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.
