Seventh Circuit Affirms Fair Use of Mayor’s Photograph, and Criticizes Second Circuit’s Approach in Cariou v. Prince

ote: This blog is cross-posted with permission from CopyrightAlliance.org.

Photographer Michael Kienitz (“Kienitz”) appealed the Western District Court of Wisconsin’s decision to grant summary judgment in favor of Sconnie Nation LLC and its vendor, Underground Printing-Wisconsin LLC (collectively, “defendants” or “Sconnie Nation”), contending defendants were liable for copyright infringement in connection with their unauthorized use of plaintiff’s photograph. Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir. Sept. 15, 2014). The Seventh Circuit affirmed the district court’s decision, agreeing that defendants’ use of the photograph constituted a fair use. The central issue in this appeal was whether the Sconnie Nation had a valid fair use defense for its modified version of Kienitz’s copyrighted photograph.

The original photograph was taken by Kienitz of the mayor of Wisconsin, Paul Soglin (“Soglin”) at his inauguration in 2011. Soglin posted the photograph publicly on the City’s website with Kienitz’s permission and licensed it at no royalty. Sconnie Nation downloaded the photograph from the city’s website, and modified it — posterized the image, removed the background, altered the shade of Soglin’s face, and added multi-colored text reading “Sorry For Partying.” The modified image was printed on t-shirts to be worn at the 2012 Mifflin Street Block Party — an event that is designed to poke fun at authority. Ironically, Soglin attended the very first annual block party as a student at the University of Wisconsin in 1969, but then tried to put a stop to the event when he took office. Only 54 t-shirts were sold. Kienitz’s original photograph and Sconnie Nation’s modified image are reproduced side-by-side here:

Kienitz subsequently brought a copyright infringement claim against Sconnie Nation and Underground Printing, and Sconnie Nation asserted the defense of fair use. To determine courts consider four non-exclusive factors set out in the Copyright Act in 17 U.S.C. §107 — (1) the purpose and character of the use, including whether such use is transformative and of commercial nature or is for nonprofit education purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The Seventh Circuit weighed the fair use factors and found that the defendants’ use of the photograph was fair. Although the Seventh Circuit reached the same result as the court below, it was largely unconvinced by the district court’s approach to fair use.

At the District Court level, the court relied on the Second Circuit’s approach set forth in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), focusing on whether the defendants’ use of the image was “transformative,” a part of the first fair use factor, to find the defendants’ use of the photograph was fair. A work is considered transformative if it alters the original with new expression, meaning or message. In Cariou, the Second Circuit found that defendant’s appropriation art — a series of collages incorporating plaintiff’s photographs published in plaintiff’s book titled Yes Rasta — constituted a transformative fair use, expanding the meaning and importance of transformative use, and holding that there is no requirement that a new work comment on or critically refer back to the original work or its author.

The Seventh Circuit rejected the district court’s approach and took issue with the Cariou fair use approach for two reasons: by focusing almost exclusively on whether the new use is “transformative,” Cariou (1) replaces the four statutory factors, and (2) eviscerates the original artist’s right to authorize derivative works. Writing for the Court, Judge Easterbrook’s primary concern was that, under the standard set forth in Cariou, “every ‘transformative use’ can be a ‘fair use.’”

The Seventh Circuit rejected the district court’s approach and, notably, criticized the Second Circuit’s nearly wholesale reliance on the “transformative” factor in Cariou, advocating for sticking to the statutory list of factors instead.

Instead, Judge Easterbrook advocated for sticking to the statutory list of factors and went on to evaluate each factor in turn, centering its evaluation on the third and fourth factors. Under the fourth factor, the question is whether the contested use is a complement to the protected work, which is allowed, rather than a substitute for it, which is prohibited. Here, the Court found that there was little to no effect of the use of the photograph on the market — the t-shirts were not a substitute for the original photograph, and Kienitz did not raise the possibility of licensing the photograph for apparel or any other use in the future. According to the Court, the third factor — the amount and substantiality of the use — was the only other fair use factor that had any “bite” in this case. The Court found that the only elements of the original photograph that remained after defendant’s alterations was Soglin’s smile and the outline of his face, which cannot be copyrighted. Turning to the two remaining statutory factors, the Court acknowledged defendants’ small profits from the sales but stated that the design was political commentary. Finally, in looking at the nature of the copyrighted work, the court stressed the absence of argument on Kienitz’s behalf that Sconnie Nation’s use reduced the value or demand of the original photograph. As such, the Court of Appeals affirmed the lower court’s ruling, and held that Sconnie Nation’s use of the photograph was permissible under the fair use defense.

In summary, this case illustrates the Seventh Circuit’s reluctance to adopt the Second Circuit’s approach to fair use and is the first appellate opinion to criticize Cariou v. Prince. It will be interesting to see whether other circuits follow suit.