Artists and designers use reference images all the time. Creatives need inspiration from mood boards and source imagery for their work. After all, there is nothing truly new under the sun.
However, artists and designers need to be careful about what reference images they use and how they use them, considering a 2023 U.S. Supreme Court decision that found the Andy Warhol Foundation infringed against a photographer in publishing a portrait of Prince.
“Fair use” is a complicated doctrine and this case tested artists’ use of copyrighted images as references without a license.
The Andy Warhol Foundation Claims Fair Use of Prince Photo
In 1981, photographer Lynn Goldsmith shot an up-and-coming musician named Prince Rogers Nelson. She granted a limited, one-time use license to Vanity Fair to use one of the Prince photos as an artist reference for an illustration. Andy Warhol, hired by Vanity Fair, used the photo to create a series of silkscreen portraits of Prince, one of which — a purple one— was published in the magazine’s November 1984 issue. Goldsmith was paid $400 for the source photo and received credit in the magazine.
Prince died in 2016, and Vanity Fair’s parent, Condé Nast, asked the Andy Warhol Foundation if it could use the purple 1984 image for a memorial special edition magazine. But upon seeing the series, Condé Nast opted instead to use an orange illustration. When Goldsmith saw “The Genius of Prince” commemorative magazine with the orange Prince cover, she contacted the foundation, which sued her for declaratory judgment of noninfringement or fair use (Goldsmith’s accusation of infringement prompted the foundation to seek a court’s opinion on the matter). The foundation asked the court to declare either that there was no infringement, or that it did not need a license because, in the orange print, the original photograph had been completely transformed.
This transformation is an important factor for artists and designers to understand when they use copyrighted reference images, and it’s one that the Supreme Court scrutinized.
When Does a Reference Image Fall Under Fair Use?
Fair use is a legal principle that derives from English legal customs. Fair use, in some instances, recognizes the truth of that adage that there is nothing new under the sun, and creative expression is almost always derived from or inspired by something that came before it. A reference is fair to use if it has been substantially transformed — an important question in this case — or if it is being used for criticism, education or parody, which is why Saturday Night Live does not drown in lawsuits.
The Copyright Act lists four factors to consider in assessing the fair use of a work:
1. The purpose of the use — is it commercial?
2. The nature of the original copyrighted work
3. The proportion and substantiality of the new work in relation to the source material
4. How the new work affects the value of, or potential market for, the original copyrighted work
The trial court applied these four factors in considering the Andy Warhol Foundation’s requests and decided that the publication of the orange Prince portrait was fair use.
Goldsmith appealed, and the U.S. Court of Appeals reversed and found in the photographer’s favor, instead.
When the Supreme Court took the case, it limited review to the first fair use factor — whether the use was for commercial profit, or for educational purposes.
The court found that the original photograph and the foundation’s use of it shared substantially the same purpose — a commercial one. Orange Prince added new expression to the photograph, but the first fair use factor favored Goldsmith, the court said.
“If an original work and secondary use share the same or highly similar purposes, and the secondary use is commercial, the first fair use factor is likely to weigh against fair use, absent some other justification for copying,” the court said in its opinion.
Using Reference Images for Commercial Purposes May Not Be Fair Use
The takeaway from this case is that using a reference image can be risky if the use is for commercial purposes, even if there is substantial transformation. The Supreme Court was not impressed by the Warhol Foundation’s arguments that the silk screen portrait series was a commentary on the dehumanizing nature and commodification of celebrity, especially considering the Warhol Foundation used the Orange Prince portrait as a commodity to sell magazines.
Transforming an original reference work helps protect it from a copyright infringement claim, but in this case, the work wasn’t original enough and was deemed a derivative work. “Copying the photograph because doing so was merely helpful to convey a new meaning or message is not justification enough,” the court’s opinion said. Copyright protection includes the right to protect work from derivatives that transform the original. Hence, the court sided with Goldsmith.
When artists and designers use reference images that are still recognizable in the resulting derivative works, they need to be careful. The Supreme Court held that the Warhol Foundation infringed on Goldsmith because its portrait shared the same commercial purpose as the photograph. For the Supreme Court, the commercial purpose was the important factor excluding the portrait from fair use.