No. ______
`
`In the
`Supreme Court of the United States
`
`
`
`THE ANDY WARHOL FOUNDATION FOR THE VISUAL
`ARTS, INC.,
`
`
`Petitioner,
`
`V.
`LYNN GOLDSMITH AND LYNN GOLDSMITH, LTD.,
`Respondents.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`
`ROMAN MARTINEZ
`Counsel of Record
`SARANG VIJAY DAMLE
`ELANA NIGHTINGALE DAWSON
`CHERISH A. DRAIN
`LATHAM & WATKINS LLP
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004
`(202) 637-3377
`roman.martinez@lw.com
`Counsel for Petitioner
`
`ANDREW GASS
`JOSEPH R. WETZEL
`LATHAM & WATKINS LLP
`505 Montgomery Street
`San Francisco, CA 94111
`(415) 391-0600
`
`SAMIR DEGER-SEN
`LATHAM & WATKINS LLP
`1271 Avenue of the
`Americas
`New York, NY 10020
`(212) 906-1200
`
`
`
`
`
`
`
`
`
`
`In the
`Supreme Court of the United States
`
`
`
`THE ANDY WARHOL FOUNDATION FOR THE VISUAL
`ARTS, INC.,
`
`
`Petitioner,
`
`V.
`LYNN GOLDSMITH AND LYNN GOLDSMITH, LTD.,
`Respondents.
`
`
`
`ON PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`
`ROMAN MARTINEZ
`Counsel of Record
`SARANG VIJAY DAMLE
`ELANA NIGHTINGALE DAWSON
`CHERISH A. DRAIN
`LATHAM & WATKINS LLP
`555 11th Street, NW
`Suite 1000
`Washington, DC 20004
`(202) 637-3377
`roman.martinez@lw.com
`Counsel for Petitioner
`
`ANDREW GASS
`JOSEPH R. WETZEL
`LATHAM & WATKINS LLP
`505 Montgomery Street
`San Francisco, CA 94111
`(415) 391-0600
`
`SAMIR DEGER-SEN
`LATHAM & WATKINS LLP
`1271 Avenue of the
`Americas
`New York, NY 10020
`(212) 906-1200
`
`
`
`
`
`
`
`
`
`
`i
`
`QUESTION PRESENTED
`This Court has repeatedly made clear that a work
`of art is “transformative” for purposes of fair use
`under the Copyright Act if it conveys a different
`“meaning[] or message” from its source material.
`Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579
`(1994); Google LLC v. Oracle Am., Inc., 141 S. Ct.
`1183, 1202 (2021). In the decision below, the Second
`Circuit nonetheless held that a court is in fact
`forbidden from trying to “ascertain the intent behind
`or meaning of the works at issue.” App. 22a-23a.
`Instead, the court concluded that even where a new
`work indisputably conveys a distinct meaning or
`message, the work is not transformative if it
`“recognizably deriv[es]
`from, and retain[s] the
`essential elements of, its source material.” Id. at 24a.
`The question presented is:
`Whether a work of art is “transformative” when it
`conveys a different meaning or message from its
`source material (as this Court, the Ninth Circuit, and
`other courts of appeals have held), or whether a court
`is forbidden from considering the meaning of the
`accused work where it “recognizably deriv[es] from”
`its source material (as the Second Circuit has held).
`
`
`
`ii
`
`PARTIES TO THE PROCEEDINGS BELOW
`Petitioner The Andy Warhol Foundation for the
`Visual Arts, Inc. was a plaintiff-counter-defendant-
`appellee in the U.S. Court of Appeals for the Second
`Circuit.
`and Lynn
`Respondents Lynn Goldsmith
`Goldsmith, Ltd. were defendants-counter-plaintiffs-
`appellants in the U.S. Court of Appeals for the Second
`Circuit.
`RULE 29.6 DISCLOSURE STATEMENT
`Petitioner The Andy Warhol Foundation for the
`Visual Arts, Inc. has no parent corporation, and no
`publicly held corporation owns 10 percent or more of
`its stock.
`
`RELATED PROCEEDINGS
`The proceedings directly related to this case are:
`Andy Warhol Foundation for the Visual Arts, Inc.
`v. Goldsmith, No. 19-2420, U.S. Court of Appeals for
`the Second Circuit. Amended judgment entered on
`August 24, 2021. Petition for rehearing en banc
`denied on September 10, 2021.
`Andy Warhol Foundation for the Visual Arts, Inc.
`v. Goldsmith, No. 1:7-cv-02532-JGK, U.S. District
`Court for the Southern District of New York.
`Judgment entered July 15, 2019. Notice of appeal
`filed August 7, 2019.
`
`
`
`
`
`iii
`TABLE OF CONTENTS
`
`Page
`QUESTION PRESENTED ......................................... i
`PARTIES TO THE PROCEEDINGS BELOW .......... ii
`RULE 29.6 DISCLOSURE STATEMENT ................ ii
`RELATED PROCEEDINGS ...................................... ii
`OPINIONS BELOW .................................................... 1
`JURISDICTION .......................................................... 1
`STATUTORY PROVISIONS INVOLVED ................. 1
`INTRODUCTION ....................................................... 2
`STATEMENT OF THE CASE .................................... 4
`A. Legal Background ........................................ 4
`B. Fair Use And Warhol’s Transformative
`Works Of Art ................................................ 6
`C. The Proceedings In This Case ..................... 9
`REASONS FOR GRANTING THE WRIT................ 16
`The Second Circuit’s Transformativeness
`I.
`Test Conflicts With Campbell And Google ....... 17
` The Second Circuit’s Holding Creates A
`Circuit Split And
`Implicates Deeper
`Confusion Over The Transformative Use
`Test .................................................................... 24
` The Second Circuit’s Holding Is Unworkable
`And Will Inflict Serious Harm On Artistic
`Expression ......................................................... 32
`CONCLUSION .......................................................... 39
`
`
`
`iv
`TABLE OF CONTENTS—Continued
`
`Page
`
`APPENDIX
`Opinion of the United States Court of Appeals
`for the Second Circuit, Andy Warhol
`Foundation for the Visual Arts, Inc. v.
`Goldsmith, 11 F.4th 26 (2d Cir. 2021) ............... 1a
`Opinion and Order of the United States
`District Court of the Southern District of
`New York, Andy Warhol Foundation for
`the Visual Arts, Inc. v. Goldsmith, 382 F.
`Supp. 3d 312 (S.D.N.Y. 2019) ........................... 53a
`Order of the United States Court of Appeals for
`the Second Circuit denying Petition for
`Rehearing, Andy Warhol Foundation for
`the Visual Arts, Inc. v. Goldsmith, No. 19-
`2420 (2d Cir. Sept. 10, 2021), ECF No. 294 ..... 84a
`17 U.S.C. § 107 ........................................................ 86a
`17 U.S.C. § 109(a), (c) .............................................. 87a
`17 U.S.C. § 503 ........................................................ 89a
`
`
`
`
`
`v
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Andy Warhol Foundation for the Visual
`Arts, Inc. v. Goldsmith,
`992 F.3d 99 (2d Cir. 2021) ....................... 13, 14, 15
`Balsey v. LFP, Inc.,
`691 F.3d 747 (6th Cir. 2012) ................................ 29
`
`Bouchat v. Baltimore Ravens Ltd.
`Partnership,
`737 F.3d 932 (4th Cir. 2013), cert.
`denied, 572 U.S. 1117 (2014) ............................... 30
`Brammer v. Violent Hues Productions, LLC,
`922 F.3d 255 (4th Cir. 2019) ................................ 30
`Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994) ...................................... passim
`Cariou v. Prince,
`714 F.3d 694 (2d Cir. 2013) ........................... 21, 28
`
`Comedy III Productions, Inc. v. Gary
`Saderup, Inc.,
`21 P.3d 797 (Cal. 2001), cert. denied, 534
`U.S. 1078 (2002) ..................................................... 7
`Eldred v. Ashcroft,
`537 U.S. 186 (2003) ................................................ 6
`Gaylord v. United States,
`595 F.3d 1364 (Fed. Cir. 2010) ...................... 30, 31
`
`
`
`vi
`TABLE OF AUTHORITIES—Continued
`Page(s)
`
`Google LLC v. Oracle America, Inc.,
`141 S. Ct. 1183 (2021) .................................. passim
`Knitwaves, Inc. v. Lollytogs, Ltd.,
`71 F.3d 996 (2d Cir. 1995) ................................... 34
`Murphy v. Millennium Radio Group LLC,
`650 F.3d 295 (3d Cir. 2011) ................................. 31
`
`Núñez v. Caribbean International News
`Corp.,
`235 F.3d 18 (1st Cir. 2000) .................................. 30
`Seltzer v. Green Day, Inc.,
`725 F.3d 1170 (9th Cir. 2013) ...................... passim
`Stewart v. Abend,
`495 U.S. 207 (1990) ................................................ 5
`
`Tresóna Multimedia, LLC v. Burbank High
`School Vocal Music Association,
`953 F.3d 638 (9th Cir. 2020) ................................ 29
`Twentieth Century Music Corp. v. Aiken,
`422 U.S. 151 (1975) ................................................ 4
`STATUTES
`15 U.S.C. § 109(a) ...................................................... 36
`15 U.S.C. § 109(c) ...................................................... 36
`17 U.S.C. § 101 et seq. ............................................... 12
`17 U.S.C § 103(a) ....................................................... 35
`
`
`
`vii
`TABLE OF AUTHORITIES—Continued
`Page(s)
`17 U.S.C. § 107 ............................................................ 5
`17 U.S.C. § 503 ...................................................... 6, 37
`28 U.S.C. § 1254(1) ...................................................... 1
`OTHER AUTHORITIES
`1 Leonard D. DuBoff et al, Art Law
`Deskbook: Ch. 1 Copyright, Part 9 Fair
`Uses (2018, Lexis) ................................................ 32
`Blake Gopnik, Warhol a Lame Copier? The
`Judges Who Said So Are Sadly
`Mistaken, N.Y. Times (updated Sept. 24,
`2021) ............................................................... 33, 35
`Mark S. Lee, Entertainment and
`Intellectual Property Law (Sept. 2021
`update, Westlaw) ................................................. 32
`Masterworks Fine Art Gallery, Andy
`Warhold Marilyn Monroe, https://www.
`masterworksfineart.com/artists/andy-
`warhol/marilyn-monroe (last visted Dec.
`8, 2021) ................................................................... 9
`
`
`
`viii
`TABLE OF AUTHORITIES—Continued
`Page(s)
`
`Museum of Modern Art Learning,
`Campbell’s Soup Cans,
`https://www.moma.org/learn/moma_
`learning/andy-warhol-campbells-soup-
`cans-1962/ (last visited Dec. 8, 2021) .................... 7
`Museum of Modern Art Learning, Pop Art,
`https://www.moma.org/learn/moma_
`learning/themes/pop-art/ (last visited
`Dec. 8, 2021) ........................................................... 6
`Museum of Modern Art Learning, Pop Art:
`Appropriation,
`https://www.moma.org/learn/moma_
`learning/themes/pop-art/appropriation/
`(last visited Dec. 8, 2021) .................................... 35
`4 Melville Nimmer & David Nimmer,
`Nimmer on Copyright (2019) ............................... 31
`Shoshana Rosenthal, Note, A Critique of
`the Reasonable Observer: Why Fair Use
`Fails to Protect Appropriation Art, 13
`Colo. Tech. L.J. 445 (2015) .................................. 32
`David Shipley, A Transformative Use
`Taxonomy: Making Sense of the
`Transformative Use Standard, 63
`Wayne L. Rev. 267 (2018),
`https://digitalcommons.law.uga.edu/cgi/
`viewcontent.cgi?article=2174&context=
`fac_artchop ....................................................... 5, 32
`
`
`
`ix
`TABLE OF AUTHORITIES—Continued
`Page(s)
`
`Whitney Museum of American Art,
`Andy Warhol Black Bean, 1968,
`https://whitney.org/collection/works/
`5627 (last visited Dec. 8, 2021) ............................. 7
`
`
`
`
`1
`
`PETITION FOR A WRIT OF CERTIORARI
`Petitioner asks this Court for a writ of certiorari to
`review the judgment of the United States Court of
`Appeals for the Second Circuit in this case.
`OPINIONS BELOW
`The amended panel decision (App. 1a-52a) is
`reported at 11 F.4th 26 (2d Cir. 2021), while the
`original panel decision, which was withdrawn and
`superseded by the amended panel decision, is
`reported at 992 F.3d 99 (2d Cir. 2021). The order
`denying rehearing en banc (App. 84a-85a) is not
`published.
` The district court’s order granting
`summary judgment to petitioner (App. 53a-83a) is
`published at 382 F. Supp. 3d 312 (S.D.N.Y. 2019).
`JURISDICTION
`On March 26, 2021, the Second Circuit reversed
`the judgment of the district court. 992 F.3d 99 (2d
`Cir. 2021). On August 24, 2021, the Second Circuit
`granted petitioner’s
`timely petition
`for panel
`rehearing, withdrew the original opinion and issued
`an amended opinion. App. 1a-52a. On September 10,
`2021, the Second Circuit denied petitioner’s timely
`petition for rehearing en banc. App. 84a-85a. This
`Court has jurisdiction under 28 U.S.C. § 1254(1).
`STATUTORY PROVISIONS INVOLVED
`The relevant statutory provisions are set out in the
`appendix to this petition. App. 86a-90a.
`
`
`
`2
`INTRODUCTION
`This petition raises a question of exceptional
`importance regarding the scope of the Copyright Act’s
`fair use defense. The Second Circuit’s decision below
`creates a circuit split and casts a cloud of legal
`uncertainty over an entire genre of visual art,
`including canonical works by Andy Warhol and
`countless other artists. This Court should grant
`review to vindicate
`its precedent, resolve the
`confusion
`in the
`lower courts, and resurrect
`protections for free expression that the Second
`Circuit’s ruling now imperils.
`Under this Court’s precedent, the fair use inquiry
`requires ascertaining whether one creative work that
`draws from another conveys a different meaning or
`message from the original. A follow-on work that
`deploys preexisting content in the service of saying
`something new and distinct is much more likely to be
`fair use. The Second Circuit’s test, however, forbids
`ascertaining whether the follow-on work conveys a
`different meaning or message from the original,
`where both pieces are works of art that share a visual
`resemblance. Certiorari is warranted to prevent the
`untenable result that creative works of tremendous
`cultural significance could be
`lawful
`in one
`jurisdiction, and unlawful in another, depending on
`whether a court is permitted to ascertain the meaning
`of the new work.
` At issue in this case is the legality of Andy
`Warhol’s Prince Series—a set of portraits that
`transformed a preexisting photograph of the musician
`Prince into a series of iconic works commenting on
`celebrity and consumerism. Applying this Court’s
`seminal opinion in Campbell v. Acuff-Rose Music,
`
`
`
`3
`Inc., 510 U.S. 569 (1994), the district court concluded
`that the Prince Series was “transformative” because
`it incorporated a new meaning and message, distinct
`from the Prince photograph from which it drew.
`Despite agreeing that Warhol’s new work “give[s] a
`different impression” than the original, the Second
`Circuit nonetheless concluded that the work was not
`transformative (and thus not fair use) because the
`photograph “remain[ed] the recognizable foundation
`upon which the Prince Series is built.” App. 26a.
`That decision threatens a sea-change in the law of
`copyright. As this Court has explained, a new work is
`“transformative” if it has a new “meaning or message”
`distinct from that of the preexisting work. See Google
`LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1202-03
`(2021) (quoting Campbell, 510 U.S. at 579). The
`decision below holds, however, that even where a new
`work indisputably conveys a distinct meaning or
`message, the work is not transformative if it
`“recognizably deriv[es]
`from, and retain[s] the
`essential elements of, its source material.” App. 23a-
`24a. That approach is unheard-of among the courts
`of appeals, and squarely contravenes this Court’s
`decisions in Google and Campbell. The Second
`Circuit’s imposition of a novel framework displacing
`this Court’s precedent plainly warrants review.
`The decision below also creates a circuit conflict
`between the two most important forums for copyright
`litigation in the country. Contrary to the Second
`Circuit, the Ninth Circuit has held that “even where”
`a new “work makes few physical changes to the
`original,” it can be transformative if “new expressive
`content or [a new] message is apparent.” Seltzer v.
`Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013)
`(emphasis added). Well over half the copyright cases
`
`
`
`4
`in the nation arise in the Second and Ninth Circuits.
`The fact that those courts now use entirely different
`frameworks for assessing transformativeness is a
`recipe for inconsistent results and forum shopping.
`And the Second Circuit’s approach also conflicts with
`decisions by other courts of appeals as well.
`Finally, the decision below will have drastic and
`harmful consequences for free expression. The
`Second Circuit’s rule chills artistic speech by
`imposing the threat of ruinous penalties on artists
`who must predict—ex ante—whether their new work
`will be deemed too “recognizable” to merit fair use
`protection. By the same token, it may now be
`unlawful for collectors to sell—and museums to
`display—a large swath of works of art that derive
`inspiration
`from other works without
`fear of
`draconian consequences.
`This Court has long recognized that copyright law
`cannot be used to stifle innovation and creativity—
`even when that innovation recognizably builds on the
`achievements of others. This Court should clarify the
`fair use doctrine and reaffirm
`its historical
`commitment to free artistic expression. The petition
`should be granted.
`STATEMENT OF THE CASE
`A. Legal Background
`Copyright
`law strikes a balance between
`incentivizing the creation of new works and ensuring
`that the public can access and benefit from those
`works. “Creative work is to be encouraged and
`rewarded, but private motivation must ultimately
`serve the cause of promoting broad public availability
`of literature, music, and the other arts.” Twentieth
`
`
`
`5
`Century Music Corp. v. Aiken, 422 U.S. 151, 156
`(1975).
`Because “rigid application” of the copyright laws
`“would stifle the very creativity which [they are]
`designed to foster,” Stewart v. Abend, 495 U.S. 207,
`236 (1990) (citation omitted), the Copyright Act
`grants the public the right to make “fair use” of
`copyrighted content. 17 U.S.C. § 107. The fair use
`defense
`to
`copyright
`infringement
`turns on
`consideration of four factors: (1) “the purpose and
`character of the use,”
`(2) “the nature of the
`copyrighted
`work,”
`(3) “the
`amount
`and
`substantiality of the portion used,” and (4) “the effect
`of the use upon the potential market for or value of
`the copyrighted work.” Id.
`Works that are “transformative” under the first
`factor “lie at the heart of the fair use doctrine’s
`guarantee of breathing space within the confines of
`copyright.” Campbell, 510 U.S. at 579. “[T]he more
`transformative the new work, the less will be the
`significance of other factors, like commercialism, that
`may weigh against a finding of fair use.” Id. In
`practice, the transformativeness inquiry is virtually
`always dispositive of the fair use question. See David
`Shipley, A Transformative Use Taxonomy: Making
`Sense of the Transformative Use Standard, 63 Wayne
`L. Rev. 267, 276-77 (2018), https://digitalcommons.
`law.uga.edu/cgi/viewcontent.cgi?article=2174&
`context=fac_artchop.
`A work is “transformative” if it “adds something
`new” by “altering [the source material] with new
`expression, meaning, or message.” Campbell, 510
`U.S. at 579. That is so even where portions of the
`original work are copied “precisely” and “for the same
`
`
`
`6
`reason” as the original work. See Google, 141 S. Ct.
`at 1203.
`By allowing the creation of works that use
`preexisting content in the service of expressing new
`meaning or message, the fair use defense provides a
`critical “First Amendment safeguard[],” Eldred v.
`Ashcroft, 537 U.S. 186, 220 (2003), and ensures that
`the Copyright Act does not stymie legitimate creative
`expression. Without such protection, many works
`would be subject to the Act’s harsh remedies for
`copyright
`infringement—including
`impoundment,
`prohibiting display of the work, and even requiring
`the destruction of all physical objects in which the
`work is embodied. 17 U.S.C. § 503.
`B. Fair Use And Warhol’s Transformative
`Works Of Art
`Thanks to the fair use doctrine, artists have long
`drawn
`inspiration
`from prior, protected works
`without incurring copyright liability. Consider the
`“pop art” movement—one of the most important
`contributions of twentieth century American art.
`Artists who created pop art “made art that mirrored,
`critiqued, and, at times, incorporated everyday items,
`consumer goods, and mass media messaging and
`imagery.” Museum of Modern Art Learning, Pop Art,
`https://www.moma.org/learn/moma_learning/themes/
`pop-art/ (last visited Dec. 8, 2021).
`One of the most prominent pop artists is Andy
`Warhol, whose life’s work consists of approximately
`10,000 paintings. CA2 Joint Appendix (“JA”) 2372.
`For example, among Warhol’s most famous creations
`is the Campbell’s Soup Cans series, which borrows
`Campbell’s ubiquitous brand and
`(copyrighted)
`advertising logo to comment on consumerism.
`
`
`
`7
`
`
`Whitney Museum of American Art, Andy Warhol
`Black Bean, 1968, https://whitney.org/collection/
`works/5627 (last visited Dec. 8, 2021); see also
`Museum of Modern Art Learning, Campbell’s Soup
`Cans, https://www.moma.org/learn/moma_learning/
`andy-warhol-campbells-soup-cans-1962/ (last visited
`Dec. 8, 2021). No one has seriously questioned that
`these types of follow-on works constitute fair use. See
`Google, 141 S. Ct. at 1203 (alluding to Soup Cans
`series as paradigmatic example).
`Many of Warhol’s other leading pieces—including
`his iconic portrayals of politicians and celebrities such
`as Marilyn Monroe, Jackie Kennedy, Mao Zedong,
`and others—likewise draw from preexisting works.
`Warhol created his depictions of those recognizable
`subjects
`through
`“distortion”
`and
`“careful
`manipulation” of photographs, often taken by others.
`Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d
`797, 811 (Cal. 2001), cert. denied, 534 U.S. 1078
`(2002). As one prominent art historian has explained,
`
`
`
`8
`the resulting works of art conveyed a distinct message
`about the use and meaning of images of famous people
`in our culture—commenting on the respects in which
`they “function as masks, function in terms of cultural
`language rather than [as] actual individual[s].”
`JA1391-92 (Expert Deposition of Thomas Crow).
`That is what differentiates a Warhol rendition of, say,
`Marilyn Monroe, from a tabloid magazine image of
`Marilyn Monroe: the latter is an image of a celebrity;
`the former comments on the role of celebrity imagery
`in popular culture, by subtly altering the photo-
`realistic source material in a variety of ways that
`dehumanize the person depicted—and thus imbue the
`preexisting content with a new meaning.
`Warhol’s “typical” process for creating such works
`involved painting, pencil drawing, and silkscreen
`printing to:
`(1) transform the “detailed, three-
`dimensional being” depicted in a photograph into “a
`flat, two-dimensional figure,” (2) soften, outline, or
`shade “bone structure that appear[ed] crisply in the
`photograph,”
`(3) add
`“loud, unnatural
`colors,”
`(4) change the composition to remove the subject’s
`“torso,” and (5) obscure the subject’s facial expression
`“almost entirely.” App. 59a, 71a-72a Below are ten
`silkscreen portraits of Monroe that Warhol created in
`1967 using that technique, beneath the original
`photograph:
`
`
`
`9
`
`
`
`JA1314; see also Masterworks Fine Art Gallery,
`Andy Warhold Marilyn Monroe, https://www.
`masterworksfineart.com/artists/andy-warhol/
`marilyn-monroe (last visted Dec. 7, 2021).
`C. The Proceedings In This Case
`1. This case involves Warhol’s Prince Series, a
`collection of portraits portraying the iconic musician
`Prince. In 1984, Vanity Fair commissioned Warhol to
`create an image of Prince for a magazine article,
`entitled “Purple Fame.” App. 58a. Vanity Fair
`licensed a black-and-white photograph of Prince
`taken three years earlier by respondent Lynn
`Goldsmith. Id. at 57a. Goldsmith characterized her
`photograph as portraying Prince as “a really
`vulnerable human being,” concerned with “immense
`fears” about his stardom. JA1553, 1557-58.
`Warhol produced the first image in the Prince
`Series, using Goldsmith’s photograph as source
`material. Warhol cropped the image to remove
`Prince’s torso, resized it, altered the angle of Prince’s
`
`
`
`10
`face, and changed tones, lighting, and detail. JA1370.
`Warhol alsof added layers of bright and unnatural
`colors, conspicuous hand-drawn outlines and line
`screens, and stark black shading that exaggerated
`Prince’s features. JA1371. The result is a flat,
`impersonal, disembodied, mask-like appearance.
`App. 77a-78a. The original Goldsmith photograph is
`shown here on the left, with Warhol’s transformation
`of it on the right:
`
`
`
`
`
`
`
`App. 62a; see App. 58a.
`Warhol then created fifteen more images of Prince
`using Goldsmith’s photograph, all of them similarly
`overhauled. App. 58a-60a. That process, as the
`district court aptly found, “transformed” Goldsmith’s
`intimate depiction into “an iconic, larger-than-life
`figure,” stripping Prince of the “humanity
`. . .
`embodie[d] in [the] photograph” to comment on the
`manner in which society encounters and consumes
`celebrity. App. 72a; see JA1373.
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`Since 1984, the Prince Series works have been
`displayed in museums, galleries, and other public
`places dozens of times. App. 61a.
`2. In 2016, Prince died and Condé Nast magazine
`published a tribute issue with one of Warhol’s Prince
`
`
`
`12
`Series works on the cover. After seeing the cover,
`Goldsmith threatened to sue petitioner, The Andy
`Warhol Foundation (“AWF”)—which holds (or, before
`the Second Circuit’s decision, held) the rights to the
`Prince Series—for copyright infringement of her
`photograph if she was not paid a substantial sum of
`money. JA474.
`AWF sued Goldsmith for a declaration of non-
`infringement.
` Id.
` Goldsmith countersued for
`copyright infringement under 17 U.S.C. § 101 et seq.
`JA521. Goldsmith sought a number of remedies,
`including “permanent injunctive relief, enjoining
`[AWF]
`from
`further
`reproducing, modifying,
`preparing derivative works from, selling, offering to
`sell, publishing or displaying the [Prince Series]” and
`“[f]inding that
`[AWF] cannot assert copyright
`protection in the [Prince Series].” Id. (emphasis
`added).
`3. The district court granted AWF summary
`judgment based on the fair use defense. App. 82a-
`83a. As to the first factor (purpose and character of
`use), the court concluded that the Prince Series was
`“transformative” because it communicated a different
`meaning and message from Goldsmith’s original. Id.
`at 69a, 71a. Whereas her photograph portrayed
`Prince as “uncomfortable” and “vulnerable,” the
`district court explained, the Prince Series “reflect[ed]
`the opposite” message. Id. at 71a-72a; see JA1373.
`After determining that the second factor (nature of
`the copyright work) favored “neither party,” the
`district court concluded that the third factor (amount
`and substantiality of the preexisting work used)
`favored fair use. App. 73a-79a. The court found that
`“Warhol removed nearly all the photograph’s
`protectible elements,” observing
`that neither
`
`
`
`13
`“pose” are
`features” nor his
`facial
`“Prince’s
`“copyrightable.” Id. at 78a-79a. Finally, as to the
`fourth factor (market effects), the court concluded
`that Warhol’s heavily stylized images were far from a
`“market substitute[]” for Goldsmith’s “intimate and
`realistic photograph of Prince.” Id. at 82a.
`4. The Second Circuit reversed. Andy Warhol
`Found. for the Visual Arts, Inc. v. Goldsmith (“Warhol
`I”), 992 F.3d 99, 105, 125 (2d Cir. 2021). As to the first
`factor, the panel held that courts “should not . . . seek
`to ascertain the intent behind or meaning of the works
`at issue.” Id. at 114. Like the district court, the
`Second Circuit
`expressly acknowledged
`that
`Goldsmith’s photograph and Warhol’s Prince Series
`embodied different messages: Whereas Goldsmith
`“portray[ed] Prince as a ‘vulnerable human being,’”
`the court observed, Warhol deliberately “strip[ped]
`Prince of that humanity and instead display[ed] him
`as a popular icon.” Id. at 113.
`Nonetheless, the court held that Warhol’s
`concededly different “meaning
`[and] message,”
`Campbell, 510 U.S. at 579, were beside the point,
`Warhol I, 992 F.3d at 113-14. What mattered instead
`was that the Prince Series “recognizably deriv[ed]
`from, and retain[ed] the essential elements of, its
`source material”—that is, each of Warhol’s images
`remained “a recognizable depiction of Prince.” Id. at
`114 & n.4. The court thus adopted a test whose
`outcome depends on visual similarities between
`works, irrespective of whether the later-in-time piece
`adds a new meaning or message.
`The Second Circuit reasoned that, at least where
`the works in dispute serve the same general
`“function,” follow-on works like the Prince Series
`cannot be transformative unless they sufficiently
`
`
`
`14
`obscure the “foundation upon which [they are] built.”
`Id. at 114-15. And the court defined the “function” of
`the two works at a very high level of generality.
`Rather than assess the specific meaning or message
`that each artist sought to convey, the court found that
`“the overarching purpose and function of the two
`works at issue here [wa]s identical,” because both
`were “created as works of visual art,” and both were
`“portraits of the same person.” Id. at 114.
`Having defined the works’ purposes as identical on
`these criteria, the court limited its focus to the visual
`similarities between the works, concluding that the
`Goldsmith photograph “remain[ed] the recognizable
`foundation upon which the Prince Series is built.” Id.
`at 115. Thus, even though the Prince Series gave “a
`different impression of its subject” and admittedly
`conveyed a different message than Goldsmith’s
`photograph, the court concluded that Warhol had, in
`substance,
`“present[ed]
`the
`same work
`[as
`Goldsmith].” Id.
`After concluding that the Prince Series was not
`transformative as a matter of law, the court held that
`the remaining fair use factors favored Goldsmith. Id.
`at 117, 120, 122. The court thus concluded that the
`“defense of fair use fails as a matter of law” and held
`that Warhol could no longer “claim” the Prince Series
`“as his own.” Id. at 123, 116.
`Judge Jacobs wrote a concurrence asserting that
`the “opinion of the Court does not necessarily decide”
`whether the “original works infringe,” and may
`instead be limited to commercial licenses to reproduce
`the originals. Id. at 127 (Jacobs, J., concurring)
`(emphasis added). But he identified nothing in the
`opinion that would preclude application of the court’s
`holding to the original Prince Series. And he
`
`
`
`15
`explicitly recognized the chilling effect of the court’s
`decision on artists, noting that “our holding may
`alarm or alert possessors of other artistic works,” and
`that “uncertainty about an artwork’s [legal] status
`can inhibit the creativity that is a goal of copyright.”
`Id.
`5. Ten days after the panel’s decision, this Court
`issued its decision in Google, which considered the
`application of the fair use doctrine to the “precise[]”
`copying of computer code. 141 S. Ct. at 1203. As part
`of that inquiry, the Court explored whether the
`“copying was transformative.” Id. at 1204.
`Notwithstanding that the new work precisely
`copied the code “in part for the same reason” as the
`original work was created, the Court looked to its
`longstanding test for transformativeness, reiterating
`that the inquiry was “whether the copier’s use”
`“‘alter[s]’ the copyrighted work ‘with new expression,
`meaning or message.’” Id. at 1202-03 (quoting
`Campbell, 510 U.S. at 579).
`Explaining how that principle functions in the
`context of visual art, the Court observed—in an
`unmistakable allusion to Warhol’s Campbell’s Soup
`Cans—that “[a]n
`‘artistic painting’ might,
`for
`example, fall within the scope of fair use even though
`it precisely replicates a copyrighted advertising logo to
`make a comment about consumerism.’” Id. at 1203
`(citation omitted) (emphasis added).
`6. AWF petitioned the Second Circuit for panel
`rehearing and rehearing en banc based on the conflict
`between the panel’s opinion and this Court’s decision
`in Google and the decisions of other circuits.
`The Second Circuit granted panel rehearing and
`issued an amended opinion. First, the court brushed
`
`
`
`16
`Google aside, stating 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.” App. 44a.
`Second, the Second Circuit generally asserted that
`it was not adopting a bright-line categorical rule for
`analyzing whether a work is transformative. Id. at
`43a-44a. But it did not revise the substance of its
`opinion, and still adhered to the same test that
`(1) forbids courts from “seek[ing] to ascertain the
`intent behind or meaning of the works at issue”;
`(2) treats portraits of the same person as necessarily
`having the same purpose and
`function; and
`(3) evaluates transformativeness principally by a
`comparison of visual similarities. Id. at 22a-24a, 26a-
`27a.
`Finally, the court picked up on Judge Jacobs’s
`purported distinction between the creation of the
`Prince Series and the licensing of the Series. Even
`though the court recognized that the Prince Series
`and the Goldsmith photograph do not share the same
`market (under the fourth fair use factor), the court
`asserted that “what encroaches on Goldsmith’s
`market is AWF’s commercial licensing of the Prince
`Series, not Warhol’s original
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