Ninth Circuit clears celebrity tattoo artist over Miles Davis ink

PASADENA, Calif. (CN) — The Ninth Circuit Court of Appeals upheld a jury verdict Friday finding that an image of Miles Davis that celebrity tattoo artist Kat Von D inked on a friend’s shoulder wasn’t substantially similar to a photograph of the musician she used as a reference.

In a per curiam decision, which isn’t attributed to an individual judge, the panel declined to overturn the jury’s findings based on the so-called intrinsic test for substantial similarity because, the panel said, that “would be tantamount to supplanting the jury’s subjective interpretation with our own.”

In two concurring opinions, however, U.S. Circuit Judge Kim McLane Wardlaw and U.S. Circuit Judge Anthony Johnstone said the extrinsic-intrinsic analysis the Ninth Circuit has been using to decide copyright infringement disputes had outlived its use and distorts copyright law.

To prevail on a copyright infringement claim, Ninth Circuit law requires that a purportedly infringing work is found to be substantially similar to the original under an extrinsic test — that looks at the objective similarities between the two works — and an intrinsic test. This second, more subjective test considers “similarity of expression from the standpoint of the ordinary reasonable observer” and is left for the jury to decide.

This intrinsic test created by the Ninth Circuit and the verdict in photographer Jeffrey Sedlik’s copyright lawsuit against Kat Von D distort copyright law, Wardlaw said.

“The Supreme Court has never said that the ordinary observer’s spontaneous impression of the ’total concept and feel of the works,’ without any expert guidance, should be a dispositive factor in copyright infringement,” said Wardlaw, a Bill Clinton appointee. “Indeed, Supreme Court precedent suggests the opposite: that, to accord with the Copyright Act, a court should focus on carefully filtering out concepts and ideas.”

The jury’s impression that there was no substantial similarity based on the intrinsic test doesn’t necessarily mean there was no infringement, Wardlaw added, as there can be “theft without an immediate and spontaneous detection by the ordinary observer.”

“This is particularly true where, as here, the works exist in different media: a photograph and a tattoo,” she said. “An ordinary observer, untrained in both media, may fail to note similarities that, if analyzed and dissected, would be only too apparent.”

Joining Wardlaw and Johnstone, a Joe Biden appointee, on the panel was U.S. Circuit Judge Salvador Mendoza Jr., also a Biden appointee.

“We are pleased and gratified by the Ninth Circuit’s complete affirmance of the District Court’s judgment and refusal to set aside the jury’s unanimous verdict on substantial similarity,” Allen Grodsky, Kat Von D’s lawyer, said. “Equally as important was the affirmance of the fair use portion of the verdict, finding that the photograph of Kat Von D inking the tattoo was a fair use.  This is a good day for freedom of expression.”

An attorney for Sedlik didn’t immediately respond to a request for comment.

Sedlik sued Von D, whose legal name is Katherine Von Drachenberg, after he discovered she had used the photo he took in 1989 of the jazz legend raising his index finger to his lips in a “shush” gesture.

The Miles Davis tattoo had been a gift to Von D’s friend Blake Farmer, a lighting technician who worked on some shoots for her makeup business in 2017. After talking with Farmer, who plays trumpet himself, and learning how important Miles Davis was to him, she offered to create a tattoo of the musician.

Von D told the jurors at the trial two years ago that no one in the tattoo world gets licenses to use photographs as references for their creations. She maintained her use of the Miles Davis was “fair use” because it was her interpretation of the image and served an entirely different purpose than Sedlik’s work.

Farmer provided Von D with the photo that became the subject of the copyright lawsuit. Sedlik, however, turned out to be a stickler when it comes to unlicensed use of his work; he regularly scans the internet to find infringers. He testified how in 2014 he tracked down another tattoo artist who had posted on social media a tattoo he had done based on the same Miles Davis photo.

That artist got away with a free retroactive license after Sedlik contacted him and agreed to waive a $5,000 licensing fee as a “professional courtesy” because, he testified, the artist apologized and showed contrition for not seeking a license beforehand.

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