22 August 2013Copyright

Fair use saves t-shirt makers over mayor’s image

Two US retailers who sold t-shirts displaying an image of a mayor in Wisconsin have survived claims of copyright infringement.

The case was brought by photographer Michael Kienitz, who took a picture of Paul Soglin, mayor of Madison, Wisconsin, at his inauguration ceremony in April 2011.

With Kienitz’s approval, the mayor’s office used a photo of Soglin for non-commercial and political purposes on its website.

In 2012, local apparel retailer Sconnie and licensee Underground Printing, also based in Wisconsin, decided to sell t-shirts that poked fun at Soglin’s stance on a local event, known as the Mifflin street block party.

Soglin had been arrested at the first event – when it was a student protest – in 1969, but later openly objected to the event, by now an annual party, while serving as mayor in 2011.

To parody Soglin’s opposition to the event, Sconnie and Underground sold t-shirts featuring a picture of Soglin. They used the image from the mayor’s official website but altered it so that Soglin’s face was lime green against black, outlined in bright blue and wreathed on three sides with the slogan “Sorry For Partying”.

Between April 2 and May 6, the day the protest ended, the companies sold 54 shirts totalling about $1,350.

After the major’s office notified Kienitz about the use of his image, he registered the original photograph with the US Copyright Office in May 2012.

In a case at the US District Court of the Western District of Wisconsin, the judge was left to decide whether the use of the image was fair.

On August 14, Judge Stephen Crocker found largely in favour of the defendants, firstly because the image was something “entirely new with a different aesthetic, message and meaning”, even though the shirts had been used commercially.

The judge also said the amount and substantiality of the photograph used was “reasonable in relation to the purpose of the copying”.

Concluding by assessing the effect of the image’s use on Kienitz’s market, the judge said:

“Even Kienitz recognises that the market for his photograph and the market for defendants’ SFP shirts are skew, as in nonintersecting and not even parallel. Kienitz avers that he would never license his photograph of Mayor Soglin for the purpose of criticising, mocking, parodying or satirising Mayor Soglin.”

The ruling provides “significant guidance” on how copyrighted images associated with political figures or events can be used, said Jeff Simmons, partner at Foley & Lardner LLP who represented Sconnie and Undergound.

“It gives people who want to use images for political purposes some comfort that it is likely to be fair use.”

But, noting that the companies in this case did not generate much money from the t-shirt sales, Simmons said:

“The big caveat is that if someone making a t-shirt criticising a political figure is making a lot of money, that is likely be a tougher case, as they’re more clearly eating into the market of the person who owns the image.”

Until now, there has been surprisingly little guidance on how the fair use doctrine is applied to political cases, said Simmons. In one high profile case, involving the use of President Obama’s (then senator) photo and which was seen as potentially important for clarifying the fair use doctrine, the case settled.

Kienitz has until September 15 to appeal. His lawyers did not respond to a request for comment.

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