In 1969 Paul Soglin was a student at the University of Wisconsin when he attended the first Mifflin, Wisconsin Street Block Party. Fast forward to 2012, Mr. Soglin was in his seventh term as Mayor of Madison, Wisconsin and he wanted to put an end to the annual block party. In protest against Mr. Soglin’s actions, Sconnie Nation made and sold t-shirts and tank tops displaying Mr. Soglin’s face and the phrase “Sorry for Partying.”   Sconnie Nation downloaded the image on the shirts from a professional photograph taken by Michael Kienitz. As a result, Kienitz brought a copy infringement action against Sconnie Nation and Underground Printing for the unauthorized use of his photograph.

The United States Court of Appeals, Seventh Circuit affirmed the magistrate judge’s decision to grant summary judgment in favor of the defendants. The courts held that Sconnie Nation made fair use of the photo. The Seventh Circuit applied the fair use statutory defense to copyright infringement, 17 U.S.C. §107:

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —-

  • The purpose and character of the use including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.

The court noted the Second Circuit’s improper conclusion that “transformative use” is enough to bring a modified copy into the scope of fair use under §107. See, e.g. Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013). The Seventh Circuit was skeptical to use this approach as it is not one of the above four statutory factors. The Supreme Court mentioned “transformative use” in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 568, 579 (1994), but the Seventh Circuit found that the Second Circuit went too far with its analysis linking “transformative use” and “fair use.” Accordingly, the Seventh Circuit did not use Cariou’s approach and the Seventh Circuit perceived “transformation” as a nonexclusive issue in a copyright infringement action lest it replace the statutory list above and override the protection of derivative works authorized in 17 U.S.C. §106(2). The court determined that the Second Circuit did not explain how “fair use” comes into play with “transformative use” without extinguishing the author’s exclusive control afforded under §106(2) to protect the right to prepare derivative works of the copyrighted work.

Focusing its analysis solely on §107, the court found factors (3) and (4) to be the most relevant because very little of the copyrighted work remained in the defendants’ work and their work did not have a significant effect on Kienitz’s market for the copyrighted work. Sconnie Nation had only 54 sales and cleared a small profit. Kienitz does not argue that the defendants’ products reduced the value or demand for the original photograph or interfered with any use he contemplated. The photograph was posted on a public website for viewing and downloading without costs. There was no shown market harm.

The court found factor (3) to hold the most weight because the “Defendants removed so much of the original content that, as with the Cheshire Cat, only the smile remains.” The defendants used a low-resolution version from the website and as such, much of the original detail was not part of the new work. The background, colors, and shading were gone. The expression in Soglin’s eyes was incomprehensible and the lighting effect from the original work was barely there. Only the outline of Soglin’s face remained. The court concluded that the defendants could have started with a snap-shot taken on the street and achieved the same effect.

The court went on to say that since the defendants’ intention was to mock the mayor, and not comment on Kienitz’s skills as a photographer, there was no need to use Kienitz’ copyrighted photograph. The court called the defendants part of the “lazy appropriators.” There were several other noncopyrighted alternatives the defendants could have used, according to the court. The fair use privilege under §107 is to protect and facilitate uses that would not be possible if users had to always negotiate with copyright owners, academic uses, for example. Yet, this was not part of Kienitz’ argument.

Further, although Kienitz did not argue it, the court noted that as an established photographer, the defendants’ use could injure Kienitz’s long range commercial opportunities if his subjects thought his work would later be used against them. With this said however, the court noted that such consideration would not have been enough to offset the fact that the defendants’ resulting work left almost none of the copyrighted work and therefore was rightly found to be fair use under §107.

 

Sandy Bartlett is a sole practitioner at Law Office of Sandy Bartlett LLC in Annapolis, Maryland. Her practice is exclusive to trademarks and copyrights. She can be reached at sandy@bartlettlawyer.net.