IP Law Daily, COPYRIGHT—C.D. Cal.: Jury to decide if well-known tattoo artist Kat Von D infringed iconic Miles Davis portrait, (Jun 3, 2022)

Law Firms Mentioned:Grodsky Olecki and Puritsky LLP | Sriplaw PA

By Matthew Hersh, J.D.

Von D escapes immediate liability for inking a famous likeness of Miles Davis, but a jury will eventually decide the case.

A photographer who took a renowned picture of Miles Davis will have to convince a federal jury that a tattoo artist unfairly pur ...

By Matthew Hersh, J.D.

Von D escapes immediate liability for inking a famous likeness of Miles Davis, but a jury will eventually decide the case.

A photographer who took a renowned picture of Miles Davis will have to convince a federal jury that a tattoo artist unfairly purloined his work in order to create a stylized tattoo of the famous jazz musician, the federal district court in Los Angeles has held. The court, spilling 30 pages of ink of its own over the course of a wide-ranging opinion, rejected the photographer’s motion for summary judgment and held that open questions about substantial similarity and fair use would have to be decided at trial (Sedlik v. Von Drachenberg, May 31, 2022, Fischer, D.).

The lawsuit was brought by Jeff Sedlik, a celebrity photographer known for his portraits of jazz and blue performers. One of his best-known works is a 1989 portrait of Davis, shown striking a contemplative pose at his beach house in Malibu. The image of the jazz master has garnered such famed that a limited-edition print of the photo currently sells for over $13,000 at high-priced art gallery Saatchi.

The other player in this body art drama is Katherine Von Drachenberg, a renowned artist in her own right. Kat Von D, as she is known to her fans, is a tattoo artist with special expertise in creating black and gray portrait tattoos. Over two sessions in 2017, she inked a tattoo of Davis on the skin of a lighting technician with whom she had once worked on a film project. The finished tattoo, which was based on the Sedlik photograph, was shortly thereafter posted to the social media accounts of both the tattooist and her studio.

Sedlik sued Von D, claiming copyright infringement as well as violation of the Digital Millennium Copyright Act, or DMCA. Both parties moved for summary judgment, leading to this opinion.

Substantial similarity. The court denied summary judgment for Sedlik on the copyright claim, finding that jury questions were raised on the issues of substantial similarity as well as fair use.

There were open questions about substantial similarity, the court held, because a reasonable jury could find that the works were both objectively as well as subjective dissimilar—the two prongs of the substantial similarity test under Ninth Circuit precedent. From an objective standpoint, the court noted, although the artwork was admittedly derived from the photo and shared several common characteristics, there were also notable differences, particularly “the light and shading on Davis’s face, the hairline and flowing hair on Davis’s head, and the background.” A reasonable jury could find those differences to be more than de minimis, the court noted. As to the subjective, or “intrinsic similarity” test, the court noted, a jury could find—in applying the “holistic, subjective comparison” required under that test—that the two works differed in term of their total concept and feel. Thus, the question of substantial similarity would have to be decided at trial.

Fair use. The court found that fair use, too, would go to the jury. Importantly, the court refused to adopt a flat rule of law that tattoos were inherently transformational and protected by law. Nonetheless, the court held, Von D raised enough of a defense that judgment as a matter of law was not warranted. Most importantly, the court noted, there were serious questions as to whether Von D transformed the work by inking it in a “freehand” method that added her own interpretation to it: “one that added the appearance of movement by adding and shading waves of smoke around the perimeter of Miles Davis’s hair and hand; created a sentiment of melancholy; and eliminated the stark, black background that dominates the photograph.” Moreover, the court noted, there were triable questions about whether Von D’s use was commercial—she did not charge for the work, but her social media posts certainly brought her “indirect economic benefit in the form of advertising, promotion, and goodwill”—and whether the photograph had commercial value as a potential source of licensing for body art. (The court also noted that the fact that the photograph had been widely disseminated for decades cut in favor of the fair use claim, a suggestion that may raise some eyebrows among authors of well-pedigreed works.).

DMCA. Although the court left most issues to the jury, it did eliminate Sedlik’s DMCA claim as a matter of law. To be sure, the court noted, Von D did publish social media posts suggesting that she was the author of the work (“portrait I tattooed,” read one). But Sedlik had no evidence that she did so with the intent required under the DMCA, the court observed, so his claim as to falsification could not advance. For similar reasons, the court held, Sedlik’s claims as to removal of copyright management information, or CMI, also failed. Leaving aside the question of whether Sedlik’s CMI was even present on the photo that Von D used, there was no evidence that she removed it intentionally. Thus, the DMCA claim would fail in its entirety.

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

Attorneys: Jonah Adam Grossbardt (Sriplaw PA) for Jeffrey B. Sedlik. Allen B. Grodsky (Grodsky Olecki and Puritsky LLP) for Katherine Von Drachenberg.