Every day, attorneys argue whether appellate court opinions are wrong.  But not every day do you get an appellate court criticizing the opinions of a sister court of appeals.  Such divisions can draw national attention and even form the basis for the exceedingly rare opportunity for the Supreme Court to step in and resolve the dispute.[1]

Not surprisingly, then, the recent opinion from the Seventh Circuit Court of Appeals, Kienitz v. Sconnie Nation LLC[2]– although only a modest four pages – has been getting much attention.  After all, it is the first appellate court opinion that openly criticizes the Second Circuit Court of Appeals decision in Cariou v. Prince[3] addressing the limits of fair use under the Copyright Act.

Despite this, the facts of the Kienitz case are straight forward, and the result (I would argue) was not controversial.

When the Mayor of Madison Wisconsin, Paul Soglin, expressed interest in shutting down the University of Wisconsin’s annual student protest movement, the irony was palpable.  After all, Soglin was one of the student protest leaders when the annual event began.  Capitalizing on the situation, the defendant in Kienitz made t-shirts to comment on the Mayor’s apparent “flip-flop.” The defendant downloaded a copy of the Mayor’s photograph from the City’s website, tinted the image to black and green, and framed the design with the colorful text “Sorry for Partying.”  Here is the picture of the Mayor on the City’s website and an example of the t-shirt design as provided by the Kienitz Court:

Click here to view the image

Not amused, the photographer sued, claiming copyright infringement.  Both the district court and the Seven Circuit Court of Appeals held that the t-shirt design was fair use.

But while the Seventh Circuit affirmed the district court’s ultimate finding, it did not endorse the district court’s reasoning.  The Kienitz Court found the district court’s fair use analysis was erroneous because the district court determined that the t-shirt design was a fair use under the transformative test set forth under the Second Circuit Court of Appeals decision Cariou v. Prince.   The Kienitz Court held that fair use analysis is based on 15 U.S.C. 107, which contains a list of non-exhaustive factors, none of which deals with whether an image was transformative: “[w]e’re skeptical of Cariou’s approach, because asking exclusively whether something is ‘transformative’ not only replaces the list in § 107 but also could override [the protection of] derivative works.”[4]

Is this the proverbial “line in the sand” that divides the two appellate courts on fair use? Hardly.

First, the Kienitz decision unfairly characterized Cariou.  The Second Circuit did not hold that whether a use is “transformative” is the “exclusive[]” factor in fair use analysis.  In fact, like in KienitzCariou applied all four of the factors set forth in Section 107 in its holding.

Second, Cariou only applied the transformative test because that is what the Supreme Court told it to do: “The central purpose of this investigation is to see… to what extent the new work is ‘transformative.’”[5]

Finally, the Cariou Court never sought to override the derivative works right under Copyright law, and in fact, specifically recognized that derivative works and transformative works are different:  “[a] secondary work may modify the original without being transformative. For instance, a derivative work that merely presents the same material but in a new form, such as a book of synopses of televisions shows, is not transformative.”[6]

Kienitz’s critique of Cariou hardly creates a circuit split but it was not entirely misplaced.  Attorneys and judges have long thought that fair use applies to parodies, but not satire.  Cariou blurred away the distinction.  Maybe this is where the Seventh Circuit’s concerns lie, but if so, the opinion does not make that clear.  What is clear, however, is that the Kienitz plaintiff recently asked the Supreme Court to review.  My prediction: if the high court does take upKienitz, it will not be because the appellate courts are at odds.