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Case 19-2420, Document 280, 05/20/2021, 3105030, Page1 of 14

19-2420-cv
IN THE UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT
___________________________________________________________________________________________________

THE ANDY WARHOL FOUNDATION FOR THE VISUAL ARTS, INC.,


Plaintiff-Counter-Defendant-Appellee,
v.
LYNN GOLDSMITH and LYNN GOLDSMITH, LTD.,
Defendants-Counter-Plaintiffs-Appellants.
____________________________________________________________________________________________________

ON APPEAL FROM THE UNITED STATES DISTRICT COURT


FOR THE SOUTHERN DISTRICT OF NEW YORK
____________________________________________________________________________________________________

REPLY IN SUPPORT OF PETITION FOR PANEL REHEARING AND


REHEARING EN BANC
____________________________________________________________________________________________________

Luke W. Nikas Roman Martinez


Maaren A. Shah Sarang Vijay Damle
Kathryn Bonacorsi Elana Nightingale Dawson
QUINN EMANUEL URQUHART
& SULLIVAN, LLP Samir Deger-Sen
51 Madison Avenue LATHAM & WATKINS LLP
22nd Floor 555 Eleventh Street, NW, Suite 1000
New York, NY 10010 Washington, DC 20004
(212) 849-7000 (202) 637-2200
Andrew Gass
Nicholas Rosellini
LATHAM & WATKINS LLP
505 Montgomery Street
San Francisco, CA 94111
(415) 391-0600
Counsel for Plaintiff-Counter-Defendant-Appellee
May 20, 2021
Case 19-2420, Document 280, 05/20/2021, 3105030, Page2 of 14

TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................................................................... ii
INTRODUCTION ..................................................................................................... 1
ARGUMENT ............................................................................................................. 2
A. The Panel’s Analysis Of The First Fair-Use Factor Contravenes
Google ................................................................................................... 2
B. The Panel’s Analysis Of The Fourth Fair-Use Factor Is Also At
Odds With Google ................................................................................. 6
CONCLUSION .......................................................................................................... 9
Case 19-2420, Document 280, 05/20/2021, 3105030, Page3 of 14

TABLE OF AUTHORITIES

Page(s)
CASES
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .............................................................................................. 2

Google LLC v. Oracle America, Inc.,


141 S. Ct. 1183 (2021) .................................................................................passim

Wright v. Warner Books, Inc.,


953 F.2d 731 (2d Cir. 1991) ................................................................................. 7

STATUTES
17 U.S.C. § 103(a) ..................................................................................................... 8

17 U.S.C. § 109(a) ..................................................................................................... 8

17 U.S.C. § 109(c) ..................................................................................................... 8

17 U.S.C. § 503 .......................................................................................................... 8

ii
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INTRODUCTION
According to Goldsmith, the Supreme Court’s first major fair-use decision in

over 25 years is “fact-bound,” “makes no new law,” and should be dismissed as

“irrelevant” in any case not involving computer code. Resp.2, 6. Each of those

characterizations is incorrect on its face. While Goldsmith fails to seriously engage

with the implications of Google LLC v. Oracle America, Inc., 141 S. Ct. 1183 (2021),

this Court should follow Google, revisit the panel’s prior opinion, and affirm the

district court’s finding of fair use.

Google confirms that transformative use turns not on how much of an original

work remains, but on what the successor work adds. Thus, as the Supreme Court

explained, an “‘artistic painting’” can be transformative even if it “precisely

replicates” another work—so long as it conveys a distinct message, such as “‘a

comment about consumerism.’” Google, 141 S. Ct. at 1203. Goldsmith offers no

convincing way to reconcile that language with the panel’s holding that a work is

not transformative if it “recognizably deriv[es] from, and retain[s] the essential

elements of, its source material.” Op.28.

As Google now confirms, the panel erred by adopting a test that turns on the

extent of visual alteration, rather than differences in expressive meaning. And

Google likewise makes clear that courts must consider whether denying fair use

would result in creativity-related harms to the public, which the panel failed to do.
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This Court should grant rehearing and bring Second Circuit law back in line with

Supreme Court precedent.

ARGUMENT

A. The Panel’s Analysis Of The First Fair-Use Factor Contravenes


Google

1. Google reiterated that an allegedly infringing work is transformative if it

“adds something new and important” to the original, such as a distinct “‘meaning or

message.’” 141 S. Ct. at 1202-03 (quoting Campbell v. Acuff-Rose Music, Inc., 510

U.S. 569, 579 (1994)). That held true in Google even though the defendant “copied”

the plaintiff’s copyrighted code “precisely,” and even though the works in dispute

served “the same” general purpose of “enabl[ing] programmers to call up

implementing programs that would accomplish particular tasks.” Id. What made

the defendant’s use transformative despite those similarities was a distinct creative

innovation—developing “a new platform” for the “smartphone environment.” Id.

That holding is irreconcilable with the panel’s reasoning. The panel deemed

the Prince Series not transformative because, in the panel’s view, it retained

“essential elements” of Goldsmith’s photograph and had the same general purpose

of being a “portrait[] of the same person.” Op.29-30. But those characteristics

cannot control the transformative-use analysis under Google, where there was

“precise” copying for the “same” general purpose. As Google explained, the

transformative-use inquiry “must go further” and examine whether the “copying use

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adds something new and important,” such as a distinct message. 141 S. Ct. at

1202-03 (emphasis added).

Here, even the panel acknowledged that “the cumulative effect of [Warhol’s]

alterations” conveyed “a different impression of its subject” in service of a distinct

message. Op.31. That should have been the end of the inquiry under Google and

the Supreme Court’s other fair-use precedents.

Goldsmith asserts (at 1) that Google did not “overturn or modify [the Court’s]

earlier cases involving fair use.” AWF has never suggested otherwise. Google does,

however, confirm that the panel’s decision is inconsistent with those earlier cases.

More precisely, Google clarifies that prevailing doctrine categorizes a new work as

transformative when it has a different meaning or message, even when copying is

“precise[]” and the follow-on work is created for the “same reason” as the original—

be it computer code or visual art depicting the same subject. 141 S. Ct. at 1203.

While that does not “upend[]” the Court’s prior fair-use cases, Resp.7, it

extinguishes any possibility that the panel’s decision is not erroneous.

Goldsmith barely engages with the bedrock principle that a work is

transformative if it embodies a new “meaning or message.” Google, 141 S. Ct. at

1202. Nor does she dispute that Warhol’s work does embody a distinct message.

See Resp.13. Instead, Goldsmith’s defense of the panel’s decision rests on

characterizing Google as a “fact-bound” opinion limited to computer code.

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But nothing in Google suggests that the principles it announced apply only to

computer code. To the contrary, the Court drew the governing legal principles from

Campbell (which involved copyrighted music) and described how those same

principles would apply to visual art. See Google, 141 S. Ct. at 1203. As Google

explained, an “‘artistic painting’” would qualify as transformative even though “it

precisely replicate[d] a copyrighted ‘advertising logo’” if the painting did so “‘to

make a comment about consumerism.’” Id. (emphasis added). The Court’s direct

analogy to visual art—indeed, to Warhol’s own work—makes clear that Google is

not, as Goldsmith suggests (at 2, 6), “irrelevant,” “fact-bound,” or otherwise limited

to the “specific [context of] functional computer code.”1

Goldsmith tries to distinguish the Prince Series because “Warhol’s soup can

paintings” incorporated an image “created for a commercial purpose.” Resp.9. But

that distinction makes little sense. Goldsmith’s photograph (like many works of art)

also had a “commercial purpose.” The key difference, as Goldsmith implicitly

admits, is not the “commercial” nature of the work, but the different messages they

convey: The original Campbell’s soup image was designed to “identify a brand of

soup,” Resp.9, while Warhol used that same image to critique consumerism. So too

1
AWF’s amicus brief in Google noted that the decision could have “sweeping
implications,” even “outside the software domain.” See Rauschenberg Found. &
Warhol Found. Amicus Br. 15 (S. Ct. No. 18-956). The Supreme Court proved
AWF right.

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here. As the panel acknowledged, Goldsmith’s photograph conveyed one message,

portraying Prince as “a ‘vulnerable human being’”—but Warhol’s work conveyed

another, depicting Prince as “a popular icon” who had been “strip[ped]” of his

“humanity,” effectively making a comment about our culture’s consumption and

perception of celebrity. Op.26. That transformation in message mirrors Warhol’s

“comment about consumerism” that the Court specifically identified in Google. The

only difference is in the content of the comments, which under the First Amendment

cannot be the basis for distinct treatment under the law.

2. Goldsmith asserts (at 8) that the panel did not establish any “categorical

rule.” But, tellingly, Goldsmith does not even acknowledge—let alone explain—

the panel’s statement that an allegedly infringing work cannot be transformative if

it “recognizably deriv[es] from, and retain[s] the essential elements of, its source

material.” Op.28. Nor does Goldsmith engage with the panel’s assertion that courts

may not “seek to ascertain the intent behind or meaning of the works at issue.”

Op.27. And Goldsmith likewise ignores that the result in this case reflects those

broad statements: The panel held that transformative use here “cannot turn” on

Warhol’s concededly different creative purpose, resting its decision on a perception

that, “viewing the works side-by-side,” “the Goldsmith Photograph remains the

recognizable foundation upon which the Prince Series is built.” Op.26, 28, 31.

Goldsmith focuses instead (at 8-9) on a half-sentence caveat indicating that a

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work can rank as transformative even if its source material remains more than

“barely recognizable.” Op.28. But even if an artist need not render the source

material “barely recognizable” to satisfy the panel’s test, he or she must still stamp

out enough of the source material to ensure that a court cannot view the new work

as “recognizably deriving from, and retaining the essential elements of, [that] source

material.” Op.28; see also Op.25 (emphasizing non-transformative nature of works

“that superimposed other elements” but “did not obscure the original image”). At a

minimum, then, an artist must make major visual alterations to qualify for fair-use

protection—even though many artistic works can convey their unique message only

if they “recognizably deriv[e] from” their source material. See Op.28-31 & n.4.

More fundamentally, the panel’s focus on recognizability only underscores

that its test turns on whether the follow-on work has made sufficient visual

alterations—not whether it conveys a distinctive meaning or message. That

approach is inconsistent with Google and Campbell alike.

B. The Panel’s Analysis Of The Fourth Fair-Use Factor Is Also At


Odds With Google
1. As to the fourth factor, Google instructs that courts “must take into account

the public benefits,” and “the risk of creativity-related harms to the public,” if the

challenged conduct is denied fair-use protection. 141 S. Ct. at 1206, 1208 (emphasis

added). That more particularized “questions” on that score are not “always relevant”

is no license to disregard this critical inquiry. Id. at 1206. Indeed, as Goldsmith

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acknowledges (at 12), this Court’s precedent similarly “requires [courts] to balance”

public benefits against private harms. Wright v. Warner Books, Inc., 953 F.2d 731,

739 (2d Cir. 1991) (emphasis added).

The panel did not follow that requirement. Its entire market-effects analysis

focuses solely on perceived harms to Goldsmith—nothing about what the public will

lose from outlawing creative expression like Warhol’s. See Op.44-50. In fact, the

only public-benefits discussion Goldsmith cites is a quote from ten pages before the

panel turned to the fourth factor at all. Resp.12 (quoting Op.34).

Goldsmith also suggests (at 13) that the public-benefits inquiry in this case is

limited to whether the public has an “interest” in AWF’s “commercial licensing” of

the Prince Series. But whether Goldsmith may enforce her copyright here hinges on

whether Warhol made fair use of her photograph when he created the Prince Series

in the first place. See Op.4-5. That, in turn, depends on the public benefits of

permitting Warhol’s creative efforts—and, under Google, also “widespread conduct

of the sort” in which he engaged. 141 S. Ct. at 1207; see also id. at 1208 (concluding

that allowing the plaintiff “or other firms holding a copyright in computer

interfaces” to enforce those copyrights would impede “the future creativity of new

programs” (emphasis added)).

2. Here, the public-benefits analysis under factor four cuts decidedly in

AWF’s favor. Denying fair-use protection to works like Warhol’s will chill the

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creation of art that employs pre-existing imagery to convey a distinct message. And

it will have devastating consequences for countless existing works. As AWF’s

petition explained (at 17-18): Artists apparently lose all copyright protection in their

creations, see 17 U.S.C. § 103(a); owners of the original works and secondary copies

cannot lawfully resell them, see id. § 109(a); museums cannot lawfully display the

now-infringing works, see id. § 109(c); and copyright owners of the source material

may seek their “impoundment” and “destruction,” see id. § 503. These public harms

far outweigh any potential loss of licensing fees to Goldsmith.

Goldsmith does not deny that these consequences would flow from a decision

branding the Prince Series an act of infringement. Instead, she asserts (at 13) that

the panel’s decision concerns only whether AWF lawfully licensed the Prince

Series—not whether Warhol lawfully created the works in the first place. But she

relies solely on the ipse dixit of a concurrence for that proposition. And page after

page of the panel’s actual opinion belies that characterization. The panel focused on

Warhol’s conduct, not AWF’s. See, e.g., Op.28-32 (scrutinizing “the Warhol

works,” including the way “Warhol created the [Prince] [S]eries” and “the

cumulative effect of Warhol’s changes to the Goldsmith photograph”); Op.41

(examining “Warhol’s process” and “Warhol’s alterations”); Op.49 (analyzing

financial harm to Goldsmith purportedly caused by “the sort of [conduct] in which

Warhol engaged”). The panel thus held that Warhol did not make fair use of

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Goldsmith’s photograph, meaning that Warhol could not “claim [the Prince Series]

as his own” and that AWF therefore could not “exploit” Warhol’s copyrights.

Op.33. So unless the panel meant something its decision simply does not say, the

cause for alarm here cannot be denied.

If the panel really intended to somehow declare unlawful only commercial

licenses of the Prince Series, and to say nothing about Warhol’s original works, it

should make that limitation clear. If that was not the panel’s intent, even Goldsmith

does not deny the far-reaching harms that will result—and en banc review on this

critically important issue is warranted.

CONCLUSION
The rehearing petition should be granted.

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Dated: May 20, 2021 Respectfully submitted,

/s/ Roman Martinez


Roman Martinez
Sarang Vijay Damle
Elana Nightingale Dawson
Samir Deger-Sen
LATHAM & WATKINS LLP
555 Eleventh Street, NW
Suite 1000
Washington, DC 20004
(202) 637-2200

Andrew Gass
Nicholas Rosellini
LATHAM & WATKINS LLP
505 Montgomery Street
San Francisco, CA 94111
(415) 391-0600

Luke Nikas
Maaren A. Shah
Kathryn Bonacorsi
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
(212) 849-7000
Counsel for Plaintiff-Counter-Defendant-
Appellee The Andy Warhol Foundation for
the Visual Arts, Inc.

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CERTIFICATE OF COMPLIANCE
I hereby certify that this document complies with the type-volume limitations

of specified in the Order dated April 29, 2021, because it contains 1,996 words,

excluding the parts of the foregoing exempted by Federal Rule of Appellate

Procedure 32(f). The document is prepared in a format, typeface, and type style that

complies with Federal Rule of Appellate Procedure 32(a)(5)-(6).

Dated: May 20, 2021 /s/ Roman Martinez


Roman Martinez