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Copyright Fair Use – Is “Transformative’s” Preeminence Ending?

Copyright Fair Use – Is “Transformative’s” Preeminence Ending?

7th Circuit Splits With 2nd Circuit


The plaintiff, Michael Kienitz, [1] is a successful photographer. Prominent magazines regularly include his photographs. Kienitz began his career in the ‘80s and is known for his pictures of conflicts around the world.

There were two defendants. Defendant, Sconnie Nation, [2] inter alia, develops and licenses retail apparel products with novelty messages. Defendant, Underground Printing, [3] provides apparel to Sconnie Nation.

The case centered on whether the defendants’ use of one of Kienitz’s photographs was a fair use.

Kienitz took a photograph of Madison, Wisconsin, Mayor Paul Soglin, [4] at his inauguration ceremony on April 19, 2011. Soglin is in his seventh term as mayor of Madison, WI. Kienitz gave the mayor verbal permission to use the photograph “in connection with Mayor Soglin’s political activities and for noncommercial uses by news organizations.” Beginning April 26, 2011, the City of Madison’s website included a display of the photograph. If a web surfer hovered over the photograph, a credit to Kienitz popped up. The photo did not include the © mark.

A brief history of one of Madison’s annual events aids in the understanding of the case. Madison has an annual Block Party in May of each year. In his college days, Mayor Soglin participated in the annual event and got arrested. The event is known for poking fun at the powers that be.

In September 2011, a magazine reported that Soglin had stated that he now preferred order rather than the disruption the Block Party created. Apparently, now that he is part of the powers that be, he does not enjoy the poking end of the stick. In the mayor’s most recent election he sought and gained the support of the youth that he now opposed.

The defendants decided to poke fun at the mayor during the May 2012 Block Party. They created and sold T-shirts and tank tops with the mayor’s image on them and the slogan, “Sorry for Partying.” They used the picture from the city’s website to create the image of the mayor on the T-shirts and tank tops. Defendants altered the photograph so the mayor’s face was lime green on a black background and outlined in bright blue. The apparel sold from April 2 to May 6, 2012. The defendants earned $900 in profits on $1300 in gross sales.

On April 24, 2012, Soglin notified Keinitz of the defendants’ use of the image. Keintz registered the photo with the U.S. Copyright Office on May 1, 2012. Shortly thereafter Keintz filed a copyright infringement claim. [5] Keinitz did not allege any lost sales due to the defendants’ use of the photograph.

The case proceeded through the district court and ended when the court ruled in favor of the defendants’ Motion for Summary Judgment. The issue before the court on summary judgment was whether defendants’ use of the photograph was a fair use.


Fair use is an affirmative defense. Therefore, the burden is on the defendants’ to prove their use is a fair use. [6] The Copyright Act directs courts to consider four non-exclusive factors in deciding whether a use is a fair use. [7] The four factors are:

  • Purpose and character of the defendants’ use (e.g. was it commercial);
  • The nature of the copyrighted work (how creative is the plaintiff’s work?);
  • The amount and substantiality of the portion of the plaintiff’s work used by the defendants; and
  • The effect of the defendants’ work on the potential market for the plaintiff’s copyrighted work.

Purpose and Character of Use:

The Copyright Act requires courts to consider whether the use is commercial, but a commercial use is not presumptively unfair. [8] Rather, the inquiry into whether the use is commercial is to determine whether the defendants profited from the use and, if so, whether the defendants appropriately compensated the plaintiff for the use, i.e. the market price. [9] Due to the insignificant profits involved, this consideration was not a major factor in the case.

The major factor in the case was whether the defendants’ use was transformative. A work is transformative when it “adds something new with a further purpose or of a different character.” [10] In other words, did the defendants simply create something that replaces the copyrighted work, or does the defendants’ work create something new that was not in the copyrighted work? If it did create a new “expression, meaning or message,” there is less concern about any commercial aspect. [11]

There is no question that the defendants use was commercial. But the use was also poking fun at the mayor’s flip-flop on his position regarding the Block Party and turning against a block of voters that helped elect him. The defendants’ T-shirts and tank tops made a political statement criticizing the mayor for his reversal on the issue. The original message of the photograph was to honor the mayor. The defendants made a new use of the photograph; the defendants’ use created a different message than that of the original photograph.

Further, the defendants changed the image from a photograph to a “monochromatic outline” of the picture of the mayor. The change was significant and created an image completely different from the original. In a sense the defendants’ image was like a negative of the photograph of the Mayor. A work is transformative when it creates a different character, aesthetics, or expression. [12] A negative of a photograph has different aesthetics than the photograph.

Kienitz asserted the T-shirts and tank tops were not transformative and, instead, were derivatives of the photograph. Fair use does not cover derivative works, in which the copyright holder retains exclusive rights. Kienitz argues that because the defendants’ T-shirts and tank tops did not comment on his picture or him, they were not a parody.

Kienitz cited Cariou (this case becomes significant in the Seventh Circuit’s review on appeal), which led courts to grant less lee way to satires than parodies for fair use. A parody makes fun of or criticizes a work or its author directly. A satire uses a work to poke fun at or criticize something other than the work or its author.

The district court agreed with Kienitz that courts are more willing to grant fair use for parodies than satires. [13] However, Cariou held that the defendants’ work does not have to comment on the original work or its author to be a fair use. [14]

Because the purpose and character of the defendants’ use was so different than the Kienitz photograph’s use, the court held the first factor weighed in favor of fair use.

The court also related the fourth factor, see discussion below, in its analysis of the first factor. Because the T-shirts and tank tops are unlikely to harm the sales of the original photograph, there is less of a need for the defendants to shore up their proof of how the purpose and character of their use differs from the Kienitz photograph’s use. This illustrates the interrelationship between the four fair use factors.

Nature of the Copyrighted Work:

Courts consider two factors in the analysis of the second fair use factor: (1) whether the copyrighted work is more creative or more factual and (2) whether the work is published, i.e. whether the right of first publication is implicated. The more creative a work is, the more fair use protects it. The photograph of the mayor required some creativity to place the mayor in a light favorable to his political aspirations. However, it did not require a great deal of creativity, like photographing a model in just the right pose or snapping a bear just as he was catching a fish with the sunlight perfectly shining from the optimum direction.

For the second aspect, the city already, with Kientitz’s knowledge, published the photograph on its website. Therefore, there was no danger of implicating Kienitz’s right of first publication.

The second factor came out neutral and did not weigh into the court’s decision.

Amount and Substantiality of Work Used:

When the court considers the third factor of fair use, the amount and substantiality of the copyrighted work used, the focus is not on how much the defendants took, but rather on the amount of the protected elements the defendants copied. [15] A defendant can copy the entire copyrighted work, if copying the whole is necessary to communicate the defendant’s message. [16] Taking essentially the negative of a photograph, as the defendants in this case did, is not a taking of the essential elements of Kienitz’s photograph.

The amount of Kienitz’s work taken by the defendants’ was reasonable for the defendants’ purpose in copying the photograph. [17] The third factor weighs in favor of a fair use.

Effect on the Potential Market for the Copyrighted Work:

In Harper & Row, [18] the Supreme Court stated that the most important fair use factor is whether the defendants’ work is a substitute for the plaintiff’s copyrighted work.

The defendants’ work communicated a message diametrically opposed to the message of the original photograph. It does not supplant the market for the original photograph. Kienitz asserted the artistic elements of the photograph were the lighting, expression, and pose. In the image on the T-shirts and tank tops, those elements all but faded away, if not completely disappeared.

Anyone looking for an image like that of Kienitz’s, would not seek defendants’ image on the T-shirts and photographs. Kienitz’s photograph shows the mayor in his best light and honor. The image on the T-shirts and tank tops is disparaging of the mayor and includes an apology for his reversal on an issue. The two are pursuing distinct markets that do not overlap.

Kienitz argued that he would never license any of his works to someone who wanted to send a negative message about the subject of one of his photographs. This assertion worked against Kienitz in the court’s analysis of the fourth factor. The court reasoned this was further proof that the market for the defendants’ product did not overlap with the market for Kienitz’s photograph in any manner.

The fourth factor weighs in favor of a fair use. With the first, third and fourth factors favoring fair use and the second factor inconsequential, the court found defendants’ T-shirts and tank tops were a fair use.

Appeals Court Decision:

The Seventh Circuit affirmed the district court holding, but they dismissed the district court’s transformative analysis. The Seventh Circuit does not agree with the transformative holding in the Second Circuit’s Cariou opinion and upon which the district court relied.

The Second Circuit has taken the transformative use analysis to the point that they find transformative use alone as enough to find fair use. The Seventh Circuit is “skeptical of Cariou’s approach.”   The Second Circuit fails to explain how such heavy weighting of the transformative nature does not override the copyright holder’s rights in derivative works provided in 17 U.S.C. § 106.

On appeal of Kienitz v. Sconnie Nation, the court considered only the four factors in 17 U.S.C. § 107 and did not consider the transformative nature of the defendants’ T-shirts and tank tops. The court cited Ty, Inc. v. Publications International Ltd. [19] and asked whether “the contested use is a complement to the protected work (allowed) rather than a substitute for it (prohibited). The court weighed the fourth factor, market effect, as most important and found a “T-shirt or tank top is no substitute for the original photograph.”

Boaldin Law Comments:

Look for the divide between the 7th and 2nd Circuits to grow. Transformative is not a trump card, as the courts had been moving towards, if they had not reached. The Copyright Act includes four non-exclusive factors in the fair use analysis. The transformative analysis treading on the copyright holder’s derivative rights reached a wall in this case. This decision requires the courts to add clarity to the boundaries of transformative and the distinctions between transformative and derivative works.

Contact us, solutions@boaldinlaw.com, with any comments or questions about this post.


[1] http://www.michaelkienitz.com/

[2] http://sconnie.com/

[3] http://www.inc.com/profile/underground-printing

[4] http://www.waxingamerica.com/

[5] Michael Kienitz v. Sconnie Nation LLC and Underground Printing, Case No. 12-cv-464-slc (W.D. Wisc., August 14, 2013); No. 13-3004 (7th Cir., September 15, 2014).

[6] Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 692 (7th Cir. 2003).

[7] 17 U.S.C. § 107; Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 692 (7th Cir. 2012).

[8] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 584 (1994).

[9] Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 562 (1985).

[10] Brownmark, 682 F.3d at 693.

[11] Campbell, 510 U.S. at 579.

[12] Cariou v. Prince, 714 F.3d 694, 706-07 (2nd Cir. 2013).

[13] Campbell, 510 U.S. at 580-81.

[14] Cariou 714 F.3d at 706.

[15] Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 613 (2nd Cir. 2006).

[16] Chicago Bd. of Educ., 354 F.3d at 629.

[17] Campbell, 510 U.S. at 587-88; Blanch v. Koons, 467 F.3d 244, 258 (2d Cir. 2006).

[18] Campbell, 510 U.S. at 591; Harper & Row Publ., Inc. v. Nation Enterprises, 471 U.S. 539, 566 (1985).

[19] Ty, Inc v. Publications International Ltd., 292 F.3d 512 (7th Cir. 2002).

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