Introduction

When people tattoo, they often make reference to another piece of artwork. If the referenced work is copyright protected, will the tattooist be liable to copyright infringement? In Sedlik v Von Drachenberg et al, 2:21-cv-01102-DSF-MRW (C.D. Cal. May 31, 2022), a famous tattooist, Kat Von D, is sued by a reputable photographer for tattooing his photograph on her acquaintance and publishing it on social media. If the same happens in Hong Kong, will the legal position be any different?

Sedlik v Von Drachenberg et al

Facts

Jeff Sedlik is a renowned professional photographer. He created an iconic photographic portrait in 1989 depicting Miles Davis, a famous jazz musician, and registered his copyright with the United States Copyright Office (“Copyrighted Photograph”).

In 2017, Kat Von D inked a tattoo (“Tattoo”) of Miles Davis on Blake Farmer, a lighting technician with whom she worked on a film project. Farmer admires Miles Davis. He did a Google search and found a photograph of Miles Davis without a copyright symbol and sent it to Kat Von D’s assistance. It turns out that the photograph was the Copyrighted Photograph. Sedlik’s permission had not been obtained prior to inking the Tattoo.

Kat Von D has been inking tattoos for customers pro bono since 2012 and did not receive any payment from Farmer for inking the Tattoo. On 18 March 2017, Kat Von D and her company posted photos showing Kat Von D creating the Tattoo with a printout of the Copyrighted Photograph in the background as a reference to their social media account. They further uploaded another photo of the completed Tattoo on 26 April 2018.

Sedlik commenced legal proceedings against Kat Von D and her companies for copyright infringement of the Copyrighted Photograph.

Decision

The US Court rejected parties’ cross motions for summary judgment and left the matters to the jury.

On the issue of whether there had been copyright infringement, the US Court considered that whilst Miles Davis’s pose itself is not separately protectable, the selection and arrangement of the elements of the Copyrighted Photograph, including the lighting and camera angle, are protectable. The US Court further found that the Copyrighted Photograph should be entitled to broad protection because there were a great number of choices involved in creating the Copyrighted Photograph, such as Miles Davis’s specific pose, facial expression and lighting and shadows, camera angle and background for the image.

In respect of the defence of fair use, the US Court rejected the argument that tattoos inherently create a new expression, meaning or message as a result of being permanently imprinted on a human body with personal meaning. The US Court however accepted the argument that by inking the Tattoo in the freehand method and adding her own interpretation to the Tattoo, Kat Von D and her co-defendants have met their burden of showing that the Tattoo has a purpose or meaning distinct from that of the Copyrighted Photograph by changing its appearance to create movement and a more melancholy aesthetic.

Comparison with copyright laws in Hong Kong

Registration not required

Unlike the United States, there is no registration system for copyright in Hong Kong. Copyright subsistence is automatic upon the creation of the work. It is not necessary to register copyright in order to enjoy protection under Hong Kong laws.

Protected works

Section 2(1) of the Copyright Ordinance (Cap. 528) provides that copyright subsists in original literary, dramatic, musical or artistic works. Under section 5 of the Copyright Ordinance, artistic work include a photograph, defined as a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film. As such, copyright can subsist in an original photograph.

Copyright Infringement

Under section 22(1) of the Copyright Ordinance, the owner of the copyright in a work has the exclusive right to copy the work. Copying of a work means reproducing the work in any material form. If a copyrighted work is tattooed on a customer’s body, it is reproduced on the body and constitutes copying of a work. Therefore, tattooing a copyrighted work without obtaining the licence or authorization of the copyright owner may constitute copyright infringement.

To establish primary copyright infringement, it must be shown the defendant’s work is copied from the copyright work. A defence can be raised if the defendant had independently come up with the work, or unconsciously or sub-consciously copied the copyrighted work.

Exceptions to Infringement

Unlike the United States, the Copyright Ordinance in Hong Kong provides for “fair dealing” defence instead of an open ended “fair use” defence. To qualify for the fair dealing exception, the copying cannot conflict with a normal exploitation of the work by the copyright owner or cause unreasonable prejudice to the legitimate interests of the copyright owner.

There are five forms of fair dealing exceptions, being fair dealing for purposes of (1) research or private study, (2) criticism and review, (3) reporting of news and current events, (4) giving or receiving instructions and (5) public administration. It is unlikely for tattooing to fall within the scope of these five categories of exception.

Takeaway

Oftentimes a tattooist is provided with reference photos from customers. He may not be aware of the origin of the photo or whether it is a copyrighted work. Whilst there has not been any decided case on this issue in Hong Kong, it is clear that copyright can subsist in photographs without any registration. There is a risk for tattooists to be liable for copyright infringement in view of the limited scope of the fair dealing exception. It will be prudent for tattooists to verify the origin of the reference works given by customers before imprinting the same on the customer’s body.