In a recent decision by the U.S. Circuit Court of Appeals for the Seventh Circuit (Seventh Circuit), Judge Frank Easterbrook expressly joined the ongoing debate over the scope of ‘transformative use’ analysis in the ‘fair use’ defense to copyright infringement. In Kienitz v. Sconnie Nation LLC, the court reviewed the trial court’s determination that the using of a photograph of the mayor of Madison, Wisconsin, on a critical T-shirt was ‘fair use’ and did not create liability under the Copyright Act. In finding ‘fair use’, the trial court found support in the recent opinion in Cariou v. Prince, in which the U.S. Circuit Court of Appeals for the Second Circuit held that the use of a photographic image in a work of ‘appropriation art’ was ‘transformative’ and thus a ‘fair use’.
Though upholding the ‘fair use’ finding in Kienitz on other grounds, Judge Easterbrook expressly questioned the analysis in Cariou. “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).” Rather than focusing on transformative use, which is not expressly identified in the Copyright Act, the Seventh Circuit suggests that the fourth factor in ‘fair use’ analysis, the marketplace effect, which is “most important usually”, is a strong element in the case.
The Cariou opinion has been criticized by some commentators as creating an overly expansive defense to copyright infringement. By lending its voice to the critics, the Seventh Circuit adds to this judicial debate and also illustrates the importance of venue selection in ‘fair use’ cases.