Katie and Steve speak with esteemed copyright lawyer Nancy Wolff about the Ninth Circuit case Sedlik v. Von Drachenberg, in which photographer Jeffrey Sedlik sued celebrity tattoo artist Kat Von D for copyright infringement related to her inking a copy of his photographic portrait of Miles Davis on a friend’s arm and publicizing the process on social media. They discuss the Ninth Circuit’s unique approach to copyright infringement in applying a subjective (jury-determined) test for substantial similarity based on “total concept and feel” and how that test may be in conflict with basic and established copyright principals.
Resources
https://cdas.com/people/nancy_wolff/
Appellant’s Opening Brief [Dkt. 14] (10/15/2024)
Amicus Curiae Brief of the Copyright Alliance in support of Appellant [Dkt. 19] (10/22/2024)
Appellant’s Reply Brief [Dkt. 71] (4/7/2025)
Memorandum [Dkt. 94] (1/2/2026)
Corrected Per Curiam Opinion [Dkt. 97] (1/2/2026)
Katie and Steve discuss topics based on news and magazine articles and court filings and not based on original research unless specifically noted.
Episode Transcription
Steve Schindler: Hi, I’m Steve Schindler.
Katie Wilson-Milne: I’m Katie Wilson-Milne.
Steve Schindler: Welcome to the Art Law Podcast, a monthly podcast exploring the places where art intersects with and interferes with the law.
Katie Wilson-Milne: The Art Law Podcast is sponsored by the law firm of Schindler Cohen & Hochman, LLP, a premier litigation and art law boutique in New York City. Hi, Steve.
Steve Schindler: Hi, Katie. How are you today?
Katie Wilson-Milne: I’m good. So, we’re back on copyright, which we love, but this is our first tattoo case that we’re going to talk about, I think. Even though actually there have been a few tattoo copyright cases.
Steve Schindler: I know, but I think in our, what, eight years, I think this is the first tattoo case.
Katie Wilson-Milne: And probably the most significant and briefed in the Ninth Circuit. So, that’ll be exciting. And we’re here with a great guest, a copyright expert to help us work through the case who I’ll introduce.
Steve Schindler: Go ahead.
Katie Wilson-Milne: Okay, so we’re here with Nancy Wolff. She is a partner in the intellectual property media and entertainment firm of Cowan, DeBaets, Abrahams & Sheppard, which has offices in New York and in Beverly Hills. She represents a wide range of creative individuals and companies in all areas of digital media, art law, licensing, and publishing, and serves as counsel to the Digital Media Licensing Association. Nancy is the co-chair of her firm’s litigation department and also the art law group there based on her deep knowledge of copyright, defamation, and other third-party rights. She represents photographers, artists, collectors, museums, galleries, and publishers in all manner of legal matters. Nancy is a frequent speaker throughout the United States and Europe on copyright media, and licensing, and she is the past president of the Copyright Society of the United States of America and a member of the ABA IP Task Force on copyright reform.
Steve Schindler: Great. Well, welcome to the podcast.
Nancy Wolff: Welcome. Thank you for having me here.
Katie Wilson-Milne: Thanks, Nancy. So, as you know, we’re here to talk about a particular case in the Ninth Circuit, Jeffrey Sedlik versus Katherine von Drachenberg, which went through trial at the district court level and then was appealed to the Ninth Circuit. And so, it has a rather long procedural history, which is not over, which we’ll talk about. But maybe, Nancy, you can tell us about the facts of this case and what brought this lawsuit about.
Nancy Wolff: Sure. I’d be happy to. And so, Jeff Sedlik is a professional photographer, and someone I’ve actually known for many years. He’s also a professor and teaches a lot about business practices in photography and often serves as an expert witness in many photography cases involving copyright damages and claims. And Kat Von D, which is how she goes by instead of her long name, is a celebrity tattoo artist. And though I’m not a big watcher of reality TV, apparently, had a lot of celebrity status from a reality TV show and is known—
Katie Wilson-Milne: From Miami Ink, right?
Nancy Wolff: Right, something like that.
Katie Wilson-Milne: From my younger days.
Nancy Wolff: And is known for doing tattoos. And I think also she generally doesn’t charge for them. So this was definitely a case that was brought on principle and not about commerciality. And in this instance, I think Jeff Sedlik was making a point that if you literally copy a photograph to create another work of art just in a different medium, even if it’s on an arm, that is something that’s still a copy under copyright. So the background of this work, it was in 1989. Sedlik took a portrait of Miles Davis in his home in Malibu. And he made a lot of the creative choices. If you look at the photograph itself, it’s very sort of dark and moody. It’s posed in a certain way. The way the fingers are pressed against the lips is very specific.
Steve Schindler: It’s a beautiful photograph.
Nancy Wolff: It is a really beautiful photograph.
Steve Schindler: And one of the things, I just, we were talking about it before, but we would just say to our listeners, it would be helpful since we’re not doing this on YouTube, and we don’t have pictures in front of us, it would be probably helpful when you’re listening to this.
Katie Wilson-Milne: Yeah. Nancy’s holding up the picture.
Steve Schindler: Nancy’s holding up the picture.
Katie Wilson-Milne: We’ll link to it.
Steve Schindler: We’ll link it to be able to follow along, to be able to look at both the image of the photograph and various images of the tattoo that we’re going to discuss.
Katie Wilson-Milne: Yeah.
Nancy Wolff: So with photography, which goes back to the era of the Oscar Wilde photo, you have creativity in a lot of the choices you make, the pose, the composition, the lighting, the angle, the elements that are added so that the portrait a photographer makes is unique. It doesn’t mean that no one else can take a portrait of Miles Davis, but Sedlik’s portrait of Miles Davis is distinctive. Many portraits are against a white background. This one is just very dark and recognizable as one of his works of art. Well, he, being a good copyright professor…
Katie Wilson-Milne: I know what you’re going to say!
Nancy Wolff: …registered the work in 1994.
Katie Wilson-Milne: It’s so unusual. Yeah, great.
Nancy Wolff: So he knew the value of registration with the copyright office. And then in 2017, one of Kat Von D’s friends asked to have this specific photograph tattooed on, I believe it’s his arm. And as she does, will take to social media and show the entire process of how she creates this tattoo and has many followers. And so what she did is she took the photograph and, I believe, put it on a light box, which is how you can trace a photo, and then took the tracing and made a drawing, and then used that to make the stencil, and put the stencil on her friend’s arm, and then began the inking while holding the photograph up as reference. And admittedly all along was trying to make the tattoo look as much like a photograph as possible. Now, of course, it’s a different medium. You’ll probably get a lot more finer details and blacks and all than inking. But the point was to essentially recreate Sedlik’s photograph as the tattoo on the arm.
Steve Schindler: And there are, just to amplify on that just a little bit, in the social media posts that she put up, it actually shows the process of which you were just speaking, of the photograph up on a light board and her working on the tattoo. So you can actually see the process that she’s describing.
Nancy Wolff: Right. And you can see Jeff’s photograph there as reference the whole time. Hanging on the wall. So there was really no dispute that this was the underlying source of the tattoo.
Katie Wilson-Milne: So then Sedlik sees this, I guess, on social media.
Nancy Wolff: I don’t know how he came across. Someone may have noticed it or seen it. And I don’t know whether he had contacted her before suing or not. But regardless, that in 2021, he sued Kat Von D for copyright infringement in the Central District of California.
Katie Wilson-Milne: And the rest is history.
Nancy Wolff: The rest is history.
Katie Wilson-Milne: We’ll talk about the rest.
Steve Schindler: A long history.
Nancy Wolff: A long and windy road.
Katie Wilson-Milne: I think I saw somewhere in the record that he had written her and just got no response.
Nancy Wolff: That’s likely.
Katie Wilson-Milne: Yeah. And so then sued. I mean, I think there’s so much when we started looking at this that’s fascinating about this case. And one of the things, as you touched on, Nancy, is the history of copyrightability of photography, which is both old, dates back to the 1800s, at least in the United States, that being established, that photographs can get copyright protection, but is not without ongoing confusion and complication. I mean, we saw this happen in the Warhol case, which we’ve talked about on this podcast several times. Because the nature of photography is that you have some non-copyrightable subject matter, presumably a person or some objects. But what you do with them may be creative and then subject to copyright protection. But there’s always that sort of tangle of those two elements, protectable and unprotectable, which make these cases, I think, also kind of inconsistent when you’re looking at the-
Nancy Wolff: Well, I think that’s really true with all copyright, which makes copyright so interesting, because there’s always the distinction between the idea of what you’re trying to express and how you express it, whether you’re a photographer, a writer, a painter. So what copyright cases always do is they’re trying to figure out where that line is, like where have you crossed it. With two-dimensional works like photography, when it’s put into another medium like a Warhol case with painting or illustrations or even quilts or whatever you could do with a two-dimensional photograph, you have to look at what is protectable. Of course, the face isn’t, but the choices that the photographer make and have really been expressed by the artist in the other medium. And I’ve had many cases like that through my career representing many photographers as well as artists, because it’s so easy for artists to use photographs as a basis for a work, because it’s there and it’s fixed and it’s something you can use as reference. So there’s many art reference licenses as a result of that. In fact, that’s what the Warhol case was based on. That Lynn Goldsmith’s photograph was used as an art reference.
Katie Wilson-Milne: And had been licensed.
Nancy Wolff: And had been licensed for the initial work that Warhol did years ago.
Katie Wilson-Milne: And just not for the subsequent magazine cover.
Nancy Wolff: Not for the subsequent magazine cover, yeah.
Katie Wilson-Milne: Okay, so Sedlik claimed that Kat Von D had infringed his copyright in this photograph by both creating the tattoo but also creating imagery around the process, right? Social media posts, photographs of her creating the tracing and the stencil, and also her actual doing the inking on…
Nancy Wolff: Right, yeah.
Steve Schindler: And some of the social media posts, as you said, had the actual photograph in it.
Katie Wilson-Milne: Right.
Nancy Wolff: Right. So, yeah, the case involved the social media posts with the process and the reproduction of the actual photo in it, as well as the actual tattoo that ended up on the arm and probably all the interim copying that took place between the tracing and the light box and the illustration and the stencil email. All those different reproductions are all technically— could be copies as well.
Katie Wilson-Milne: Right. So just to say there were many different points of infringement that this case analyzed, not just the tattoo, which makes it interesting. And in the end, came out differently, at least in terms of the legal doctrines that were applied. So Sedlik brings this copyright infringement case. What does he have to show to win? What are the basic elements?
Nancy Wolff: Well, in order to show infringement, you have two things. You have to show access and substantial similarity. Access was obvious, because the picture was there, and substantial similarity is how close is the copy to the original, and did you copy copyrightable elements. Now, copyright, of course, is a federal statute, so it’s— essentially substantial similarity is something that has to be proved everywhere, but in different districts or circuits around the country, there’s been different tests to determine whether something is substantially similar when it isn’t the original that’s been copied itself, but there’s been another copy made of it, whether it’s derivative or an exact copy or what. So these are where all the interesting cases come in, when it’s not just one of those, like I would call right-click, where you just download something from the internet and photocopy it, but where another work is created based on an underlying work, because then you have to figure out, well, is this a copy, is this a derivative or is this a fair use?
Katie Wilson-Milne: And is it a copy with substantial similarity? So we know he owned a copyright. I mean, he had the copyright in this work, so that’s not contested. There’s two ways to think about this case, and Steve and I were talking about this. One is just, as a regular human being in the world, when you look at the pictures, images together, and you look at the facts, I don’t think there’s any way to look at this without saying, “oh my God, she obviously copied that photograph.”
Nancy Wolff: She admitted it. She admitted it, right.
Katie Wilson-Milne: She took the photograph and tried her hardest to copy it.
Nancy Wolff: The goal was to make it as close, because that’s what her client friend wanted. He wanted that photo and the look of that photo on his arm. That was the Miles Davis picture that he wanted. I’m sure there’s many Davis photographs, but that’s the one she wanted.
Katie Wilson-Milne: It stands credulity as a human with just paying attention to this that this wasn’t intentional direct copying, right? But the legal analysis of this, which I think is different. It’s technical parsing of how this was done and all the different facets of it, and this, you know, legal rule in the Ninth Circuit for substantial similarity, which we’ll talk about. And I think that difference between sort of the instinctual reaction one would have looking at these images and then the legal analysis that somehow, you know, through the jury’s interpretation, gets us a totally different answer.
Nancy Wolff: Yeah, it’s, I think it’s sort of ironic, as I’m sure Jeff brought this case, thinking this is so obvious. She said she copied it and it should have been a clear cut case. I think this case is actually a very good example for why the court should really look at the test that we’ll talk about that’s being used in the Ninth Circuit, because it seems to subvert common sense and logic when you have a clear cut case and you can have a jury result that is so far off the mark and, you know, you don’t know why juries go some way. I mean, they were being asked something that they don’t do every day. They’re not asked to understand the nuances of copyright law.
Katie Wilson-Milne: Right. And honestly, as lawyers, we know when we represent a client, it’s complicated, it’s contradictory, it’s a mess, right?
Nancy Wolff: Oh yeah, yeah.
Katie Wilson-Milne: So how do you expect a jury to come up with the right answer?
Nancy Wolff: It is very nuanced and many lawyers, and I’m sure you know this too, if they don’t practice in the copyright area, primarily, they don’t understand the nuances. So many times I’ll have an adversary that’s a patent lawyer, and they think this is so simple and easy, because it’s so much gray area and there’s so much, what side of the line are you? Is it fair use? Is it not? Is it derivative? Is it a copy? That I think you just really need a lot of experience to understand it. I think it’s not that easy for a jury.
Steve Schindler: I think one of the things that struck me in reading this case, in the briefs— because so many of these famous infringement cases start with a photograph and migrate to a famous artist, whether it’s Jeff Koons or Richard Prince. But usually in those cases, the focus is on fair use to some extent. And the artist, artist’s lawyers, are making some argument that in some way the artist is recontextualizing, pre-Warhol. Here, there was no even facade of that. It was like, no, I was trying to make this look as much like that as possible. I wasn’t trying to imbue it with different kinds of feelings or different kinds of ideas.
Nancy Wolff: No new meaning and insights.
Steve Schindler: I wasn’t parodying it. I wasn’t commenting on it. I was just simply copying it to get it as close as possible, because that’s what my client wanted, that he wanted an image of that photograph on his arm.
Katie Wilson-Milne: Yeah, it’s a distinct… I mean, Steve was saying to me earlier when we were preparing for this that in so many copyright cases, you can’t prove direct copying. So you look to substantial similarity, right? Like that’s, as you say in your amicus brief, which we’ll talk about in a minute— in many circuits, substantial similarity is complicated. But one use it has is that where you can’t show direct copying, which is sometimes impossible, we look to see how substantially similar it is to infer copying, right? Which is a requirement for copyright infringement. And here there was no need for that, right? We literally not only had Kat Von D saying, yes, I copied it. I tried my hardest to copy it exactly. We have photographs of her doing it. So that almost never happens.
Nancy Wolff: Yeah, it’s kind of surprising. And it was quite obvious that Jeff’s lawyers would bring a motion for summary judgment, because this seems like a clear-cut case that the court could say as a matter of law, no jury could disagree that this was not a copy and that it is substantially similar the way you would understand that term under copyright law, where you would sort of separate the idea of a portrait of Miles Davis from how Jeff selected it. And it wasn’t like this was a snapshot or street photography or something that was taken in the moment. I mean, this was a composed shoot in Miles Davis’ home where Jeff, as it says even in the decision and the brief, that he made a lot of the decisions. He helped with the styling of the hair and the pose and the lighting and the look and the angle and was very much involved, almost like the decision if you read the old Oscar Wilde case, in selecting the clothing and the pose and the sitting. I mean, he really had an idea of how he wanted this portrait to come out, and that is the result that you look at. So I think-
Katie Wilson-Milne: Which she didn’t dispute.
Nancy Wolff: No.
Katie Wilson-Milne: I mean, in one of the briefs, they quote her deposition testimony, which is really interesting and we’ll link to this. They basically say, did you try to imitate the style? Yes. Did you try to make it feel the same way? Yes. She’s honest about it. And only later, we should say that her appellate lawyers changed that story a little bit to say, oh, look how different she made it. You know, look at all the things she changed. And then that’s up to you, listeners. You can look at the photograph and the tattoo and see if that’s intuitive to you or not.
Nancy Wolff: And obviously, when you’re putting ink on skin versus light on paper, there may be subtle differences in how the darks are and the shadows are, because it’s a different medium. But the results when you look at both of them are really, when you see it on the arm, the photo is within inches of her.
Steve Schindler: Yeah, yeah.
Nancy Wolff: So she doesn’t miss any of the nuances.
Katie Wilson-Milne: Right. So there’s a fair use component to this, but we should just recap that fair use is a defense to infringement and properly analyzed in a case. The fair use analysis is only undertaken by the court or the jury if there’s a finding of infringement. So step one is, was there any copyright infringement? And that’s what we’re talking about when we’re talking about, did he own the copyright? Yes. Was there copying? Obviously yes. And was there substantial similarity? So the court and then the jury, because this goes to trial, which is one of the issues, it’s stuck on the substantial similarity prong of the test. And what is that test in the Ninth Circuit? Because it’s not our Second Circuit world.
Nancy Wolff: Oh, definitely not our Second Circuit world. And just for clarity, the court only looked at, I think, or the jury only looked at fair use in some of the process.
Katie Wilson-Milne: Photos, yeah.
Nancy Wolff: Photos. But for the arm, summary judgment could have been granted just on the extrinsic test. However, the Ninth Circuit has a complex test. I mean, we are talking about the Second Circuit. We have an ordinary observer test, which allows you to look at art like anyone would. You would put them next to each other, and you look at them side by side, and you would take out anything not copyrightable. But then you would look at the techniques and all the choices the photographer made, and you would look at them and say, do they look similar? And in that instance, a court could do that. If it’s too close, it will sometimes go to a jury, but generally, that’s how cases are decided in the Second Circuit.
Katie Wilson-Milne: Right, and they are often decided on summary judgment.
Nancy Wolff: They’re often decided on summary judgment, which as we’ll get to, is really important, because no one wants a jury trial. It’s particularly— like photographers can’t afford a jury trial.
Steve Schindler: Right, they can barely afford summary judgment.
Nancy Wolff: They can barely— right. I mean, I advocated for almost 10 years to have a copyright small claims court, which finally happened. Because it’s really the only way many artists can afford to enforce their rights is if they don’t have to have a lawyer and can have a less expensive way of doing it.
Steve Schindler: And particularly in a case like this where the damages themselves are, I mean, the court never got to it, but it’s hard to imagine what they even would be.
Nancy Wolff: Jeff did it really on principle and not really for monetary damages.
Steve Schindler: Presumably.
Nancy Wolff: Because he knew that she didn’t even charge for the tattoo.
Steve Schindler: Right.
Nancy Wolff: I think through her social media posts, there’s probably some commercial element where if you have a lot of followers and there’s advertising, you can make some money.
Katie Wilson-Milne: But that’s an indirect analysis.
Nancy Wolff: But that’s a whole different issue. But the Ninth Circuit, instead of having, let’s look at everything side by side, has through a history of cases divided substantial similarity into something that’s subjective and something that’s objective. So the objective part is called the extrinsic test. And that’s where you would do what you sort of do in the Second Circuit, which is look at the work and see what expression has been copied in an objective manner. So those would be all the choices the photographer made. And you would filter out unprotectable elements, such as a standard pose or the fact that it’s a face or maybe it’s a white background or something that you couldn’t protect.
Katie Wilson-Milne: Yeah.
Steve Schindler: Right.
Nancy Wolff: It’s the ideas, because the important thing about copyright is copyright doesn’t protect ideas, it only protects how you express them. So you’re not giving someone a monopoly. So you can’t say only one photographer could take a portrait of Miles Davis, because that would be the only portrait.
Steve Schindler: Right.
Nancy Wolff: I mean, that’s sort of the basis of copyright is that you want to promote ideas and allow many different artists to express them in a different way.
Katie Wilson-Milne: Right.
Nancy Wolff: So we could all stand in the same place, like the impressionist painters next to each other, and you would get a Renoir and a Monet that look very different.
Steve Schindler: Right, you can’t own the spot…
Nancy Wolff: So you can’t own the spot, but you can own how you express and how you see that spot through your own eyes, or the person, or the subject that you’re doing.
Katie Wilson-Milne: So that objective, quote-unquote, extrinsic test makes total sense. That seems in line with the Copyright Act in the Second Circuit.
Nancy Wolff: But then through a history of some cases, comes this intrinsic test, which involves looking at the total concept and feel. So here you’re starting to say, well, what element of copyright is that? How do you feel about something starts to sound more like the idea, a move.
Steve Schindler: A concept is an idea.
Katie Wilson-Milne: And style, which we know, theoretically, you cannot copyright style.
Nancy Wolff: And the tough part for any plaintiff is that a judge, which didn’t do it in this case, can decide the extrinsic case. In this case, he threw it to the jury anyway. But the intrinsic test is only for a jury, which again, isn’t schooled in copyright, and now is supposed to decide if something is substantially similar by how they feel about it without any instructions on what they’re supposed to look at, what they’re not supposed to look at, and it really ends up where you have very unpredictable results. So here, where you have a clear-cut case where everyone knows that the photo is the underlying source of the tattoo, and they’re supposed to look exactly alike as much as you can with an arm versus paper, and you have a jury that comes back after three hours and says, no, there’s no substantial similarity. We think they look and feel different, and you don’t know if they’re just persuaded, because they were enamored with a celebrity tattoo artist, or they didn’t like the idea of a photographer going after a tattoo artist. I mean, you have no idea how it is, and the irony is that in a clear-cut case like this, there’s no way to appeal that. It’s basically un-reviewable. It’s unappealable. So a judge gets it wrong, you can have an appeal if it gets the intrinsic test wrong. But you can’t even get summary judgment as a plaintiff bringing a claim, because even if the judge decides extrinsic, it gets thrown to the jury for the intrinsic test.
Steve Schindler: Right. So this is one of the things, and I think one of the concurring opinions in the Ninth Circuit case sort of pointed this out, is this lopsided… It’s a real obstacle for plaintiffs, particularly at the summary judgment stage, as you say, because if you’re a plaintiff, you have to satisfy both the extrinsic and the intrinsic parts of the substantial similarity test. So you have to do two, but one of them has to be decided by a jury most of the time. So if you’re a defendant and you can convince the judge that they don’t meet the extrinsic test, then the judge can throw it out. Exactly. Because…
Nancy Wolff: No need.
Steve Schindler: There’s no need to have an intrinsic test, but if you’re a plaintiff…
Katie Wilson-Milne: The judge can never throw it out…
Steve Schindler: On summary judgment, the judge can really never throw it out, because the second part, in most cases under the Ninth Circuit precedent, has to go to a jury.
Katie Wilson-Milne: I want to keep saying that, remind everyone, that substantial similarity is an element of copyright infringement and fair use as a defense, and they’re totally separate. Yet, there is so much overlap in the confusion around these doctrines, because there is this sense that both courts and juries are swayed by things like the fame of the copier, what they feel like is the level of importance of a work of art, and there’s so much lack of clarity about the standards that are applied. So we see some of these themes come up in both cases, and in this case, there’s— Fair Use also comes up. One of the most interesting things about this double test for substantial similarity, in addition to whether that led to the wrong or the right result in this case, is whether it’s compatible with the Copyright Act itself. And I think what is so odd is that, as Nancy described so well, the extrinsic test is a very good statement of what you need to look at for substantial similarity. There’s no hole there. There’s nothing left that we need to look at. And so why the Ninth Circuit, starting in the 70s and then over the ensuing decades, would need to just voluntarily add on something else to that? It seems to- It’s confusing.
Nancy Wolff: It seems that they, one court throughout this total concept and feel, which may have been another way of saying selection and arrangement, which is a compilation copyright. And I think it got completely misunderstood, and then, you know, kept— get carried on. And so you ended up with this subjective test that’s unmoored in copyright, because copyright is not supposed to predict ideas, where the intrinsic test seems to emphasize ideas and, and concepts and things that aren’t fixed, aren’t expressed, you can’t identify as an element that’s copyrightable. And I think that makes it very difficult to give a jury instruction. I mean, fortunately, I’ve never had to do it, because I don’t, even though I’m in-
Katie Wilson-Milne: Practice in the Ninth Circuit.
Nancy Wolff: I’m admitted in California, but I will not do it. I always try to get jurisdiction in the Second Circuit, if I can, because it just seems so unmoored in principles of copyright. And you can have this sort of bizarre result, where it’s so clear that there was copying, but you then get a jury decision that cannot be reviewed, because of the principle that you can’t review jury decisions.
Steve Schindler: Right.
Nancy Wolff: So…
Katie Wilson-Milne: Yeah, and so what are the reasons this intrinsic test seems to not fit with the rest of what we understand about copyright law? I mean, one is the text of the Copyright Act in Section 102B literally says, in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, which is literally the language of the intrinsic test, principle of discovery, blah, blah, blah, blah, blah. So it’s in the statute describing these types of things are not a consideration when we’re looking at whether something is copyrightable. And so they really can’t be a test that would lead you to substantial similarity. It just doesn’t make sense.
Nancy Wolff: If you look at all the Supreme Court cases, I mean, it’s so clear that you can’t protect ideas. If you go back to the Feist case…
Katie Wilson-Milne: Yeah, phone book.
Steve Schindler: Phone book.
Nancy Wolff: Phone book, if you put a phone book in alphabetical order, you haven’t done anything original and you can’t protect it, even though you have sweat of the brow. And it seemed here that in the appeal, the attorneys for the tattoo artist were talking about the process and how much work she did and all these differences. And I kept thinking, wouldn’t that be like sweat of the brow?
Steve Schindler: Sweat of the brow, right.
Katie Wilson-Milne: It doesn’t matter either way.
Nancy Wolff: It doesn’t matter either way. You have to look at the end result and look at them together and not look at, well, you did all this inking and difference.
Katie Wilson-Milne: And the other thing is we have this confusing and contradictory doctrine, but nevertheless, we all accept, to some degree, that style is not copyrightable. And we have a long history of cases grappling with that. There is definitely some scholarship suggesting that when you look at the facts in many cases, style is in fact an inherently valuable part of copyright. The courts do look at that.
Nancy Wolff: We may have to start looking at that in some of the AI cases where you have copying the style artists by training on all their work. But in this case, I don’t think style even came in, because it’s really elements in one photo, not a series.
Katie Wilson-Milne: Yeah, but if we accept that style is not copyrightable, then how could the total concept and feel of something lead to a decision that there’s substantial similarity for copyright?
Nancy Wolff: Total concept and feel starts to feel like…
Katie Wilson-Milne: Style.
Nancy Wolff: Style or sort of a trademark look or a distinctive look. Yeah, it’s really interesting. And I think that’s why there were two judges who said, I’m really sorry. We have to accept the jury. But we think this case is one that really highlights the problem with this intrinsic test, and it probably should be done away with.
Katie Wilson-Milne: Right, this case became, instead of just being an open and shut case of copyright infringement, we have proof of copying. It’s basically identical. This becomes a real opportunity for the Ninth Circuit to re-evaluate this doctrine.
Nancy Wolff: Yes.
Katie Wilson-Milne: Which is really interesting.
Nancy Wolff: It’s really interesting that I think Jeff took this, because he thought it probably was a slam dunk copyright case and would set an example. And now he’s changing Ninth Circuit law.
Katie Wilson-Milne: Well, maybe.
Nancy Wolff: Possibly. We’ll see.
Steve Schindler: So, should we talk about the procedural posture of the case?
Katie Wilson-Milne: Yeah. So, what happens at the trial court?
Nancy Wolff: The judge denied summary judgment on both substantial similarity as well as with the intrinsic test, as well as fair use and sent everything to the jury. It just…
Katie Wilson-Milne: And he didn’t decide the intrinsic test either, right?
Nancy Wolff: No, he didn’t decide. He could have, but he did not. He sent everything to the jury. I don’t know why. I wrote an amicus brief with the Copyright Alliance, and part of the position was that when you have clear-cut cases, judges should be the ones making these decisions and not passing things off to the jury because you just are, for two reasons, you need consistency in law, and juries often will be inconsistent, because they don’t really understand the nuances. They don’t see these cases that much. And also the expense. It’s really too expensive for artists to contemplate bringing a case if they know they would have to spend so much money on a jury trial. I mean, you’re talking, if someone reproduced a photograph for no money, and it could cost you over $300,000 to go to a jury trial.
Katie Wilson-Milne: Maybe more.
Nancy Wolff: Now, I believe— or up to a million, or many more depending on the complexities. And in this instance, I believe, Jeff has family lawyers that were doing this for him.
Katie Wilson-Milne: That was possible.
Nancy Wolff: That was possible for him to do. And then on appeal, I think William Patry was working with him. And I don’t know if they’re doing it on some kind of basis to try to just form copyright law.
Katie Wilson-Milne: Yeah, it’s possible.
Nancy Wolff: But for a regular person, this would not be possible.
Katie Wilson-Milne: So then Sedlik– one of the points of contention on appeal, I guess, Sedlik doesn’t appeal the denial of summary judgment right away, right? He lets it go to trial without an appeal.
Nancy Wolff: Yeah, I’m not sure about all the process and that, because sometimes the timing or when that has to happen.
Katie Wilson-Milne: Right, there are rules about that.
Nancy Wolff: There’s rules about that on the amicus brief I didn’t dig into that.
Katie Wilson-Milne: You didn’t dig into that.
Steve Schindler: I mean, the Ninth Circuit basically said that they were not going to review. He tried to appeal the denial of summary judgment.
Katie Wilson-Milne: After trial.
Steve Schindler: After trial, and the court basically said, that’s not proper, because essentially what you’re asking us to do is to sort of overrule the jury by this kind of end run. That a denial of summary judgment can be appealed after a decision is made, right?
Katie Wilson-Milne: Not after trial.
Steve Schindler: But not after trial. And that’s, you know, that was one of the issues.
Katie Wilson-Milne: Yeah, and we’ll talk about it. I mean, the Ninth Circuit decision is very technical in a somewhat unsatisfactory way because of these procedural arguments. At some point in the trial, Kat Von D’s lawyers admitted there was substantial similarity with respect to the social media posts and process images that had an actual image of the photograph. So without, the jury did not need to decide that. They conceded substantial similarity and then just asked the jury to decide if that was a fair use.
Nancy Wolff: Correct. So those ended up in fair use. And then for the tattoo itself, the jury came back and I know, at least with the intrinsic the process said that they didn’t, they said it was no substantial similarity.
Katie Wilson-Milne: Right.
Nancy Wolff: So I think that, I don’t even know if it matters, what they came with the extrinsic, because you had to win both. So.
Katie Wilson-Milne: Yeah. I think they came back with both, but you’re right. Either one of them would have been.
Nancy Wolff: Either one of them would have made Jeff lose and the tattoo artist win.
Katie Wilson-Milne: And they also decided, determined that for the process images that contain the photograph, that it was a fair use of the photograph. So it was a hundred-percent win for…
Nancy Wolff: Correct.
Katie Wilson-Milne: Kat Von D.
Nancy Wolff: Right. So I think the jury was instructed that the intrinsic test is a holistic comparison that focuses on where the works are substantially similar in total concept and feel of the works. And they found that the works did not have a substantial similar total concept and feel, so they failed the intrinsic test. And because you had to admit both, there, I think, it may not have even been relevant what they thought about in an extrinsic test, because once the intrinsic test came back as non-infringing, since you had to meet both, that would be the end of the story.
Katie Wilson-Milne: And because the court won’t review that, or this court wouldn’t review it.
Nancy Wolff: This court won’t review that, that it was a complete win for the artist, tattoo artist.
Katie Wilson-Milne: So then Sedlik eventually appeals this. Well, he appeals to the Ninth Circuit after the trial.
Nancy Wolff: Yes, he appeals to the Ninth Circuit after the trial. It’s a three-panel, and they feel compelled to uphold the jury decision, because they can’t overturn a jury decision on the intrinsic test. Though two of the judges…
Katie Wilson-Milne: Two of the three go out of their way.
Nancy Wolff: Two of the three go out of their way to… One was Judge Kim Wardlaw, and the other was Judge Anthony Jonestone, to heavily criticize the intrinsic test, which is heavily criticized by most copyright experts, such as Nimmer and many others, and say it’s time to look at this test and dispense with it, because it doesn’t really comply with the Supreme Court ruling on copyright, and it leads to these results where you have a clear-cut case, and yet you have a decision that is so unmoored at copyright.
Katie Wilson-Milne: And it’s unreviewable.
Nancy Wolff: And unreviewable. And it could work both ways. I mean, in this instance, it disfavored the plaintiff, but I could see it could also.
Katie Wilson-Milne: Definitely.
Nancy Wolff: Harm defendants as well, because there could be situations where works are very different, and could come back and say, no, I think there’s a total concept and feel, the vibe is the same.
Katie Wilson-Milne: Even for unprotectable elements, right?
Nancy Wolff: Even for unprotectable elements. So it isn’t like this only favors defendants. Yeah, I agree. This could be a problem for anyone. But I think because the test really is so out of sync with the Copyright Act itself and precedents in the Supreme Court, and so different than the other circuits and the way they handle things that this may be the case that is right to have it overturned.
Steve Schindler: So it’s interesting though that, I mean, just the judges who heard this, at least two of them went out of their way, as you say, to express that this intrinsic test doesn’t comport with copyright law and Supreme Court precedents should be done away with, but they could have done away with it. I guess they, now— a petition has been brought by the photographer to have it re-heard en banc by the entire Ninth Circuit, and maybe that’s the appropriate way to do it. But I don’t know that the court was precluded from like, they’re the Ninth Circuit sort of ruling on, I mean, I know cases here in the Second Circuit where the courts have said, this precedent was not right, and we’re ruling, you know, contrary to that. It’s just interesting that they’re, they felt so strongly, but they ruled the way they did.
Nancy Wolff: Yeah, it is interesting, and I’m not sure why, and maybe they felt, because it was only two out of three, that all they could do was criticize it and say, this should be overturned, knowing the next step would be en banc, and then that would also be more appropriate to have all nine of them review it and have a majority. So, because if they did it, it would probably go up anyway on re-hearing. So maybe they were just sort of laying it out in a way that would encourage the Ninth Circuit to take it. I don’t know the strategy, but it may work, because Jeff Sedlik has asked to have a re-hearing en banc…
Katie Wilson-Milne: Before all members of the Ninth Circuit.
Nancy Wolff: …before all nine of the judges in the Ninth Circuit. And the Ninth Circuit has told the other side, the Kat Von D’s team, that they want a response, which generally means that they do want to hear it.
Steve Schindler: Right.
Nancy Wolff: So there’s Amicus Briefs being teed up for when that happens.
Katie Wilson-Milne: Yeah. And this panel teed up this issue for the full court. So, I mean, it may have been intentional.
Steve Schindler: Yeah.
Nancy Wolff: Likely intentional.
Katie Wilson-Milne: But I guess we’re spending a few more minutes on the Ninth Circuit decision, the regular panel decision, because the concurring opinions are big and doctrinal, but the actual decision of the court is very narrow. So one of the main points, and we’ll talk about, Nancy, your position in your amicus brief in a second, that Sedlik, one of his issues on appeal, main issues, was that the district court should have granted summary judgment on infringement, right, as we just talked about a little bit. And that that was improper as a matter of law. And the Ninth Circuit’s response to that is, you’re bringing up this argument too late. Not that it’s wrong, right? Not that they didn’t even get to, oh, actually, you know, when we have an intrinsic test, even if we don’t like it, that’s never appropriate for summary judgment. Their real decision about that was, you waited too long, you waited till after trial. That issue’s over, right? So then they move on to whether they can overturn the jury verdict on the intrinsic test component of substantial similarity. And that’s a lot harder, because the case law does seem to say that when a jury does decide the intrinsic test, we’re supposed to defer to them rather than that a judge can never decide it, right?
Nancy Wolff: Right.
Katie Wilson-Milne: And so, they’re stuck in that world. And yeah, they feel based on the precedent that overturning a jury decision on this test, which has no standards, no instructions for the jury about how to apply it, and is deferential is too much. Like, they’re just not going to do that. And that’s the case.
Nancy Wolff: I know. It seems everything went on a technicality and, oops, we’re sorry, we can’t fix this.
Katie Wilson-Milne: And even fair use, so for those, which we’re not focusing on as much in this conversation, but for those images where substantial similarity was conceded because they contained an actual photograph of the Sedlik’s photograph, the jury found fair use to that, and that was appealed to. And in a separate opinion, that I don’t know the reason why, the Ninth Circuit issued a separate opinion.
Nancy Wolff: I know it was a whole separate opinion.
Katie Wilson-Milne: Like, they just didn’t want it to be part of the, I don’t know. But in a separate opinion issued, I think, on the same day, they don’t even grapple with the fair use, right? They’re not going to get into transformativeness or the market or the commercial nature. They just say, sorry, you didn’t bring this up at the right time either. You should have filed a 50A motion, like, right away after the jury decision, and instead you waited too long, and so we don’t need to deal with this either.
Nancy Wolff: It just seems like they were kicking the can on this case a lot.
Katie Wilson-Milne: Yeah, maybe that’s proper, but it just is interesting for such a big doctrianal case.
Nancy Wolff: Yeah, it’s very Unsatisfying.
Steve Schindler: And there was that other ground of appeal where, I guess, the district court judge had decided two of the fair use factors.
Katie Wilson-Milne: That’s right, yeah.
Steve Schindler: And decided them favorably for the plaintiff, but then when the judge put the entire issue to the jury on fair use, did not disclose to the jury how he had decided those two fair use factors. So, it’s kind of like, yes, I decided these two things this way, but I’m going to give you the whole package and then you sort of-
Katie Wilson-Milne: And not give you the benefit of my legal reasoning, right?
Steve Schindler: So, then they just had to decide it without really any guidance as to how to do that.
Nancy Wolff: The way they looked at it, because she wasn’t making any money on it, I think, was an issue. And also, well, the different use of the photo from the first factor, which is the nature, character, the use. So, well, one was used as a portrait, and the other was sort of just used pixelated as a reference, and no one would copy the pixelated picture, which wasn’t really the point. Right.
Katie Wilson-Milne: And it wasn’t, I mean, we don’t have the benefit of a full analysis, because the jury doesn’t write down their analysis. I mean, I think what also seems to be the case from the record was that this trial was a bit of a mess. Right? We don’t have the whole record. Maybe there was good reason for this. Maybe there was, I think, it seems in the record some dislike of Sedlik as a litigant. But the judge seems to be a bit inconsistent in the description and application of the law. And then the jury is clearly confused, because one thing the jury does, which the Ninth Circuit finds is not reversible error, because it doesn’t have an adverse consequence really. But the jury decides for a number of cases that there’s no substantial similarity, right? As we discussed, that’s end of story. That means there’s no copyright infringement. Everyone goes home. Then for those same works, they do a fair use analysis and find that they’re fair use, which you would never need to do it. But and it’s not that that necessarily creates reversible error, but it indicates such a level of confusion about the law at the level of the jury to cast out on this decision.
Nancy Wolff: Which is why summary judgment is so important for these type of copyright cases, because you get the benefit of a judge who hopefully has had some experience with copyright law, and often in New York or California, you will. And…
Katie Wilson-Milne: And has had time to sit in chambers with extensive briefing and research the law and read the cases, which a jury does not have.
Steve Schindler: If you look at all, I mean, most, I’m just trying to think the major copyright decisions of the last 10, 15 years have all been summary judgment decisions. They’re not jury trials.
Nancy Wolff: Everything settles if you don’t get summary judgment.
Steve Schindler: Very, very unusual.
Katie Wilson-Milne: So it just seems— the whole thing seems a bit of a mess, and I think the Ninth Circuit acknowledges this, right? It’s that things are a mess, and yet somehow our hands are tied that we have to accept this. Tell us about your involvement in this case.
Nancy Wolff: Well, our firm is a member of the Copyright Alliance, and we will often do amicus briefs on their behalf, and the Copyright Alliance is a non-profit that represents the copyright interest of many creatives, as well as trade associations, SAG, and songwriters, and as well as large associations like the Motion Picture Association and things like that. But it really is there to represent the creative industries, and advocate for them, and do lobbying. So there’s the voice of the creative industry in Washington, as well as the tech industry and others. And so it’s a quite diverse group. You can have, you know, musical composers, authors, songwriters, as well as the major labels in Motion Picture Studios, and software developers. And they will take positions on cases where they feel that it could affect others than those that are just litigating this. Because these kind of decisions where you would have sort of a complete disregard and a clear cut case, has two effects. It’s that you will have decisions that are completely unreliable, and you won’t know the results, and it will be too expensive. So imagine you’re a genre writer in fiction, and you do, like, YA fantasy. Well, you could have a claim, and someone else could just have ideas that are similar. And who knows what would happen on an intrinsic test? You’ll say, well, you know, the look and feel, and you’ll say, what does that mean when you have a genre?
Katie Wilson-Milne: Every jury will be totally different.
Nancy Wolff: Every jury will be completely different. Or you have someone that does a certain style of music, say blues, where you have similar chords and similar, you know, there’s beats that are similar, and rhythms, and how is a jury going to know, you know, what is total concept and feel? So, I mean, it causes problems for any kind of creator where your case is up to a jury who has to decide something that isn’t moored in copyright and isn’t based on copyrightable elements, but how a jury feels. So the jury could maybe feel like they don’t like one of the parties, or they really like the other, or they could just feel that the works are similar when it’s just an idea, or they could feel like, oh, they’re really different, because it’s a different medium. Or what if you have to compare, you know, a novel with a film? Well, they’re certainly not going to have the same look and feel. It could be very different.
Katie Wilson-Milne: They might have the same concept.
Nancy Wolff: They might have the same concept, but when you adapt a book to a film, they’re always different because you can’t do in one and a half to two hours, but you can write in a 300-to-400-page book.
Katie Wilson-Milne: So how does the Copyright Alliance, I mean— this one thing so interesting about the group is it represents so many diverse players in these creative industries, many of whom are probably using other artists’ references, right? So how does the Copyright Alliance make a decision about whether to weigh in with an amicus?
Nancy Wolff: They have a committee that reviews it and carefully picks the arguments that you want to make, and in this case, picked the arguments that this test really shouldn’t be used when you have close-cut cases that there’s a reason you have rule 56, which is summary judgment, and summary judgment when things are not in dispute, when there’s like admissions of copy, things like this should not go to a jury. It just makes things too expensive, and they really looked at the unfairness to creators, particularly individual creators who just cannot afford to litigate. And again, that was one of the reasons that Copyright Small Claims was advocated for so hard, and Copyright Alliance was really behind that too, because there needs to be a venue where individual creators can enforce their copyright.
Katie Wilson-Milne: So your brief was very focused on the denial of summary judgment being improper.
Nancy Wolff: Yes,yes.
Katie Wilson-Milne: And that summary judgment should have been granted in favor of Sedlik, because there was evidence of direct copying, and so actually the substantial similarity analysis is even less important, because here we had numerous admissions about direct and total copying, basically.
Nancy Wolff: Right, and if you look at the two works, there is definite resemblance. Which is too nice a word, probably. But there was an admitted effort to make it look as close as possible.
Steve Schindler: And the results…
Nancy Wolff: And the results show that.
Steve Schindler: …showed it.
Nancy Wolff: Yeah. So admission that they’re intended to look as close as possible. The client wanted it to look just like the photo. So it should not have been that difficult a decision for the judge to determine substantial similarity in this instance.
Steve Schindler: As a matter of law.
Nancy Wolff: As a matter of law.
Steve Schindler: Because it’s so obvious.
Nancy Wolff: Right. It’s so obvious.
Katie Wilson-Milne: I mean, one thing you don’t do and no one does, none of the litigants do and none of the amici do, is say outright, you should overturn this test, right? I mean, there’s some undercurrent of that maybe in your arguments, but you don’t say that. You say, even taking this world as it is, the court should have granted summary judgment, right? Because there are a couple of cases, at least in the Ninth Circuit, because again, this law is all over the place and you can always find inconsistent decisions, where the court did decide substantial similarity on summary judgment, because it was so blatant. So it’s not like that’s never happened in the Ninth Circuit. The panel on Peel even says that, that this has happened. There are extreme, quote-unquote, circumstances where it may be appropriate. And that left me with this question of, okay, well, if this isn’t the extreme circumstance, what is? One might look at these images next to each other and think, well, this is it.
Nancy Wolff: Yeah. And under Rule 56, I don’t think you’re required just to have the most extreme circumstances because it’s really, if a jury could reasonably find, I mean, it isn’t just the most extreme cases. I mean, there’s a whole reason you have summary judgment is really to make decisions when sort of the facts are clear and you can apply the law to it.
Katie Wilson-Milne: Right. So in a way, you’re saying that this whole judge-made rule about the intrinsic test being so special for a jury is in tension with Rule 56? Yeah. So yeah, I mean, I feel like your brief does sort of argue about the test, but in a clever way, I think you obviously intentionally did this to say, you don’t even need to overrule this test, right? Your own precedent permits you to allow this on summary judgment.
Nancy Wolff: And in fact, because we didn’t know whether it could be overruled in this one anyway, I think it was much stronger to just try to focus on the summary judgment aspect.
Katie Wilson-Milne: Right. And also to cite the cases that said, you know, sometimes…
Nancy Wolff: You could do it. Unicolors.
Katie Wilson-Milne: Right, exactly, Unicolors. You can sometimes decide all parts of the substantial similarity.
Nancy Wolff: And wasn’t Rentmeester with the Nike jump? That was summary judgment, I believe.
Katie Wilson-Milne: Yeah, that found that there was no substantial similarity. So they only had to find there was no extrinsic test.
Nancy Wolff: Right, yeah.
Katie Wilson-Milne: Because the defense advantage.
Nancy Wolff: Yes, they had the defense advantage.
Steve Schindler: So, interestingly, I think, and we were talking before we got on, that you were one of the only one, I think.
Katie Wilson-Milne: You were the only one.
Steve Schindler: The only one who wrote an amicus brief in favor of the plaintiff photographer here. And there were numerous other, a number of others, who took the other side. Law professors and the like. There was one put in by Professor Tushnet from Harvard, which articulated sort of her views about why this decision is correct, right? I mean, it’s a decision in largely in favor of the ability of artists, artistic people to take from others, right? I mean, we’ve seen that in other circumstances. But I’m just curious if you have sort of a view about the positions that the other amicus briefs have taken.
Nancy Wolff: It seems with any copyright case, there are now sort of two parties.
Steve Schindler: Okay.
Nancy Wolff: And you have what you would call sort of the copy left, copy right. So you have those that protect your creators. And-
Steve Schindler: Who’s left and who’s right?
Katie Wilson-Milne: Yeah, I love the scrambling of these.
Nancy Wolff: Right. The left and right. But you have sort of the professors that join, Professor Tushnik consistently take the side that wants to have more permissive copying. And so the brief really didn’t dig into intrinsic extrinsic tests but really focus on the fact that not all copying is infringing and gave a lot of list of cases where there were no infringement. Some of it had to do the fact that there was a sculpture of a mountain lion in a standard pose and the other was a photo, but also seemed to be very dismissive about photography and what’s protected in photography and kept referencing the photo, it’s just a face, and sort of glossed over the fact that this portrait is distinctive, it’s very dark, it’s a dark background that Sedlik was very active in making choices and elements that are consistently held to be copyrightable throughout the cases involving photography.
Steve Schindler: Right. There’s a long history of those.
Nancy Wolff: There’s a long history of that. These group of professors, I think, keep trying to want to move the needle to push more permissive copying.
Katie Wilson-Milne: Whether it’s through substantial similarity or in the past, it’s really been fair use that they focused on.
Nancy Wolff: Generally, they focus on fair use, but here, they wanted to focus on the fact that a tattoo was based on a photo. Even though it was copying, it wasn’t infringing.
Steve Schindler: Right.
Katie Wilson-Milne: She makes some doctrinal arguments, which we can talk about. But why? I mean, to Steve’s point, I don’t remember if it was five or six, but there were a number of other amicus briefs on the side of Kat Von D, and you were the only brief on the side of the photographer. And that surprised me a little bit. Why do you think they were so much energy to have multiple amici on her side?
Nancy Wolff: I don’t know if it’s the fame of her or not, but also the Copyright Alliance covers such a broad net of creators that I think it covered the individual creators, the larger company creators, the trade associations. So I think that the net was quite broad when the Copyright Alliance does a brief.
Katie Wilson-Milne: That makes sense.
Nancy Wolff: I think creator organizations are less funded and probably can’t do as many amicus briefs where professors, that’s part of what they do.
Steve Schindler: In the appellate brief put in by Kat Von D’s lawyers, they, I think, really tried to play down her fame as much as they could.
Katie Wilson-Milne: She’s now a stay-at-home mom in some other state.
Steve Schindler: She’s a stay-at-home mom. And she closed down all of her websites, and she’s not a celebrity.
Katie Wilson-Milne: Yeah, there was a lot— lawyer. I mean, I think as a lawyer, you’re like, well, that story changed on appeal, right? How much she changed, she changed the shading, she changed the lighting, whereas you could go to the record, a trial, and she says, I tried to not change anything, right? I mean, there’s a way in which-
Nancy Wolff: It’s slightly cropped, because obviously an arm is not as square as a photograph.
Katie Wilson-Milne: Yeah, right. Yeah. So, I mean, one thing Rebecca Tushnet, who, as you say, Nancy, there’s that overlapping group of copyright professors who show up in all these cases, had a brief in Warhol on fair use, that there should be a very permissive standard to infringe if you have a fair use defense. So these are repeat players. But she really focuses on an argument that— it could have no end, which is that with photography at least, there are so many unprotectable elements, that you could make an argument that in almost all these cases, once you strip out all the unprotectable elements, there can’t be infringement. That’s really her focus.
Nancy Wolff: I think it is. It’s really trying to make photography less protectable, I feel.
Katie Wilson-Milne: Maybe that would be true for other mediums, but it’s just these cases have come up.
Nancy Wolff: In this case, in photography, which is why they kept saying, it’s just the face, everyone can do the face. They were trying to say, the pose isn’t protectable, this isn’t protectable, that’s not protectable. Just really, if you look at any work of art, there’s concepts in all of them. So it seems that the photograph was whittled down to just the concept that anyone can take. It’s a portrait of Miles Davis.
Steve Schindler: Right.
Katie Wilson-Milne: Right, and I think in a way, the fair use analysis here would have been more interesting, because the use of the image as a tattoo on someone’s arm, it’s a different use than the photograph, right? There is some initial way to start that analysis post-Warhol that’s interesting and could shed some light on that doctrine. I think this case being basically stuck in substantial similarity, both just seems, I think, just as a lay observer looking at these images, seems a little counterfactual. So it’s just interesting to me that I might have been more persuaded by a fair use analysis actually than by substantial similarity, and yet that’s where the case got stuck. And in Warhol, too, I mean, we remember talking to some of the lawyers, the trial lawyers in Warhol before it went up on appeal. And, you know, I thought then that the substantial similarity argument in Warhol will get more traction. And it’s interesting that that just went really straight into fair use at the appellate level. And both of these cases could have been decided on the other doctrine.
Steve Schindler: Right.
Nancy Wolff: Well, the problem with fair use in looking at a change in medium is that it can eat alive the derivative right. Because you can license a photograph for a tattoo. You can license a photograph as an art reference for a painting. You could license a photograph for a sculpture. So that’s, I think, the line where fair use gets interesting is, where’s the derivative that should be licensed and where is fair use?
Steve Schindler: Yeah, certain things seem to be protected. I mean, photography always sort of takes a hit on some level.
Nancy Wolff: Seems to, doesn’t it?
Steve Schindler: But obviously, books being made into movies are always-
Nancy Wolff: And that’s licensed all the time.
Steve Schindler: And that’s licensed all the time. It’s derivative version and it’s-
Nancy Wolff: Sampling gets licensed all the time. Right.
Steve Schindler: But somehow in photography, there’s always this resistance a little bit.
Nancy Wolff: And I don’t know if because photography has a tool, and maybe 30 years ago when the professionals all had film cameras with lenses and nothing was automatic. But I get concerned with photography now, because everyone’s phone is a camera. But I can tell that my pictures as a lawyer are terrible and my clients’ pictures as photographers, even if taken with an iPhone, are so much better. They just have an eye.
Steve Schindler: Yeah.
Nancy Wolff: So, I mean-
Katie Wilson-Milne: They look artistic to you.
Nancy Wolff: They look artistic to me. It’s just they have a way of seeing things and composing things and knowing when the lights right. They just, they take better pictures.
Katie Wilson-Milne: Were you compelled by any of the arguments in the other amicus briefs? I mean, they were obviously contrary to your position.
Nancy Wolff: No, I wasn’t. I really wasn’t, because it seems that when you look at the intrinsic test, you have to always go back to the Copyright Act and there’s nothing about it that is supported by the Copyright Act and then you start with Supreme Court cases and go down, and it’s not supported by any Supreme Court case, and then if you look at all the other circuits, no one has this intrinsic test. It seems like an anomaly and it just seems wrong and misplaced, and it seems to be a misinterpretation of selection and arrangement, which is a compilation copyright, which is what total concept and feel in New York would have in the Second Circuit. You look at the elements and the selection and arrangement, and you see that creates some kind of total concept and feel, but that’s still more than a compilation copyright. This is just what you feel about it.
Katie Wilson-Milne: Well, some of the Ninth Circuit agrees with you, so we’ll see. We’ll see what happens. But I mean, at least with the copyright law professors, I don’t think any of the amici argued against or for the test in the Ninth Circuit, just like you didn’t argue against it explicitly. I mean, you did implicitly. So I feel like no one wanted to take on this actual test, because what Professor Tushnet does is, she just ignores this two-pronged test. Yeah, she doesn’t talk about it at all. And says, look at all these unprotectable elements. We don’t look at anything until we take out all the unprotectable elements, and here there’s so many unprotectable elements, and look at all the things she did differently, and that’s that, right. There’s no substantial similarity. It doesn’t matter what your eyes tell you.
Nancy Wolff: Right. It should be what your eyes tell you though, because that’s how people observe art.
Katie Wilson-Milne: Yeah, except to these jury’s eyes, I guess. You don’t want it to be what their eyes say.
Steve Schindler: So, I guess we’ll wait to see what happens. The Ninth Circuit will probably decide in the next month or something if they’re going to take this en banc, and then we could have a different decision to talk about.
Nancy Wolff: So, maybe we’ll have an update next year. Yeah.
Katie Wilson-Milne: We’ll have an update. Well, thank you so much.
Steve Schindler: Thank you.
Nancy Wolff: Thank you for having me. This was fun to talk about.
Steve Schindler: It was a pleasure.
Nancy Wolff: I enjoyed it.
Steve Schindler: And that’s it for today’s podcast. Please subscribe to us wherever you get your podcasts, and send us feedback at podcast@schlaw.com. And if you like what you hear, give us a five-star rating. We are also featuring the original music of Chris Thompson. And finally, we want to thank our fabulous producer, Jackie Santos, for making us sound so good.
Katie Wilson-Milne: Until next time, I’m Katie Wilson-Milne.
Steve Schindler: And I’m Steve Schindler, bringing you the Art Law Podcast, a podcast exploring the places where art intersects with and interferes with the law.
Katie Wilson-Milne: The information provided in this podcast is not intended to be a source of legal advice. You should not consider the information provided to be an invitation for an attorney-client relationship, should not rely on the information as legal advice for any purpose, and should always seek the legal advice of competent counsel in the relevant jurisdiction.
Music by Chris Thompson. Produced by Jackie Santos.