Rearranging Fair Use: A Critical Analysis of Kienitz v. Sconnie Nation by Eric Wolff

Note | Intellectual Property Law
Rearranging Fair Use: A Critical Analysis of Kienitz v. Sconnie Nation
by Eric Wolff*

From Vol. 94, No. 1
94 S. Cal. L. Rev. 83 (2020)

Keywords: Intellectual Property Law, Fair Use, Kienitz v. Sconnie Nation

The Seventh Circuit’s 2014 opinion in Kienitz v. Sconnie Nation has played an outsized role in the discourse on fair use, an affirmative defense to copyright infringement.The opinion is quite short, spanning just over three pages, and it emerged from a circuit that produces relatively few fair use opinions.Yet Kienitz is often cited for its rejection of “transformative use,” a relatively new but influential concept that has reshaped fair use doctrine.3  The court in Kienitz warned that transformative use threatens to replace the four-factor test for fair use found in § 107 of the Copyright Actand could erode authors’ exclusive rights to produce derivative works” based on their original works.In place of transformative use, Kienitz proposed that courts should simply stick with the statutory list” of four factors when analyzing fair use.The opinion applied this approach by focusing its analysis on factors three and four: the amount of the copyrighted work used and the effect of that use on the market for the copyrighted work.7

Is Kienitz’s approach a viable model for analyzing a fair use defense without relying on transformative use? The answer is no. This Note concludes that Kienitz’s reasoning is fundamentally flawed and suffers from many of the same infirmities it identified in transformative use.8

There are three problems with Kienitz’s reasoning. First, its approach to factor four defines the scope of derivative works in a way that would severely limit authors’ rights.Second, it employs a test, known as the  substitute/complement test,” which tends to underestimate market harm.10 Finally, its analysis of factor three implies there was no copyright infringement, which if true, would have made the fair use defense unnecessary.11 If Kienitzs amputation of transformative use was an attempt to remedy its harmful symptoms, its cure was worse than the disease.12

Although its analysis was flawed, Kienitz’s diagnosis of the problems with transformative use was accurate.13 Transformative use has been applied in a way that has come to dominate the statutory fair use factors and blurs the line between protected derivative works and fair use.14 This Note proposes two ways to restructure fair use analysis to limit the negative effects of transformative use: (1) rearrange the order in which the factors are analyzed and (2) make a finding of transformative purpose a threshold requirement of transformative use.

Part I explains how the scope of fair use has contracted and expanded throughout United States history and how transformative use has driven the current period of expansion. Part II examines the analysis in Kienitz and concludes, for the reasons described above, that it does not provide a viable alternative to transformative use. Part III demonstrates an alternative fair use analysis of the facts in Kienitz to show how the opinion could have benefited from incorporating transformative use into its analysis and by applying this Notes two proposals for restructuring fair use. In the process, Part III also reveals, and argues against, common issues in other courts’ analyses of each fair use factor, including the widespread underappreciation of factor two15 and Campbell v. Acuff-Rose Music, Inc.s unprecedented instruction to emphasize findings from factor one in the analysis of factor three.16

* Executive Senior Editor, Southern California Law Review, Volume 94; Juris Doctor Candidate 2021, University of Southern California Gould School of Law. This Note has benefited greatly from the attentive guidance and insightful comments of Professors Jonathan Barnett and Sam Erman. It would not exist without the unwavering support of my spouse Georgina and my parents Lori and Greg. I am also grateful to my colleagues at the Southern California Law Review who edify and inspire me with their excellent work.

Anti-Anti-SLAPP: How the Judiciary’s Narrowing of California’s Anti-SLAPP Law Could Thwart Legislative Intent by Andy Black

PostscriptCalifornia Law
Anti-Anti-SLAPP: How the Judiciary’s Narrowing of California’s Anti-SLAPP Law Could Thwart Legislative Intent
by Andy Black*

Vol. 93, Postscript (June 2019)
94 S. Cal. L. Rev. Postscript 144 (2021)

Keywords: California Law, Freedom of Speech, Politics


Since 2015, state Anti-Strategic Lawsuits Against Public Participation (“anti-SLAPP”) laws that were enacted to prevent litigious plaintiffs from silencing a defendant’s First Amendment rights have come under attack from state and federal courts.[1] California Civil Procedure § 425.16 (“§425.16”), California’s anti-SLAPP law, is particularly susceptible to this judicial narrowing, as it is widely considered the broadest anti-SLAPP statute in the country.[2] Indeed, the California Supreme Court in the 2019 case Inc. v. Double Verify Inc. narrowed § 425.16’s applicability by articulating a stricter context-based standard for protected conduct under the statute’s catchall subdivision, § 425.16(e)(4).[3

This Article argues that this stricter standard is unwarranted in light of § 425.16’s legislative intent, previous California Supreme Court § 425.16 rulings, and the reasonable protections built in to § 425.16 for plaintiffs. Moreover, the court’s underlying frustration with § 425.16 overuse will likely be exacerbated, not ameliorated, by this stricter standard. Additionally, the vulnerable defendants § 425.16 was intended to help, in particular online watchdogs, will likely suffer the most under this stricter standard. This Note concludes that the California Legislature should act to clarify § 425.16(e)(4) or risk continued judicial efforts to narrow its applicability and potentially thwart its legislative purpose.

         [1].     See, e.g., Planned Parenthood Fed’n of Am. v Ctr. for Med. Progress, 890 F.3d 828 (9th Cir. 2018) (restricting § 425.16’s use in the Ninth Circuit); Klocke v. Watson, 936 F.3d 240 (5th Cir. 2019) (restricting use of Texas’s anti-SLAPP law in the Fifth Circuit); Leiendecker v. Asian Women United of Minn., 895 N.W.2d 623 (Minn. 2017) (striking down Minnesota’s anti-SLAPP law as unconstitutional); Davis v. Cox, 351 P.3d 862 (Wash. 2015) (striking down Washington’s anti-SLAPP law as unconstitutional).

         [2].     See Jerome I. Braun, California’s Anti-SLAPP Remedy After Eleven Years, 34 McGeorge L. Rev. 731, 732 (2003) (claiming § 425.16 was the most ambitious and far-reaching anti-SLAPP statue at the time it was enacted); Frank J. Broccolo & Laura L. Richardson, Calif. Case Law Is an Excellent Anti-SLAPP Resource, Law360 (Feb. 28, 2014, 1:42 PM ET) (“[§ 425.16] remains one of the broadest [anti-SLAPP provisions] in the nation”).

         [3].     See Inc. v. DoubleVerify Inc., 439 P.3d 1156, 116568 (Cal. 2019).


Patent Subject Matter Eligibility in the Post-Alice Wonderland: USPTO Guidance and a Push for More Clarity by Trevor J.C. Foster

Postscript | Intellectual Property Law
Patent Subject Matter Eligibility in the Post-Alice Wonderland: USPTO Guidance and a Push for More Clarity 
by Trevor J.C. Foster*

Vol. 94, Postscript (May 2021)
94 S. Cal. L. Rev. Postscript 128 (2021)

Keywords: Intellectual Property Law, USPTO, Patent 



View Full PDF


The United States patent system has long been considered the gold standard of global patent systems, in part because of the consistency and strength of the protections that it has granted to inventors.1 The rapid growth of the United States economy during the nation’s early years is often attributed in part to the patent system adopted by the country,2 and the strength of the United States patent system allows the United States to remain among the world’s most innovative countries despite falling behind other countries in areas relevant to innovation such as higher education and researcher concentration.3 A hallmark of a strong patent system is predictability.4 “In a strong patent system, patent rights are granted to particular inventions in a predictable manner, and patent infringement similarly is enforced in a predictable manner.”5 This predictability reinforces the strength of the patent system by allowing inventors to protect their inventions and efficiently allocate resources for future innovation.6

Until relatively recently, the rules regarding patent eligible subject matter were clear and predictable—courts and the United States Patent and Trademark Office, or USPTO, should interpret subject matter eligibility requirements broadly.7 This expansive subject matter eligibility interpretation was widely criticized as resulting in patents that were both too broad and too vague, 8 which resulted in the judiciary revisiting the issue of patent subject matter eligibility in a series of cases culminating in Alice Corp. Proprietary Ltd. v. CLS Bank International.9 In Alice, the Supreme Court reified a two-step analytical framework for patent subject matter eligibility.10 This framework, which was established in part to clarify patent-eligible subject matter, has been heavily criticized as being “chaotic,” a “real mess,” and even putting patent subject matter eligibility into a “state of crisis.”11 The application of this framework has proven to be “unpredictable and impossible to administer in a coherent consistent way.”12

In the years since Alice, there has been much legal scholarship and research regarding how to resolve the ambiguity surrounding patent subject matter eligibility, but nothing has successfully resolved the issue in practice. In January 2019, the USPTO promulgated guidance on the issue of patent subject matter eligibility.13

This Note will begin by providing a brief discussion of patent subject matter eligibility. Next, the Note will discuss the January 2019 Guidance promulgated by the USPTO and how the Guidance aims to alter the two-step analytical framework from Alice, before assessing whether this Guidance has appeared to have any substantial effect on the federal judiciary in the first year since the Guidance was promulgated.


* Senior Submissions Editor, Southern California Law Review, Volume 94, J.D. 2021,
University of Southern California Gould School of Law; B.S. Biochemistry and Molecular Biology and Philosophy 2018, Marquette University. Thank you to Professor Edward McCaffery for his guidance during the drafting of this Note, to my friends and family for their support, and to the editors of the Southern California Law Review for all their work.

Applying the Exclusionary Rule to Carpenter Searches – Note by Kevin Ganley

Note | Constitutional Law
Applying the Exclusionary Rule to Carpenter Searches
by Kevin Ganley*

From Vol. 93, No. 3 (March 2020)
93 S. Cal. L. Rev. 571 (2020)

Keywords: Carpenter v. United States, the Fourth Amendment

This Note is useful in two respects. First and foremost, it provides a plausible approach for applying the exclusionary rule to mosaic searches, removing a thorny obstacle in the mosaic theory’s path. The after-act approach is also court friendly because it facilitates judicial review by incentivizing the government to show its work through sequencing its actions. Second and more subtly, this Note may encourage courts to avoid the mosaic theory altogether. The Supreme Court’s Fourth Amendment jurisprudence was already a “mess” before the digital age. This Note describes several complicated doctrinal puzzles that arise at the intersection of the exclusionary rule and the mosaic theory. Adopting the bright-line source rule would avoid having to address these difficulties.

Part I of this Note paints the backdrop underlying the Carpenter decision. It tracks the development of the Fourth Amendment search doctrine to the digital age and then demonstrates that over time the Court has adapted this doctrine in response to improvements in government surveillance technology. Then, Part I explains how the Court’s current analog-search rules, namely the third-party doctrine, have become outdated in the digital age.

Next, Part II of this Note explains how Carpenter marked a shift in the Court’s understanding of its Fourth Amendment search doctrine in the digital age but left open how to determine when exactly a Carpenter search occurs on new sets of facts. It will then more thoroughly introduce the mosaic theory and the source rule, which are two possible methods for determining when a Carpenter search occurs. In comparing the relative merits of each method, Part II will explain that, although the mosaic theory is theoretically sound, its application to the Court’s existing search doctrine presents many messy legal issues, including how to apply the exclusionary rule.

Part III addresses how to apply the exclusionary rule when a mosaic search occurs. In doing so, it briefly will introduce the exclusionary rule. It will then discuss the respective failings of the all-or-nothing and after-search approaches. Finally, Part III will outline the after-act approach and explain its various virtues, using the all-or-nothing and after-search approaches as foils.

*. Editor-in-Chief, Southern California Law Review, Volume 93; J.D. Candidate 2020, University of Southern California, Gould School of Law; B.B.A. Finance 2017, University of San Diego; B.A. Political Science 2017, University of San Diego. I would like to thank my Mom, my Dad, Matt, and Madeline for their love and support throughout my time in law school. I would also like to thank Professor Sam Erman for his guidance as I worked through the many versions of this Note as well Professor Orin Kerr for his feedback on my manuscript. Finally, I would like to thank the talented members of the Southern California Law Review for their excellent editing work.

View Full PDF

Volume 91, Number 6 (September 2018)

Volume 91, Number 6 (September 2018)