Tag: substantial similarity

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

Is ComicMix going to trial? Probably not.

We may finally be at the end of a five-year litigation between Dr. Seuss Enterprises (DSE) and ComicMix. The latter produced a book called Oh, the Places You’ll Boldly Go!, a mash-up of Dr. Seuss and Star Trek that, though funny, was neither parodic nor fair use under any of the four factors according to the Ninth Circuit Court of Appeals as of December 2020. That court reversed the lower court’s finding of fair use and remanded rather than issue a decision on the infringement claim.

Both ComicMix and DSE filed motions. The former filed a Motion for Reconsideration as to the validity of the copyright registrations at issue; and the latter filed a Motion for Summary Judgment on a finding of copyright infringement. The district court denied both.

ComicMix’s Challenge to Registration

When this whole hullabaloo began, ComicMix initially argued that the copyright registrations in the Seuss works The Sneeches and Other Stories and Oh, the Places You’ll Go! were invalid due to the allegation that those group applications combined published and unpublished works. And because the Ninth Circuit in Unicolors v. H&M as since held that an application may be invalidated even where there is no intent to defraud the Copyright Office, ComicMix argued that the law has changed since it filed its original motion. The court disagreed, stating “…this Court’s Referral Order never addressed the intent-to-defraud issue in light of its finding that there were no known inaccuracies in Seuss’s copyright applications and registrations.”

Substantial Similarity and an Odd Conclusion

Of likely greater interest to rightsholders and copyright watchers is the district court’s finding that under the principle of this circuit’s “intrinsic test” for substantial similarity, that it was unable to decide that question in this case as a matter of law. So, what does that mean?

Assessing the similarity between an allegedly infringing work and the original work is always a mixed question of law and fact. In the Ninth Circuit, the court first applies an “extrinsic test,” whereby the plaintiff is required to identify the similarities between its work and the alleged copy. Next, the court reviews the evidence and first disregards any “copied” elements that are not protectable (e.g. line weight or style in a drawing) and then assesses the “thickness” of protection on the original work as a whole. For instance, when ComicMix made an almost verbatim copy of Seuss’s iconic “Star-Off Machine,” they copied a work with “thick” protection because it is highly original in both subject matter and style.

In the Ninth Circuit, once an analysis passes the “extrinsic test,” the question of similarity then proceeds to an “intrinsic test,” which asks whether an ordinary observer would perceive substantial similarity between the original work and the alleged copy with regard to “total concept and feel.” Although it is standard that a jury is the trier of fact in this circuit’s “intrinsic test,” Devlin Hartline of Hudson Institute tells me via email, “That’s a problem when it’s an obvious case like this one. The defendant’s entire purpose was to copy the total concept and feel. Now, it may go to the black box of a jury, but it would be better to have the judge’s reasoning on this in order to better develop the test. Other jurisdictions give the judges more leeway on this question.”

There is no question that Hartline is right about ComicMix’s intent to copy extensively, especially as the principals stated in testimony that they painstakingly set out to copy Seuss, even hoping that DSE might want to license Boldly!. Then, in the appellate court’s thorough rejection of fair use, it describes extensive copying—both quantitative and qualitative—which this district court reiterates for about seven pages. Nevertheless, this court concluded that it cannot grant summary judgment under the “intrinsic test” as a matter of law. The opinion states:

“…in light of the rarity of courts granting summary judgment in favor of copyright holders on the issue of copying in this Circuit, and the lack of any authorities doing so with regard to subject matter comparable to that at issue here—i.e., illustrated books of rhyming prose—the Court finds, on the record presently before it and viewing the facts and evidence in the light most favorable to ComicMix as the nonmovant, that Boldly ‘[is] not so similar to the protected [works] that no triable issue exists with respect to whether the total concept and feel of the works are substantially similar. Therefore, the issue of intrinsic similarity must be left for the jury.’”

How the court can use the language “not so similar” in this case, rather than simply rule that no reasonable jury could possibly mistake the similarities, is a bit of head-scratcher. Still, I think it’s a safe bet that this is likely the end of a long journey for ComicMix. The fair use defense is a dead issue, and by proceeding to trial, they would have to believe that a jury will somehow not see that Boldly! extensively copies Seuss’s works. As indicated in older posts about this case, I predict this one will serve as a very useful guide to future creators for where not to go when using existing creative works—especially famous ones.