United States: Oh No You Didn’t: Seventh Circuit Criticizes Second Circuit’s Application of the Fair Use Doctrine

Under the "fair use" doctrine, artists regularly include portions of copyrighted works in books, movies, television programs, music and other artistic works without obtaining licenses from the copyright owners. When one of these uses is challenged, Courts determine whether it was, in fact, "fair" or an unauthorized infringement.

Given the importance of the "fair use" clause to Congress's twin, sometimes conflicting, aims of not stifling expression and creativity while, at the same time, incentivizing artists to exclusively control the exploitation of works they created, it is no surprise that the "fair use" rules are not black-and-white. Fair use determinations are to be made by applying four broadly worded "factors" set out Section 107 of the Copyright Act. Over time the boundaries of what is and is not "fair" have expanded, and the decisions applying the fair use "factors" have not always been consistent. The challenge artists face in predicting whether an unlicensed use of a copyrighted work will be deemed "fair" (or infringing) will likely increase with the United States Court of Appeals for the Seventh Circuit's ruling this week in Kienitz v. Sconnie Nation LLC, No. 12-cv-464 (SLC) (Sept. 15, 2014). In Kienitz, the Court both criticized and distinguished itself from a major fair use ruling that the Second Circuit issued in 2013.

This type of judicial cat-call is a rarity. Before turning to its potential implications, some background.

The significance of the "fair use" doctrine cannot be understated. Creators of movies, television programming and music often use pre-existing copyrighted works in new works. For example, movies regularly incorporate film clips or quote from copyrighted works and songs regularly include "samples" from pre-existing copyrighted music. While these uses are often licensed, when they are not, the creator usually invokes the fair use doctrine if its use of the copyrighted works is challenged.

In reviewing the last two decades of film and music fair use cases, it's obvious that courts have been receptive to expanding the scope of "fair use" protection since the United States Supreme Court decided Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (ruling that 2 Live Crew's parody of classic Roy Orbison song "Pretty Woman" that used music and lyrics from original copyrighted work constituted "fair use"). In Acuff-Rose, the Supreme Court singled out the importance of "the extent the new work was 'transformative'" in the fair use analysis, ruling that "the more transformative the new work, the less the significance of the [other] fair use factors."

Fast forwarding to last year, in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), the Second Circuit issued a fair use ruling that surprised many. At issue was the use of Cariou's copyrighted photographs in collages and other artwork that Prince ("a well-known appropriation artist" according to the Court) created. Cariou took the photographs over a six year period in Jamaica and published them in a book that Prince purchased. Prince incorporated "partial or whole images" of Cariou's photographs into Prince's artwork although he made some changes to them (e.g., enlarged, cropped, tinted or over-painted them). Despite the substantial use of Cariou's photographs, the Second Circuit ruled that 25 of the 30 works were sufficiently "transformative" as to have "a new expression" and qualify for protection under the fair use doctrine, while declining to rule on the other five. Although the Second Circuit discussed the four enumerated fair use factors of 17 U.S.C. §107, the opinion placed heavy emphasis on its finding that Prince's use of Cariou's works was "transformative.

The Seventh Circuit in Kienitz also found that the challenged use – a modified photograph of the Mayor of Madison Wisconsin included on a t-shirt poking fun at the Mayor on a matter of public interest – qualified for fair use protection. However, the Court reached its conclusion through a different analysis than the Second Circuit in Prince v. Cariou. After noting that the parties and the District Court "have debated whether the t-shirts are a 'transformative use' of the photo" and how "'transformative' the use must be," the Court matter-of-factly stated that the term "transformative" nowhere appears in Section 107 of the Copyright Act and is not one of the statutory fair use factors. While acknowledging that the Supreme Court mentioned it in Acuff-Rose, in words expressly directed at the Cariou decision, the Seventh Circuit noted that the Second Circuit has "concluded that 'transformative use' is enough to bring a modified copy within the scope of §107." This was not a compliment.

The Seventh Circuit voiced "skepticism" over the Second Circuit's approach in Cariou and concern that making the "fair use" test turn on whether something is transformative "could override 17 U.S.C. §106(2), which protects derivative works." Because the Copyright Act provides copyright owners with the exclusive right to approve and exploit derivative works, and because, according to the Seventh Circuit, "[t]o say that a new use transforms the work is precisely to say that it is derivative," the Court faulted the Second Circuit for failing to explain how "every 'transformative use' can be 'fair use' without extinguishing the author's rights under 17 U.S.C. §106(2)."

Rather than embrace the "transformative" fair use inquiry, the Seventh Circuit ruled that it was "best to stick with the statutory list" in 17 U.S.C. §107 in determining whether a use is fair. While the Seventh Circuit concluded, as noted above, that the challenged use was fair, it suggested that if the plaintiff photographer had made different arguments he might have defeated the "fair use" defense. Thus, the Court noted that the defendants did not need to use the Plaintiff's photograph at all to "mock the Mayor" and that "[t]here'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 non-copyrighted alternatives . . . were available."

While the Kienitz decision may not have clarified the scope of the "fair use" defense, it did make the "fair use" playing field more interesting. The Kienitz and Cariou decisions suggest that fair use defenses may be received more favorably in the Second Circuit than in the Seventh. This could create incentives to forum shop with respect to works distributed nationwide (like books, movies and music), with the party making an unlicensed use filing in the Second Circuit for a declaration that its use was transformative and "fair" before it is sued in the Seventh Circuit (where its transformative nature is of decidedly lesser importance).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions