Seventh Circuit Criticizes Second Circuit's 'Transformative Use' Approach To Fair Use

On September 15, 2014, the U.S. Court of Appeals for the Seventh Circuit issued a notable opinion on the relevance and importance of "transformative use" on the copyright fair use analysis. (Kienitz v. Sconnie Nation LLC, No. 13-3004, 2014 WL 4494825 (7th Cir. Sept. 14, 2014)).

In a unanimous 3-0 ruling, the court ruled that an alleged infringer's use of a copyrighted photograph on apparel constituted fair use. The court's opinion, however, is most significant for its open skepticism of the Second Circuit's finding in Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013) ("Cariou") that a work may be transformative as a matter of law - regardless of its purpose and connection to the original copyrighted work - if it "alters the original with new expression, meaning, or message." In particular, and as detailed below, the court cautioned that Cariou's interpretation and application of the fair use doctrine compromises, and possibly eliminates, a copyright holder's statutory right to prohibit others from making derivative works under 17 U.S.C. § 106(2).

The Lawsuit and District Court Opinion

In 2011, plaintiff Michael Kienitz photographed Madison, Wisconsin mayor Paul Soglin, who subsequently (with Mr. Kienitz's permission) posted the photograph on the City's website. The same year, Mayor Soglin publicly sought to shut down Madison's annual "Mifflin Street Block Party" - a political activism event which he helped organize in 1969. Seeking to capitalize on this perceived hypocrisy, defendant-apparel company Sconnie Nation LLC ("Sconnie Nation") downloaded the Mayor's photograph from the City website, altered its color, detail and lighting, and printed it onto t-shirts bearing the phrase "Sorry for Partying." Upon learning of the t-shirts, Mr. Kienitz registered the photograph and filed suit against Sconnie Nation for copyright infringement.

The Western District of Wisconsin granted Sconnie Nation's motion for summary judgment, finding that the t-shirt made fair use of Mr. Kienitz's photograph.1 Of relevance, the district court relied in part on the Second Circuit's opinion in Cariou to support its finding that by making "a monochromatic outline of Mayor Soglin's image in a Paschke-esque neon green," Sconnie Nation had made "the character and expression of the image [] completely different from the original." Kienitz v. Sconnie Nation LLC, 965 F. Supp. 2d 1042 (W.D. Wis. 2013).

The Seventh Circuit Affirms the District Court, but Questions the Second...