Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7^th Cir., September 15, 2014)Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”    Apparently Soglin attended the very first annual block party as a student at the University of Wisconsin in 1969, but tried to stop the event when he took office.  The t-shirts were not a commercial success, only 54 t-shirts were sold. The photo and the t-shirt art are compared below.      Kienitz, offended by the t-shirt design, brought a copyright infringement claim against Sconnie Nation and its distributor based on the derivative use of his image on the t-shirt. The court dismissed the action on a summary judgment motion, finding the use to be a fair use and not infringing. On appeal, the photographer did not fare any better as the 7th Circuit also found the use to be a fair use.While the 7^th Circuit analyzed fair use under the requisite four factor test proscribed in Section 107 of the Copyright Act, it took this opportunity to criticize the reasoning of the district court for relying on the Second Circuit’s approach in Cariou v. Prince, which focuses primarily on whether the’ use of the visual image is “transformative” in determining fair use. A work is considered transformative if it alters the original with new expression, meaning or message.  While the appellate court agreed that the modification of the photograph as depicted in the T-shirt was a fair use, it advocated for sticking to the factors identified in the statute rather than relying on a term that does not appear anywhere in the Copyright Act . The four the factors are (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes; (2) the nature of the copyrighted work; (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.This court focused more heavily on the fourth factor, and found that there was little to no effect of the use of the photograph on the market – the t-shirts were not a substitute for the original photograph, and Kienitz did not raise the possibility of licensing the photograph for apparel or any other use.  The third factor – the amount and substantiality of the use – was the only other fair use factor that had any “bite” in this case.  The court found that the only elements of the original photograph that remained after the modification was Soglin’s smile and the outline of his face, which cannot be copyrighted.  Turning to the two remaining statutory factors, the court acknowledged defendants’ small profits from the sales but stated that the design was political commentary.  Finally, in looking at the nature of the copyrighted work, the court stressed the absence of any argument that Sconnie Nation’s use reduced the value or demand of the original photograph.The Court of Appeals noted that Sconnie Nation’s use of Kienitz’s photograph was not necessary in order to make the t-shirt and that Kienitz’s photography business may suffer in the long run - people may not want to hire Kienitz for fear the photos may be used against them, but these issues were not nearly enough to overcome the other fair use factors.This case is most notable for its criticism of Cariou v. Prince.  In Cariou v. Prince, the Second Circuit expanded the meaning and importance of transformative use, holding that there is no requirement that a new work comment on or critically refer back to the original work or its author.  The court was explicitly “skeptical” of this approach, concerned that it may replace the list of factors and override protection of derivative works.