A recurring theme in our posts under the “Fair Use” tag has been the rise of “transformative use” as a litmus test that not only supplements, but often virtually supplants, the  four statutory fair use factors—the purpose and character of the secondary use, the nature of the original work, the amount of the original used, and the effect on the potential market for the original. This trend reached its apogee, at least for now, with the Second Circuit’s ruling in Cariou v. Prince, discussed here and here. Judge Frank Easterbrook of the Seventh Circuit has taken note of this trend, and in his ruling yesterday in Kienitz v. Sconnie Nation—a case involving not appropriation art but the politically motivated t-shirt pictured here—he took a moment to register, in a somewhat gratuitous aside, his disapproval.

The man whose image adorns this garment is Madison, Wisconsin mayor Paul Soglin. The caption “sorry for partying” is a reference to the Mayor’s desire to end an old Madison tradition, the Mifflin Street Block Party, an annual festival devoted to “taking a sharp stick and poking it in the eye of authority.” Sconnie Nation sold 54 of these shirts at the 2012 Block Party, clearing a small profit and attracting a copyright infringement suit by the photographer, Michael Kienitz. Sconnie Nation claimed its use of the photograph was protected under the doctrine of fair use.

Sconnie Nation conceded that it used a photograph that Kienitz took at Soglin’s inauguration in 2011, and which Soglin (with Kienitz’s permission) had posted on the City’s website. “The photograph was posterized, the background was removed, and Soglin’ face was turned lime green and surrounded by multicolored writing.”

Judge Easterbrook, writing for a unanimous panel, held that the use of the photograph was a fair use, expressly eschewing reliance on the concept of transformative use in favor of the statutory four factor test, with particular emphasis on “the effect of the use upon the potential market for or value of the copyrighted work”:

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.

Oddly, Judge Easterbrook seems to put no weight at all on the character of the use, which was clearly more a comment on a matter of public interest than a commercial venture. But he goes to great lengths to argue that the amount of the original used favors a finding of fair use:

Defendants started with a low‑resolution version posted on the City’s website, so much of the original’s detail never had a chance to reach the copy; the original’s background is gone; its colors and shading are gone; the expression in Soglin’s eyes can no longer be read; after the posterization (and reproduction by silk-screening), the effect of the lighting in the original is almost extinguished. What is left, besides a hint of Soglin’s smile, is the outline of his face, which can’t be copyrighted.

I think many courts today, not just the Second Circuit, would consider these facts under the rubric of whether the character of the use was transformative, but Easterbrook clearly wants to resist use of that concept at all costs. Indeed, the most interesting part of his opinion is his entirely unnecessary (given his holding in favor of fair use) discussion of transformative use and Cariou v. Prince in particular:

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 (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).

The Supreme Court passed up the opportunity to review Cariou v. Prince. Judge Easterbrook’s dicta suggests that perhaps, down the road, a clear split in the circuits might prompt the Supreme Court to take up the subject of transformative use and consider whether the genie it let loose with Campbell needs to be stuffed back in the bottle.