Seventh Circuit Rejects Transformative Use Test for Copyright Fair Use | Practical Law

Seventh Circuit Rejects Transformative Use Test for Copyright Fair Use | Practical Law

In Kienitz v. Sconnie Nation LLC, the US Court of Appeals for the Seventh Circuit affirmed the district court's grant of summary judgment holding that the defendants' creation and distribution of an adaptation of the plaintiff's photo on shirts parodying the Madison, Wisconsin mayor's anti-block-party policy was a noninfringing fair use. While the Seventh Circuit affirmed the lower court's fair use holding, it expressly rejected the transformative use test on which this holding was largely based.

Seventh Circuit Rejects Transformative Use Test for Copyright Fair Use

Practical Law Legal Update 0-581-9123 (Approx. 3 pages)

Seventh Circuit Rejects Transformative Use Test for Copyright Fair Use

by Practical Law Intellectual Property & Technology
Published on 19 Sep 2014 • USA (National/Federal)
In Kienitz v. Sconnie Nation LLC, the US Court of Appeals for the Seventh Circuit affirmed the district court's grant of summary judgment holding that the defendants' creation and distribution of an adaptation of the plaintiff's photo on shirts parodying the Madison, Wisconsin mayor's anti-block-party policy was a noninfringing fair use. While the Seventh Circuit affirmed the lower court's fair use holding, it expressly rejected the transformative use test on which this holding was largely based.
On September 15, 2014, in Kienitz v. Sconnie Nation LLC, the US Court of Appeals for the Seventh Circuit affirmed an order of summary judgment of the US District Court for the Western District of Wisconsin holding that the defendants' use of the plaintiff's photo of the Madison, Wisconsin mayor on shirts parodying the mayor's anti-block-party policy was a noninfringing fair use (No. 13-3004, (7th Cir, Sept. 15, 2014)). Notably, in its fair use analysis, the Seventh Circuit expressly rejected transformative use as a litmus test for copyright fair use.
The plaintiff photographer, Kienitz, was the copyright owner of the photo at issue. The defendants, Sconnie Nation LLC and Underground-Printing-Wisconsin, LLC (Sconnie Nation) made and sold shirts with an image of the mayor's face and a slogan parodying the mayor's policy to shut down an annual student block party. To produce the shirts, Sconnie Nation downloaded Kienitz's photo from the city's website, posterized the photo, removed the background, turned the mayor's face lime green and surrounded the face with the slogan "Sorry for Partying" in multi-colored writing. Kienitz sued Sconnie Nation for copyright infringement in the District Court for the Western District of Wisconsin. The district court granted Sconnie Nation summary judgment, finding its use of the photo was noninfringing fair use.
On appeal, the Seventh Circuit affirmed the district court's grant of summary judgment based on the Seventh Circuit's review and application of the Copyright Act's four non-exclusive fair use factors (17 U.S.C. § 107). The parties had debated below whether Sconnie Nation had made a transformative use of the photo. In its opinion granting summary judgment to the defendants, the district court engaged in a lengthy analysis of transformative use, relying, among other cases, on the US Court of Appeals for the Second Circuit's decision in Cariou v. Prince (714 F.3d 694, 706 (2d Cir. 2013)). In the Cariou decision, the Second Circuit concluded that an accused infringer's transformative use of a work is enough to qualify her copying of the underlying original work as a fair use under Section 107 of the Copyright Act. The Seventh Circuit expressly rejected this approach, reasoning that, contrary to the Second Circuit's analysis in Cariou, the transformative use of a work is not enough to establish fair use because this test:
  • Contradicts Section 107, which does not include transformative use as one of the four fair use factors.
  • Could override the provision that protects derivative works (17 U.S.C. § 106(2)), because a finding of transformative use is equivalent to finding that the resulting product is a derivative work protectable under Section 106(2).
The Seventh Circuit therefore applied the four non-exclusive fair use factors and affirmed the district court's finding of fair use, ruling that:
  • The first two factors (purpose and character of the use and nature of the copyrighted work) did not weigh in either party's favor.
  • The third factor, the amount and substantiality of the portion used, weighed in favor of fair use.
  • The fourth, and typically most weighty factor, effect upon the market for or value of the original, also weighed in favor of fair use.