Not Sorry for Certiorari: 7th Circuit breaks from trend of prioritizing “transformative use” in fair use defense to copyright infringement

Jessica Vosgerchian is a 3L at Harvard Law School and a Copyright Fellow for the Harvard Office for Scholarly Communication. She has worked on copyright issues in the public and private sectors. 

Last September, the Court of Appeals for the Seventh Circuit diverged from the judicial trend of treating “transformative use” as the most important element in the test to determine whether a defendant’s use of another’s work was fair, and so not infringement under the Copyright Act. In Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014) (Kienitz II), the Court affirmed the lower court’s holding that the defendants’ manipulation of a photo for a t-shirt design constituted fair use but employed a different interpretation of the fair use test.

Kienitz involved a lawsuit brought by photographer Michael Kienitz’s against companies that sold t-shirts featuring an illustrated and simplified rendering of his photograph of Paul Soglin, the mayor of Madison, Wisconsin. The defendants had reduced the headshot to its basic contours, colored Soglin’s head neon yellow, removed the background and surrounded Soglin’s head with the words “Sorry For Partying.” The companies sold 161 t-shirts at the University of Wisconsin-Madison’s annual Mifflin Street Block Party, which Soglin attempted to shut down in 2012 despite having been arrested for attending the party as a student in 1969.

Since the defendants conceded to basing their t-shirt design on Kienitz’s photo, the infringement allegation hinged on whether their use was fair under the four-factor test outlined in § 107 of the Copyright Act. The four factors a court must balance to determine fair use are: (1) the purpose and character of defendants’ use, including whether such use is commercial or nonprofit in nature; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to work as a whole; and (4) the effect of the use on the potential market for the copyrighted work. No single factor is dispositive, so the court’s decision depends on whether combined the factors weigh in favor of the defendant or plaintiff. However, after the Supreme Court signaled that fair use is meant to protect secondary works with “new expression, meaning or message” in Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 579 (1994), many courts have treated the purpose and character factor as predominant.

The District Court of Western Wisconsin had dismissed Kienitz’s case on summary judgment by finding that each factor weighed in favor of the defendants except nature of the copyrighted photograph, which was neutral. Kienitz v. Sconnie Nation LLC, 965 F. Supp. 2d 1042, 1050 (W.D. Wis. 2013) (Kienitz I). Assessing the t-shirt design’s purpose and character, the court deemed it a transformative use because of its different visual elements and purpose of “poking fun at the mayor by spotlighting what [defendants] viewed as a curmudgeonly flip-flop on the block party.” Id. at 1050.

However, the Seventh Circuit refused to consider whether the t-shirt design’s purpose and character was transformative, instead interpreting the first factor as neutral because the t-shirts’ commercial purpose was mooted by their political commentary. The Seventh Circuit identified the fourth factor, market impact as usually the most important, and found it favored the defendants because a t-shirt is no commercial substitute for a photograph and Kienitz did not claim plans to license the photograph for apparel. The Court also emphasized the third factor, the amount taken of the original, which cut for defendants due to the drastic alterations to the mayor’s image. The Court called the second factor, the nature of the photograph, “unilluminating.”

In rejecting transformative use, the Seventh Circuit took umbrage with the lower court’s reliance on Second Circuit precedent, which the Court claimed had taken a “suggestion” by the Supreme Court as grounds for extending fair use to works that violate copyright holders’ ability to restrict derivative works. Kienitz II, 766 F.3d at 758 (discussing Cariou v. Prince, 714 F.3d 694, 705-06 (2d Cir.) cert. denied, 134 S. Ct. 618, 187 L. Ed. 2d 411 (2013)). The Seventh Circuit said it was skeptical of “transformative use” analysis because the concept does not appear within § 107, which has a preamble with a non-exclusive list of permissible uses featuring criticism, comment, news reporting, teaching, scholarship, and research. The Court argued that the “transformative use” concept would replace this list as well as nullify the § 106(2) prohibition on unauthorized derivative works since practically any derivative work varies in purpose and character from the original.

Kienitz has appealed the case to the Supreme Court, arguing that the Seventh Circuit’s denunciation of “transformative use” as the leading indicator of fair use creates a circuit split regarding the correct application of the § 107 test. Given the gulf between the Second Circuit’s expansive view of transformation in Cariou and the Seventh Circuit’s absolute rejection in Kienitz II, the Supreme Court might seize the chance to clarify what it meant when it introduced the concept in Campbell.  There, the Supreme Court extended fair use to a song by 2 Live Crew that parodied Roy Orbison’s song “Oh, Pretty Woman.” The Court’s standard for the first factor inquired whether the parody infringes by “merely supersedes the objects of the original creation” or comprises fair use by adding something new “with a further purpose or different character, altering the first with new expression, meaning or message.” 510 U.S. at 578–79. The Court deemed works that fit the latter description “transformative,” which it said generally further the goals of copyright and “thus lie at the heart of the fair use doctrine.”  Id.

While the Supreme Court’s language strongly endorsed the significance of transformative character to fair use, the Campbell holding could be limited to parodies, or at least works that comment on the originals. Some copyright watchers have criticized the Second Circuit for finding transformative use too easily and treating the factor as decisive despite three other factors. In Cariou, the Second Circuit protected appropriation art that incorporated full black-and-white photographs of Rastafarians and added colorful magazine cutouts and paint. In reversing the finding of infringement below, the Second Circuit rejected the lower court’s reasoning that a transformative work must “comment on, relate to the historical context of, or critically refer back to the original works.” 714 F.3d at 704. Instead, the Second Circuit found fair use as a matter of law regarding 25 of 30 of the defendant’s works because they altered the photographs enough to transform the originally serene, dignified portraits and landscapes to hectic, provocative paintings. The Second Circuit remanded to the district court to decide whether the remaining five works physically transformed the photographs enough to comprise fair use.

The Supreme Court refused to hear the Cariou case on appeal, which might suggest they have no interest in fine-tuning the transformative use doctrine. Further, since the Seventh Circuit ultimately found fair use by way of other factors, the Court might not mind the transformative use argument is a robust defense in one circuit and wholly unavailable in another. But if transformative works are truly “at the heart of the fair use doctrine,” we can expect the Supreme Court to weigh in at some point.