In December, the Cyberlaw Clinic filed an amicus brief (.pdf) on behalf of Authors Alliance in Sedlik v. Von Drachenberg in the United States Court of Appeals for the Ninth Circuit. Authors Alliance is a non-profit organization with over 2,800 members dedicated to advancing the interest of authors who want to serve the public good by sharing their creations broadly. The brief supports Katherine von Drachenburg, a celebrity tattoo artist who gave her friend a tattoo based on a photograph of Miles Davis taken by photographer Jeff Sedlik. Von Drachenburg posted on social media photos of herself in the process of tattooing with the reference photo printed in the background. Sedlik sued von Drachenburg for copyright infringement based on both the tattoo and von Drachenburg’s social media posts. A jury in the United States District Court for the Central District of California concluded the tattoo was not substantially similar to Sedlik’s photograph and found von Drachenberg’s social media posts made fair use of Sedlik’s work. Sedlik appealed. The case provides the United States Court of Appeals for the Ninth Circuit with its first opportunity to consider a fair use defense in light of the United States Supreme Court’s decision in Andy Warhol Foundation for the Visual Arts, Inc. V. Goldsmith, 598 U.S. 508 (2023).
In Warhol, photographer Lynn Goldsmith sued the Andy Warhol Foundation (AWF) for copyright infringement based on a portrait that Goldsmith took of Prince, which Andy Warhol used in a screenprint illustration. The district court found fair use without examining the issue of substantial similarity (that is to say, the court did not even decide there was prima facie copyright infringement). When the case reached the Supreme Court, the parties agreed that the only issue up for debate is whether the first factor of fair use, i.e. the purpose and character of the use (which weighs more in favor of fair use when a use is “transformative”) is in favor of Goldsmith or AWF. The Supreme Court ultimately held in Warhol that a determination of whether a use is fair under the first factor should focus on if the secondary use has a “distinct purpose.” If a commercial use does not target the original work (e.g., parody) and is not “transformative,” then the use must have some “other justification for copying” to be considered fair under the first factor. The Court found that AWF’s use was not fair under the first factor because Goldsmith’s photograph and Warhol’s work share the same purpose: both were portraits of Prince used to depict Prince in magazine stories about Prince. Absent another justification for copying, the Court concluded that the commercial nature of AWF’s use of Goldsmith’s photo further counseled against fair use.
Warhol holds that if a secondary use has a distinctive purpose, it is in favor of fair use. However, Sedlik argues for a restrictive reading of Warhol. Under his interpretation, if a secondary use is made by an entity that has engaged in other commercial activities, even when the secondary use itself is not directed towards monetary compensation, it must target the original work or carry a separate “compelling” justification to be fair under the first factor. In addition to a restrictive reading of Warhol, Sedlik also argues that the market harm factor should consider social media as his protected licensing market, despite never having sold a license to date.
The Authors Alliance amicus brief represents the interests of authors and other creators whose work depends on fair use. Authors and researchers rely on copying for reporting, research, and teaching purposes, which are paradigmatic and routine examples of fair use under Section 107 of the Copyright Act. Copying is often necessary to memorialize, preserve, or provide historical context. Narrowing the scope of “transformative” under the first factor would thus threaten well-established practices among creators and stifle creativity and documentation of artistic processes. Accordingly, the brief argues, Warhol should be interpreted and applied to support a robust conception of fair use.
As described in the brief, Warhol stands for the proposition that uses are favored under the first factor if they have a distinct purpose. The brief notes that the inquiry into transformativeness is a flexible one that depends on both fact and degree. Under Warhol, even copyrighted material that is reused in its entirety may be fair use. A flexible application of the first factor allows authors to continue to research, create, and document their works.
The brief further argues that “commercial use” should only include direct merchandising as opposed to any conduct that may eventually lead to profit. On the fourth fair use factor, the brief emphasizes that “market substitution” considers only markets that are traditional, reasonable, or likely to be developed. The fourth factor in a fair use analysis evaluates the effect of the secondary use upon the potential market for or value of the copyrighted work. Limiting the scope of markets under this factor is essential, because expanding a “potential market” to include any theoretical use would render the fourth factor meaningless, as every secondary use would be considered a loss of such a potential market.
Other amicus briefs in support of von Drachenberg include:
- Brief of Electronic Frontier Foundation (EFF) (.pdf): EFF, a non-profit aimed at ensuring that technology supports the expansion of civil liberties and justice, also filed a brief supporting a flexible and adaptable fair use doctrine, warning that favoring only uses that target the original work would upend decades of fair use law. The brief further argues that commerciality under the first factor requires a close nexus between the use and the alleged profit. Many non-commercial fair uses indirectly benefit the user. In such cases, documenting an artistic process that involves fair use of a work is not itself evidence of a commercial purpose.
- Brief of Copyright Law Professors (.pdf): Representing the interests of scholars who teach and research copyright law, the brief argues that this dispute is a substantial similarity case that should not reach the question of fair use. The brief emphasizes that copyright infringement must involve substantial similarity in the protected expressive elements and that recognizability alone does not suffice for this standard. Substantial similarity considers only the copyrightable aspects of the work. The amici supported both the court’s decision to submit the substantial similarity inquiry to the jury and the jury’s conclusion that Drachenberg’s tattoo and social media posts were not substantially similar to the original work’s protected elements. While fair use applies to some aspects of this case, substantial similarity is a better fit for resolving such disputes by lessening the burden on defendants and clarifying the scope of plaintiffs’ copyright without necessarily invoking fair use.
- Brief of Christopher Sprigman and Molly Van Houweling (.pdf): Sprigman and van Houweling are law professors who specialize in intellectual property law and copyright law. Their brief highlights Sedlik’s lack of credible evidence that he suffered any monetary harm, such as lost sales or lost licensing opportunities. Because plaintiffs asserting copyright infringement claims must demonstrate a “concrete injury” to establish injury in fact for Article III standing, it is unlikely that copyright infringement unlinked to any prospect of monetary harm qualifies as injury in fact for Article III purposes. Moreover, under the Supreme Court’s holding in TransUnion LLC v. Ramirez, 594 U.S. 413 (2021), which established “history and tradition” as a guide to defining the scope of cases within Article III jurisdiction, it is doubtful whether a presumption of harm sufficient to support Article III standing should apply at all to copyright claims like Sedlik’s, which involve a derivative work rather than the reproduction and distribution of a copyrighted work as such. There is no support under history and tradition for the presumption of any injury in fact attaching to this type of copyright claim. Sedlik’s claims are thus likely barred under the requirements of Article III standing.
- Brief of Pamela Samuelson (.pdf): A copyright law professor at UC Berkeley Law, Samuelson reminds the court that fair use is a mixed question of law and fact. Consistent with Google LLC v. Oracle America Inc., 593 U.S. (2021), the dispute of material fact in this case was properly submitted to the jury. The brief also reiterates that Warhol neither supports nor requires a narrowing of fair use doctrine. Rather, Warhol emphasizes that fair use analysis requires a use-specific inquiry and recognizes a range of valid justifications for borrowing beyond merely targeting the original work. Commerciality, market effects, and transformativeness are matters of degree and interrelated considerations that must be assessed in the context of each specific use. Fair use is not a rigid checklist of factors but a holistic inquiry, as emphasized in Campbell.
Amici that filed briefs supporting Sedlik include briefs from the Copyright Alliance, the American Society of Media Photographers, Lynn Goldsmith and the Digital Justice Foundation, and tattoo artists Ross C. Berg, Jonny Gomez, and Maxime Plescia-Buchi.
Fall 2024 Cyberlaw Clinic students Anthony Daoud, Kitty Luo, and Mickey McMahon worked on the brief, supervised by the Clinic’s Managing Director, Chris Bavitz and Clinical Instructor Michael Rosenbloom. The Clinic looks forward to the Ninth Circuit’s decision in this case.