Tracing Copyright Law from Photo to Pore: The Fate of the Ninth Circuit’s Controversial Substantial Similarity Test

[1]

Introduction

A battle is brewing in the Ninth Circuit over what test courts should use to determine whether allegedly infringing works are “substantially similar” to their copyright-protected counterparts. While the three-judge panel rejected photographer Jeffrey Sedlik’s appeal based on binding precedent, two judges wrote separately calling for the Circuit to go in a different direction. If the Ninth Circuit grants rehearing en banc and abandons its current test, creators of copyright-protected works will have a much easier time winning infringement lawsuits and expressive activity by potential infringers may be chilled.

Background

The Facts

This case traces its roots back to 1989, when Jeffrey Sedlik, a professional photographer, created a photograph of the famous jazz musician Miles Davis. [2] Sedlik eventually registered the photograph with the United States Copyright Office. [3] In 2017, Kat Von Drachenberg, a well-known tattoo artist, tattooed the photograph on a friend’s shoulder as a gift. [4]

Von Drachenberg’s method was complex. First, she made a sketch of the photograph by putting tracing paper over it. [5] Second, she used a thermal-fax machine to create a stencil to put on her friend’s arm while she worked. [6] Following a topographical map, Von Drachenberg shaded the tattoo freehand. [7]

The tattoo shares much in common with the protected parts of the photograph, including Davis’s finger pose, facial expression, and hairstyle, along with Sedlik’s chosen lighting and positioning  [8] In fact, the similarities were so apparent that tattoo artists, in an amicus brief, attested that the only differences between the two works were those necessary to accommodate the different artistic medium––here human skin. [9]

Sedlik reached out to Von Drachenberg’s agent after discovering the tattoo on social media, but never heard back from anyone. [10] As a result, Sedlik sued Von Drachenberg for copyright infringement. [11] The jury found that the photograph and the tattoo were not substantially similar and the district court denied Sedlik’s request to override the jury’s verdict. [12] Sedlik appealed.

The Ninth Circuit’s Opinion

The Law

Copyright plaintiffs have to prove two things to succeed on their infringement claims: (1) they own a valid copyright and (2) the defendant copied protected aspects of the work’s expression. [13] “Copying” protected expressive aspects consists of (1) copying and (2) unlawful appropriation. [14] For unlawful appropriation to occur, the original work and the allegedly infringing work must be substantially similar. [15]

In the Ninth Circuit, courts use a two-part framework to evaluate substantial similarity called the “extrinsic-intrinsic” test. [16] The extrinsic step looks at the objective similarity of the works considering only the protected expressive parts of the copyrighted work. [17] The intrinsic step looks at whether a reasonable observer would find similarity of expression without expert assistance. [18] Accordingly, a successful infringement claim requires a finding of both extrinsic and intrinsic similarity. [19]

Sedlik’s Arguments on Appeal

Sedlik appealed the district court’s denial of his renewed motion for judgment as a matter of law based on his view that the similarities between the photograph and the tattoo were overwhelming and obvious. [20]

Sedlik argued that the works were extrinsically similar because any reasonable juror would have found objective similarity between their expressive aspects. [21] Similarly, Sedlik contended that the works were intrinsically similar because they shared a “mood and sentiment of melancholy, moodiness, and movement.” [22]

Furthermore, Sedlik pushed the court to find intrinsic similarity as a matter of law, overriding the contrary jury verdict. [23] Alternatively, Sedlik urged the court not to apply the intrinsic test at all––relying on circuit precedent allowing courts to grant summary judgment in exceptional cases because of strong extrinsic similarities between works. [24]

Applying the Law

The three-judge panel unanimously denied Sedlik’s motion for summary judgment and his motion for judgment as a matter of law. [25] The court rejected his summary judgment motion because Sedlik’s claim turned on contested factual questions, meaning the judges could not resolve it by answering a pure question of law. [26]

The court analyzed Sedlik’s second request in greater detail but ultimately declined to overturn the jury’s verdict that the photograph and the allegedly infringing works lacked intrinsic similarity. [27] The court reasoned that because the intrinsic test focuses on the subjective judgments of laypersons unaided by expert opinion, it would make little sense for three erudite judges to substitute their own views for that of the jury. [28] Because the intrinsic element could not be met, the court declined to superfluously analyze the extrinsic element. [29]

The Concurrences

Judges Kim McLane Wardlaw and Anthony Johnstone wrote separate concurrences in judgment. Judge Wardlaw urged the Ninth Circuit to scrap the intrinsic test for substantial similarity. [30] She noted that the intrinsic test forced the court to ignore multiple important legal issues, including how to distinguish the protected and unprotected parts of works depicting a human face. [31]

Noting that the Supreme Court had never “blessed” the Ninth Circuit’s use of the intrinsic test, Judge Wardlaw argued that it distorts copyright law’s focus on protecting original expression by leaving similarity determinations about “total concept and feel” up to the whims of uninformed juries. [32] She reasoned that the intrinsic test effectively permits theft of creative expression that ordinary observers fail––or perhaps willfully refuse––to notice. [33] Judge Wardlaw concluded by proposing an alternative test. [34] She believes that judges should determine substantial similarity in light of the protectable and unprotectable aspects of works. [35]

Judge Johnstone also concurred separately, detailing how the intrinsic test had deviated from its original purpose. [36] He started his opinion by explaining that the current iteration of the intrinsic test, which turns on “similarity in total concept and feel,” is inconsistent with the plain text of federal copyright law, which protects pictures––not concepts. [37]

Judge Johnstone suggested that the intrinsic test initially came about to give effect to “the basic rule” that only original expressions of ideas––not ideas themselves––are entitled to copyright protection. [38] Thus, in his view, the extrinsic-intrinsic framework exists to gauge substantial similarity of the way in which general ideas are expressed based on overall effect. [39]

How, then, did an unobjectionable test mutate into a problem child? Judge Johnstone blamed the Ninth Circuit’s gradual expansion of the types of similarities considered in analyzing similarity. [40] Courts, Judge Johnstone reasoned, had gone from looking at concrete similarities in terms of subject matter to amorphous similarities in terms of such broad concepts as “theme” and “mood.” [41]

Similarly to Judge Wardlaw, Judge Johnstone complained that the current state of the intrinsic test creates unpredictability of outcomes and “stacks the . . . deck” against copyright plaintiffs. [42] He explained that the test makes juries more likely to find infringement “in dubious circumstances” because expert testimony cannot be used to help jurors distinguish a work’s protectable and unprotectable elements. [43]

Judge Johnstone noted an additional problem with the Ninth Circuit’s approach: when a jury finds intrinsic similarity based on a work’s unprotected elements, a defendant can get the verdict overturned on appeal based on extrinsic similarity between protected elements. [44] But when a jury finds no intrinsic similarity under the same circumstances, a plaintiff is out of luck. [45] Judge Johnstone could not see how a test causing these perverse outcomes could be consistent with the constitutional purpose of copyright protections to promote the progress of science and useful arts. [46]

Implications

Had they not been bound by controlling precedent, Judge Wardlaw and Judge Johnstone both would have found substantial similarity between Sedlik’s photograph and Von Drachenberg’s tattoo. [47] They pointed to the fact that Von Drachenberg had achieved the impossible among tattoo artists by perfectly replicating every significant detail of a photorealistic image on human skin. [48] She did so well, in fact, that her tattoo shop stated that her work was “100% exactly the same” as the photograph. [49]

While the current extrinsic-intrinsic framework has been the law in the Ninth Circuit for decades, Sedlik––buoyed by two thorough concurrences––plans to petition to have his case reheard en banc. If a majority of the active judges grant rehearing, an eleven-judge panel will decide whether to ditch the test once and for all.

See a side-by-side comparison of the photograph and tattoo at issue in this case on page 10 of the case, accessible here.

References

[1] See Montreal Concert Poster Archive, Miles Davis ‘Round Midnight Original Vinyl, Flickr (Jul. 24, 2013),  https://flickr.com/photos/jeanfrancoishayeur/9360463048/in/photolist-L6Hnru-P8HWhf-2mgyUjM-5boJ6P-Mvyr1a-2aaSMN7-kWBSFh-8o2t4q-29T3SEp-P8HWam-P8HVJG-8nYn2g-8nYiy2-MvypHF-MvypPn-d9EgY5-95Uzvi-fg9PxW-29T3STv-8M8exS-95XEqh-29T3RzD-gv5EqD-kWBQzJ-ke84YG-8o2vQN-a7ciSQ-2aaSNsd-29T3S2a-29T3Qtv-d9EhpX-buYxCZ-8nYmYM-8HmG29-kWAgFF-83pTWb-kWAXwa-kWAWMK-2ohgdnS-kWAiac-kWAhmi-95UzM2-2mhwsFG-2mhAgGx-zogd5L-2iR4fhL-8HmFWS-dry4yA-d9Enqn-5cuZMJ/.

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

[3] See id.

[4] See id. at 671–72.

[5] See id. at 672.

[6] See id.

[7] See id.

[8] See id. at 679 (Wardlaw, J., concurring).

[9] See id.

[10] See id. at 673.

[11] See id.

[12] See id.

[13] Id. at 673.

[14] See id. at 674.

[15] See id.

[16] See id.

[17] See id.

[18] See id.

[19] See id.

[20] See id. at 675.

[21] See id.

[22] See id.

[23] See id.

[24] See id.

[25] See id. at 676.

[26] See id. at 674.

[27] See id. at 675.

[28] See id.

[29] See id. at 675–76.

[30] See id. at 676 (Wardlaw, J., concurring).

[31] See id.

[32] See id. at 676, 677.

[33] See id. at 678.

[34] See id.

[35] See id. at 678–79.

[36] See id. at 680 (Johnstone, J., concurring).

[37] See id.

[38] See id.

[39] See id. at 680–81.

[40] See id. at 681.

[41] See id. at 682.

[42] See id.

[43] See id. at 684.

[44] See id.

[45] See id.

[46] See id.

[47] See id. at 685.

[48] See id.

[49] See id.