Google/Oracle doesn't affect Warhol fair-use ruling, 2nd Circ says

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A view of the judge's chair in court room 422 of the New York Supreme Court at 60 Centre Street February 3, 2012. Picture taken February 3, 2012. REUTERS/Chip East (UNITED STATES- Tags: CRIME LAW) - GM1E82D13FE01

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  • 2nd Circ found Warhol art didn't make fair use of Prince photos
  • Supreme Court fair use finding for Google doesn't affect decision
  • Software code copyright decision has limited application in art case

(Reuters) - The 2nd U.S. Circuit Court of Appeals' decision that Andy Warhol's art didn't make fair use of Lynn Goldsmith's photo of Prince still stands after the U.S. Supreme Court's landmark ruling in a copyright dispute between Google and Oracle, the appeals court said Tuesday.

The "unusual context" of the Supreme Court case about software code didn't affect the 2nd Circuit's fair-use analysis in an artistic context, U.S. Circuit Judge Gerard Lynch wrote for a unanimous three-judge panel in an amended version of its original decision.

Roman Martinez of Latham & Watkins, who represents the Andy Warhol Foundation for the Visual Arts, said in an email that they respectfully disagree with the ruling and are reviewing their options for further review.

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Goldsmith's attorney Lisa Blatt of Williams & Connolly declined to comment.

Goldsmith's photo of the rock star Prince was licensed to Vanity Fair magazine, which commissioned Warhol for art based on the image. Warhol later made 15 additional unlicensed works called the "Prince Series."

Goldsmith learned of the series after Prince's death in 2016. The foundation sued in 2017 to head off potential infringement claims, and Goldsmith countersued for infringement.

Lynch, joined by Circuit Judges Dennis Jacobs and Richard Sullivan, found in March that Warhol's works weren't fair use largely because they weren't transformative.

A transformative work must have a "fundamentally different new artistic purpose and character" from the original, Lynch said, and be "something more than the imposition of another artist's style" that "remains both recognizably deriving from, and retaining the essential elements of, its source material."

In April, the Supreme Court decided Google's use of Oracle software code in its Android operating system was transformative. The foundation argued for a rehearing because Google's work was found transformative even though Oracle's copyrighted material was "obviously recognizable" in it.

The foundation also said the Supreme Court cited a "Warhol-like work of art" as a "paradigm example" of transformative use, and that the 2nd Circuit's decision risked "outlawing" contemporary art that reframes copyrighted material.

Goldsmith responded that Google/Oracle had "limited application outside the context of computer code."

On Tuesday, the panel said the Supreme Court ruling was "fully consistent" with its decision.

Though Google's copying was fair use, Lynch said the Supreme Court "expressly noted that copyright's protection may be stronger where the copyrighted material serves an artistic rather than a utilitarian function."

"A case that addresses fair use in such a novel and unusual context is unlikely to work a dramatic change in the analysis of established principles" applied to artistic expression, Lynch said.

Lynch also dismissed the foundation's concerns about outlawing contemporary art.

"We merely insist that, just as artists must pay for their paint, canvas, neon tubes, marble, film, or digital cameras, if they choose to incorporate the existing copyrighted expression of other artists," they "pay for that material as well," Lynch said.

The case is The Andy Warhol Foundation for the Visual Arts Inc v. Goldsmith, 2nd U.S. Circuit Court of Appeals, No. 19-2420.

For the foundation: Andrew Gass and Roman Martinez of Latham & Watkins and Luke Nikas of Quinn Emanuel Urquhart & Sullivan

For Goldsmith: Thomas Hentoff and Lisa Blatt of Williams & Connolly

Read more:

U.S. Supreme Court backs Google over Oracle in major copyright case

Prince photog to 2nd Circ: SCOTUS' Google ruling no bearing on Warhol use

Andy Warhol Foundation asks 2nd Circuit to rehear Prince photo case

2nd Circuit reverses win for Andy Warhol Foundation over Prince images

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com