Prof. Rodney A. Smolla, University of Georgia Law School
February 4, 2015

In an IP Viewpoints post in October 2014, I criticized the Seventh Circuit’s decisions in Kienitz v. Sconnie Nation LLC.1  The case was a copyright infringement suit brought by professional photographer Michael Kienitz against Sconnie Nation LLC, which copied Kienitz’s copyrighted photo of Mayor Paul Soglin of Madison, Wis., and used it to make t-shirts and tank tops displaying Mayor Soglin’s image, which it sold for a modest profit as part of a protest movement against the mayor for shutting down a popular Madison street festival.  Kienitz’s photo of Soglin, and Sconnie’s appropriation of the photo, are shown below:

The Seventh Circuit, in what I have come to call its “Cheshire Cat analysis,” found the photograph protected as fair use.  Here was the core of the Seventh Circuit’s ruling:

Defendants removed so much of the original that, as with the Cheshire Cat, only the smile remains.  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.  Defendants could have achieved the same effect by starting with a snap-shot taken on the street.2

I think the Cheshire Cat analysis is flawed conceptually and legally, for reasons I discuss below – but I also find it flawed visually.  Compare the two images above.  The image on the t-shirt contains virtually all the protected elements of the original photograph.  It is nothing like the story of the Cheshire Cat, in which the body disappeared and only the smile remained.  But more on that later.

Kienitz has filed a petition for certiorari in the U.S. Supreme Court.  Earlier this week The Media Institute issued a press release announcing that it had filed an amicus brief urging the Supreme Court to grant the petition.  I was counsel of record for The Media Institute on the brief.      The deeper reflection on the case prompted by work on the brief prompted the thoughts below, which summarize the arguments advanced in the brief.

The Seventh Circuit’s approach effectively eviscerates the fundamental distinction between parody and satire, a distinction central to the Supreme Court’s landmark ruling in Campbell v. Acuff-Rose Music, Inc.3  In parody, some use of an underlying work is unavoidable, because the parodist must mimic in order to make the parody’s comedic or critical point.  With satire, however, exploitation of the underlying work is easily avoidable.  The nascent expansion of the fair use doctrine in Kienitz effectively places parody and satire on the same plane.  This wrongly grants to satirists a free license to exploit underlying works, even in the absence of any nexus between the message communicated by the satirist and critique of the substance or style of the underlying work.

Treating satire as inferior to parody for fair use purposes will cause no troublesome disruptions on the laudable work of satirists or the important place of satire in our cultural and our constitutional traditions.  Requiring a satirist to obtain a license for the privilege of exploiting an underlying work imposes no untoward burden on the art of satire.  The most successful music satirist in modern American popular culture, “Weird Al” Yankovic, always obtains copyright permission from the copyright holders of the underlying music that he appropriates for his ingenious song satires (even though some of Yankovic’s songs are arguably parodies).4

The Seventh Circuit’s expansion of the fair use doctrine threatens to envelop and overrun the Copyright Act’s protection of derivative works.  Derivative works are by definition “transformations” or “recastings” or “adaptations” of an underlying work.  To the extent that such transformation is treated as fair use, the copyright holder’s entitlement to control derivative works is largely destroyed.  Congress, it is worth recalling, used the word “transformed” in its definition of “derivative work”:

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.  A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work.”5

To lift a photograph and use it to produce a t-shirt is a quintessential example of a derivative work.6  If a derivative work, as defined by Congress, includes “any form” by which a work may be “recast, transformed, or adapted,” it is simply incoherent to treat any work that is “transformative” as protected “fair use.”  This would equate “fair use” with “derivative work” and flip the law on its head.  The most rational way to reconcile the notion of transformation in fair use doctrine with the notion of transformation in derivative works is to draw the line exactly as Campbell suggested it be drawn.  When the prior work is taken and new material is added to transform it in a manner that does not critique or comment upon the underlying work, it is the sort of transformation that characterizes a derivative work and may not be done without a license from the copyright holder.  On the other hand, when the transformation falls within a unique subset of transformations in which the underlying work is in some manner being critiqued or commented upon, it may qualify as the sort of transformation that counts positively toward a finding of fair use.

The holding in Kienitz has a particularly damaging impact on the copyright protection granted to photographers.  The photographic portrait of Mayor Soglin was captured from real life.  But that reality does not defeat the copyright protection that inures in that realistic photo.  As Justice Holmes explained:

It is obvious also that the plaintiff’s case is not affected by the fact, if it be one, that the pictures represent actual groups, – visible things.  They seem from the testimony to have been composed from hints or description, not from sight of a performance.  But even if they had been drawn from the life, that fact would not deprive them of protection.  The opposite proposition would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face.7

The Seventh Circuit’s Cheshire Cat analysis, while impishly literate, was conceptually flawed.  The body of the Cheshire Cat in Alice’s Adventures in Wonderland was able to mystically disappear, leaving only its lingering grin.  Alice reflected that she had “often seen a cat without a grin,” but never “a grin without a cat!”  Kienitz’s photograph of Soglin, however, did not disappear when transferred to the t-shirt.  It was copied verbatim, transferred, and altered, processes quite different from those imagined by Lewis Carroll, whether considered through the looking glasses of literature, logic, or law.

Imagine that a photographer does photograph a real cat, caught in Cheshire Cat smile.  A lazy t-shirt vendor has no right to pirate the photo, change the color of the cat to green, and use the resulting image to produce silk-screen t-shirts for profit.  It is still the photographer’s photograph that has been taken, and while there may be no ownership in the image of a cat or a cat’s Cheshire smile, there is ownership in the photographer’s photographic copy of the cat.  In the words of Justice Holmes:  “Others are free to copy the original.  They are not free to copy the copy.”8

There are rare cases in which a photograph or video captures the only extant images of a highly newsworthy public event, so that secondary use of the photograph might be deemed a fair use because it is impossible otherwise to analyze the underlying event.9  Under the “merger doctrine,” copyright protection may be denied when the idea underlying the copyrighted work can be expressed in only one way.10  In the Kienitz photo, however, as in the vast run of cases, the photograph and the underlying reality are not merged, and the photograph stands on its own as the exclusive property of the photographer.  The Seventh Circuit’s analysis threatens to render photography a free-fire zone for free-riders.

Finally, the Seventh Circuit’s expansion of fair use conflated the remedy that may be appropriate in infringement actions arising from the exploitation of photographs with the predicate issue of liability.  It may well be that in some cases the economic harm caused by any one isolated piracy of a copyrighted photograph is negligible.  The Copyright Act’s answer, however, is to tailor the remedy, not to destroy the underlying right.  Fair use is a blunt all-or-nothing instrument; when successfully invoked it entirely destroys the copyright holder’s rights.  The remedial provisions of the Copyright Act, in contrast, contain refined and precise instruments, allowing a court to preserve the right while circumscribing the remedy.  Infringements of intellectual property, like trespasses on real property, often involve only nominal economic damage.  Yet the law has always empowered courts to enforce a property owner’s right to redress for infringement or trespass, even when economic harm is nominal, by empowering courts to adjust the remedy to fit the equities of the specific case.  The Copyright Act, for example, provides for awards of statutory damages in lieu of compensatory damages, and courts retain inherent equitable discretion regarding the awarding and tailoring of injunctive relief.

While fair use doctrine does require courts to consider the damage caused in the marketplace by a secondary work, this should not be a door that swings both ways.  When the second work creates a substitute in the market for the underlying work, a finding of fair use is almost never warranted.  The very fact that the second work acts as a substitute for the first is usually a powerful indicator that the use is not fair.  But the converse is not true.  It does not follow that the absence of economic damage proves that the use is fair.  When a lazy appropriator gratuitously copies a photograph to create a satiric work that does not critique the substance or style of the photograph, an infringement occurs, and the lack of demonstrable economic harm should not turn what would otherwise be an infringement into a fair use.  To the extent the negligible economic harm matters in such a case, it speaks to the fashioning of the remedy, not the existence of the right.

Comments From Our Readers

E. Leonard Rubin:

Comments: I disagree with you, Prof. Smolla, regarding what you see as the devastating effect that the Kienitz decision has on such far-removed subjects as the satire/parody distinction, the expansion of the fair use doctrine, and the supposedly dire long term impact of the decision on copyright law. Okay, you disagree with the decision; that is one thing – fair use decisions are almost always the result of subjective appraisals anyway, despite the efforts by some judges to bring objective analyses to their opinions. But bringing in the merger doctrine, the true origins of the Cheshire Cat, and the legal distinction between parody and satire, none of which concepts are present in the opinion, is to tack on to the ruling some unnecessary ponderous weights. You seem to agree with Judge Easterbrook that transforming a work would essentially create a derivative work, which as you both agree deprives a creator of one of the exclusive rights granted by the Copyright Act, but you then use this to quarrel with the finding of fair use. My take is that Judge Easterbrook’s criticism of the transformative analysis in fair use cases is essentially immaterial to his fair use finding. He in fact specifically rejects use of that concept and restricts his finding to use of the four statutory factors unconnected with transformation. We can all compare the photograph and the T-shirt in the Kienitz case and come to our own conclusions as to whether the T-shirt use is fair; we see with different eyes. Bogging the case down with sinister long-range implications would seem to be not only unnecessary, but time-wasting.

John E. Miller:

Comments: DISTRIBUTED for Conference of March 20, 2015. No. 14-815 Michael Kienitz v. Sconnie Nation, LLC, et al.