Tag: Kat Von D

Sedlik v. Kat Von D Appeal Prompts Copyright Critics to Weigh In

Sedlik

“One might expect a 140-year history of Supreme Court precedent would have led to a grant of summary judgment below, sparing everyone unnecessary time and money,” states the brief for Jeffrey Sedlik to the Ninth Circuit Court of Appeals. “Copyright infringement should have been decided by the district court as a matter of law, not at trial by a poorly-instructed jury swayed by a celebrity defendant.”

Jeffrey Sedlik v. Katherine von Drachenberg should have been an easy case. Tattoo artist Kat von D copied photographer Sedlik’s 1989 photograph of Miles Davis as a tattoo and also displayed the photograph in social media photos and videos featuring the production of the tattoo as promotion for herself and her business High Voltage Tattoo.

Sedlilk
Kat von D

In 2017, Kat von D made the Davis tattoo on the arm of her colleague and friend Blake Farmer. She could have studied any number of photographs of the jazz artist as references and then inked her own portrait, but instead, she traced and copied Sedlik’s photograph in detail, thereby producing a derivative work without license. Upon discovery of the social media posts, Sedlik reached out to Kat von D to discuss the use of his photograph and was rebuffed. He then filed the first copyright suit in his career, which includes serving as an expert witness in hundreds of copyright cases. He took legal action because he believes artists should respect one another and obtain permission to use works when it is appropriate to do so.

As the quote at the top of this post states, the case should have concluded at summary judgment with an easy finding in Sedlik’s favor. Instead, a jury wound up deciding that 1) the tattoo is not substantially similar to the photo (ergo non-infringing); and 2) several of the social media posts made fair use of Sedlik’s photograph. Sedlik filed an appeal with the Ninth Circuit in October, citing errors of law by the lower court, including faulty jury instructions.

Although courts are appropriately cautious about overturning jury decisions, the appellate court here should agree that the lower court made unfounded legal decisions (and oddly dismissive comments) that were prejudicial to the outcome. Highlights include the court’s failure to properly weigh substantial similarity as a matter of law; excluding Sedlik’s expert testimony at trial about photo licensing; and electing not to communicate to the jury the court’s own findings on fair use, thereby leaving the entire fair use inquiry to the jury, which is inconsistent with precedent.

As one example implicating a confused jury, the Sedlik brief notes, “…the jury determined that eight [social media] posts that were found to be not substantially similar were a fair use, a legal impossibility that the district court would later find to be ‘contrary to the form’s instructions.’” [emphasis added]. This legal impossibility is one of several head-scratchers in the administration of this case, yet the appeal has inspired three amicus briefs* in favor of KVD written by Professors Pamela Samuelson, Rebecca Tushnet on behalf of several law professors, and Christopher Sprigman with Molly Van Houweling.

I am unfamiliar with Van Houweling, but the other three are all prominent copyright critics, and if I can read between the lines, the three briefs express dismay with the Goldsmith v. Warhol decision because it stopped fair use from swallowing the derivative works right. Copyright critics don’t like the derivative works right, and so, each brief targets Sedlik’s underlying complaint from three different perspectives—on fair use, substantial similarity, and (believe it or not) standing.

The Tushnet Brief

Professor Tushnet and amici argue that the jury was properly instructed and arrived at a reasonable finding that the tattoo is not substantially similar to the photo. To support this view, the brief cites a litany of cases in which substantial similarity was not found because, as Tushnet states, “there can be copying without infringement.” Yep. There sure can. Just not in any of the case law relevant to Sedlik.

I agree with the brief that the courts should first focus on substantial similarity before getting bogged down in fair use. In fact, I have stated in other posts that if Warhol had been a substantial similarity case instead of a fair use case, I could see a plausible argument that Andy Warhol did not copy the protectable expression in Lynn Goldsmith’s photograph, but this same consideration is not nuanced in Sedlik. Kat von D painstakingly copied the expression in the Davis photograph, and Tushnet’s list of cases in which defendants’ works were not substantially similar offers no authority for finding lack of substantial similarity in this instance. For example, the brief highlights Rentmeester, in which the photographer of an iconic photograph of Michael Jordan unsuccessfully sued Nike for producing a photo and now-famous logo known as “Jumpman.”

Rentmeester demonstrates that, for instance, the plaintiff cannot protect the idea of a basketball player jumping toward a hoop with his legs posed in a jeté. And the Tushnet brief is right that this is a good example of some copying that is not enough copying to find infringement. Yet, one struggles to see how Rentmeester is instructive to Sedlik where we see meticulous copying of the protected expression. Kat von D shared images and video of herself tracing Sedlik’s photograph and stated publicly that she copied the image “100%.” But at trial, she sought to emphasize small changes made during the process of creating the tattoo.

Likewise, the Tushnet brief overstates the relevance of Kat von D’s “changes,” many of which are necessitated by the medium of drawing with ink on skin, and none of which excuse the substantial amount of copying that is plainly visible to an ordinary observer. The lower court, at various stages of its inquiry, and then by punting questions of law into the jury box, appears to have directed improper attention to the minor distinctions between the two works rather than the obvious and important similarities.

Because the Tushnet brief cites multiple cases of non-infringement that are not analogous to Sedlik, this implies criticism of copyright in photographs, which, as Sedlik’s brief notes in preface, has been settled law for 140 years. In fact, although it is true (as the Sprigman brief discusses) that the derivative works right was not statutory law in 1894, the Tushnet analysis suggests that the Supreme Court in that year should not have seen infringing copying of the photo on the left in the lithograph on the right:

The seminal Burrow-Giles v. Sarony decision, affirming copyrightability of photographs, was not a substantial similarity case, but there, the infringing lithograph is also different in several ways from the photograph—differences that are, again, partly necessitated by the medium. One could even argue that Burrow-Giles did not as precisely copy Sarony’s expression of Oscar Wilde as Kat von D faithfully copied Sedlik’s expression of Miles Davis. For instance, the face of Wilde is quite different in the lithograph, and if Burrow-Giles were litigating today, perhaps they would try to argue that those differences negate substantial similarity or favor transformative fair use.

But as the Sedlik brief states, “It defies one’s eyes and the law that there could be any result other than summary judgment in Plaintiff’s favor.” If Tushnet et al. argue that the von D tattoo is not substantially similar to the Sedlik photograph, then it seems they believe that only literal copying is a basis for infringement—i.e., that Sedlik’s right to prepare derivative works should be narrowed to the point of irrelevance.

The Samuelson Brief

Professor Samuelson’s brief addresses fair use, which can only refer to the jury’s finding that some of the social posts displaying Sedlik’s photograph were fair use.[1] In summary, she argues that 1) juries can properly decide fair use where facts are in dispute; and 2) the Warhol decision does not disturb fair use findings where the secondary use does not comment on the work.

Samuelson also misstates that Sedlik requested that the jury decide fair use and now appeals because he does not like the outcome,[2] and she implies that Sedlik’s claim of infringement would require a narrow application of fair use inconsistent with the Supreme Court’s holding in Warhol and Google v. Oracle. By my lights, the Samuelson brief argues a straw man because nothing about Sedlik’s claim is inconsistent with Warhol—and Google is inaptly cited.

As noted in several posts, Warhol reaffirmed the principle that when one creator uses the work of another, finding transformative fair use requires a colorable claim that the follow-on use express some “critical bearing” (i.e., comment) about the work used. Kat von D cannot plausibly argue that the social media posts displaying the Sedlik photograph express any commentary about the photograph itself. Display of the photo was done solely to promote Kat von D and High Voltage. Consequently, both the transformative question and the commercial purpose of the posts should have been found to favor Sedlik on factor one without going to trial.

To emphasize my point that this is a straw man brief, I note that Samuelson states, “Warhol also made clear that ‘targeting is not always required, highlighting that uses unrelated to criticism or commentary—such as those that facilitate interoperability or reveal new information about the original work—can also be fair.” That is absolutely true and utterly irrelevant in this case. Samuelson refers to software “interoperability,” as weighed in Google v. Oracle and to “revealing new information,” as considered in Google Books, neither of which has much to say about cases where one artist copies or uses the work of another artist.

Samuelson and Tushnet, in their joint brief to SCOTUS in Warhol argued against the “critical bearing” doctrine, favoring the broader discussion of fair use articulated in Google v. Oracle. But because computer code (at issue in Google) is highly utilitarian, its protection fosters a tension in copyright law that is distinct from the more common considerations presented in cases like Sedlik. The “critical bearing” doctrine may be characterized as “narrowing” by advocates for broader fair use, but that does not make Sedlik’s arguments against fair use inconsistent with Warhol or the substantial volume of similar cases. Samuelson’s brief is consistent with her views on fair use, but, like the Tushnet brief, it cites to authorities that do not apply.

The Sprigman/Van Houweling Brief

This brief is a doozy. It can arguably be read as a companion to the ALI Restatement of Copyright Law (led by Sprigman), and it proves the point that copyright critics really do not like the derivative works right. Because forget substantial similarity and fair use. Professors Sprigman and Van Houweling argue that under the Supreme Court’s 2021 ruling in TransUnion v. Ramirez, copyright owners lack standing to sue in federal court unless they can prove “concrete injury” (i.e., monetary harm) caused by the alleged infringement. I know this is how some people think copyright works, or how many believe it should work, but this brief seeks to unravel the law as it does work.

The TransUnion opinion holds that just because Congress writes a statute allowing for remedies in federal court, this does not excuse a plaintiff from showing a concrete injury, even when he can show a statutory violation. One can imagine how this ruling could be applied to standing in copyright claims, but only if the courts agree that failure to obtain permission/license is not a concrete harm, or if they agree with this brief that violation of some of the exclusive copyright rights in §106 should be accorded less weight than violation of others.

The brief states, “It is doubtful whether a presumption of harm should apply at all to copyright claims, like Sedlik’s, that do not involve the reproduction and distribution of a copyrighted work as such, but rather its use in a derivative work.” Amici imply that the courts should dismiss, or view skeptically, a failure to license as a concrete harm when the use at issue results in a derivative work. To be fair, here is Sprigman and Van Houweling’s fuller description:

If a derivative is close enough to the original that it competes with it, or perhaps preempts a product or licensing market that the author might otherwise plan to enter, then the derivative work at issue may harm the original author. In such an instance, if the copyright law did not reach conduct in this category, we might fear overall harm to author incentives to create. However, if—as is the case here—the derivative “is not closely similar to the original, does not compete with it for audience patronage, and does not preempt a market that the original rightsholder realistically is positioned to exploit, then the existence of the derivative is unlikely to harm the original author.

Once again, suggesting that the tattoo is not “closely similar to the original” is an insult to empirical evidence. But beyond that, amici misstate the consideration of market harm in general and Sedlik’s claim in particular. Licensing creative works for uses the author may not actively pursue or anticipate describes the nature of the potential market in which the copyright owner may choose to participate.[3] Failure to license by the user of a work is a concrete harm as a matter of law, whether the unlicensed use is the result of literal copying, preparing a derivative work, or violation of any of the making available rights in the Copyright Act. This is why, under fair use factor four, the courts consider whether the unlicensed use at issue, if it were to become widespread, would cause significant harm by persistently depriving the copyright owner of fees to which he is entitled.

But under the theory of the Sprigman/Van Houweling brief, TransUnion must upend the practice of copyright law by, among other things, overwriting fair use factor four case law, abolishing statutory damages, and at least weakening the derivative works right. Only a narrow group of rightsholders would be allowed to file suit by showing actual financial damages caused by an infringement stemming from reproduction or distribution of literal copies.

Sprigman/Van Houweling would leave independent and developing creators out of the copyright system altogether, while the owners most likely to have standing would be parties like private equity firms that have bought large catalogs of works whose value is easier to quantify. It is notable, though not surprising, when the anti-copyright crowd, which claims to advocate democratic values and fairness, would propose an interpretation of the law that can only benefit the wealthiest and most powerful copyright owners.

Further, amici’s application of TransUnion to copyright would vitiate any basis other than proven monetary harm for rightsholders to control uses of their works. For example, the author who does not want a motion picture adaptation or a sequel made from her novel; the musician who does not want certain politicians using his songs in campaign ads; the artists who do not want their works used for any form of advertising would be unlikely to show “concrete harm” for violation of those choices under this brief’s interpretation of TransUnion as follows:

If harm caused by violation of the copyright owner’s right to exclude is not generally presumed to be irreparable, then absent some showing that such harm is irreparable in a particular case, it is, by hypothesis, reparable by money damages—if it is harm at all.

Turning down a use that would otherwise be licensed—I doubt Sedlik would license the Davis photo to the KKK at any price—is a right retained by the copyright owner. And if the rejected party uses the work anyway without permission, Sprigman and Van Houweling suggest that the owner cannot sue for infringement because he not only did not suffer monetary damage, but he turned down monetary gain!

The copyright owner retains the right to select which parties, and under what circumstances, derivative works may be created, and unlicensed derivatives can devastate the author’s opportunity to create the derivative works she prefers—including projects that may be more lucrative than those she turns down. Thus, any limiting of the author’s right to choose how her work is used for derivatives forecasts myriad results that would easily meet the definition of concrete harm.

Notably, despite arguing that Sedlik does not have standing, Sprigman and Van Houweling do not ask the court to toss the whole case but instead write that the court can “avoid the constitutional questions” by upholding the jury’s decision below. How does that make sense? As long as amici are writing a brief that is unlikely to make much legal headway, they might as well stick to their guns. If they truly believe Sedlik doesn’t have standing, why ask the court to affirm the outcome?

Conclusion

For Jeff Sedlik’s first (and perhaps only) copyright case as a plaintiff, he drew a strange hand. In what should have been short work for the court, the legal questions are straightforward with ample precedent for guidance. I strongly suspect the Ninth Circuit will reverse and remand based on evidence that the lower court committed errors of law. Meanwhile, it is not surprising that some of copyright’s most notable critics were inspired to argue that the aberrations in this case reflect copyright law as they would see it applied.

[1] The appeals court may reverse the finding on substantial similarity and also opine on the question of fair use with respect to the tattoo itself.

[2]  Samuelson elides the fact that this request came from counsel whom Sedlik immediately replaced for making that unauthorized request, after which, Sedlik corrected the record with the court.

[3] A friend of mine received word from officials in the UK that they wanted to use one of his photos on a stamp, and he certainly never saw that opportunity coming.

*NOTE: A fourth brief was submitted by Authors Alliance, but 1) this post is long enough; and 2) their argument mirrors the “narrowing fair use” claim alleged by Prof. Samuelson.

Jury finds Kat Von D tattoo does not infringe. But stand by.

Sedlik

Last Friday, a Los Angeles jury returned a verdict that celebrity tattoo artist Kat Von D did not infringe the copyright rights of photographer Jeff Sedlik when she made a tattoo that (it must be said) is strikingly similar to Sedlik’s portrait of Miles Davis. Sedlik filed a copyright infringement suit in response to Kat Von D reproducing an unlicensed copy of the photograph, tracing over printouts of the photograph, making social media posts that include the photograph, and tattooing the Miles Davis image onto the arm of Blake Farmer, a friend and colleague whom she did not charge for the tattoo.

Although this case is far from over, Kat Von D has been quoted in the press as saying, “I’m excited to be done. If we didn’t fight this, it would have done so much harm to an industry that’s already struggling.” I’ll comment below on the industry harm allegation, but Kat Von D’s celebrity status should not confuse anyone into believing that she is the party litigating on principle. Sedlik only filed suit—the first in his career—after Kat Von D refused to have a conversation in response to a letter about the use of the photograph.[1] Sedlik’s view is that artists should respect one another’s rights when it comes to preparing derivatives of each other’s works, a theme lately made clear in the outcomes in both AWF v. Warhol and in Graham and McNatt v. Richard Prince.

Not only will Sedlik appeal, but the results of last week’s trial imply errors by this court and a curious jury verdict because it is not clear that Judge Dale Fischer properly distinguished between questions of law (the court’s purview) and questions of fact (the jury’s purview). To clarify any misreporting in the press and/or social media posts, the jury did not find that the tattoo itself is fair use but found that four of the social media posts depicting Kat Von D working with Sedlik’s photograph to be fair use.[2] The tattoo itself was found by the jury to be non-infringing on the basis that it is not “substantially similar” to the photograph—a verdict that will make many a copyright watcher curious as to how, or why, this jury was instructed to consider the matter. “The question of substantial similarity should never have gone before the jury. That should have been decided as a matter of law.” Sedlik’s attorney, Robert Allen, stated. And probably with good reason.

Ordinarily, the court would separate the non-protected elements of a work (e.g., the facts of Davis’s likeness) from the expression created by the photographer (e.g., Sedlik’s explicit posing of Davis’s hand, lighting, and composition choices) and then determine whether the secondary work copies the expression in the original. This is not analysis performed by a jury. Moreover, in this instance, where there is evidence of copying (e.g., photographs of Kat Von D inking the tattoo with Sedlik’s photograph by her side), Ninth Circuit precedent holds that a substantial similarity test need not be performed at all in order to prove copying by inference. Then, of course, there is the commonsense factor that no reasonable person could look at the images side-by-side and not see that the tattoo copies the main expression in the photograph.

Sedlik photograph of Miles Davis and Kat Von D tattoo.
Sedlik portrait (1989). Kat Von D tattoo (2017)
Social post - Kat Von D copying Jeff Sedlik photo of Miles Davis
Social Media Post ~90,000 likes.

The fair use saga in this trial thus far also raises some questions, including Judge Fischer’s own fair use analysis before trial and the jury’s decision that the four social media posts are fair use. But because there is a lot to unpack, and because the jury found the tattoo itself to be non-infringing as a threshold question, I will leave fair use for a follow-up post.

Trials in the Court of Public Opinion

It is interesting that this case, Warhol, and the recent judgments for Graham and McNatt against Richard Prince all share common elements of fact and law, filtered through cultural perceptions that have little to do with either fact or law. Anecdotally, I would say that sympathies broke almost evenly between Lynn Goldsmith and the late Andy Warhol, both inside and outside the art community. Richard Prince does not earn much sympathy outside certain art salons, and that’s partly because appropriations like “New Portraits” are seen as lazy and uninspired, and because he personally makes strident declarations that piss off a lot of creators.

In a different light, Kat Von D is both popular and sympathetic, especially with her post-trial claim to be litigating on behalf of the tattoo industry, combined with her statement that this case has turned her off ever making another tattoo. I get why this will play well in the court of public opinion, but as a legal matter, the assumption that she was allowed to use Sedlik’s photograph is highly analogous to the assumptions made by Warhol and Prince, also using photographs to make unlicensed derivative works. And they both lost on questions relevant to Kat Von D’s defense.

For example, Von D is on record saying that she could have based the tattoo on any number of images of Miles Davis and didn’t need to use Sedlik’s photograph, meaning there was no justification for her unauthorized use—a concept that was at the forefront of the Warhol case. This militates against her claim that she is defending the industry in general. Although I believe Sedlik is correct on the law in this instance, Kat Von D’s allegation that licensing would cause significant harm to the tattoo industry is questionable, not least because Sedlik presented evidence that tattoo artists do license images.[3]  

As a hypothetical question, if Blake Farmer had presented Kat Von D with the Sedlik photograph and asked her to reproduce it on his arm, would it have been fatal to High Volage, and the entire industry, if she had to reply that she could ink Davis but not that specific image? To be clear, a tattoo artist is free to look at photographic portraits of a subject and then render her own drawing of that subject as a tattoo. If the tattoo artist is good, as indeed Kat Von D is, then the customer gets a quality tattoo of the subject he wants but not an expression belonging to another artist.

Perhaps most damming to Kat Von D’s claim to be defending the industry is the verdict itself. Although I expect the Ninth Circuit will be reversing a few findings in this case, any artist following this story should recognize that were this verdict to stand, it means nothing for tattoo artists in general. Just because one alleged copy is held to be non-infringing on the basis that it is not substantially similar to the plaintiff’s work, this predicts little to nothing about the next potential claim of infringement in the tattoo world, or for artists in any other media.[4]

So, Kat Von D’s declaration to have fought and won on behalf of tattoo artists everywhere is as misguided as it is prematurely announced. On the other side of the equation, Sedlik’s argument, not unlike Goldsmith, Graham, and McNatt, is that it is indeed detrimental to all artists when fellow artists working in any medium copy their work as if it is simply there to be taken. There will be more to say about this case. Stand by.

[1] Sedlik Complaint (Document 1).

[2] Redacted Verdict Form (Document 217).

[3] For example, tattoo “flash” includes images that are licensed.

[4] Also, I wouldn’t expect the same result in, say, a New York court.

Photo source by: korobskyph

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.