IP Law Daily, COPYRIGHT—C.D. Cal.: Celebrity tattoo artist’s fair use of iconic Miles Davis photo reconsidered in light of Warhol, (Oct 11, 2023)

By George Basharis, J.D.

Court finds Kat Von D’s tattoo made from photographer Jeff Sedlik’s copyrighted work was not transformative but denies summary judgment.

Applying the Supreme Court’s recent Warhol decision, the federal district court in Los Angeles has once again declined to grant summary judgment in a longstanding copyright dispute over a photograph of jazz musician Miles Davis. Despite changes in the controlling law, the court found that there were still issues of fair use that had to be tried before a jury. Previously, the court had granted partial summary judgment in favor of celebrity tattoo artist “Kat Von D.” The court focused on the aesthetic character of the tattoo and determined that it had a meaning distinct from the original photograph. After the Warhol decision was handed down, both parties filed motions for reconsideration. Although the court shifted its focus from the aesthetic character of the tattoo to its purpose, as required by Warhol, it found there were still factual issues that could be tried with respect to both the first factor of fair use (the purpose and character of the use) and the fourth factor (the effect of the use on the potential market) (Sedlik v. Von Drachenberg, October 10, 2023, Fischer, D.).

Katherine Von Drachenberg, better known as Kat Von D, is a celebrity tattoo artist. Jeffrey Sedlik, a photographer famed for his portraits of jazz and blues artists, is known for his iconic 1989 portrait of jazz legend Miles Davis, featuring Davis with his index finger pressed to his lips. Kat Von D used the portrait as a reference to create a tattoo for a friend, free of charge. She documented the process and the final result on her personal and business social media accounts, which led to Sedlik filing a lawsuit against her for copyright infringement and violation of the Digital Millennium Copyright Act, or DMCA. Sedlik claimed that Von D had violated the copyright of his Miles Davis photo by replicating the image as a tattoo on her friend’s arm and showcasing it on social media.

In response, Von D invoked the affirmative defense of fair use. Both parties subsequently filed motions for summary judgment. In May 2022, the court denied the motions on Sedlik’s copyright infringement claim, finding triable issues of substantial similarity and fair use. The court found that Kat Von D had successfully demonstrated that the tattoo had a distinct purpose and meaning from Sedlik’s portrait, owing to the changes she made to its appearance to evoke a melancholic aesthetic. However, the court decided to leave the determination of whether the tattoo was transformative to a jury. The court did, however, eliminate Sedlik’s DMCA claim as a matter of law because Sedlik failed to allege that Von D acted with the requisite intent.

On May 18, 2023, the Supreme Court decided Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023). Both Sedlik and Von D, citing a significant change in the controlling law due to the Warhol decision, requested the court to reconsider their respective motions for summary judgment.

The Warhol dispute revolved around several silkscreen prints and pencil drawings that artist Andy Warhol created using a photograph of pop singer Prince as a reference. The photographer sued the Warhol Foundation for copyright infringement, and the Supreme Court was tasked with deciding the Foundation’s claim of fair use.

The Court rejected the Foundation’s argument and the notion that the first fair use factor (purpose and character of use) “favors any use that adds some new expression, meaning, or message.” The Supreme Court stated that even if Warhol’s silkscreen could be perceived as portraying Prince as an icon, in contrast to the photographer’s photorealistic portrayal, this difference must be evaluated in the context of the specific use at issue.

The district court in the Von D dispute cited a 2007 Ninth Circuit decision as an example of fair use that withstood the Warhol ruling. In Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), the Ninth Circuit found Google’s use of copyrighted images in search results to be transformative because the purpose of the thumbnail images was to guide users to information sources. In other words, the images were repurposed from their original intent.

In contrast, Kat Von D’s tattoo was not deemed transformative; it was merely a reproduction on a different medium. The court admitted its initial mistake of focusing on the aesthetic character of the tattoo rather than its purpose. In her motion for reconsideration, Von D once again emphasized the aesthetic character of the tattoo, but the court ruled that this argument had been precluded by Warhol. However, the court refrained from granting Sedlik’s motion for summary judgment, citing triable issues related to other fair use factors, such as commercial use.

The court dismissed Von D’s claim that fair use was established as a matter of law because the tattoo was free. Even though the tattoo was created free of charge, the court reasoned that a jury could still find that Von D created the tattoo for commercial purposes, such as enhancing her personal brand and attracting customers to her shop. The court also rejected Von D’s argument that the “messy progress” shots of the tattoo posted on social media did not infringe Sedlik’s copyright because their purpose differed significantly from the original work. According to the court, whether these images had a transformative purpose was a matter for trial.

Finally, the court determined that Warhol did not alter its analysis of the fourth factor (effect of use on potential market). The existence of a market for future use of the Davis portrait in tattoos remained a triable issue, according to the court.

The Case is No. 2:21-cv-01102-DSF-MRW.

Attorneys: Robert Edward Allen (Glaser Weil Fink Howard Jordan and Shapiro LLP) for Jeffrey B. Sedlik. Allen B. Grodsky (Grodsky Olecki and Puritsky LLP) for Katherine Von Drachenberg a/k/a Kat Von D.

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