Could a tattoo infringe the copyright over a photograph? Is the reproduction of a photograph in a tattoo subject to authorization by the right holder? Would a tattoo of a copyrighted photograph qualify as fair use under US law? In our legal tradition, would that use fall under any of the limitations on copyright protection under the Intellectual Property Act (LPI)? If not, could it obtain legal protection through a broad interpretation of the so-called “three-step test”?
This and other issues are the subject of a complaint filed in the Central District Court of California (CDCA) by photographer Jeffery Sedlik against celebrity Mexican tattoo artist Kat Von D. According to the plaintiff, the tattoo reproducing Sedlik’s 1989 portrait of jazz musician Miles Davis infringes his copyright.
This is not the first time that a tattoo has generated copyright controversy in the US, although the disputes were generally about the unauthorized reproduction of the tattoo itself and the consideration of the tattoo as an artistic work. For instance, in a decision of March 2020, the Southern District Court of New York dismissed a copyright infringement lawsuit filed by the licensee of the rights to certain basketball players’ tattoos against a game developer and publisher for depicting players with their actual tattoos.
Copyright protection of the photograph
In this case, as can be seen on the plaintiff’s website, the photographer worked through various concepts and multiple attempts. In this artistic endeavor, he chose the place and time of day precisely to achieve the desired degree of illumination, contrast, pose and effect.
These choices result in a portrait that respond to the photographer’s decisions in the preparation, execution, development and processing—thus tipping the balance in favor of granting copyright protection as photographic work. Moreover, the photographer points out that the portrait is registered in the US copyright registry and recalls the need to contact him to obtain a license prior to any exploitation. The same conclusion could be reached in Spain based on the aforementioned decisions of the photographer. The portrait could be considered sufficiently original and therefore worthy of copyright protection in the strict sense as a photographic work (rather than under article 128 LPI as mere photographs, i.e., those lacking sufficient originality to qualify for copyright protection).
The originality of a photograph has been a much-debated issue in the literature and case law. There is no uniform criterion for determining the required degree of originality—which calls for a case-by-case approach.
According to Casas Vallés, “It would be reasonable to assume that photographs are, in principle, nothing more than that, and the burden should be on those who argue the contrary to prove that there is an original creation—i.e., a work.”  With respect to copyright protection, Rodríguez Tapia argues that, “copyright probably protects both (i) a graphic sum of data and content that are more or less original in their identity, selection or display in a wide array of shapes, lights and colors; and (ii) the photographer’s gaze, enhanced with objects, tricks and techniques later added in his/her laboratory or computer.”
The case law is divergent. For instance, in a judgment of July 14, 2000, the Provincial Court of Navarra denied protection to a photograph of the running of the bulls in San Fermín as a “work” under article 10 LPI, since it was a “reproductive photograph” even if it conveyed “the tension and danger inherent to the running of the bulls.” On the other hand, the Provincial Court of Barcelona ruled in a judgment of September 9, 2003, that several subaquatic photographs qualified as photographic work based on their “exquisite technique and complex and sophisticated arrangement without which they could not exist.”
Assuming for the above reasons that the originality of the photograph in question is not disputed, the defendant should have sought authorization for the lawful execution of the tattoo, whether it is considered a reproduction or a transformation—which remains controversial. If the right at stake were that of transformation and the portrait were considered a “mere photograph” under article 128 LPI (rather than a photographic work), the authorization would not be necessary, at least in Spain, since creators of mere photographs do not have an ex lege right of transformation.
If, as it seems, we are dealing with a work protected by copyright, the tattoo artist will likely allege fair use as her main defense. In the US, this case law-based concept provides a general exception to copyright in a system without a closed list of limitations. The court must weigh several factors to determine whether the use of a copyrighted work is beyond the control of the right holders (among others, the effect of the unauthorized use on the potential market, or the value of the work).
Unlike in the US, the continental doctrine underpinning the Spanish Intellectual Property Act (LPI) contains a closed list of limitations subject to restrictive interpretation and the “three-step test” under article 40bis (i.e., limitations must refer to specific cases, and those “causing unjustified harm to the authors’ legitimate interests or jeopardizing normal exploitation of the work” will be excluded). It is worth considering what would happen if a similar dispute were to arise in Spain. If the tattoo artist’s conduct did not fall within any of the limitations under the LPI, would a court consider the conduct as “lawful” or unable to jeopardize the right holders’ interests? For the time being, only the Supreme Court judgment of March 4, 2012, has ruled in favor of admitting conducts in terms similar to American fair use. However, it was based on the principle of ius usus innocui, recognized in our legal system—a maxim according to which harmless uses should be tolerated.
This case also raises practical questions, such as the potential consequences for the tattoo market. And, in particular, for the “tattooed” object. If the body is considered the medium on which the infringement was perpetrated, the court might order its removal.
In any event, the ruling of the Central District Court of California will undoubtedly contribute to the debate on the concept and scope of copyright protection and “fair” (or harmless) use.
Casas Vallés, “Comentario a la SAP Barcelona de 16 de diciembre de 1991,” Poder Judicial, No. 30.
Rodríguez Tapia, “La obra fotográfica en la LPI. De la fábrica de colores, formas, luces y sombras a la protección legal de la mirada original,” Fotografía y Derecho de Autor, coord. María Serrano-Fernández, 208, pp. 7-29.
Authors: Marta Zaballos y Nora Oyarzabal