Tag Archives: derivative work

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”   See the entire article here

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”    Apparently Soglin attended the very first annual block party as a student at the University of Wisconsin in 1969, but tried to stop the event when he took office.  The t-shirts were not a commercial success, only 54 t-shirts were sold. The photo and the t-shirt art are compared below.

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Kienitz, offended by the t-shirt design, brought a copyright infringement claim against Sconnie Nation and its distributor based on the derivative use of his image on the t-shirt. The court dismissed the action on a summary judgment motion, finding the use to be a fair use and not infringing. On appeal, the photographer did not fare any better as the 7th Circuit also found the use to be a fair use.

While the 7th Circuit analyzed fair use under the requisite four factor test proscribed in Section 107 of the Copyright Act, it took this opportunity to criticize the reasoning of the district court for relying on the Second Circuit’s approach in Cariou v. Prince, which focuses primarily on whether the’ use of the visual image is “transformative” in determining fair use. A work is considered transformative if it alters the original with new expression, meaning or message.  While the appellate court agreed that the modification of the photograph as depicted in the T-shirt was a fair use, it advocated for sticking to the factors identified in the statute rather than relying on a term that does not appear anywhere in the Copyright Act . The four the factors are (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

This court focused more heavily on the fourth factor, and found that there was little to no effect of the use of the photograph on the market – the t-shirts were not a substitute for the original photograph, and Kienitz did not raise the possibility of licensing the photograph for apparel or any other use.  The third factor – the amount and substantiality of the use – was the only other fair use factor that had any “bite” in this case.  The court found that the only elements of the original photograph that remained after the modification was Soglin’s smile and the outline of his face, which cannot be copyrighted.  Turning to the two remaining statutory factors, the court acknowledged defendants’ small profits from the sales but stated that the design was political commentary.  Finally, in looking at the nature of the copyrighted work, the court stressed the absence of any argument that Sconnie Nation’s use reduced the value or demand of the original photograph.

The Court of Appeals noted that Sconnie Nation’s use of Kienitz’s photograph was not necessary in order to make the t-shirt and that Kienitz’s photography business may suffer in the long run – people may not want to hire Kienitz for fear the photos may be used against them, but these issues were not nearly enough to overcome the other fair use factors.

This case is most notable for its criticism of Cariou v. Prince.  In Cariou v. Prince, the Second Circuit expanded the meaning and importance of transformative use, holding that there is no requirement that a new work comment on or critically refer back to the original work or its author.  The court was explicitly “skeptical” of this approach, concerned that it may replace the list of factors and override protection of derivative works.

 

Supreme Court Allows Copyright Claim to Proceed Despite Delay

by  Mary Rasenberger and Danielle Efros (Cowan, DeBaets, Abrahams & Sheppard LLP)

On May 19th, the Supreme Court issued its decision in Petrella v. Metro-Goldwyn-Mayer, Inc. et al., 2014 WL 2011574 (U.S. May 19, 2014), ruling that laches, an equitable doctrine barring suits after unreasonable delay, cannot be used to preclude copyright infringement claims brought within the Copyright Act’s three year statute of limitations.

 Background

The motion picture, Raging Bull, is based on the life of boxing champion Jake LaMotta, portraying the story of LaMotta’s boxing career.  The bases of this movie was derived from a screenplay written by LaMotta and long time friend Frank Petrella, registered with the U.S. Copyright Office in 1963.  LaMotta and Petrella also later registered a book and an additional screenplay, ultimately assigning the rights to all three works to Metro-Goldwyn-Mayer, Inc. (“MGM”).  Shortly thereafter MGM released the movie Raging Bull in 1980, and registered a copyright in the film.

The tension arose when Petrella’s daughter, Paula Petrella, learned about her ability under the 1909 Copyright Act to renew the screenplay’s copyright after her father’s death.  Paula Petrella successfully renewed the screenplay’s rights in her own name and began to contact MGM regarding MGM’s potential copyright infringement.

It wasn’t until nine years after her renewal, on January 6, 2009, that Paula Petrella filed a copyright infringement suit in the Central District of California, accusing MGM of violating and continuing to violate her copyright in the 1963 screenplay by using, producing and distributing Raging Bull, identifying the film as a derivative work of the 1963 screenplay.  Because the Copyright Act has a three year statute of limitations, Petrella could seek relief only for acts of infringement occurring on or after January 6, 2006.  Under the Copyright Act, each new violation is deemed to constitute a “new wrong,” which triggers a new limitations period.  MGM believed that Paula Petrella’s delay in suing for so many years was unreasonable, however, and sought to have the case completely dismissed on grounds of laches.

The district court granted MGM’s motion for summary judgment, holding that all of Paula Petrella’s claims should be barred under the equitable doctrine of laches, in favor of MGM’s argument claiming Petrella’s 18-year delay in commencing suit to be unreasonable and prejudicial.  On appeal, the Ninth Circuit affirmed the laches-based dismissal, emphasizing that Paula Petrella was aware of her potential claims earlier and wrongly deferred suit until the film made money.

 Supreme Court’s Opinion

The Supreme Court, in an opinion written by Justice Ginsburg, overturned the Ninth Circuit, holding that laches cannot be invoked as a complete bar to Paula Petrella’s claim for damages brought within the applicable three year statute of limitations window.

At the outset, the Court held that the limitations period can be properly utilized as a period for copyright owners to defer suit until they can make a proper estimation regarding whether their claims are worth litigating.  The Court emphasized that an incumbent copyright owner should not be expected to challenge each and every actionable infringement.

MGM argued that one important application of laches, applicable to this case, is to prevent the loss of useful evidence, which would be implicated by the prolonged lapse in time.  Unconvinced by MGM’s argument, the Court held that such evidence should instead be taken into account during the copyright infringement analysis, whereby a copyright plaintiff bears the burden of proving infringement.  Moreover, there is a reduced need for extrinsic evidence because the Copyright Office’s registration mechanism makes both the certificate and original work available.  The Court found further support from Congress’ decision not to employ additional time limitations despite Congress’ awareness of potential evidentiary issues when implementing reversionary rights for author’s heirs.

Never having applied laches as a complete bar to an entire claim, the Court weighed the ramifications of permitting such a claim, and held that it would impermissibly invite courts to set time limits other than those Congress prescribed.

An alternative protection for defendants to explore in this situation, as suggested by the Court, is the doctrine of estoppel.  Estoppel may serve as a protection against copyright owners who engage in intentionally misleading representations regarding their delay in suit whereby the alleged infringer detrimentally relies on the copyright owner’s deception.  While estoppel does not undermine laches, if properly invoked, it may bar the copyright owner’s claims completely, eliminating all potential remedies.

Not completely ridding the application of laches as applied here, the Court ruled that when there are “extraordinary circumstances,” laches may, at the very beginning of litigation, curtail the relief equitably awarded.  An example cited was Chirco v. Crosswinds Communities, Inc., a case where an allegedly infringing housing project delayed suit until the project was substantially constructed and partially occupied.

The dissent, disagreeing with the majority, argued that the majority unfairly “erases the doctrine from copyright’s lexicon,” ultimately disabling a court from apply laches in copyright infringement cases, “irrespective of the length of the plaintiff’s delay, the amount of harm that it caused, or the inequity of permitting the action to go forward.”

Takeaway

The holding of Petrella v. Metro-Goldwyn-Mayer, Inc., et al., resolves a circuit split and makes clear that laches is prohibited as an applicable defense to completely bar claims for infringement that occurred within the three year statute of limitations and that litigants may wait to determine whether the recoverable damages support the cost of a lawsuit.  The Court’s analysis detailed both the ramifications of implementing the defense as a complete bar to future cases, as well as the implications of disallowing MGM to utilize the defense in this particular situation, which in the Court’s opinion, was not exceptionally damaging and would not result in “total destruction” of the film and only affecting a “fraction” of MGM’s income.