For the 7th Circuit, the Fourth Factor is the Most Important Fair Use Factor

The U.S. Court of Appeals for the Seventh Circuit made it clear on September 15, 2014 that it disagrees with the Second Circuit’s interpretation of the fair use section of the Copyright Act, even though it affirmed a magistrate judge who had granted defendants’ summary judgment on their fair use defense. The case is Kienitz v. Sconnie Nation, No. 13-304.

Plaintiff-Appellant Michael Kienitz is professional photographer. He regularly licenses his photographs for a fee, which is contingent on their intended use because Plaintiff wants control over the way his photos are used. He has denied requests for licenses several times because he did not approve of the intended use of the photograph.

Plaintiff photographed Paul Soglin, the mayor of Madison, Wisconsin, at the mayoral inauguration ceremony in April 2011. The mayor then contacted Plaintiff to ask permission to use a photograph in connection with his political activities and for noncommercial uses. The photograph, featuring a close-up of Soglin’s face, was featured on the mayor’s website and Facebook page, credited to Plaintiff.

Soglin was quoted by The New York Times in September 2011 as wanting to put a stop to the Mifflin Street Block Party, an annual event in Madison which had started in May 1969 as part of the student protest movement on the U-W-Madison campus. Ironically, Soglin participated to the first Block Party in 1969 and was even arrested then.

That irony was not lost on Defendants-Appellees Sconnie Nation and Underground Printing-Wisconsin, which produce novelty items and tee-shirts. In March 2012, they decided to produce tee-shirts featuring the phrase “Sorry for Partying” over Plaintiff’s photograph of Soglin. The photograph was altered and the mayor’s face was printed in lime green against a black background with “Sorry for Partying” written in lime, pink and blue. They sold these tee-shirts from April 2, 2012 to May 6, 2012, stopping the day after the 2012 Mifflin Street Block Party.

Soglin informed Plaintiff about the tee-shirts. Plaintiff then registered the photograph with the Copyright Office on May 1, 2012 and filed a copyright infringement suit against Defendants. Both parties moved for summary judgment on the issue of fair use. In August 15, 2013, magistrate judge Crocker from the Western District Court of Wisconsin found Defendants entitled to summary judgment, holding that their use of the photograph was fair. Plaintiff appealed to the Seventh Circuit.

What is Fair Use?

Fair use is an affirmative defense to copyright infringement, and is codified by Section 107 of the Copyright Act, which sets forth four non-exclusive factors that courts must consider when determining whether a particular use of a copyrighted work is a fair:

  1. The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational 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.

Is Transformative Use Enough to Find Fair Use?

When analyzing the first factor, the magistrate judge had focused on whether a particular use is transformative, quoting the Supreme Court Campbell v. Acuff-Rose Music case, where the Court explained that a particular use is transformative if it adds something new and alters the original work while adding a new expression or message, instead of merely superseding the original work.

The magistrate judge found the use of the photograph to be transformative, also quoting the Second Circuit Cariou v. Prince case, where the Court of Appeals found the use by Richard Prince of photographs taken by Patrick Cariou to be transformative, as Prince’s paintings added something new to the Cariou’s photographs by “present[ing] images with a fundamentally different aesthetic.”

The Seventh Circuit stated that it was “skeptical” of this interpretation of §107, because focusing exclusively on transformative use “could override 17 U.S.C. §106(2), which protects derivative works.” Indeed, 17 U.S.C. §106(2) gives the author the exclusive right to prepare derivative works. The Seventh Circuit reasoned that fair use has to be more than being merely transformative, as every derivative works is by essence transformative and thus every derivative work would be considered fair use and would deny authors their exclusive rights under §106(2).

Parody and Fair Use

Plaintiff argued in front of the magistrate judge that the tee-shirt was a derivative work and that “the concept of transformative use is most apt in cases where the defendant is making a commentary on the very work that is copied, such as with parody.” But the magistrate judge was not convinced, noting that even though the tee-shirts did not aim at parodying the photograph itself, “the garishness of Soglin’s re-colored visage could be viewed as mocking the gravitas and rectitude with which [Plaintiff]’s… portrait imbues the mayor” and that the Supreme Court, in Campbell, held that “[a] parody that more loosely targets an original… may still be sufficiently aimed at an original work to come within our analysis of parody.”

The magistrate judge also cited Cariou, where the Second Circuit held that “[t]he law imposes no requirement that a work comment on the original or its author to be considered transformative” and concluded that “parody is only one type of fair use.”

The Seventh Circuit Affirmed But…

For the Seventh Circuit, “the most important [factor] usually is the fourth (market effect). “ This is not the opinion of the Second Circuit in Cariou, for which the first factor is “the heart of the first use inquiry” (quoting its Blanch v. Koons case). For the Seventh Circuit, a use which is a complement to the protected work is allowed, while a substitute use is prohibited. The Seventh Circuit compared Plaintiff’s original work with the tee-shirts and found that Defendants removed so much from the original that only the outline of the mayor’s face remained and this cannot be copyrighted. It therefore affirmed the magistrate judge’s order, but added that:

There is no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point of their lampoon, when so many non-copyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors.”

This is surprising, as using an official picture to comment on the mayor’s change of opinion over the block party is certainly an important aspect of the work, as a mere snapshot would not be as efficient a material than an official photograph. Defendants wanted to use a picture of “Soglin as Mayor,” not merely “Soglin” and, as such, were not merely “lazy approprietors.”

Also, it should be noted that fair use should not be used as a way to censor speech. It can be argued that these tee-shirts were political speech, and, as such, protected by the First Amendment. This case also shows how moral rights could be used to censor speech. If the U.S. would grant comprehensive moral rights, as in the E.U., Plaintiff would have likely invoked them as he was careful to state that he does not license a photograph if he does not approve of its use.

The Supreme Court did not grant certiorari in the Cariou case, but if there should be a recurrent split on how to interpret §107, another case may become an opportunity for the Supreme Court to reaffirm, or modify, its fair use doctrine. Could this case be the one?