In 1969, while a student at the University of Wisconsin-Madison, Paul Soglin was arrested at the first Mifflin Street Block Party, a student protest of the Vietnam War. Over forty years later when that same Paul Soglin (now as mayor of Madison), attempted to shut down that same Mifflin Street Block Party (now morphed into a popular student annual party), the irony was not lost on a local business, Sconnie Nation, which helped run an on-campus t-shirt store.

To criticize the mayor’s stance on the party, Sconnie decided to sell shirts and tank tops with the phrase “Sorry For Partying.” In order to make the target of their political commentary clear, Sconnie sought a recognizable photo of the mayor to reproduce on the shirt. They downloaded a photo from the City’s official website. The original photograph, and the revision used on the shirts, are reproduced here.

The photographer of the original image sued Sconnie, alleging that the t-shirt’s use of the photo violated his copyright. The district court dismissed the case, holding that Sconnie’s use of the photo constituted fair use. The Seventh Circuit affirmed the dismissal in Kienitz v. Sconnie Nation LLC, No. 13-3004 (Sept. 15, 2014).

Fair use is a statutory defense to infringement, but the confines of what is “fair” can be subject to interpretation. Of the four factors outlined in the Copyright Act, only two “had much bite” in this case: “(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.” 17 U.S.C. § 107(3) & (4)

But Sconnie had stripped away all the creative elements of the photo (Judge Easterbrook wrote that Sconnie “removed so much of the original that, as with the Cheshire Cat, only the smile remains”), and the t-shirt could not usurp any plan the photographer had to use the photograph, so Sconnie’s use of the photograph was “fair.”

While applying the fair-use factors was straightforward, the court expressed skepticism about the “transformative use” test used by the Second Circuit in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), a test that stems from the United States Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), where the Court said that how transformative a use is from the original is a critical part in the fair-use determination. Cariou applied the transformative-use doctrine to find that “appropriation art” (where some of the value comes from the fact that someone else created the work) was fair use.

While leaving full analysis of the application of transformative use for another day, the court provided the following critique: “We’re skeptical of Cariou’s approach, because asking exclusively whether something is ‘transformative’ not only replaces the [other fair-use factors] but also could override Section 106(2), which protects derivative works.”

Fair-use litigants in the Seventh Circuit should take note.

 

Foley & Lardner LLP represented the Defendants Sconnie Nation and Underground Printing in these proceedings.