Tracing Copyright Law from Photo to Pore – Part II: Why the En Banc Ninth Circuit Should Preserve the Substantial Similarity Test

[1]

A Note from the Author

I previously wrote a detailed review of the Ninth Circuit’s precedent-based rejection of photographer Jeffrey Sedlik’s appeal of an unfavorable jury verdict in a copyright infringement case. At the time, I examined Judge Wardlaw’s and Judge Johnstone’s passionate arguments urging the Ninth Circuit to grant rehearing en banc and abandon its intrinsic-extrinsic test for evaluating whether protected works and allegedly infringing works are substantially similar for copyright infringement purposes.

Since then, both judges have gotten their wishes. The Ninth Circuit agreed in June to rehear Sedlik’s case en banc––suggesting that a majority of the active judges may be prepared to scrap the intrinsic-extrinsic test. For the reasons that follow, this blog post argues that the Ninth Circuit should go in a different direction and maintain the status quo. The eleven-member panel should preserve the intrinsic-extrinsic test because it is well-established, eminently workable, and protective of valuable expressive activity by artists like Von Drachenberg who would otherwise be infringers.

Background

Summary of the Facts

In 1989, professional photographer Jeffrey Sedlik photographed renowned jazz musician Miles Davis.[2] In 2017, Kat Von Drachenberg, a prominent tattoo artist, gifted her friend a tattoo of this photograph.[3] By employing a complex method, Von Drachenberg emulated the unique attributes of Sedlik’s photograph, such as Davis’s finger pose, facial expression, and hairstyle, with near perfection.[4]

Sedlik sued Von Drachenberg for copyright infringement.[5] The jury found that the photograph and the tattoo were not substantially similar and returned a non-infringement verdict for Von Drachenberg.[6] Sedlik appealed, and––for the reasons summarized below––did not prevail.

The Extrinsic-Intrinsic Test

In a copyright infringement case, the plaintiff must prove that the alleged infringer copied protected aspects of his work’s expression––such as by unlawful appropriation.[7] But unlawful appropriation cannot occur unless the original work and the infringing work are substantially similar.[8] For decades, courts in the Ninth Circuit have used the extrinsic-intrinsic test to determine substantial similarity.[9]

A work is extrinsically similar if it objectively resembles the copyrighted work’s protected expressive parts.[10] A work is intrinsically similar if a reasonable observer, lacking expert assistance, would find similarity of expression.[11] A work must be both extrinsically and intrinsically similar to infringe.[12]

The Decision

The three-judge panel unanimously affirmed the jury’s verdict against Sedlik.[13] The court sustained the jury’s refusal to find similarity of expression at the intrinsic step, praising the jury for reaching its decision just as Ninth Circuit precedent required, namely, without expert assistance.[14] Judges Wardlaw and Johnstone separately urged the Ninth Circuit to grant rehearing en banc and abandon the extrinsic-intrinsic test.[15] The principal critique: the Ninth Circuit’s test distorts copyright law’s focus on protecting original expression because it allows fundamentally legal determinations about “total concept and feel” to the whims of lay juries.[16]

The Case for the Extrinsic–Intrinsic Test

While perhaps unapparent at first brush, the arguments in favor of retaining the extrinsic-intrinsic test are legion. The most compelling legal argument for preserving the status quo is the doctrine of stare decisis. Over the last quarter-century, dozens of Ninth Circuit judges, at the trial and appellate levels, have reaffirmed the wisdom of the extrinsic-intrinsic test.[17] Despite the thoughtful arguments raised by Judges Wardlaw and Johnstone, and recapitulated by the host of amici representing frequent plaintiffs in the copyright sphere, the Ninth Circuit should hesitate before making such a significant change in its copyright doctrine.

That caution is especially justified here because Sedlik never previously argued that the extrinsic-intrinsic test should be abandoned––implying that his newfound opposition to established Ninth Circuit law is less of an idealistic attempt to move the law in a new direction and more of a last-ditch effort to snatch victory from the jaws of defeat.[18] Additionally, the Ninth Circuit does not stand alone in using an extrinsic-intrinsic test.[19]

Two scholars of copyright law, Edward Lee and Andrew Moshirnia, provide additional arguments for preserving the extrinsic-intrinsic test.[20] Preliminarily, they urge the en banc court to adhere to the strict terms of Federal Rule of Civil Procedure 50(a) and affirm the jury’s verdict without considering the validity of the extrinsic-intrinsic test because “a reasonable jury could conclude [based on the evidence] that (1) a person’s face and pose are uncopyrightable, (2) a tattoo artist’s copying these unprotected elements from a photograph is not infringement, and (3) whatever protected element the artist copied was not substantial.”[21]

From their perspective, then, the fact that reasonable minds can disagree is a feature, not a bug, of the substantial similarity inquiry––and speaks volumes about the importance of avoiding the supplantation of jury discretion.[22] In fact, as the Ninth Circuit recognized nearly a century ago, it would be difficult, if not impossible, to satisfy the requirement of determining how an alleged infringement impacts the public in the real world without leaving the fact-bound question of similarity in “total concept and feel” to a jury that is representative of the public in a way that a judge can never be.[23]

Professors Lee and Moshirnia buttress this compelling legal argument with empirical research of their own, which demonstrates that “people with legal training” (such as judges) regularly reach different conclusions about substantial similarity than juries, largely because law school teaches lawyers to think differently from ordinary people.[24] In fact, as Von Drachenberg and amici correctly represent, eliminating the extrinsic-intrinsic test would put the Ninth Circuit on the opposite side of every other circuit in the country.[25]

The fact that the Ninth Circuit has used the extrinsic-intrinsic test for more than thirty years––and that other circuits continue to use substantively similar tests––without any serious efforts by losing copyright plaintiffs to overturn the framework suggests that it is not only workable, but necessary to ensure that the public impact of an alleged infringement can be adequately understood.[26] Additionally, eliminating the extrinsic-intrinsic test would make infringers out of artists like Von Drachenberg, despite the jury’s considered judgment that the similar aspects of her tattoo and Sedlik’s photograph were not copyrightable, thereby chilling artistic expression and disserving the underlying purposes of the Constitution’s Intellectual Property Clause, namely, to promote progress, and not stagnation, in science and the useful arts.[27]

Implications

While it remains to be seen whether a majority of the en banc court will follow the path endorsed by Judges Wardlaw and Johnstone below, this blogpost argues that the Ninth Circuit should preserve the extrinsic-intrinsic test for evaluating substantial similarity because it is supported by precedent, workable, and protective of individual expression.[28]

References

[1] Photo by Benjamin Lehman, Person with Tattoo on Right Arm, Unsplash (Aug. 19, 2020),  https://unsplash.com/photos/person-with-tattoo-on-right-arm-5t4qCgtaLGU.

[2] See Sedlik v. Von Drachenberg, 163 F.4th 667, 671 (9th Cir. 2026).

[3] See id. at 671–72.

[4] See id. at 672, 679.

[5] See id. at 673.

[6] See id.

[7] See id. at 673–74.

[8] See id. at 674.

[9] See id.

[10] See id.

[11] See id.

[12] See id.

[13] See id. at 675.

[14] See id. at 675–76.

[15] See id. at 676.

[16] See id. at 676–77.

[17] See Resp. to Pet. for Reh'g, Sedlik, No. 24-3367 (9th Cir. Mar. 10, 2026), at 6–7.

[18] See id.

[19] See id. at 8–9.

[20] See Br. of Profs. Edward Lee & Andrew Moshirnia as Amici Curiae in Supp. of Defs.-Appellees, Sedlik, No. 24-3367 (9th Cir. July 13, 2026), at 2–6.

[21] See id. at 3.

[22] See id. at 14.

[23] See id. at 5, 6, 17–18.

[24] See id. at 8–11.

[25] See id.

[26] See id.

[27] See Resp. to Pet. for Reh'g., Sedlik, No. 24-3367, at 10–11; see generally U.S. Const. Art. I, § 8, cl. 8.

[28] See Resp. to Pet. for Reh'g., Sedlik, No. 24-3367, at 10–11.