More “Transformativeness” Run Amok

Jeff Sedlik has been a fine art and commercial photographer for over 30 years and has served as an expert witness in more than 400 copyright cases. But until celebrity tattoo artist Katherine Von Drachenberg (Kat Von D) inked his famous portrait of Miles Davis in 2017, he had never been in court as a plaintiff claiming infringement of his work.

Kat Von D tattooed Sedlik’s Davis portrait onto the arm of Blake Farmer, a lighting tech, with whom she had worked on a film project. She allegedly did not charge Farmer for the tattoo, but the inking was highly publicized (millions of impressions) via Kat Von D’s social media accounts, and this included displays of Sedlik’s photograph. By any definition, the use was commercial. There are various bits and pieces to this case, including the unique nature of tattoos, which become part of a person’s body and likeness. But the most important matter to copyright law, once again, is the fair use defense presented—especially while we wait to see what SCOTUS has to say in the Andy Warhol Foundation v. Goldsmith case.

The portrait Sedlik created in 1989 is all about silence. Davis appears almost ghostlike, as though he has leaned his head from deep shadow into a pool of soft light to hush the viewer, holding the index finger over his lips with the other three fingers positioned as if playing an invisible trumpet. Or, as Sedlik explains to the district court, he intentionally had Davis pose those fingers “in a cascade visually representing aurally perceived musical notes.”

That description comes from compelled response to an interrogatory, demanding that Sedlik, “Identify and describe in detail each and every element in the PHOTOGRAPH that you contend is protected by copyright law.” The response provides a full account of Sedlik’s process, including 51 brief paragraphs describing every creative choice he made to achieve the final image, right down to Davis’s eyeline and the positioning of those fingers.

It is an impressive anecdote. Just looking at the photo, I know how challenging it is to control shades of black but had no idea that, for instance, Sedlik was required to work with Davis outside at high noon and, therefore, constructed a mini studio of sorts to retain the control necessary to execute the image he had in mind. But that’s photography fan me talking.

Copyright observer me has other questions, beginning with an objection to the court’s demand that any author describe “each and every element” he believes is protected. Not only are few complainants as experienced as Jeff Sedlik in describing such things in terms a court can evaluate, but more broadly, one attribute this case shares with Goldsmith is the folly that “transformative” defenses seem to lead courts to stray too far into the realm of art appreciation to settle questions of law.[1] From the opinion on cross motions for summary judgment, ordered May 31 …

Here, the Court finds the Portrait is entitled to broad protection because there were a great number of choices involved in creating the Portrait, such as Davis’s highly specific pose, facial expression, lighting and shadows, camera angle, and background for the image.

Part one of that opinion about “choices” goes to the aforementioned objection because the expression, as alluded to in the second part of the sentence, is observable without knowing anything about how the photographer created the image. The reason I mention this is not hypothetical but doctrinal. Copyright rights attach to a work upon fixation, regardless of how it was made, and it is settled doctrine that bars consideration of “sweat of the brow” to base copyright protection on process rather than creative choices resulting in a protectable expression.

Choice and process are often intertwined for the creator, but they must be separated as a question of law lest courts err in granting greater protection to the author who appears to have worked “harder” to achieve his vision. When a court demands the kind of defense of copyrightability as it did in this instance, there is a risk of over-emphasizing process, thereby potentially stripping another photographer of her rights because her choices are compressed into an instant, which may seem “easier.”

The question in Sedlik, as I believe it should be in Goldsmith, is whether the secondary work copies the protectable expression or the unprotectable facts of the original—not how either photographer achieved the expression, or what any of the images at issue necessarily convey. I have opined that “message” can be a fickle consideration, especially with non-verbal media. I have also written that I personally find the Warhol screens copy more fact than expression from Goldsmith’s photo, though I would say the opposite about Kat Von D’s tattoo copy of Sedlik’s photo. But regardless of outcome in either case, what is most important for copyright law is that the fair use blob called “transformativeness” be contained.

The Transformative Blob Eats Everything in Its Path

Kat Von D asserts a fair use defense, arguing that the tattoo is “transformative” under factor one, which considers the purpose and character of the use. It is typical of many alleged infringers to argue that using a work in a new medium is sufficient to find the use “transformative,” but here, the defendant cites myriad facts that are irrelevant to a fair use consideration at all. From the court’s summary:

First, Defendants contend the Tattoo presents a “new expression, meaning, or message” that is personal to Farmer because it relates to his study of jazz music in college, and because he personally identifies with Davis and “remains an avid listener of jazz and Miles Davis’s music.”

As I have argued in the past, the “new meaning or message” standard is already too broadly or too subjectively applied. But the idea that this consideration should encompass the personal, sentimental relationship the tattoo wearer has to his tattoo is capricious even for the most extreme view of fair use. Yet, the defendant doubles down on the idea …

Second, Defendants argue that tattoos inherently create a new expression, meaning, or message as a result of being permanently imprinted on a human body because tattoos have personal meanings, which may not be immediately obvious to someone unfamiliar with the significance of the tattoo to its wearer.

This is almost the same argument as the first using different words. A tattoo is no more “inherently new expression” than an oil painting or a silkscreen. And obscure meanings “not immediately obvious” to an observer is anathema to the purpose of the fair use exception. This argument is another variation of the refrain “new medium favors fair use under factor one.” Thankfully, the courts have been fairly consistent, at least on appeal, in rejecting this view. (e.g., Brammer v. Violent Hues)

In the 1884 case affirming copyrightability of photographs under U.S. law, the infringing lithograph is subtly different from the photograph it copied. This is partly because no matter how skillful the lithographer, drawing in grease on stone will produce differences between the paper print made from that medium and the paper print made from a photographic plate etched by light. Likewise, ink on human skin will result in certain distinctions between the tattoo and any photo the tattoo artist copies. I mention this to preface Kat Von D’s final rationale to assert “transformativeness.”

Third, Defendants argue that the Tattoo is transformative because while Kat Von D used the Portrait as a reference, she inked the Tattoo in the “freehand” method and added her own interpretation to it: “one that added the appearance of movement by adding and shading waves of smoke around the perimeter of Miles Davis’s hair and hand; created a sentiment of melancholy; and eliminated the stark, black background that dominates the Photograph.

This is as close as the defendant comes to presenting a foundation for “transformativeness,” and where her defense has a kindship with AWF by alleging a “different message” achieved by some alteration to the original work. But in addition to the fact that I think Kat Von D exaggerates the creative distinctions between the two images (that they are really differences in media), this is another example as to why the “message” test allows the “transformative” blob to swallow the other fair use factors and, quite often, the derivative works right.

The limitations of one medium to precisely reproduce a work in another medium cannot be the foundation of fair use without erasing the author’s right to prepare derivative works. This logic would lead to the conclusion that, for instance, a book author has no interest in the motion picture based on her novel simply because movies function differently for the audience than words meant to be read. Of course, they do. But that is not the test.

Relatedly, the allusion to Kat Von D working “freehand” is both questionable and irrelevant. The promotional images show her tracing Sedlik’s photograph, but it almost doesn’t matter. Whether an alleged infringer achieves literal copying by her unaided hand or through some intermediary medium, it is the copy that infringes, not the method by which it is made. Indeed, where the copyright owner must prove copying, identifying how the copy was made may be a relevant fact. Here, there can be no doubt that Kat Von D’s tattoo is a copy of Sedlik’s photograph, and Sedlik has no burden to prove copying.

Sedlik portrait and Kat Von D tattoo.

Again, I will argue in this case, as in Goldsmith, that the “transformativeness” blob can be contained if the Court reaffirms a rule that the secondary work must assert at least some evidence of commentary upon the original for factor one to tilt toward a finding of fair use. Like AWF, Kat Von D asserts “transformativeness” without claiming any commentary upon the original work (because no such commentary exists), but the case law being what it is, the district court held that there were triable issues of fact—namely that Defendants had met the “different purpose or meaning” test by changing the appearance of the image to “create what [Kat Von D] characterizes as ‘adding movement and a more melancholy aesthetic.’” The court further stated…

However, Sedlik disputes whether Kat Von D’s rendering of the Tattoowas transformative by virtue of the small changes she made. Sedlik opines thatall of the alleged dissimilarities between the Portrait and the Tattooresult from Kat Von D’s replication of the Portrait onto a three dimensionalsurface (Farmer’s arm). TheCourt finds Sedlik has raised a triable issue as to transformativenessthat is more appropriately left to a jury.

And so, Sedlik v. Kat Von D heads to a jury to decide, though it is concerning that the court seems to have punted core questions of law into that panel. Where juries are supposed to decide questions of fact, the question of “transformative” as argued here strikes me as a question of law. That said, juries are summoned as ordinary observers in these cases, and it is difficult to see how any reasonable person, even without any knowledge of photography or tattooing or the fair use doctrine, cannot readily see that the Kat Von D tattoo is a copy of the heart of Sedlik’s expression.

Broadly, Kat Von D argues that tattoo artists rarely, if ever, license the images they use, implying that Sedlik is an outlier for litigating this matter at all. It appears from facts presented by Sedlik that this assertion is as untrue as it is irrelevant, but I will leave the discussion that allegation provokes for another post.

[1] Of note, Sedlik served as Goldsmith’s expert witness at the district court. His testimony on factor four, asserting that the Warhol screens conflicted with Goldmith’s licensing interests was cited in the Second Circuit’s holding.

David Newhoff
David is an author, communications professional, and copyright advocate. After more than 20 years providing creative services and consulting in corporate communications, he shifted his attention to law and policy, beginning with advocacy of copyright and the value of creative professionals to America’s economy, core principles, and culture.

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