There’s no question that tattoo designs themselves are protected by copyright law, but there’s significant confusion in the tattoo industry and among the public surrounding the appropriation of photographs and other artwork in tattoos. That may be why one court left readers scratching their heads when it attempted to conduct an infringement and fair use analysis where the infringing work, a tattoo, was meticulously copied from a preexisting photograph protected by copyright law. In Sedlik v. Kat Von D, a district court in California recently conducted a preliminary fair use and substantial similarity analysis in a case where there was admitted copying. And while the order got a few things right, the court misanalyzed important legal questions surrounding fair use and instead left them for a jury to decide.
The Von D case involves a dispute between renowned photographer Jeff Sedlik and famous tattoo artist Kat Von D, Kat Von D, Inc., and High Voltage Tattoo, Inc. (the Defendants) involving a photograph Sedlik conceived and created of legendary jazz musician Miles Davis in 1989. The photograph (the Portrait) depicts Davis in front of a dark background with heavy shadows moving throughout the image and Davis making an “Shh” pose with one finger in front of his mouth. Sedlik stated that in creating the Portrait, he intended to comment on Davis’ use of “negative space” in his music, such as silence and low volumes, and pay visual homage to Davis’ use of the mute on his horn. In his testimony, Sedlik described in detail at least a dozen subjective artistic decisions he made in creating the iconic photograph that reflect the meaning and message imbued in his original authorship of the work.
In addition to licensing the photo to Jazziz Magazine in 1989 for editorial use, Sedlik separately licensed the Portrait for use in paintings, illustrations, t-shirts, magazines, films, television shows, sculptures, and advertisements. Sedlik also testified that he believed he licensed the Portrait for use in the making of a tattoo, and that he may have rejected requests if he had concerns about the quality of the work.
In 2017, Von D inked a tattoo (the Tattoo) of Miles Davis based on Sedlik’s image on Blake Farmer, a lighting technician she worked with on film production. Farmer, a trumpet player since sixth grade, wanted a Miles Davis tattoo since college, where he studied jazz and identified with Davis’ “rebellious spirit.” While researching an image for the Tattoo, Farmer conducted a Google search, found Sedlik’s photograph, and sent it to Von D’s assistant. Von D also admitted to finding a copy of the photograph online, downloading and printing it out, displaying it in her shop, and using it as a reference as she inked the tattoo.
To show Farmer the size of the Tattoo and to prepare for the inking, Von D created a line drawing of the photograph by making a printed copy of the Portrait, laying that print on a lightbox, placing tracing paper over the print, then using a pencil to trace the details of the photograph onto the tracing paper. She then made a stencil which she transferred to Farmer’s skin and continued to ink the Tattoo using a method she claimed was “freehand,” but would more accurately be described as tracing. Von D testified that she did not receive compensation from Farmer for the tattoo, claiming that she has been providing her tattoo services for free since 2012.
Kat Von D and High Voltage, the tattoo studio Von D owns and worked out of at the time the tattoo was inked, posted numerous photos and videos to their respective social media accounts of Von D in the process of inking the Tattoo with a printout of the Portrait in the background for reference. Some of the posts—which garnered tens of thousands of “likes”—were accompanied by text claiming Von D created the portrait and were used to market her services and solicit business.
Sedlik’s initial complaint alleged that Defendants infringed on his copyrighted work based on unauthorized reproduction, distribution, display, and derivative use. He further asserted that Von D’s claim to have created the portrait was a falsification of copyright management information under section 1202 of the DMCA. Defendants argued that while Von D’s process of tattooing may be considered copying, she did not copy any of the Portrait’s protectable elements and therefore no copyright infringement occurred. They further claimed that in the alternative, the tattoo qualified as fair use primarily because the work was transformative and non-commercial.
Sedlik moved for summary judgment on the copyright infringement claims, which the court ultimately denied due to triable issues as to substantial similarity, transformativeness, commercial use, and whether there is a market for future use of the Portrait for tattoos. Von D simultaneously moved for summary judgment with the defense of fair use, which the court denied due to triable issues on the first and fourth fair use factors.
Extrinsic and Intrinsic Similarities are for Jury to Decide
The court denied Sedlik’s motion for summary judgment on the copyright infringement claims after determining triable issues remained as to the issue of substantial similarity when applying the extrinsic and intrinsic tests. To prove infringement, the court noted that Sedlik must show (1) ownership of a valid copyright and (2) copying of constituent elements of the work that are original. The latter factor requires a showing that the works share substantial similarities, and the court applied the Ninth Circuit’s two-part test to determine substantial similarity: the extrinsic and intrinsic test. The extrinsic test compares the objective similarities of specific expressive elements in the works, distinguishing between protected and unprotected material in the copyrighted work. In contrast, the intrinsic test considers the similarity of expression from the ordinary reasonable observer’s view.
After the court found Sedlik owned a valid copyright on the Portrait, it moved to the extrinsic analysis and considered Von D’s argument that the shared similarities were unprotectable elements, such as the subject matter and pose of Miles Davis making a “Shh” sign. Ultimately, the court found that the combination of chosen elements, such as Sedlik’s choice in lighting and camera angles, were protectable. However, the court still was not convinced that it could definitively conclude that the two works were objectively similar since there were differences in the other elements such as the light and shading on Davis’ face or the depiction of Davis’ hairline, and thus found that there a triable issue regarding substantial similarities.
Moving to the intrinsic test, the court punted the issue to the jury, finding that it was debatable at this point of the lawsuit whether the ordinary observer could find substantial similarities between the two works by looking at the total concept and feel. Without citing to any evidence on the record to support its findings, the court skipped ahead to the conclusion that there was still a question of fact as to whether there was substantial similarity in the total concept and feel of the two works.
Fair Use Analysis Misses the Mark
The court also denied summary judgment as to Defendants’ fair use defense after determining triable issues with the first and fourth factor. Conducting its fair use assessment, the court analyzed the four fair use factors:
- The purpose and character of the use
- The nature of the copyrighted work
- The amount and substantiality of the portion used in relation to the copyrighted work as a whole
- The effect on the potential market of the copyrighted work
As to the purpose and character, the court primarily looked at commerciality and transformative use. In a troubling analysis of transformative use, the court looked favorably upon Defendants’ argument that Von D’s freehand method of inking the Tattoo was transformative because she added her interpretation to the Tattoo. Von D claimed that she added movement and shadows of smoke to the background that invoked a melancholy feeling, and the court seemed to accept this subjective take as sufficient to present to a jury to decide whether the work was truly transformative under the first fair use factor. On the other hand, despite Von D’s claims of non-commercial use, the court found that it was a triable issue based on Sedlik’s claim of indirect economic benefit in the form of advertising, promotion, and goodwill via the social media posts.
Turning to the second factor, the nature of the copyrighted work, the court found that the Portrait was, in fact, a creative work, and that “photos are generally viewed as creative, aesthetic expressions of a scene or image and have long been protected by copyright.” It further explained that because Sedlik had licensed the Portrait for publication in an issue of Jazziz Magazine decades prior, the work itself was “widely disseminated.” The court found this factor weighed in favor of fair use, incorrectly extrapolating from the Supreme Court’s holding in Harper & Row v. Nation Enterprises, that the use of an unpublished work would weigh this factor against a fair use finding.
As to the third factor, which is supposed to consider the quantity and quality of the material used, the court failed to mention the heart of the work or the quality of the work taken. However, it conceded that the Tattoo copied numerous elements from the Portrait and rejected the Defendants’ arguments that the pose is not meaningful apart from the actual image and a claim about industry standards. Ultimately the court found this factor weighed against fair use.
Finally, under the fourth factor, the court found no evidence that the Tattoo acts as a substitute for the Portrait’s primary market. However, as Sedlik provided evidence that he had licensed the Portrait for tattoo designs and that there is an existing market for licensing of photographs for use as reference use in tattooing, the court concluded that Sedlik raised a triable issue as to the future markets concerning the Portrait and tattoos.
Lastly, the court did not to address a non-statutory factor manufactured by the Defendants: the unique aspects of bodily integrity and personal expression inherent to tattooing. Sedlik did not sue Farmer, the tattoo recipient, and the court correctly found it an unnecessary issue that is not determinative in a summary judgment analysis. Overall, the Court found that the second factor favored fair use, the third factor weighed against fair use, and the first and fourth factors, arguably the two most important factors, had triable issues on both sides and could not be determined by the court. Thus, the court denied the Defendants’ motion for summary judgment concerning fair use.
In its order on summary judgement, the court jumped to some conclusions in its infringement analysis without much explanation or reasoning in a situation where substantial similarity seems quite obvious. As the court itself noted, Von D sketched over the photograph to create a stencil for the Tattoo and had used Sedlik’s photograph as a reference as she inked the Tattoo on Farmer’s arm. The court regrettably analyzed some of the facts and fair use factors incorrectly, specifically the decision to weigh the second factor in favor of a fair use finding because Jazziz Magazine published the Portrait. Furthermore, the court’s finding of a sufficient argument for transformativeness under the first factor based on the Defendants’ subjective interpretation of the tattoo stretches the fair use boundaries beyond reason. Hopefully in the near future, a jury will receive clearer and correct guidance particularly on issues of transformative use under the first fair use factor and see the tattoo for what it is: a clear and infringing derivative use of the Sedlik’s iconic photograph.
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