In Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin, LLC, 766 F.3d 756 (7th Cir. 2014) (available here), Defendant Sconnie Nation made some t-shirts and tank tops displaying the image of Paul Soglin’s face, the Mayor of Madison, Wisconsin, and the phrase “Sorry for Partying.” Mayor Soglin’s photographer, Michael Kienitz, brought suit against Sconnie Nation for copyright infringement because Kienitz dod not give Sconnie permission to use Mayor Soglin’s photo.
The U.S. Court of Appeals for the Seventh Circuit affirmed the District Court’s grant of summary judgment in favor of the Defendants, holding that Sconnie Nation made fair use of the Mayor’s photo. Sconnie Nation altered the photo by posterizing it, removing the background, turning the Mayor’s face lime green and surrounding it with multi-colored writing. Sconnie Nation put the altered photo on t-shirts for a 2012 Block Party in the college town of Madison, Wisconsin and sold 54 t-shirts.
In its analysis, the Seventh Circuit Court recited the law pertaining to the defense of fair use. Fair use is a defense to infringement and the Copyright Act sets out four non-exclusive factors for the court to consider. 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 include – (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.
The Seventh Circuit acknowledged that in the case of Cariou v. Prince, the Second Circuit found that a “transformative use” is enough to bring a modified copy within the scope of §107. However, the Seventh Circuit was skeptical of Cariou’s approach, because asking exclusively whether something is “transformative” not only replaces the list in §107, but also overrides another provision of the Copyright Act, 17 U.S.C. §106(2), which protects derivative works of the original artwork. The Seventh Circuit failed to see how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).
In analyzing the case under the fair use factors, the Seventh Circuit turned to the fourth factor and asked whether the contested use is a complement to the protected work (an allowed use of the copyrighted original work) rather than a substitute for it (a prohibited use of the original). The Seventh Circuit found that a t-shirt or tank top is not substitute for the original photographic work. In connection with the third factor, the Seventh Circuit found that Defendant Sconnie Nation removed so much material from the original that only the non-copyrightable outline of Mayor Soglin’s face remained. Accordingly, Defendants use qualified as a fair use of the original photo under the Copyright Act.