Kienitz v. Sconnie Nation: Copyright

The Seventh Circuit found a satirical t-shirt fair use but rejected transformativeness as the test, a critique the Supreme Court echoed in Warhol.

When the Seventh Circuit decided Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014), it reached an unremarkable result by a remarkable route. A photographer lost his infringement claim over a heavily posterized image of a mayor on a satirical t-shirt. What nobody expected was Judge Frank Easterbrook using a 54-shirt dispute to declare that the most influential idea in modern fair use law, the “transformative use” inquiry, was not worth following. Writing for a unanimous panel, he warned that asking only whether a use is transformative replaces the statute Congress wrote and threatens to swallow the copyright owner’s exclusive right to prepare derivative works.

For nearly a decade the decision stood as the sharpest circuit-level dissent from the transformativeness orthodoxy that Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), had pushed to its high-water mark. Then the Supreme Court decided Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023), and Easterbrook’s once-lonely critique read like a preview.

At a glance

Case: Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014), cert. denied, 135 S. Ct. 1555 (2015)
Decided: September 15, 2014, before Judges Bauer, Easterbrook, and Williams; opinion by Judge Easterbrook; summary judgment of fair use affirmed; rehearing en banc denied October 14, 2014
Holding: Selling t-shirts bearing a posterized, low-resolution derivative of a copyrighted photograph of Madison’s mayor was fair use under the four statutory factors, without any reliance on “transformative use,” which the court criticized as unmoored from 17 U.S.C. § 107 and in tension with § 106(2).
Significance: Final. The decision remains the leading judicial critique of transformativeness, and the Supreme Court’s Warhol opinion later voiced a similar concern for the derivative-work right, though it did not cite Kienitz by name.

A photograph, a block party, and 54 shirts

The facts are small-bore, almost comic. Paul Soglin attended the first Mifflin Street Block Party in Madison, Wisconsin in 1969, as a student radical at the University of Wisconsin. Four decades later, as Madison’s mayor, Soglin wanted the annual party shut down. For the 2012 event, apparel maker Sconnie Nation LLC and its printer, Underground Printing-Wisconsin LLC, decided to needle the mayor for the reversal. They downloaded a photograph of Soglin from the city’s website, one that photographer Michael Kienitz had taken at Soglin’s 2011 inauguration and allowed the city to post, posterized it, stripped out the background, turned the mayor’s face lime green, and printed it on shirts and tank tops over the slogan “Sorry for Partying.” They sold 54 units and cleared a small profit.

Kienitz registered his copyright and sued for infringement. The United States District Court for the Western District of Wisconsin granted summary judgment to the defendants, holding the use fair, and it did so in the era’s standard idiom: relying on Cariou v. Prince, the district court reasoned that the shirt design was transformative because the altered image differed so dramatically from the original photograph. Kienitz appealed, and the Seventh Circuit affirmed the judgment while pointedly refusing to affirm the reasoning.

The statutory frame the panel insisted on

Section 107 of the Copyright Act codifies fair use through a preamble of illustrative purposes (criticism, comment, news reporting, teaching, scholarship, research) and four non-exclusive factors: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use upon the potential market for or value of the work. The word “transformative” appears nowhere in the statute. It entered the case law through Judge Pierre Leval’s 1990 Harvard Law Review article and the Supreme Court’s adoption of it in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), as part of the first factor.

By 2014 the Second and Ninth Circuits had elevated that inquiry into something close to the whole analysis. Cariou held that Richard Prince’s collages of Patrick Cariou’s photographs were largely fair use because reasonable observers would perceive them as aesthetically transformative, even without any comment on the originals. Once a court labeled a use transformative, the other factors tended to fall in line. It was this cascade that the Kienitz panel refused to join.

Judge Easterbrook’s quarrel with transformativeness

The panel was, in its own words, skeptical of Cariou’s approach. Easterbrook wrote that “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.” The logic is simple and uncomfortable: a derivative work is by definition one that recasts, transforms, or adapts an existing work. 17 U.S.C. § 101 says so expressly. If transformation is what makes a use fair, then the statutory right to control transformations collapses into its own exception. Every unauthorized sequel, translation, and adaptation differs in character from its source; on a purely transformative test, each has a running start toward fair use.

Rather than litigate the soundness of Cariou, the court announced it would “stick with the statutory list” and asked a question drawn from the economics of the fourth factor: whether the contested use is a complement to the protected work, which is allowed, or a substitute for it, which is not. That substitution framing has deep roots in the Seventh Circuit’s fair use cases, including Ty, Inc. v. Publications International Ltd., 292 F.3d 512 (7th Cir. 2002), where Judge Posner used the same complement-substitute distinction for Beanie Baby collector guides. Kienitz made it the centerpiece.

How the four factors actually came out

Applied to the shirts, the statutory factors pointed one way. On the fourth factor, which the court called usually the most important, Kienitz could show no market injury: a t-shirt or tank top is no substitute for the original photograph, and Kienitz, who had permitted the image’s free use and public posting, did not argue that the defendants had reduced demand for the photo or for any use of it he was contemplating. The court noted one theory that might have worked, that a photographer of public figures needs a reputation for licensing only flattering uses, but Kienitz had not made it, so it was waived.

The third factor was, if anything, stronger for the defendants. The posterization removed the background, the shading, and virtually every detail that reflected Kienitz’s photographic choices. “Defendants removed so much of the original that, as with the Cheshire Cat, only the smile remains,” Easterbrook wrote. What survived was “a hint of Soglin’s smile” and the outline of his face, and the court observed that the outline of a face cannot be copyrighted, since Kienitz has no rights over the mayor’s appearance itself. The remaining factors did little work: the nature of the copyrighted work was “unilluminating,” and while the use was commercial, it also carried political commentary aimed at the mayor’s about-face on the block party.

The panel did flag, on its own, a concern that cut against the defendants. They did not need Kienitz’s photograph at all; they wanted to mock the mayor, not to comment on Kienitz’s skill as a photographer, and they could have started with a snapshot of their own. The fair use privilege, Easterbrook wrote, “is not designed to protect lazy appropriators.” But the court weighed that point and found it insufficient: it was “not enough to offset the fact that, by the time defendants were done, almost none of the copyrighted work remained.” The judgment was affirmed, rehearing en banc was denied on October 14, 2014, and the Supreme Court denied certiorari in 2015.

From circuit outlier to Supreme Court echo

For years Kienitz was cited mostly as the counterpoint in a lopsided debate, and commentators disputed whether it even created a true circuit split with Cariou, since the Seventh Circuit found fair use on the facts. The Supreme Court’s Warhol decision changed the decision’s valence. The Warhol majority held that the first factor turns on whether the use shares the same purpose as the original and substitutes for it, and it warned that an overbroad concept of transformativeness would narrow the § 106(2) derivative-work right, precisely Easterbrook’s point. The Supreme Court’s opinion never mentions Kienitz, but the Second Circuit’s decision under review had engaged it directly. Distinguishing Kienitz on the third factor, that panel said Warhol’s silkscreen of Lynn Goldsmith’s Prince photograph “leaves quite a bit more detail, down to the glint in Prince’s eyes,” than the Cheshire Cat smile Sconnie Nation left behind, and added that the Seventh Circuit’s decision would not compel a different result in any event. Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 48 (2d Cir. 2021). As of July 2026, Kienitz reads less like an outlier and more like the first draft of the current law: transformativeness survives, but as a matter of degree within factor one, checked by substitution analysis and the derivative-work right.

Open questions

Kienitz resolved a small case and left large questions open. The panel never explained how its complement-versus-substitute test handles uses that harm no existing market but occupy one the author might plausibly enter, the licensing-market circularity that has dogged the fourth factor since American Geophysical Union v. Texaco Inc., 60 F.3d 913 (2d Cir. 1994). It flagged, without deciding, whether a photographer’s interest in licensing only flattering uses is a cognizable market. It said that lazy appropriation, copying a protected work when free alternatives abound, counts against a defendant, but left unresolved how much weight that consideration carries and when it can be decisive rather than, as here, outweighed. And because the court affirmed on alternative reasoning rather than reversing, it never forced the clean circuit conflict that might have brought transformativeness to the Supreme Court a decade before Warhol did.

Implications for creators and businesses

Photographers should plead the market they actually protect. Kienitz lost the fourth factor in part by waiver. A photographer whose business depends on controlling unflattering uses, or on licensing merchandise, should put evidence of those specific markets in the record rather than resting on the fact of copying.
Heavy abstraction is a real defense for visual borrowers. The safest appropriations in Kienitz’s framework are those that, like the lime-green Soglin, leave almost none of the original’s protectable expression. If the source photograph is still recognizable as a photograph, factor three and Warhol’s factor-one substitution test both get harder.
Do not rely on “transformative” as a talisman. After Kienitz and Warhol, labeling a use transformative settles nothing. Brief all four factors, lead with substitution and market effect, and expect courts to ask whether the new use competes with the original or its derivative markets.
Consider non-copyrighted alternatives before appropriating. A defendant who could have taken its own photo, and chose not to, invites the skeptical lazy-appropriation analysis the Kienitz panel sketched, even when the final product is heavily altered.

Frequently asked questions

Did Kienitz v. Sconnie Nation reject transformative use entirely? No. The Seventh Circuit expressed skepticism about the doctrine and declined to apply it, warning that an exclusive focus on transformativeness could override the derivative-work right in 17 U.S.C. § 106(2). But the panel still found fair use by working through the four statutory factors of § 107, resting mainly on the third and fourth factors.

Why did the court find fair use if it doubted transformativeness? Because almost nothing protectable was taken and nothing was displaced in the market. The posterized image kept only a hint of the mayor’s smile and the outline of his face, which the court said cannot be copyrighted, and a novelty t-shirt is not a substitute for the original inauguration photograph, so Kienitz showed no market harm.

How does Kienitz relate to Andy Warhol Foundation v. Goldsmith? The Supreme Court’s 2023 Warhol decision echoed Kienitz’s central concern, holding that an overbroad notion of transformative use would narrow the copyright owner’s exclusive right to prepare derivative works. The Supreme Court’s opinion does not cite Kienitz, but the Second Circuit’s decision below did, distinguishing it on the ground that Warhol’s Prince silkscreen retained far more of Goldsmith’s photograph than the Cheshire Cat smile left on Sconnie Nation’s shirts.