“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.

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.

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[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.