Miles Davis Tattoo Case Turns on Jury Copyright Roles (Correct)

A photographer will ask the Ninth Circuit next week to erase a jury verdict that an artist’s tattoo partly made by tracing his photo of Miles Davis wasn’t similar enough to constitute copyright infringement.

Jeffrey Sedlik’s appeal argued infringement should’ve been decided by a judge, not “by a poorly-instructed jury swayed by a celebrity defendant.” That defendant, tattoo artist Katherine Von Drachenberg—known as Kat Von D—convinced the jury her tweaks to the image created something that wasn’t substantially similar.

The dispute, set for argument July 14 before the US Court of Appeals for the Ninth Circuit, tests the sanctity of jury verdicts and the boundary of judicial discretion to make substantial similarity determinations. Courts have upheld grants of summary judgment on substantial similarity, but the fact-specific inquiry generally is left for jurors.

The case should’ve been “a straight summary judgment” because the tattoo is clearly a derivative work, IP attorney Armin Ghiam of Hunton Andrews Kurth LLP said, calling the case “shocking.” He said he had trouble seeing the subtle differences in shading, hairline, and lighting Von D pointed to as differentiators.

“They started from the photography, they changed a couple things, they added stuff,” he said. “It might be valuable, it might make it better, but it doesn’t change the nature of that photograph.”

Still, he said he doubted the appeals panel would reverse the jury.

Sedlik’s photograph and Von D’s tattoo

Credit: Court document

Just because Von D copied doesn’t mean her work is substantially similar, law professor Jessica Silbey of Boston University said. Silbey, who joined a friend-of-the-court brief backing Von D, said she understands why the juxtaposition is shocking to some. The jury verdict, though, is a “very precious thing,” she said, noting jurors had the evidence and testimony before them.

“Copyright law is about the ordinary observer, and the standard is the total look and feel. And it’s meant to reflect normative ideas about right and wrong,” she said. “There was no clear error here. It’s just hubris to suggest the appellate court would know better than the jury.”

University of Pittsburgh law professor Michael J. Madison noted the reluctance of appeals courts to reverse jury verdicts. There’s “a remote possibility” of vacating summary judgment, he said, but “you can have a lot of copying and not have substantial similarity” because one is a fact and the other a legal conclusion.

“This is where intuitive understandings of copyright run into the legal mechanics,” he said. “Precedents on substantial similarity in the Ninth Circuit—to be fair to the court—are confusing.”

‘Loom Large’

District Judge Dale S. Fischer denied Sedlik summary judgment in May 2022, ruling the photographer failed to articulate the specific similarities. Fischer also said a jury could conceivably go either way on the overall look and feel of the works. She also denied Von D summary judgment on infringement, finding genuine factual questions on the transformativeness, commerciality, and market impact of Von D’s use in a fair use analysis

The jury ruled for Von D in January 2024.

In between, in 2023, the Supreme Court ruled in Andy Warhol Foundation v. Goldsmith that licensing a colorized print of the late musician Prince wasn’t transformative in a fair use analysis.

The district court in that case skipped the substantial similarity argument to find fair use, and appellate courts didn’t consider it. But Sedlik suggested in his appellate brief that the high court’s ruling implied substantial similarity even though Warhol added expression to the photo—unlike Von D.

Von D countered that both works in Warhol were licensed to magazines, whereas the free tattoo she gave a friend had an entirely different purpose.

“Warhol is going to loom large” in the appeal, IP attorney Evan Everist of Dorsey & Whitney LLP said. The opinion could influence the court if it aims to clarify when a judge can make a substantial similarity decision finding as a matter of law, he said.

‘Clash of Two Communities’

Juries are famously unpredictable in the eyes of attorneys and professors. Madison hypothesized tattoo artists and photographers “have different ways of looking at the world” and this jury was more harmonized with the former.

Von D’s attorneys “did a phenomenal job” laying out her artistic process to create a basis for a jury to find she created something new, Ghiam said. That opening, deference to the jury, and the underlying factual disputes that sank summary judgment put the Ninth Circuit in a “procedural bind,” he added, though he’d rather judges decide clear-cut substantial similarity calls like this one.

Silbey said tattoo artists have well-established practices, and regularly pay for “flash” art that’s pre-designed, but also often use references brought in by customers as inspiration.

“This is a clash of two communities that behave very differently in a copyright system that doesn’t accommodate either,” Silbey said. “It’s uncomfortable when it’s two artistic communities fighting each other for the scraps.”

The case is Sedlik v. Von Drachenberg, 9th Cir., No. 24-3367.