Prof. Rodney A. Smolla, Duke University School of Law
October 6, 2014

I have previously written in IP Viewpoints about “appropriation art” in the context of the Cariou v. Prince1litigation, in which the U.S. Court of Appeals for the Second Circuit held that artist Richard Prince’s “appropriation” of the copyrighted photographs of Patrick Cariou were sufficiently transformative to constitute fair use by Prince.  I was skeptical of the holding in Cariou, and wondered if the Second Circuit’s seeming equation of “transformative” with “fair use” would gain traction with other courts.

On Sept. 15, 2014, the Seventh Circuit, in a case entitled Kienitz v. Sconnie Nation LLC,2 dealt with an appropriation art fair use claim in a political context.  While the opinion in Kienitz, written by Judge Frank Easterbrook, purported to reject the “transformative” formula in Cariou, the Seventh Circuit, like the Second, ended up giving too much license to the appropriators of photographs, and not enough protection for photographers, the first artists in the creative chain.

The case involved images of the mayor of Madison, Wisconsin, Paul Soglin.  A photographer, Michael Kienitz, photographed the mayor, and owned the copyright in the photo.  The photo was placed on the city’s website.  Sconnie Nation copied the photo, and used it to make t-shirts and tank tops displaying Mayor Soglin’s image, which it sold for a modest profit.  Kienitz’s photo of Soglin, and Sconnie’s appropriation of the photo, are shown below:

As broadcast journalist Paul Harvey might say, however, “there is more to the story.”  When Soglin was a student at the University of Wisconsin in 1969, in the days when the University of Wisconsin was a hotbed of radical counter-culture, a Berkeley of the Upper Midwest, Soglin attended the first “Mifflin Street Block Party.”  As Soglin would himself put it, the theme of the party was “taking a sharp stick and poking it in the eye of authority.”  And as Judge Easterbrook put it, with his characteristic wit: “Now in his seventh term as Mayor of Madison, Wisconsin, Soglin does not appreciate being on the pointy end.”3  When the good mayor sought to shut the party down, he became the butt of protest, and the t-shirts were the medium that conveyed the message.

Fair use, or not?  Judge Easterbrook seemed conflicted.  To be sure, he had no particular use for the Second Circuit’s “transformation” test in Cariou, or the “appropriation art” defense generally, which he characterized as art “in which some of the supposed value comes from the very fact that the work was created by someone else.”4  To say that a second work transforms a first, after all, is essentially to say it is a derivative work, which ostensibly is among the rights exclusively granted to the copyright owner.  Judge Easterbrook also did a persuasive job of making the best possible case for Kienitz:

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 parodies, for example, and the administrative costs of finding and obtaining consent from copyright holders would frustrate many academic uses.)

Second, this use may injure Kienitz’s long-range commercial opportunities, even though it does not reduce the value he derives from this particular picture.  He promises his subjects that the photos will be licensed only for dignified uses.  Fewer people will hire or cooperate with Kienitz if they think that the high quality of his work will make the photos more effective when used against them!5

Notwithstanding this ostensibly persuasive argument, the court upheld the district court’s decision that the appropriation of Kienitz’s photograph was a fair use.  The court found persuasive the arguments that the copying did not cause Kienitz any palpable economic harm.  There was no claim that Kienitz himself had any plans to license the photo for apparel, that the t-shirts or tank tops had reduced demand for his work, or that they constituted any sort of substitute for his photographs.

What most influenced the court, however, was its view that Sconnie Nation had really not taken much from Kienitz.  As the court saw it, much of the original photograph was “removed” when it was used as the template for the t-shirts and tank tops.  As Judge Easterbrook saw it, Sconnie Nation began with a low-resolution version of the photo, changed all the coloration, and made it impossible to discern the expression in Soglin’s eyes.  Judge Easterbrook claimed that what was left was simply the outline of Soglin’s face, which can’t be the subject of copyright, and the mayor’s smile: “Defendants removed so much of the original that, as with the Cheshire Cat, only the smile remains.”6

Well, the judge and I may be looking at the same two images, but we are seeing different things.

You may compare the two images above yourself.  It is not just the outline of Soglin’s face or Soglin’s Cheshire Cat smile that was appropriated.  It looks more to me as if the entire content of the photograph was lifted (check out the details in shape and shading of the hair, for example).  The only serious alterations were the colors.  Sconnie Nation could easily have hired an artist to draw the mayor – and as the court conceded, it was only the mayor, not the photographic artwork of Kienitz, that Sconnie Nation sought to criticize.

In the end, Judge Easterbrook never persuasively answers his own pointed question: Why should the law protect the lazy appropriator, allowing that appropriator to copy a protected work?  One might argue that copyright in a photo portrait of a famous person is “thin,” yet that runs counter to cultural conventions, in which the marketplace often rewards the eye of a gifted photographer.

Sconnie Nation took a cheap shortcut.  But just as the law does not say that a property owner is entitled to prevent people looking for a shortcut to cut across the owner’s land, Kienitz, owner of the intellectual property in his photo, should be entitled to prevent a t-shirt maker from looking for a shortcut to placing the image of a politician on its commercial products.  I wish the court, having found the Cariou decision flawed and having insightfully made the case for Kienitz, had shown more courage of conviction and gone the full way, holding the appropriation to not be a fair use.