Michael Kienitz v. Sconnie Nation, LLC
111 U.S.P.Q. 2d (BNA) 2086, 766 F.3d 756, 42 Media L. Rep. (BNA) 2312 (2014)
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Rule of Law:
A secondary work that uses a copyrighted image is a non-infringing fair use if it does not serve as a market substitute for the original and alters the original to such a degree that it uses a minimal amount of the original's copyrightable expression.
Facts:
- Photographer Michael Kienitz took an official portrait of Paul Soglin, the Mayor of Madison, Wisconsin, at his 2011 inauguration.
- Kienitz granted Mayor Soglin permission to post the photograph on the City of Madison's official website.
- Sconnie Nation, a t-shirt company, downloaded the photograph from the city's website.
- For the 2012 Mifflin Street Block Party, Sconnie Nation created a t-shirt design intended to mock the mayor's opposition to the event.
- To create the design, Sconnie Nation posterized the photo, removed its background, rendered Soglin's face in lime green, and added the text 'Sorry for Partying.'
- Sconnie Nation sold 54 t-shirts and tank tops featuring the design, earning a small profit.
Procedural Posture:
- Michael Kienitz sued Sconnie Nation and its vendor for copyright infringement in the U.S. District Court for the Western District of Wisconsin.
- The parties consented to have a magistrate judge decide the case.
- The magistrate judge granted summary judgment in favor of the defendants, Sconnie Nation, holding that their use of the photograph was a fair use.
- Kienitz, the plaintiff, appealed the district court's judgment to the U.S. Court of Appeals for the Seventh Circuit.
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Issue:
Does the creation and sale of a t-shirt, which uses a heavily altered version of a copyrighted photograph for political commentary and commercial purposes, constitute fair use under 17 U.S.C. § 107?
Opinions:
Majority - Easterbrook, Circuit Judge
Yes, the use of the photograph on the t-shirt constitutes fair use. The court was skeptical of relying solely on whether a use is 'transformative,' as that could undermine the copyright holder's exclusive right to create derivative works. Instead, the court applied the four statutory factors of fair use from 17 U.S.C. § 107. The most important factor, the effect on the potential market, weighs heavily in favor of fair use because the t-shirt is not a market substitute for the original photograph; no one would purchase the t-shirt in lieu of a portrait. Furthermore, under the third factor, the amount and substantiality of the portion used, Sconnie Nation used very little of the original's copyrightable expression. After removing the background, color, shading, and detail, only the basic outline of Soglin's face remained, which is not itself copyrightable. While the use was commercial, it was also political commentary, and the other factors do not weigh strongly enough against a finding of fair use.
Analysis:
This decision is significant for its explicit skepticism toward the Second Circuit's heavily influential 'transformative use' doctrine in fair use analysis. The Seventh Circuit instead re-centers the inquiry on the plain text of the four statutory factors, with a particular emphasis on market substitution (factor four) and the amount of original expression used (factor three). This creates a circuit split and provides a clearer, more statute-based framework for future fair use cases, potentially making it easier for defendants who extensively alter a work for a different purpose to succeed on a fair use defense, even without a strong 'transformative' commentary on the original work itself.
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