Kienitz v. Sconnie Nation LLC
965 F. Supp. 2d 1042
W.D. Wis.2013Background
- Plaintiff Michael Kienitz, a professional photographer, took an official portrait of Madison Mayor Paul Soglin and gave the mayor verbal permission for noncommercial public use; Kienitz later registered the photograph with the Copyright Office.
- Defendants Sconnie Nation LLC and Underground Printing downloaded the portrait from the City of Madison website, altered it (neon/outline, text “Sorry For Partying”), and sold 150+ t-shirts/tank tops around the 2012 Mifflin Street Block Party, earning modest revenue.
- Kienitz (a political supporter of Soglin) would not have licensed the photo for mocking/critical uses and claims defendants infringed his copyright; defendants assert fair use as an affirmative defense.
- Parties stipulated to the material facts and moved for cross-summary judgment on fair use; the court considered the four statutory fair-use factors under 17 U.S.C. § 107.
- The court found defendants’ use transformative (new aesthetic/meaning, political critique), limited in taking (altered image, not the photograph’s market substitute), and that three of four factors favor fair use; summary judgment granted to defendants.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants’ use of the photograph is fair use | Kienitz: defendants copied his copyrighted portrait, creating a derivative work and commercialized it without license; use is not parody and does not transform the original | Defendants: altered the photo into a neon, mocking image that adds new expression/meaning as political commentary; not a market substitute | Defendants’ use is fair use; summary judgment for defendants |
| Whether commercial nature of the shirts defeats fair use | Kienitz: commercial sales weigh against fair use | Defendants: commerciality is not dispositive; work is transformative so weight of commerciality is reduced | Commerciality acknowledged but outweighed by transformative character; favors defendants |
| Whether amount/substantiality of copying disfavors fair use | Kienitz: defendants used the entire photograph and copied its creative elements | Defendants: image was materially altered (negative/outline) so protected elements are diminished; full-copy rule not dispositive | Amount/substantiality reasonable for purpose; favors defendants |
| Whether defendants’ use harmed the market for the photograph | Kienitz: unauthorized sales could impair licensing markets and he would not license for mocking uses | Defendants: markets differ—buyers of garish parody shirts are not market for an official portrait; no evidence of lost licensing revenue | No meaningful market substitution or demonstrable market harm; factor favors defendants |
Key Cases Cited
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1978) (market harm is central to fair-use inquiry)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (transformativeness is key; commercial use not presumptively unfair)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (transformativeness can arise without commenting on original; reasonable-observer test)
- Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012) (application of § 107 factors; transformative inquiry)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (qualitative/quantitative analysis of amount used)
- Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (parody/satire distinction and fair use analysis)
- Ty, Inc. v. Publications Int’l, Ltd., 292 F.3d 512 (7th Cir. 2002) (complementary vs. substitutional copying; market function distinction)
- Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624 (7th Cir. 2003) (burden on defendant to prove fair use; summary judgment when facts undisputed)
- Eldred v. Ashcroft, 537 U.S. 186 (2003) (copyright law contains built-in First Amendment accommodations)