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By Tamlin Bason
Sept. 16 — The Second Circuit's myopic focus on whether a new work has transformed an original work disconnects the fair use test from its statutory moorings, the Seventh Circuit said Sept. 15.
The court said it was “skeptical” of the fair use approach that its sister circuit took in a 2013 copyright infringement case, Cariou v. Prince, that was brought against an appropriation artist. The problem with focusing only on whether a work is transformative, the Seventh Circuit said, is that derivative works to some extent will always transform an original work.
It is thus not clear how a transformative work can qualify as fair use without infringing the author's statutorily-prescribed right to make derivative works, Judge Frank H. Easterbrook said.
The Seventh Circuit instead focused on the four fair use factors set forth in Section 107 of the Copyright Act, 17 U.S.C. §107, saying, “the most important [factor] usually is the fourth (market effect).”
The court then affirmed a district court's fair use finding, albeit on different grounds. It is not that a t-shirt that superimposed the text “Sorry For Partying” on top of an altered version of a Wisconsin mayor's official portrait transformed the mayor's photograph, the Seventh Circuit said. It is that the t-shirt sales did not in any way impact the market for the mayor's official photo, it held.
“I don't think there is a circuit conflict,” Professor Shubha Ghosh of the University of Wisconsin Law School told Bloomberg BNA. “Easterbrook just balances the four factors differently than what the 2nd Circuit would do.”
In the late 1960s, Paul Soglin was a student at the University of Wisconsin-Madison. During that time, he was heavily involved in political activism, and one of the movements he helped organize was the Mifflin Street Block Party. Soglin was arrested at the inaugural block party, which was held in 1969. Since that time, both Soglin and the block party have been mainstays in Madison.
Soglin has served as mayor of Madison on three separate occasions, being elected most recently in 2011.
The block party has been held continually since 1969. Soglin, however, has changed his view of the gathering. After the 2011 party he was quoted by the Wisconsin State Journal as saying, “All I'm interested in is ending this thing.”
Soglin's objection to the block party was not well received by current students. Two Madison-based apparel companies, Sconnie Nation LLC and Underground Printing-Wisconsin LLC, decided to sell shirts appealing to students and activists disillusioned with Soglin.
The defendants went online and downloaded Soglin's official mayoral portrait from the City of Madison's website. That photograph had been taken by photographer Michael Kienitz during Soglin's 2011 inauguration. Kienitz had given Soglin and his staff permission to use the image for any noncommercial purpose.
After downloading the image, the defendants altered the photograph by making Soglin's face a lime green color. The image was then juxtaposed next to colorful text stating “Sorry for Partying.” The image and the text were then printed onto t-shirts and tank tops. A total of 54 shirts sold, resulting in a net profit to the defendants of $900.
Soglin learned of the shirts and contacted Kienitz to inform him that his photograph was being used on apparel. Kienitz then registered the photo and subsequently filed this copyright infringement lawsuit.
The Western District of Wisconsin granted the defendants summary judgment, finding that the t-shirt was transformative in part because it linked the mayor's current image to his past actions, and in doing so portrayed him “as a curmudgeonly flip-flop on the block party.”
The district court quoted the Second Circuit's recent opinion in Cariou v. Prince, 714 F.3d 694, 106 U.S.P.Q.2d 1497, 2013 BL 112763 (2d Cir. 2013), for the notion that the first fair use factor, which assesses the nature and character of the defendant's use of the copyright, is “the heart of the fair use inquiry.”
The Seventh Circuit noted that although transformation was “mentioned” by the Supreme Court in Campbell v. Acuff-Rose Music, 510 U.S. 569, 29 U.S.P.Q.2d 1961 (1994), it is not actually a factor set forth in Section 107. Easterbrook said:
We're skeptical of Cariou's approach, because asking exclusively whether something is “transformative” not only replaces the list in §107 but also could override 17 U.S.C. §106(2), which protects derivative works. To say that a new use transforms the work is precisely to say that it is derivative and thus, one might suppose, protected under §106(2). Cariou and its predecessors in the Second Circuit do no explain how every “transformative use” can be “fair use” without extinguishing the author's rights under §106(2).
Instead, the Seventh Circuit said that the fourth factor should generally control and the focus should be on whether the new work complements the protected work or acts as a substitute for the protected work. The former use should be allowed while the latter use should be prohibited, the court said.
In this case, “A t-shirt or tank top is no substitute for the original photograph,” the court said. “Nor does Kienitz say that defendants disrupted a plan to license this work for apparel.” Accordingly, the fourth factor favored a finding of fair use, the court determined.
The Seventh Circuit ultimately affirmed the district court's fair use determination, finding the third factor, which assesses the amount taken in relation to the protected with, to be the only factor to have “much bite in this litigation.”
“Defendants removed so much of the original that, as with the Cheshire Cat, only the smile remains,” the court said.
Ghosh noted that Cariou has been criticized because the transformative use test that the Second Circuit set forth created a potential overlap with a content owner's derivative use right. By focusing on the fourth factor, Easterbrook established an approach that avoids that particular line of criticism.
“Judge Easterbrook's [approach] avoids any complicated question of interpretative context required by the Second Circuit, or by the Supreme Court for that matter, and focuses instead on a market analysis,” Ghosh said. Ghosh, however, said that as a practical matter the two approaches may not lead to completely different outcomes. At least not in this case.
“Based on its Cariou decision, the Second Circuit would have reached the same result in Kienitz though through a different approach to the four factors.” he said.
Judges William Joseph Bauer and Ann Claire Williams joined the opinion.
Kienitz was represented by James Donald Peterson of Godfrey & Kahn S.C., Madison, Wis. Sconnie Nation was represented by Naikang Tsao of Foley & Lardner LLP, Madison, Wis.
To contact the reporter on this story: Tamlin Bason in Washington at email@example.com
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