Argued January 24, 2014
Appeal from the United States District Court for the Western District of Wisconsin. No. 12-cv-464-slc -- Stephen L. Crocker, Magistrate Judge.
For Michael Kienitz, Plaintiff - Appellant: Jennifer L. Gregor, Attorney, James D. Peterson, Godfrey & Kahn S.C., Madison, WI.
For Sconnie Nation, Llc, Underground Printing - Wisconsin, Llc, Defendants - Appellees: Eric J. Hatchell, Attorney, Jeffrey A. Simmons, Attorney, Naikang Tsao, Attorney, Foley & Lardner Llp, Madison, WI.
Before BAUER, EASTERBROOK, and WILLIAMS, Circuit Judges.
Easterbrook, Circuit Judge.
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.
Sconnie Nation concedes starting with a photograph that Kienitz took at Soglin's inauguration in 2011. Soglin (with Kienitz's permission) had posted it on the City's website, from which Sconnie Nation downloaded a copy. The photograph was posterized, the background was removed, and Soglin's face was turned lime green and surrounded by multi-colored writing. Here are the original and the revision:
A magistrate judge, serving by consent under 28 U.S.C. § 636(c), granted summary judgment for the defendants, holding that Sconnie Nation had made fair use of the photo. 965 F.Supp.2d 1042 (W.D. Wis. 2013).
Fair use is a statutory defense to infringement. The Copyright Act sets out four non-exclusive factors for a court to consider. 17 U.S.C. § 107. The district court and the parties have debated whether the t-shirts are a " transformative use" of the photo--and, if so, just how " transformative" the use must be. That's not one of the statutory factors, though the Supreme Court mentioned it in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). 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).
We think it best to stick with the statutory list, of which the most important usually is the fourth (market effect). We have asked whether the contested use is a complement to the protected work (allowed) rather than a substitute for it (prohibited). See Ty, Inc. v. ...