Seventh Circuit Court Upholds Fair Use Win, But Does So With Some Convoluted Reasoning And Bad Assumptions
from the desire-to-mock-politicians-largely-unaffected dept
Another small win for fair use, courtesy of the Seventh Circuit Court of Appeals. There’s some history behind the disputed derivative artwork, but that history — while illuminating — has nothing to do with the plaintiff or defendants. It does, however, explain why this item came to be, and is integral enough that the Court’s decision recounts it during its very brief confirmation of the lower court’s decision. [pdf link]
While a student at the University of Wisconsin in 1969, Paul Soglin attended the first Mifflin Street Block Party, whose theme (according to Soglin) was “taking a sharp stick and poking it in the eye of authority.” Now in his seventh term as Mayor of Madison, Wisconsin, Soglin does not appreciate being on the pointy end. He wants to shut down the annual event. For the 2012 Block Party, Sconnie Nation made some t-shirts and tank tops displaying an image of Soglin’s face and the phrase “Sorry for Partying.” The 54 sales, on which Sconnie Nation cleared a small profit, led to this suit, in which photographer Michael Kienitz accuses Sconnie Nation and its vendor of copyright infringement.
The original photo, which was taken by Kienitz and downloaded from Soglin’s website, is shown below, along with Sconnie Nation’s t-shirt design.
Sconnie Nation admitted that the photo from the site was the starting point, so there’s no question the rights belong to the photographer. But the photographer also admitted that he “gave” the photo to Soglin to use on his website (rather than licensed) and make freely available for download. These facts don’t necessarily excuse the alleged infringement when applying the four-factor Fair Use test, as the court does here.
There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many non-copyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under §107 is not designed to protect lazy appropriators.
As the court points out, the fair use protection for parody exists to prevent copyright owners from shutting down any uses that might make them (or their subjects) look less than dignified (something the photographer promised to his subjects despite having no legal way to prevent situations like this from occurring).
But the fact that the appropriators could have started anywhere doesn’t make this infringement (even if the court labors under the misimpression that the world is loaded with copyright-free images). Stacking the t-shirt up against the other prongs of the Fair Use defense, the Seventh Circuit Court finds the plaintiff’s claims wanting.
A t-shirt or tank top is no substitute for the original photograph. Nor does Kienitz say that defendants disrupted a plan to license this work for apparel. Kienitz does not argue that defendants’ products have reduced the demand for the original work or any use of it that he is contemplating.
The court notes that Kienitz could have claimed that this lampooning would diminish photographic work for other dignitaries, seeing as he promised to keep their dignity intact when licensing, but those claims were never raised during this case’s trip through the court system.
The court also points out that significant transformation took place during its trip from the website to Nation’s t-shirt. The original photo was stripped of its background, was “posterized,” re-colored and altered enough that the defendants could have achieved the same effect by “using a snapshot taken on the street.” The court notes that the defendants made a small profit (which doesn’t instantly negate a Fair Use defense — although the court’s wording here seems to indicate it does) but that is mitigated by the “political purposes” of the design. And even if Kienitz had decided to claim that the parodic work would harm his photography business in the future, the court says that “by the time the defendants were done, almost none of the copyrighted work remained.”
While “lazy appropriators” were smacked around a little, and the false assumption that making money negates Fair Use defenses was given a little credence, it’s another win for transformative creations, even if it’s one that is skewed to statutory factors rather than the concept of fair use itself.
The decision is also a bit strange in the fact that it points out the significant transformation of the original Soglin photo, while at the same time dismissing the transformative use arguments raised by the Supreme Court (Campbell v. Acuff-Rose Music) and the much broader Second Circuit Court decision in Cariou v. Prince. The judge raises both cases by name but then points out that “transformative use” isn’t one of the four factors under consideration and posits that entertaining the Cariou defense could undermine rights holders’ control over derivative works.
The Second Circuit has run with the suggestion and concluded that “transformative use” is enough to bring a modified copy within the scope of §107. See, e.g., Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013). Cariou applied this to an example of “appropriation art,” in which some of the supposed value comes from the very fact that the work was created by someone else.
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 not explain how every “transformative use” can be “fair use” without extinguishing the author’s rights under §106(2).
By making this argument, the court conflates two distinct terms — transformative use and derivative works (Section 106(2)) — making transformative use slightly weaker, at least in this venue. Instead, the court focuses on the four statutory defenses, mainly those that could negatively affect the creator’s future earnings. In doing so, it arrives at the correct conclusion, but leaves a muddied blueprint in its wake for future rulings to follow.
Filed Under: 7th circuit, copyright, fair use, madison, paul soglin, sorry for partying, transformative use, wisconsin
Comments on “Seventh Circuit Court Upholds Fair Use Win, But Does So With Some Convoluted Reasoning And Bad Assumptions”
Such should not be a consideration during a Fair Use analysis. Copyright law protects the exclusive rights to a particular work, not the potential marketability of other works by the same creator.
Excellent piece Tim, thanks!
Original photograph not necessary.
The end result could and should easily have been produced by a quick pencil sketch of Paul Soglin’s face from life or any of a thousand different sources. Anyone with enough artistic talent to design the shirt (and Lord knows I don’t) could have generated such a drawing in minutes. The photo didn’t have to be used in the end product. One assumes Soglin wouldn’t try to claim copyright on his likeness.
Re: Original photograph not necessary.
Or better yet, a hand drawn caricature.
“it’s another win for transformative creations, even if it’s one that is skewed to statutory factors rather than the concept of fair use itself.”
Fair Use is defined by statute under U.S. law. The decision should be skewed to statutory factors. To use an arbitrary concept of fair use (in that each has there own definition if the statute were not used) would not instill predictability in the courts. However, the comments about where the image was appropriated sound like someones personal feelings and is definitely not in the statute. Nor does the new work having commercial value bar a fair use defense.
I’m actually a little disappointed in this paragraph
Two things can be said for Kienitz. First, defendants did not need to use the copyrighted work. They wanted to mock the Mayor, not to comment on Kienitz’s skills as a photographer or his artistry in producing this particular photograph.
There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many noncopyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors. (Many copyright owners would block all paro-‐‑
dies, for example, and the administrative costs of finding and obtaining consent from copyright holders would frustrate many academic uses.)
As you correctly noted: there aren’t boat loads of non-copyrighted images for people to pick from. In reality, every image is copyrighted when created, a fact the 7th circuit presumably knows. But I also have an objection that relate to why this image has a unique ‘non creative’ element that makes it especially useful when someone wants to make a political comment on the mayor. That element is: it’s the image the politician uses to represent himself to the public. In fact: the mayor uses it on his own promotional web page.
I think when students (or anyone) are making parody t-shirts, it’s very important that those who see the image recognize the subject being parodied. In this case, that subject is Mayor Soglin. Yet, to parody any image of the mayor, they need to transform and distort image a lot. In this case, they did the latter leaving only the outline and smile. Fair enough.
But after the image is distorted, there’s a risk people will not recognize the subject, Soglin. So why is it that people can recognize it’s Soglin? The reason is that this was Soglin’s official portrait and the ‘outline’ (which is not copyrightable) still matches an images many people will have seen in Soglin’s promotional materials.
So it seems to me that while the students didn’t intend to comment on Kienitz’s skills or artistry, it nevertheless was fairly important to use a portrait that Soglin has chosen to represent himself to voters. That’s a much smaller class of photos than just any old photo including one the students could select for themselves. Moreover, this photo — the one the mayor uses on his public web page– is likely the single best one to use because the mayor uses it.
Note that students cannot create an image with the element “mayor soglin uses this image to represent himself on his own web site”, by taking one of their own. Also, all or nearly all images a mayor uses to represent himself on his own website will be copyrighted by someone and that someone will often not wish to permit the image to be used to parody or criticize the subject of the photo.
btw: Note the notion that images used by subjects (like mayors) have a special status when used as parody eviscerates any concern that someone parodying this particular image would harm Kienitz’s financial prospects because those wishing to parody a mayor will tend to pick whatever images the person they want to criticize has selected. Kienitz’s was selected for parody because Soglin was using it. Soglin or others deciding to use another photographer in the future would only mean the photograph they choose would be the one Soglin picked. So, Soglin would realize that he couldn’t protect himself from parody by picking a different photographer and that factor ought to be removed from his choice of image when selecting promotional materials.