Tag: Andy Warhol Foundation v. Lynn Goldsmith

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.

The Role of Fame in Considering Fair Use

In Justice Kagan’s blistering dissent in AWF v. Goldsmith, she stated the following:

If Warhol had used Goldsmith’s photo to comment on or critique Goldsmith’s photo, he might have availed himself of that factor’s benefit (though why anyone would be interested in that work is mysterious). [Emphasis added]

Kagan’s sweeping view that she could not imagine why there would be interest in a Warhol that comments upon the Goldsmith photo is, I assume, careless editorial—overlooking facts relevant to the instant case and, more broadly, ignoring the significance of commentary at the heart of the fair use doctrine. It is important to keep in mind that, but for this litigation, Goldsmith’s unpublished photo of Prince is not widely known, and it was certainly not known in the 1980s when Warhol made his screens. So, Justice Kagan is right to note that commenting upon a work that nobody had seen would be an absurdity but wrong if she means to imply that the courts should not look for “critical bearing” on the work used when weighing factor one.

You can’t tell a joke about a rabbi, a priest, and a monk walking into a bar if the listener doesn’t know what those three words mean. By this same principle, certain types of comment about protected works are impossible unless the work used has at least some presence in the minds of the intended audience. Parody is futile without the intended audience having an awareness of the work being lampooned, but education, criticism, or news reporting are all paradigmatic purposes under fair use that do not require the intended audience to have any familiarity with the work being used.

All three of those exemplary purposes may be introducing a work to the intended audience for the first time, but in those cases, the comment is likely to be explicit, in written or verbal form to discuss or critique the work being used. In such instances, it is relatively easy to determine, for instance, whether an article or blog post displays an image for illustrative purposes (disfavoring fair use) or displays an image for the purpose of critiquing the image and/or the artist (favoring fair use).

Finding “critical bearing” in a use may be more nuanced when one expressive artist uses another expressive artist’s work—e.g., a visual work commenting upon another visual work—and here, the notoriety of the work used likely plays a more significant role. For instance, in Leibovitz v. Paramount, we have a parody of a visual work made by another visual work. Observers (especially at the time) saw the image of pregnant Leslie Nielsen and were familiar with the iconic image of pregnant Demi Moore that was being lampooned. And to achieve the parody, it was necessary to copy the heart of Annie Leibovitz’s expression.

Left: Demi Moore by Annie Leibovitz. Right: Movie poster by Paramount Pictures.

Of course, notoriety of the work being used entails a balancing act for the follow-on artist. On the one hand, the work used must be at least somewhat well known for the observer to perceive any comment being made about it. At the same time, the more famous the original work, the more the follow-on artist may be found to be riding the coattails of that fame and “avoiding the drudgery of working up something new.” In Dr. Seuss Enterprises v. ComicMix, the follow-on artists were found to have copied a substantial amount of the original expression—both quantitatively and qualitatively—of some of the most famous visual works ever made.

Left: Image from Dr. Seuss’s “The Zax.” Right: Image from ComicMIx’s “Oh, the Places You’ll Boldly Go!”

And although the defendants in ComicMix attempted to argue that there was parody in their mashup book, the asserted commentary was (as in Warhol) about topics or themes unrelated to any “critical bearing” on the works used. As described in other posts about ComicMix, the extensive amount of precise copying militated against fair use because the result was a book that any observer could mistake for a derivative work produced by the rightsholder. Thus, the “riding coattails” consideration weighs heavily against the follow-on creators.

Must All Observers Be “Ordinary”?

In Campbell, Leibovitz, and ComicMix, we have examples of wide-audience fame, but small-audience notoriety should not necessarily disqualify the follow-on artist from a reasonable claim to have expressed “critical bearing” on the work used. I once had a conversation with Professor Lateef Mtima about whether a jazz artist could successfully parody a well-known jazz work. We all might recognize, for instance, “Round Midnight” when we hear it, but if a new artist were to riff on that piece and interject elements that are intended as comment upon the original, it would probably take a very sophisticated listener to perceive the nature of that comment. If it were even possible.

As an exercise, this raises the question as to whether “critical bearing” on the work used must always be reasonably perceived by an “ordinary observer,” or whether the intended audience may be quite narrow. In the fine art world, where Warhol lives, is it necessary that everybody “get it,” if comment is in fact present? If fifty critics and a thousand art afficionados understand the comment being made, is that sufficient to find that factor one favors the use? I would predict that it may be sufficient for factor one, but that the uniqueness of the audience could militate against finding that factor four favors the use, depending on the market for the original.

I assume Justice Kagan’s off-the-cuff remark that she could not imagine interest in a Warhol that comments upon the Goldsmith photo was hyper-focused on the two works at issue—a parenthetical jibe in a snarky dissent, which overlooks the relevance of the photo’s obscurity at the time it was used. As such, Kagan inadvertently advises creators to consider the notoriety (intended audience’s awareness) of the work they propose to use and how that notoriety supports or rejects any claim to “critical bearing” as a result of the new use. Justice Kagan may not imagine such a thing, but artists should, if they want to make fair uses of protected works.

Relitigating Cariou:  Why Fine Art Will Still Be Fine After Warhol v. Goldsmith

Although the most straightforward cases of fair use thus involve a secondary work that comments on the original in some fashion, in Cariou v. Prince, we rejected the proposition that a secondary work must comment on the original in order to qualify as fair use.  

– 2nd Circuit Court of Appeals in Warhol v. Goldsmith –

The following is an experiment:

One reason that fine artists et al. are not suddenly standing on uncertain fair use ground after the Supreme Court’s decision in Andy Warhol Foundation v. Lynn Goldsmith is that the Court did not articulate a new standard for factor one analysis. Rather, it reaffirmed its own and other courts’ holdings that some “critical bearing” on the work used must be present to find the use “transformative.” Further, as Keith Kupferschmid, CEO of Copyright Alliance writes, “There are unambiguous references throughout the decision that make it clear the Court intends to rein in transformative use from being dispositive and controlling of the four fair use factors.”

One prominent lawsuit that is substantially intertwined with the case law surrounding Warhol is the highly controversial decision in Cariou v. Prince in which appropriation artist Richard Prince was found to have made 25 (out of 30 at issue) fair uses of Patrick Cariou’s photographs. Not only was this case an example of transformativeness carrying considerable weight, but the transformative analysis itself turned on rejecting the “critical bearing” standard. But in a hypothetical re-litigation, I believe Prince could lose on factor one and still win on fair use overall. In Cariou, the Second Circuit stated the following:

What is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work. Prince’s work could be transformative even without commenting on Cariou’s work or on culture, and even without Prince’s stated intention to do so.

Any artist taking direction from the decision in Warhol would reasonably find that holding contradicts the “critical bearing” test. It is also notable that the court articulated a “reasonable perception” standard based on Campbell and Leibovitz—two cases involving parody and, therefore, demand that the observer perceive parody—in order to rationalize finding transformativeness in works with no “critical bearing” whatsoever…

Rather than confining our inquiry to Prince’s explanations of his artworks, we instead examine how the artworks may “reasonably be perceived” in order to assess their transformative nature. Campbell, 510 U.S. at 582; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 113-14 (2d Cir. 1998) (evaluating parodic nature of advertisement in light of how it “may reasonably be perceived”). The focus of our infringement analysis is primarily on the Prince artworks themselves, and we see twenty-five of them as transformative as a matter of law.

Later, in its Warhol decision, the Second Circuit stated that the district court had erred in reading this aspect of the Cariou opinion too literally…

…the district court appears to have read Cariou as having announced such a rule, to wit, that any secondary work is necessarily transformative as a matter of law ‘[i]f looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results. Although a literal construction of certain passages of Cariou may support that proposition, such a reading stretches the decision too far.

To be clear, Cariou may reasonably be called dead law after Warhol and after the Second Circuit’s ruling in Graham v. Prince, which naturally shares common features, including the same defendants. But for the sake of this experiment, let’s look past the court’s efforts to reconcile its contradictory language in Cariou and imagine that the same facts are relitigated under the “critical bearing” standard and that factor one would, therefore, disfavor Richard Prince. Does this mean he necessarily loses on fair use? Prince did not assert, and the court did not find, “critical bearing” in any of the 25 fair uses, so we’ll assume that factor one now favors Cariou in all those examples and ask what happens to the rest of the fair use analysis?

Factor two would still favor Cariou because his photographs are expressive in nature.The second factor is often given light consideration in the overall analysis because its inquiry is typically binary—asking whether the work used is expressive or informative in nature—and there is no reason to assume it would be given any greater consideration in a hypothetical new case. Thus, the score is now 2-0 for Cariou.

Factor three is, perhaps, the trickiest question in this hypothetical on the basis that “The secondary use ‘must be [permitted] to ‘conjure up’ at least enough of the original” to fulfill its transformative purpose” (Cariou citing Leibovitz). Here, the court states, “Prince used key portions of certain of Cariou’s photographs. In doing that, however, we determine that in twenty-five of his artworks, Prince transformed those photographs into something new and different and, as a result, this factor weighs heavily in Prince’s favor.”

One reading of this holding is that factor three would have to now favor Cariou because, under the “critical bearing” standard, the court must find that there is nothing transformative in Prince’s works for which any amount of the work used can be justified. But although it is true that the amount of a work used should be weighed in light of the purpose of the use, there is an argument to be made that allowing factor one to exert too much control the over the other factors is a judicial tendency that may now be moderated after Warhol.

Note that the statute instructs the courts to consider “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.” Though it is correct to say that the factors shall be weighed interdependently, in the most basic analysis, factor three asks how much of Cariou’s photos did Prince copy, and in at least some of the works at issue the answer may still be not very much. For instance, in the collage work “James Brown Disco Ball,” parts of two Rastafarian photos are used as raw elements, and arguably, very little remains of Cariou’s photographic expressions. While a fresh analysis of each of the 25 works might find too much copying in some instances, the broader point is that transformativeness need not control the consideration, and factor three can still favor Prince even if he loses on factor one.

Left: Photos by Patrick Cariou. Right: “James Brown Disco Ball” by Richard Prince.

On factor four, the major complaint against the district court’s finding for Prince is that its analysis comes very close to articulating a “celebrity exception” on behalf of the defendant, which the Second Circuit later inveighed against in its Warhol opinion. In Cariou, the fourth factor consideration states:

Prince’s work appeals to an entirely different sort of collector than Cariou’s. Certain of the Canal Zone artworks have sold for two million or more dollars. The invitation list for a dinner that Gagosian hosted in conjunction with the opening of the Canal Zone show included a number of the wealthy and famous …. Cariou on the other hand has not actively marketed his work or sold work for significant sums, and nothing in the record suggests that anyone will not now purchase Cariou’s work, or derivative non-transformative works (whether Cariou’s own or licensed by him) as a result of the market space that Prince’s work has taken up.

In a hypothetical re-litigation, perhaps the court would not be so starstruck, and rather than contrast Prince’s celebrity and wealth against Cariou’s more modest career, the court would confine its analysis to the works themselves. Once again, even without first finding transformativeness, a reasonable observer can conclude that some, or all, of the 25 Prince works are not substitutes for Cariou’s photographs, and there seems to be no other colorable claim of potential market harm in this case. On this basis then, factor four would still favor Prince.

So, do we have 2-2 tie in the hypo? Yes, but not necessarily. Part of the point of this experiment is to show that neither transformative use in particular, nor factor one in general, must control the entire fair use analysis in order to still find fair use. In fact, once upon a time, factor four carried more weight in fair use cases, and perhaps hypothetical Cariou v. Prince 2 is a good example of when it should again—especially if the factor three analysis finds that the follow-on work does not use a substantial amount of the original works’ protected expressions. So, it is possible for Prince to win (or partly win) on the weight given to fair use factors three and four rather than factor one.

Were this case in fact relitigated, the court might not agree with the above, but the purpose of this post is to emphasize that although the Warhol decision indicates that transformativeness need not carry the entire fair use defense, moving the fair use pendulum away from that assumption does not doom the fair use doctrine or the production of new art—not even appropriation art. That said, Warhol does raise another issue of which Cariou is an example—namely whether the allure of transformativeness has resulted in fair use cases that need not get to fair use.

Maybe Find Infringement First?

Perhaps one result of Warhol will be that defendants and courts, before leaping to fair use defenses based on weak assumptions of transformation, will instead consider whether a foundation for a claim of infringement exists in the first place. For example, my factor three consideration of the amount of copying in “James Brown Disco Ball” might be more properly an argument for non-infringement on the basis of di minimis use. This consideration would seem to apply to follow-on artworks that use fragments of protected works as raw elements, and there may be no need to consider fair use. Likewise, I have opined in other posts that in a substantial similarity analysis, Warhol does not copy enough of Goldsmith’s protected expression to find infringement. People of good intent can disagree with that assessment, but the broader point is that certain uses may simply be found non-infringing without having to embroider fair use tapestries made from gossamer threads of transformative whimsy.

Contrary to some views, I believe Warhol provides guidance to creators. To wit: Are you using a work to express some “critical bearing” (comment) about the work? If no, have you substantially copied the expression in the original work? If yes, then there is a pretty good chance your use is infringing, and you might need to adjust what you’re working on and/or consult with legal counsel for some guidance. Creators know that working around a copyright hurdle can be as generative of new creativity as working through any other challenge. So, the idea that new expression will henceforth be stifled by the decision in Warhol is very narrow thinking indeed.

Image source: africa_images