The Second Circuit declined to alter its ruling that Andy Warhol art based on a photo of the musician Prince as used in a magazine wasn’t fair use after considering the U.S. Supreme Court’s subsequent decision in Google v. Oracle.
Lynn Goldsmith in March convinced the U.S. Court of Appeals for the Second Circuit that Warhol’s stylized version of her photo published in a magazine after the artist’s 2016 death didn’t transform the purpose of her 1981 photo. The court largely repeated that opinion Tuesday after asking Goldsmith to address the Andy Warhol Foundation’s argument that Google undermined the Second Circuit’s logic.
The panel “emphatically” rejected the foundation’s argument, instead finding the main takeaway from Google was that a fair use analysis is highly context-dependent and “does not lend itself to simple bright-line rules.”
The original and revised opinions noted that Goldsmith’s photo had a distinct market from Warhol’s art in general. But that part of a fair use analysis changed once the foundation licensed the art to a magazine for the same purpose as Goldsmith would have licensed her photo.
A concurring opinion from Circuit Judge Dennis Jacobs emphasized the point as he wrote that “a sound holding may suggest an unsound result in related contexts.” Jacobs made the same argument in a concurring opinion in March.
He directly addressed “alarm” from other creators who borrow elements from other works as he said only the licensing of the art was at issue, not the art itself. Goldsmith didn’t challenge whether Warhol’s art infringed her photo in any other context, and the court therefore didn’t even consider it, he said.
Vanity Fair used one of Warhol’s 16 variations of prints stylizing Goldsmith’s photo on the cover of a Prince tribute magazine in May 2016, crediting the Andy Warhol Foundation. Goldsmith told the foundation that it had infringed, and the foundation asked the U.S. District Court for the Southern District of New York to declare it didn’t, or that the work was fair use. Goldsmith countersued for infringement.
The district court agreed with the foundation and said the photo was transformed, with Warhol’s work portraying a very different aesthetic and character while catering to a different market.
The Second Circuit reversed, stating the district court wrongly assumed the role of an art critic. It also found the foundation had harmed the market for Goldsmith’s photo and her derivative rights, as she established artists generally pay photographers for the right to create art by stylizing their photos.
The foundation asked for a rehearing in front of the full Second Circuit. In April, the Second Circuit asked Goldsmith to address the high court’s fair use ruling in Google settling a dispute over use of Java coding in its Android platform.
Tuesday’s opinion varied little from the appeals court’s March ruling, with some citations to Google v. Oracle sprinkled in. The court also added a section on “The Effect of Google” in which it “emphatically” rejected AWF’s claim “that Google ‘comprehensively refutes the panel’s reasoning.’”
The panel said the foundation’s argument “rests on a misreading” of both Google and its March opinion. It noted that in Google, the Supreme Court “took pains to emphasize that the unusual context of that case, which involved copyrights in computer code, may well make its conclusions less applicable to contexts such as ours.” The Google section of the opinion and various citations woven in elsewhere highlight that fair use is “flexible” and “context-sensitive.”
Jacobs also updated his three-page opinion with a paragraph addressing the “public benefits” aspect of Google that helped its fair use case. In this case, that element would only address the public benefits of allowing the foundation to license the photo to a magazine. The court would “need to reassess” if asked to weigh Warhol’s original use of the photo to create the art.
A second concurrence from Judge Richard J. Sullivan, joined by Jacobs, wasn’t reissued with the updated opinion. That concurrence highlighted “overreliance on ‘transformative use’ in our fair use jurisprudence” and suggested “renewed focus on the fourth factor,” the effect on the potential market for the original work.
Circuit Judge Gerald E. Lynch also joined the primary opinion.
The Andy Warhol Foundation is represented by Latham & Watkins LLP and Quinn Emanuel Urquhart & Sullivan LLP. The appellees are represented by Williams & Connolly LLP.
The case is The Andy Warhol Foundation v. Goldsmith, 2d Cir. App., No. 19-2420, 8/25/20.