Tag: Jeff Sedlik

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.

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.