In Warhol, Goldsmith originally granted Vanity Fair a license to use her photograph as a reference for Warhol’s artwork. That original license bolstered her case and provides a helpful line of questioning for any original creator when drafting a license:

• Is my license limited in purpose? E.g., Goldsmith licensed her photograph to be used as an “artist reference for an illustration” in one Vanity Fair issue.

• Does my license limit the amount of use? E.g., the Goldsmith license specified the size and frequency of the use. It clearly stated that the derived illustration could only be printed “one time full page and one time under one quarter page.”

• Is my license clearly limited in duration? E.g., the Goldsmith license specified that the use could only be printed in the November 1984 issue.

• Is the license clearly limited in scope? E.g., in addition to the boundaries above, the Goldsmith license clearly stated, “No other usage right granted.”

Intermediary Artist: If you are the intermediary artist building from the original creator’s work (i.e., you are the “Warhol”), this case requires you to exercise diligence. It tells us that a court will essentially review a timeline of your actions with respect to the original work and assess each use individually. The success of your fair use defense teeters on an assessment of all of your interactions with the original work, and the outcome may change depending on your varied uses.

What’s changed? The traditional fair use analysis still stands. This new case, however, tells us that the fair use analysis cannot merely be based on the intermediary artist’s intent at the time of creation or just the original use. Instead, we must repeat the analysis and consider the context of any subsequent uses.

As we discussed above, in addition to the license-backed purple silkscreen, Warhol also made an orange silkscreen derived from the same photo. Years later, AWF (the present copyright holder) granted a license to Condé Nast to use the orange silkscreen in a 2016 Condé Nast special edition issue without consulting Goldsmith. According to the Warhol opinion, the context of the orange silkscreen license was a commercial activity that undermined AWF’s ability to claim the fair use defense. Things may have been different, for instance, had the orange silkscreen only hung in a gallery. Therefore, intermediary artists must be diligent to consider the following fair use questions each time they create or use a derivative work:

• Am I monetizing my work?

• Am I publishing my work in a different environment than the original?

• What point I am trying to make through my work? How is that different from the point made by the original work?

• Does my objective for using the work overlap with the objective for the original use?

• Does my secondary use go well beyond just adding something new to the original work?

Business Team: Last, but not least, if you are not the original creator, nor the intermediary artist, but you want to use the secondary work, you still hold an important role: you are the “Condé Nast” of this story. The takeaway for business teams is that you must be proactive and vigilant in ensuring licenses are obtained from all parties with intellectual property rights in the work. Anyone in the chain can be sued for infringement, including the business which thought it had a license. Before using any material, business teams should ask:

• Who do we need a license from?

• Which parties do we need to ask?

• How many contributors have touched this final work? Have we obtained a license from each of those contributors?

In all, Andy Warhol Foundation for The Visual Arts, Inc. v. Goldsmith is a reminder that the fair use defense cannot provide everlasting certainty. It also reminds us that intellectual property laws are always developing. Our final takeaway: just get the license(s)!

Originally published by InfoLawGroup LLP. If you would like to receive regular emails from us, in which we share updates and our take on current legal news, please subscribe to InfoLawGroup’s Insights HERE.