A High Voltage Copyright Matter

• Jurisdiction: United States,Federal,California
• Citation: Vol. 47 No. 4
• Publication year: 2022
• Author: Matthew D. Batista
• topic: Intellectual Property,Copyright law

A HIGH VOLTAGE COPYRIGHT MATTER

Matthew D. Batista
Klinedinst PC

Kaleigh Thomas
Klinedinst PC

(See end of this article for information on receiving 1.0 hour MCLE self-study credit.)

AN INTRODUCTION TO TATTOOS AND COPYRIGHT

The human canvas, in a physical context, is unique in the artistic world. Each canvas that bears artistic expression carries with it its own unique traits, and the largest organ in the human body, the skin, is no different. Such is also potentially true as to the uniqueness of the legal considerations for artistic expression upon the most living of canvases. While for most copyright issues, the unauthorized reproduction, distribution, adaptation, and/or public performance of a copyrighted work may be considered direct copyright infringement and, in some instances, indirect infringement, one market area has largely been free to operate without such contest, tattooing.

For the uninitiated, the general tattoo process in practice largely consists of the following: the client finds an attractive image to be tattooed; the client takes such image to a tattoo artist; and the tattoo artist either tattoos that exact image, adapts it, or uses it as inspiration for some original piece to be tattooed in exchange for a fee. Often, the client brings an image to the artist as the reference piece that the client obtained from other sources, such as internet searches or from printed publications. While that situation is not always the case, it often is, and such a similar situation is the backdrop for the subject matter of this article.

Jazzed for New Ink

In 2017, Katherine Von Drachenberg, better known by her alias "Kat Von D," tattooed an image of famed jazz musician Miles Davis on the arm of Blake Farmer, a film production staffer whom Kat Von D worked with. Farmer brought Kat Von D an iconic picture of Miles Davis in which Davis is holding his fingers up to his mouth in a quieting manner against a dark background. For those with interest in Miles Davis or jazz music, the image is fairly well known.

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¹

At some time in or about March 2017, Kat Von D tattooed Farmer and on March 18, 2017, posted an image to Instagram from her personal Instagram account, also tagging her tattoo shop, showing her tattooing Farmer's arm with an in-progress tattooed image of Miles Davis, with the above-image of Davis pinned to the wall in the background.

²

The photographer and copyright owner of the famed image of Davis in question is Jeffrey B. Sedlik ("Sedlik"). As noted in his complaint filed on February 7, 2021 in the United States District Court for the Central District of California (the "District Court"), Sedlik is a "world-renowned, award-winning professional photographer and professor."³ Sedlik and his work have been featured in a number of publications, album covers, and exhibitions; he is a professor at the Art Center College of Design in Pasadena, CA; and he also works as a consultant and expert witness on intellectual property matters, including testifying before the United States Congress.⁴ Of additional note, the attorney initially filing the case on Sedlik's behalf was Gary S. Sedlik, Esq., presumably kin to the plaintiff.

Preparing the Canvas

In brief, Sedlik's complaint prays for relief stemming from copyright infringement of his copyrighted Miles Davis photograph by Kat Von D and some of her affiliated entities, including her tattoo shop, High Voltage Tattoo, Inc. ("High Voltage Tattoo"). This case is interesting for a number of reasons, but most notably because this appears to be the first copyright infringement case involving a tattoo on a human individual. The rest of this article will first generally introduce the applicable law of copyright, copyright infringement, and the defense of fair use. Then, the article will provide a case summary and analysis of Jeffrey B. Sedlik v. Katherine Von Drachenberg. Finally, the article will conclude with a focus on the potential implications of this case for copyright law and the tattoo industry.

THE GENERAL LAW OF COPYRIGHT

Before discussion of the issue at hand, a general background discussion of applicable copyright law is warranted.

Copyright

As most readers of this article may be aware, copyright law stems from the United States Constitution, specifically Article I, § 8, which states "[t]he Congress shall have power...to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."⁵ The Copyright Revision Act of 1976 ("The Copyright Act")⁶ is the embodiment of that constitutional copyright protection, as amended and modernized from time to time with subsequent acts such as the Digital Millennium Copyright Act (1998).⁷ A work

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of creative expression may be composed of both copyrightable protectable matter and unprotectable matter. Copyrightable matter includes only "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."⁸ The Copyright Act further enumerates eight general categories of copyrightable material including, notably for present purposes, "pictorial, graphic, and sculptural works."⁹

The owner or author has a copyright upon fixation of copyrightable expression, as described above. However, registration of the copyrightable work with the United States Copyright Office carries certain additional benefits and is a requirement before engaging in copyright infringement litigation. Generally, and as applicable in this case, the rights enjoyed by copyright holders include the following: (a) the right to reproduce the work;¹⁰ (b) the right to prepare derivative works;¹¹ (c) the right to distribute copies of the work to the public;¹² and (d) the right to display the work to the public.¹³

Direct Copyright Infringement

Generally and simply, copyright infringement is the violation of the one of the enumerated exclusive rights of the copyright owner without obtaining permission.¹⁴ Proving the infringement is a more complicated matter. In the Ninth Circuit, a plaintiff may show prima facie evidence of copyright infringement by the satisfaction of two elements: (1) the plaintiff's valid ownership of the copyrighted work and (2) a violation of one of the enumerated copyright rights of the copyright holder.¹⁵ The latter element, above, has been interpreted by the Ninth Circuit as having two components: (a) copying and (b) unlawful appropriation.¹⁶

As to the copying element, where direct evidence of the copying is unavailable, a plaintiff must prove two additional elements to prove the copying: (1) access to the work and (2) substantial similarity of the works.¹⁷ Access to the work may be proven by: (a) establishing a causal access link by the defendant to the infringed work; (b) evidence of widespread dissemination of the infringed work; or (c) when the works are strikingly similar, meaning virtually identical.¹⁸ As to the unlawful appropriation element, "The hallmark of 'unlawful appropriation' is that the works share substantial similarities."¹⁹ As the District Court notes, determining the substantial similarity of the works involves employing (a) an extrinsic test, comparing "the objective similarities of specific expressive elements in the two works," while considering the protectable and unprotectable expressions in the plaintiff's work and (b) an intrinsic test, considering the "similarity of expression from the standpoint of the ordinary reasonable observer, with no expert assistance."²⁰

Indirect Copyright Infringement

Where a party participates in copyright infringement in an indirect or secondary way, that party may be found liable for vicarious or contributory copyright infringement. Vicarious copyright infringement is akin to the doctrine of respondeat superior, in that it serves as a mechanism for an employer to be held liable for copyright infringement committed by an employee or other agent within the scope of their employment. A successful claim for vicarious copyright infringement requires a showing that (1) the defendant had the right and ability to supervise the infringing conduct and (2) a direct financial interest in the infringing activity.²¹ Similarly, contributory copyright infringement is a mechanism by which one who causes or materially contributes to the infringing conduct of another, with knowledge of the infringing activity, may be held liable as an infringer.²² A finding of direct infringement is a prerequisite for a finding of any indirect copyright infringement liability.²³

Fair Use

An important and often misunderstood matter within copyright law in the digital age is the doctrine of "fair use." The rights of copyright owners are not absolute, and various limitations upon the rights

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copyright owners enjoy are principally contained in §§ 107-122 of the Copyright Act. Of particular importance for this matter is the limitation regarding fair use. Fair use is a defense to a claim of copyright infringement and an issue ripe for argument, disagreement, interesting analyses, and important case holdings.

Section 107 of the Copyright Act sets forth the following: "the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright."²⁴ Further, fair use is a factor analysis, consisting of primarily of the following four enumerated factors in § 107: (a) the purpose and character of the use (specifically considering commercial or noncommercial use); (b) the nature of the copyrighted work; (c) the amount and/or substantiality of the used portions of the copyrighted work; and (d) the effect on the value and potential market...