Sedlik v. Von Drachenberg

Ninth Circuit affirms jury finding that tattoo of jazz icon Miles Davis by celebrity tattoo artist Kat Von D was not substantially similar to and did not infringe plaintiff's photograph.

Photographer Jeffrey Sedlik created a well-known photograph of Miles Davis, depicting the jazz icon making a "Shh!" motion with his fingers over his lips and his brows slightly furrowed. In creating the photo, Sedlik positioned Davis' fingers so that the "Shh!" gesture represented a series of musical notes, adjusted Davis' hair, selected Davis' wardrobe and jewelry, and instructed Davis on his facial expression. Sedlik registered the photograph with the U.S. Copyright Office in 1994 and has since sold nonexclusive copyright licenses authorizing limited reproduction, distribution, display and creation of derivative works of the photograph for commercial and noncommercial purposes. Sedlik also has issued one tattoo license but did not charge the tattoo artist.

In 2021, Sedlik sued celebrity tattoo artist and reality TV star Katherine von Drachenberg (professionally known as Kat Von D) and her company, High Voltage Tattoo, alleging she used his photo of Davis without permission to make a sketch of a realistic tattoo she inked on a friend for free and then posted on social media about the process and result. A jury concluded von Drachenberg's tattoo and related sketch were not substantially similar to Sedlik's photo and did not constitute copyright infringement, based on both the Ninth Circuit's intrinsic and extrinsic tests. The jury also determined that von Drachenberg's use of the plaintiff's photo in four social media posts was fair use. Sedlik then filed a renewed motion for judgment as a matter of law and a motion for a new trial, which the district court denied. (Read our summary of the decision here.)

Sedlik appealed a number of the district court's decisions, including the denial of his motion for judgment as a matter of law and a new trial and the denial of a previous summary judgment motion.

Sedlik argued that in denying his motion for summary judgment, the district court erred in its application of the extrinsic test for substantial similarity. The Ninth Circuit declined to review the district court's decision on summary judgment, however, noting that, absent a narrow exception when summary judgment involves purely legal questions, the denial of a motion for summary judgment is generally not reviewable on appeal from the final judgment after a full trial on the merits. Sedlik's motion for summary judgment was based on the existence of multiple triable issues of fact regarding substantial similarity and fair use. "Thus, the district court's ruling does not involve the sort of 'legal issue' that this court typically reviews in a narrow subset of cases."

Next, the court considered the denial of Sedlik's renewed motion for judgment as a matter of law on the issue of substantial similarity. To prevail, the plaintiff is required to show that the jury's verdict was contrary to the only reasonable conclusion permitted by the evidence for both the intrinsic and extrinsic tests, since both tests are required for a finding of substantial similarity. The intrinsic test is '"uniquely suited for determination by the trier of fact' because of its focus on the layperson," and the court was reluctant to reverse a jury's application of the intrinsic test. The panel therefore declined to disturb the jury's findings on the issue. Since both the intrinsic test and the extrinsic test must be met to find that the allegedly infringing work is substantially similar to the protected work, the court did not need to address the extrinsic test.

Although the decision of the panel was unanimous in favor of the defendants, two judges filed concurrences stating their belief that the Ninth Circuit should discard the intrinsic test applied by the jury because it allows jurors to make their own subjective determinations based on "total concept and feel" and is therefore unreviewable.
In a separate unpublished memorandum, the panel affirmed the jury's finding that von Drachenberg's social media posts depicting her in the process of inking the tattoo, called the Process Posts, constituted fair use. The panel ruled that the district court did not abuse its discretion in refusing to order a new trial on the grounds that the jury's verdict on fair use was against the clear weight of the evidence. It further held that the district court did not err in its jury instructions or err in excluding the plaintiff's lay testimony.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.