Seventh Circuit Issues Unusual Fair Use Opinion
September 18, 2014
by Jerry Glover
Copyright law gives copyright owners certain exclusive rights in and to their works of authorship which no one else can exercise without the owners’ permission. But U.S. copyright law also realizes that advances in the arts will not occur without the ability of third parties to utilize a portion of copyright material without the owner’s permission. Defendants in copyright infringement suits often use what is known as the fair use defense to an infringement charge. The fair use defense is a limit on the exclusivity of rights that owner’s have and is meant to encourage advances in the arts. The defense is even embodied in the current U.S. Copyright Act (17 U.S.C. Sec. 107).
The fair use provisions in the Copyright Act explain that the defense is meant to be used in situations involving “criticism, comment, news reporting, teaching …, scholarship or research.” 17 U.S.C. Sec. 107. In determining whether a use of copyrighted material is subject to the fair use defense, courts are instructed to look at four factors (although this is not an exhaustive list; other factors may be considered by the courts based on the facts of a given case):
(1) The purpose and character of use including whether such use is of a commercial nature or is for nonprofit educational 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;
(4) The effect of the use upon the potential market for or value of the copyrighted work.
The U.S. Court of Appeals for the Seventh Circuit, based in Chicago, recently issued a decision which calls into question the approach courts in other jurisdictions have taken in making fair use determinations. Kienitz v. Sconnie Nation, LLC, 2014 WL 4494835 (7th Cir. September 15, 2014). In this case, the defendant, a t-shirt company, reproduced a photograph taken by the plaintiff at the inauguration of the mayor of Madison, Wisconsin, Paul Soglin (see photo below on the left) on 54 t-shirts making a small profit from their sale. In his youth, Soglin had attended a block party during his University of Wisconsin student days but, as mayor, he now wants to shut down this annual event. Hence, the reason the defendant used the t-shirt phrase “Sorry for partying.”
Sconnie Nation significantly changed the photograph (see photo below on the right). The photographer sued Sconnie Nation for copyright infringement, but the trial court found that the defendant’s use of the photograph was a fair use noting that defendant’s t-shirt was a “transformative use” of the photograph.
On appeal, the Seventh Circuit noted that whether use of copyrighted material is “transformative” is not one of the four fair use factors noted above. The court stated that the U.S. Supreme Court had “mentioned” transformative use in another fair use case, Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) and that another federal appellate court, the Second Circuit based in New York City, had “run” with that suggestion and concluded a transformative use was enough to qualify as a fair use. But that was not sufficient for this court to adopt the “transformative use” as an overriding factor in determining fair use.
In fact, the U.S. Supreme Court did more than mention “transformative use” in the Campbell decision. In that case the Court noted:
The central purpose of [the fair use] investigation is to see whether the new work merely supersedes the objects of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is general furthered by the creation of transformative works. Such works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use. 310 U.S. 579 (citations omitted).
It would seem that the Supreme Court believes that transformative use is a part of the analysis of the first fair use factor—the purpose and character of the use. So, in contrast to the Seventh Circuit’s statement that transformative use is not one of the four fair use factors, a decision as to whether a defendant’s use of someone’s copyrighted material must include a “transformative analysis.”
Nevertheless, the Seventh Circuit ultimately found that the t-shirt company’s use of the plaintiff’s photo was fair use relying primarily on factor four: the effect of the use upon the potential market for or value of the copyrighted work. The court stated that this factor is usually the most important factor in a fair use analysis. As the Court states, this factor requires courts to determine if the contested use is a “complement” to the copyrighted material (which is allowed) or whether it is a “substitute” for it, which is prohibited.
The court stated that a t-shirt is not a substitute for a photograph adding that the plaintiff photographer had not argued that the defendant had disrupted his plan to license the photo for apparel.
The court also noted that with regard to factor three (the amount and substantiality of the portion used in relation to the copyrighted work as a whole) favored the defendant because of the substantial changes made to the photograph: the original background is gone, the colors and shading are gone, the expression in Soglin’s eyes could no longer be read, etc. The court stated that the only thing left was a hint of Soglin’s smile and the “outline of his face which cannot be copyrighted.” An observation: I don’t think the t-shirt version of the photo is merely an “outline” of Soglin’s face.
The court concluded that the defendant could have reached the same result “by starting with a snap-shot taken on the street.”
The court also stated that the defendant, although making a small profit from t-shirt sales, meant the use of the photo to be political commentary about the mayor. Thus, the introductory provision of the fair use statute limiting the defense to, among other things, comment was satisfied.
Perhaps eager to give future plaintiffs a road map for arguing infringement in the face of a fair use defense, the court noted that the defendant could have used alternative sources to achieve the same result (like photos taken of Soglin by the defendant itself) since the purpose of defendant’s use of the photo was not to criticize Soglin’s technique but to make a political comment. The court stated that fair use is not designed “to protect lazy appropriators.” Rather the goal of fair use is to “facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors.” The court also noted that defendant’s use of the photo could hurt plaintiff’s chances for commercial use (licensing) of the photo. But since the plaintiff himself did not make these arguments, the court had to find that the defendant’s use of the photo was a fair one.