Category: Intellectual Property

Sedlik v. Kat von D After Warhol

On August 7, photographer Jeff Sedlik and tattoo artist Katherine Von Drachenberg (Kat Von D) filed motions for reconsideration of summary judgment, with both sides arguing that their allegations are favored by the Supreme Court’s decision in Goldsmith v. Warhol delivered on May 18, 2023, finding for plaintiff Lynn Goldsmith. The parties also filed oppositions on August 21. I’ll cut to the chase and assert that to the extent Warhol is instructive here, it is impossible to see how it helps Kat Von D’s fair use defense as a matter of law.

I have written about this case before, but to repeat the background, Kat Von D (owner and operator of High Voltage Tattoo) is a celebrity tattoo artist with millions of fans and followers. In April of 2018, she tattooed a copy of Jeff Sedlik’s portrait of Miles Davis onto the arm of Blake Farmer, a lighting tech, with whom she had worked on a film project. Kat Von D did not charge Farmer for the tattoo, but she did publicize its making through her social media accounts, and these promotional posts included the Davis photograph, as shown here:

Sedlik reached out to Kat Von D to discuss her unlicensed use of the Davis photograph, but receiving no reply, he filed suit against her and High Voltage for copyright infringement (both for the tattoo and the display of his photo in the promotional materials). Kat Von D contends that tattoo artists are not required to license the images they use. Notwithstanding the validity of that claim, however, she argues that the Davis tattoo was a fair use and, further, that the outcome in Warhol is “new law” that now supports her defense. Conversely, Sedlik argues that Warhol rejects Kat Von D’s fair use claim, stating that her argument is “very similar” to that of Andy Warhol Foundation.

Tattoos Are Not Unique Re. Licensing

First, let’s dispense with the proposal that tattoos are generally exempt from a requirement to license protected images. Although tattoos are a distinctive form of image rendering in that they are permanently fixed on a person’s body, there is no exception in copyright law to which Kat Von D et al. can point to justify avoiding a requirement to license protected visual works. Although Sedlik presents evidence that licensing images for tattoos is common practice, and that he has personally licensed his photos for many uses, including tattoos, the requirement to obtain a license is not predicated on these facts, but rather on a core principle of copyright law that it does not protect a use-it-or-lose-it bundle of rights.

Sedlik could have created the Davis portrait as a work of fine art, sold a few limited-edition prints, and declined to license the image for any other purpose, and the legal considerations in this case should be the same.[1] A copyright owner retains the exclusive right to permit or deny the use of a work for any reason, at any price, and at any time during the term of protection. In fact, perhaps the most prominent, relevant case in which a court held that a rightsholder needed to be in a market to show potential harm was Cariou v. Prince. But Cariou was not only decided in a different (i.e., non-controlling) circuit, it is arguably dead law after Warhol.

But this gets ahead of the narrative, jumping into factor four considerations, so let’s return to factor one (the purpose of the use) and the effect of Warhol on Kat Von D’s fair use defense. Because to put it bluntly, her post-Warhol motions make a hash of the relevant aspects of that decision—even implying that the commercial consideration weighs more heavily than the transformative consideration. This inverts the analysis, but in any order of consideration, her use is clearly commercial and even more clearly not transformative.

The Tattoo is Commercial

Citing Warhol, Kat Von D alleges that Sedlik and the district court erroneously conflated the commercial nature of the social media posts with the allegedly non-commercial making of the tattoo itself. “Under the new rule set forth in Warhol, each of those challenged uses must be analyzed separately and assessed on their own terms,” the KVD motion states. In seeking to separate the tattoo’s production from promoting herself, Kat Von D then argues that the tattoo was made for a non-commercial purpose because she did not charge Mr. Farmer for the work. This legerdemain is aided by the misdirection in asking the court to look at commerciality first and transformativeness second,[2] but even if the promotional uses are separately analyzed for alleged infringement, this does not mean they cannot serve as factual evidence of a commercial purpose in the initial making of the tattoo.

Advertising or promoting an enterprise or a brand (Kat Von D is a brand) with the use of a protected work is sufficient to find that the user gained some “advantage,” and this is generally held to be a commercial use as a matter of law. Both for-profit and not-for-profit entities give away goods and services all the time and usually obtain some PR value by making these donations. In this same light, Kat Von D cannot escape the commercial nature of the Davis tattoo simply because it was a “gift” to Mr. Farmer.[3]

The widespread and sophisticated promotion of the tattoo, reaching millions of followers, can only be viewed as adding value to the Kat Von D brand. So, even if the promotional images were found, under separate analysis, to be non-infringing, they nevertheless demonstrate that the production of the tattoo served a commercial purpose. But more importantly, even if Kat Von D’s use of the Davis photo were found to be non-commercial, the lack of transformativeness must still find that factor one favors Sedlik. And Warhol makes this abundantly clear.

The Tattoo is Not Transformative (Before or After Warhol)

Kat Von D misreads the meaning of “purpose” under factor one and overlooks the most significant aspect of the holding in the Warhol decision. Because the Supreme Court found that the Warhol screen and the Goldsmith photo served the same “illustrative purpose” (in context to the facts at issue), Kat Von D argues that this means Sedlik’s original job to photograph Davis to illustrate a jazz magazine is distinguishable from her non-illustrative, “transformative” intent to make a tattoo. This strains the Court’s discussion in Warhol and tries to revive the argument that using a work in a different medium or context is transformative. This was an error even before Warhol.

The purpose of Sedlik’s photograph is to be a portrait of Miles Davis. It does not matter whether the first use of that portrait was to illustrate a magazine article, to hang in a fine art gallery, to be printed in a book about Miles Davis, etc. If Kat Von D’s premise were the foundation for transformativeness, it would be tantamount to finding that nearly any adaptation of a work to a new medium or context (e.g., book to movie, movie to video game) is transformative favoring fair use.

Because this would swallow the author’s exclusive right to prepare derivative works, the Supreme Court’s reaffirmation of the boundary between transformative use and derivative works was arguably the most important aspect of the Warhol opinion. Specifically, the Court restated the principle (citing Campbell) that to find transformativeness, the purpose in using a protected work must include some “critical bearing” on the work used. “Critical bearing” means some element of comment upon the used work—a claim that Kat Von D cannot make, which may be why her briefs omit this critical result in the Warhol decision.[4]  From the Opinion:

The asserted commentary [by Warhol] is at Campbell’s lowest ebb. Because it “has no critical bearing on” Goldsmith’s photograph, the commentary’s “claim to fairness in borrowing from” her work “diminishes accordingly (if it does not vanish).”

Some Difference in Expression is Not Transformative

Kat Von D also overstates the significance of alleged expressive distinctions between her tattoo and Sedlik’s photograph, noting that at summary judgment, “The Court found that Defendants carried their burden of showing that the Tattoo ‘has a purpose or meaning distinct from the Portrait by virtue of the way Kat Von D changed its appearance to create what she characterizes as adding movement and a more melancholy aesthetic.’” [5] In my view, the district court erred in its finding here, but even if the question was determined to be a triable issue of fact before Warhol, the question should evaporate after Warhol because the essential element of “critical bearing” is clearly absent from the Kat Von D tattoo just as it is absent from the Warhol screen(s).

Further, any claim to expressive distinctions between the tattoo and the photograph that may find shaky purchase on factor one would be doomed to fall under analysis of factor three, which considers the amount of the original work used. Any court should hold that the tattoo copies the “heart” of Sedlik’s photograph and that many of the distinctions between the two works are largely the result of adaptation from one medium to another.[6] Adaptation from one medium to another is typically evidence that a derivative work has been made, and in this case, it is an unlicensed derivative that is not allowed by fair use.

Threat to the Potential Market

On the fourth factor analysis, regardless of whether Sedlik has previously licensed his photos for making tattoos, Kat Von D’s failure to obtain a license constitutes a threat to the “potential” market for the photograph. Here, Kat Von D argues that the tattoo cannot serve as a substitute for, say, photographic reproductions of the image, and this is true but irrelevant. The threat is to potential licensing opportunities for the image, and unless there is a foundation for finding that tattoo artists are exempt from copyright obligations, the tattoo market remains a licensing avenue for Sedlik and all other visual artists.

Further, because Kat Von D is a celebrity, other tattoo artists will follow her example and, likely, view the outcome of this case as instructive. Thus, under Ninth Circuit precedent in (among other cases) McGucken v. Pub Ocean, the district court should recognize the factor four holding that if tattoo artists “carried out in a widespread and unrestricted fashion” the same conduct with other visual works, this would “destroy” a “licensing market.”

Freehand Drawing, Bodily Integrity, and Other Distractions

Kat Von D directs the court’s attention (and that of a putative jury) to her testimony that she inked the image of Miles Davis freehand, but this is irrelevant. She admits to first tracing Sedlik’s photograph (and there is video evidence of same) and then doing the inking freehand, and she will presumably want to make a show of all this process to a jury. But none of it matters.

Facts related to the process of making a copy of a protected work are only relevant to the alleged infringer’s intent and may be evidence of access to the work used. The method of copying, no matter how impressive or mundane, has no bearing on the questions of infringement or fair use. Here, the tattoo is clearly a copy of the photograph, and to the extent Kat Von D’s process matters at all, it only serves as evidence that her copying was intentional.

There has also been some discussion among legal pundits and in the blogosphere about bodily integrity and the nature of tattoos, and this is another distraction from the salient issues. In addition to the fact that Sedlik has not filed suit against Farmer nor sought any form of injunctive relief whereby the tattoo might be ordered removed from his arm, this case is not an attack on the tattoo industry or on tattoo wearers. This case is about the need to obtain a license to copy protected works (in any medium), and if a celebrity like Kat Von D fails to honor that principle with a high-profile image, this sets a poor example for less well-known parties appropriating other works.

From my reading, this litigation contains a lot of unnecessary discussion about artistic process and subjective meaning (e.g., Farmer’s feelings about Miles Davis) that would likely be immaterial even in a more complex case. But this isn’t a complex case. A child can recognize that the tattoo is a very faithful copy of the heart of the photograph, and the Supreme Court in Warhol has affirmed that the tattoo is not a fair use. I fail to see how this case is more difficult than that.

Disclosure: The copyright advocacy world is quite small. I know Jeff Sedlik and have spoken to him about copyright matters in general and about the publicly available record in this case. In addition to his work as a photographer, he has served as an expert witness in over 450 copyright cases, including for Lynn Goldsmith. He is the founder of PLUS Coalition and is a board member of Copyright Alliance.

[1] e.g., The Beastie Boys sued GoldieBlox in 2013 for use of one of its songs because the band had never allowed commercial/advertising uses of its music.

[2] As Campbell makes clear, transformativeness is more determinative of fair use than commercial use, and the factor one analysis in Warhol rests substantially on Campbell.

[3] Also, although Sedlik does not allege barter, it is notable that Farmer worked for Kat Von D and then received what would be a rather expensive tattoo as a “gift.”

[4] To clarify, any claim to “comment” about Davis, about Farmer, about jazz, etc. is outside the standard for “critical bearing.” The comment must be about the work used, e.g., to critique the photograph.

[5] Notably, Warhol’s claim to “new expression” is stronger than Kat Von D’s.

[6] For instance, Sedlik’s solid black background is likely not achievable nor desirable on human skin.

Record Labels File Suit Against Internet Archive for Copyright Infringement

Pride goeth before destruction, and an haughty spirit before a fall. (Proverbs 16:18 KJV)

Citing 2,749 works in suit, six of the major music labels (UMG, et al.) have filed a multi-count complaint against Internet Archive (IA), Brewster Kahle personally, Kahle’s foundation, and an audio digitizing service operated by an individual named George Blood. Total potential damage award with legal fees:  around a half-billion dollars. Likelihood of defendants’ success, assuming all factual allegations are well-founded:  less than zero. So, while I have no idea how much cash on hand Kahle has to burn, this suit highlights a question I have often asked myself—namely how eager is he to put his money where his anti-copyright mouth is?

As the outcome in the book publishers’ lawsuit, Hachette et al., makes clear, cockamamie theories about how the law works may find an audience in the blogosphere, but they make poor arguments in court. In that case, Internet Archive relied on a cockamamie theory called Controlled Digital Lending (CDL) and hitched that wagon to a belief that the practice was shielded by the doctrine of fair use. The defendant lost on every point, and a negotiated judgment is already filed with the court notwithstanding IA’s right to appeal.

In this new case with the record labels, IA does not even have the gossamer of an unfounded theory to weave into its response. Instead, the initiative IA calls “The Great 78 Project” is alleged to entail knowing evasion of compliance with clearly defined statute. Without going into each of the counts against each of the defendants, the crux of the matter is that Great 78 makes digital copies of sound recordings from 78RPM vinyl records and hosts those files for unlimited streaming or downloading. So, if any of those sound recordings are still under copyright, this implicates violation of three of the exclusive rights under Section 106 of the Copyright Act—reproduction, distribution, and public performance by digital audio transmission (§106(1), (3), & (6) respectively).

The Great 78 Project purports to make available rare and difficult-to-find sound recordings, and presumably, some portion of the collection comprises works in the public domain (PD) and/or truly rare works that are not commercially available. But headlining the more than 2,000 works in suit, the complaint cites recordings that are neither in the PD nor rare by any means. Popular recordings by Elvis Presley, Duke Ellington, Billie Holiday, Ray Charles, Chuck Berry, Frank Sinatra, Ella Fitzgerald, Louis Armstrong, and Hank Williams are named as prime examples that can be accessed by legal, commercial means, including major streaming services.

The reason commercial availability of the sound recordings is relevant in this case is that under the provisions of the Music Modernization Act (MMA) of 2018, a library/archive is permitted to make pre-1972 sound recordings available if, among other conditions, it makes a good-faith effort to determine that the recordings are not commercially available. That is a pared down description, but it’s the basic principle, which IA apparently chose to ignore. According to the complaint, IA made no effort to fulfill its obligation to comply with any of the following Copyright Office guidelines:

…a reasonable search for purposes of 17 U.S.C § 1401)(c) must include, among other things: (i) searching the Copyright Office’s database of indexed schedules listing right owners’ pre-1972 sound recordings; (ii) searching Google, Yahoo!, or Bing; (iii) searching at least one of the following streaming services: Amazon Music Unlimited, Apple Music, Spotify, or TIDAL; (iv) searching YouTube; (v) searching SoundExchange’s repertoire database; (vi) searching at least one major seller of physical product, namely Amazon.com.

Moreover, the complaint cites compelling evidence that the defendants understood their obligations under §1401 and that failure to comply would constitute copyright infringement of works like the sound recordings in suit. For instance, IA stated in a blog post about the MMA shortly after it was signed into law, “But, as we understand it, the MMA means that libraries can make some of these older recordings freely available to the public as long as we do a reasonable search to determine that they are not commercially available.” The only logical conclusion, therefore, is that defendants ignored the “reasonable search” guidelines because it is obvious that many of the sound recordings at issue can be found commercially available by a young child using Google.

Will Kahle’s Copyright Hubris Kill His Archive?

A significant distinction between this suit and the Hachette case is that Brewster Kahle and the Kahle/Austin Foundation are named defendants. The complaint alleges that Kahle is directly involved in IA policy, activities, and promotion, including the Great 78 Project, that he funds the foundation through his trust, and the foundation, in turn, funds the project. “At Kahle’s direction, the Foundation used the funds Kahle had contributed to sponsor the Internet Archive’s massive and growing infringement. The Foundation donated money to Internet Archive that Internet Archive used to pay costs in furtherance of its infringement…” the complaint states.

The Internet Archive and its friends will, no doubt, repeat populist claims that they are serving the public, behaving as a library should, and that they are being targeted by a greedy industry. But the conduct alleged in the UMG complaint reveals an even more brazen decision to circumvent copyright law than the CDL scheme underlying the Hachette suit. In the book publishers’ case, IA advanced a theory (albeit a poor one) that it was acting within the confines of the law, but here, it simply elected to evade clearly articulated statutory confines and take its chances. And this time, the cost could indeed be the whole operation.

I get why many people want to support IA, not the least being that a large part of the organization is both legal and highly useful. Among those who simply agree with Kahle et al. that copyright should not exist, that pre-1972 sound recordings should not be protected, etc., fine. That’s an opinion to which people are entitled. But beyond that general view, IA supporters should not be confused into thinking this case is about big bad industry beating up on a library doing library-like things. Assuming the factual allegations are correct, there is barely a distinction between the alleged infringing conduct in the Great 78 Project and The Pirate Bay. And to the extent the legitimate archive has been treated like a front for mass infringement projects, the blame for that decision rests with Kahle and his colleagues, not with the music or book publishers.

Since the first post I wrote about Internet Archive, I have acknowledged that the repository of public domain and truly rare material is an invaluable research tool. In fact, that post in October of 2017 asked directly whether the anti-copyright rhetoric was necessary to the organization, but since then, it has become clear that Kahle has used IA’s operation and reputation to engage in much more than rhetoric. And in this potentially costly litigation with the record labels, it is conceivable that this hubristic crusade against copyright law could, as the proverb says, lead to the collapse of an otherwise good enterprise.

Photo by: panoramaimages

Before Generative AI, Big Tech Taught Artists to Abdicate Copyright Rights

One of the more challenging aspects of copyright advocacy is the fact that many artists and creators are conflicted about enforcing their own rights, and from observation, the disconnect is ideological. For the last 30 years, copyright skepticism has been woven into political narratives rooted in criticism of corporations and the excesses of capitalism—popular themes among the political left, which encompasses most artists. Now that generative AI developers are turning creative works into “pink slime,” and artists are suddenly more interested in their rights, it might help to recognize that the industry deploying AI is the same one that taught creators to advocate against copyright in the first place.

The year 2011 was an extraordinary time to jump into the fray. It was immediately apparent that allegations of “copyright maximalism” were deeply intertwined with a sincere and animated belief that the internet would foster a new and potent form of direct democracy to confront a litany of injustices. Copyright enforcement was characterized as a barrier to that promise, and so, the Stop SOPA campaign (to kill anti-piracy legislation) became part of a larger, frenetic collage that included OWS protests, European pirate parties, Anonymous, Wikileaks, etc., all feeding an atmosphere of revolution that corresponded with headlines and memes claiming that “Hollywood” wanted to use copyright to break the internet and stifle speech.

But Big Tech’s promise to democratize everything was a Trojan Horse from which the AI bots have now emerged to ransack the village. Not only did promoters of the “free flow of information” elide the fact that their platforms were as likely to produce the January 6th insurrection as the “Pussy Hat” March, but the allegation that copyright was a barrier to information flow had nothing to do with liberating our speech and everything to do with limiting their liability.

Every time members of the creative community echoed the anti-copyright messages pumped out by Fight for the Future, the EFF, Public Knowledge, or the platforms themselves, what was really being advocated was a lack of accountability for online service providers. I never fully understood how one of the most exploitative industries in history managed to turn anti-corporatist sentiment to its advantage, but I assumed it was the gestalt of the internet. The illusion that social platforms belong to the people was a charade that enabled Google, Facebook, et al. to camouflage their interests as our rights.

That theme has aged about as well as the tobacco industry’s efforts to sell freedom to get smokers to ignore cancer, but it’s been almost two years since Big Tech’s “Big Tobacco moment,” and little has changed. Neither in Congress nor the courts have online service providers been held accountable for much of anything—and that’s with laws on the books. When we consider that, for almost three decades, the major platforms have acted in bad faith with their end of the DMCA bargain, and the courts have interpreted Section 230 as an unlimited liability shield, it is hard to feel hopeful about a legal framework for accountability for harms resulting from AI.

In fact, certain AI tools (e.g., LLMs) may imply a wider “neutral” buffer between potentially harmed parties and potentially liable parties. “Knowledge” and “intent” are key factors in establishing liability, and we have watched Big Tech play shell game with the concept of what they can “know” or “intentionally” control about activity on their platforms. AI tools could take these shenanigans to the next level, enabling new forms of harm with an even weaker nexus linking the machines to the people who design and operate them.

In the copyright world, platform operators have consistently circumvented their obligations under the DMCA with shrugging statements like We can’t police the internet, alluding to staggering volume while conjuring an association with authoritarianism. Now, the circumstances are different. It is a near certainty that every creative work made has been, or will be, ingested into one or more AI training models, and unless the courts find this to be an act of mass piracy and order disgorgement of the datasets, creators may have to accept that their work is being turned into pink slime.

While it is encouraging to see artists take a more active interest in copyright rights as a response to AI, it is also a bittersweet transition in light of all that has happened so far. Whatever comes next, I hope the creative community will recognize that copyright rights are the closest thing to labor rights the independent artist has. And these rights should not be weakened or abandoned for the sake of more billionaires making false promises about democracy and free speech.