Ninth Circuit dispensing with intrinsic copyright infringement test
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Söğüt Atilla-Aydın
Jan 13, 2026, 9:48:02 AM (9 days ago) Jan 13
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Home / copyright / Copyright infringement / intrinsic test / Ninth Circuit / photograph / Sedlik v. Von Drachenberg / Söğüt Atilla-Aydın / tattoo / US / Ninth Circuit dispensing with intrinsic copyright infringement test
Ninth Circuit dispensing with intrinsic copyright infringement test
In a recent judgment, the US Court of Appeals for the Ninth Circuit held that using a photograph protected by copyright without permission as the source for a tattoo did not qualify for reproducing a substantial part of the photograph, given their different “total concept and feel”. The Court held that, by applying its infamous extrinsic and intrinsic tests, the District Court had reached the correct conclusion. However, some concerns about the intrinsic test were expressed by two appellate judges, calling for a change.
Katherine Von Drachenberg is a tattoo artist who tattoos mostly her friends, usually without charging them. One such friend was Blake Farmer, a trumpeter, who specifically wanted Sedlik’s photograph of Davis to be tattooed on his arm. Von Drachenberg prepared a sketch using a tracing paper to copy the photograph as closely as possible and then followed that copy while tattooing.
After seeing this tattoo together with his photograph on Von Drachenberg’s social media accounts, Sedlik made an unsuccessful attempt to discuss the matter, which eventually resulted in a lawsuit before the District Court for the Central District of California.
Based on the jury’s findings, the District Court, in essence, held that the tattoo is not substantially similar to the photograph. As per the substantial similarity assessment developed by the Ninth Circuit, an allegedly infringing work needs to have (i) objective similarities to the original work because of the reproduction of protectable elements and (ii) substantially similar total concept and feel to the original one, judged solely by an ordinary reasonable observer (e.g., a jury composed of laypersons). The first point refers to the “extrinsic” test, while the second point to the controversial “intrinsic” test. In the case at hand, as the jury considered the two works to have significantly different total concepts and feels primarily because of appearing in very different mediums, the District Court concluded that the tattoo did not infringe the copyright over the photograph.
Although Sedlik appealed, he could not get a different outcome. The Ninth Circuit was “reluctant to reverse a jury’s application of the intrinsic test” because of its explicit reliance on the layperson’s impressions, rather than expert testimonies or court assessments.
After emphasising that the intrinsic test was developed to protect the whole of an expression, the judges accepted that it no longer serves that purpose, distorts copyright law, and the Supreme Court has never agreed that a test based on the “spontaneous impression” of an ordinary observer to be a “dispositive factor”. Against this background, it becomes apparent that considering any similarity between two works is significantly inconsistent with the law.
Numerous factors may cause two creations to seem similar, including the repetition of underlying ideas, references to the same common sources, or building on the same concept or method. It may be tempting to say that, by reproducing such elements found in an earlier work, a later artist must have seen and copied from that earlier work. However, without allowing room for the need to repeat some elements found in other works, one can never truly talk about the progress of the arts because it depends heavily on drawing inspiration from, referring to, or even imitating some parts of earlier works in the creation of new ones. Thus, as has been raised earlier by this Kat [see IPKat here], it is crucial to distinguish the harmless reproduction of unprotectable elements from the potentially harmful imitation of protected features and come to a conclusion by considering solely the latter.
Moreover, relying on juries’ intuition in identifying whether a defendant’s later creation infringes a claimant’s earlier work, rather than an objective assessment, leads to unpredictable and unfair outcomes, as highlighted by Judges Wardlaw and Johnstone. As long as the later work creates a different feeling or impression in the minds of the jury, it becomes impossible to hold that the defendant infringed the claimant’s copyright. Although “a jury’s job is to find facts, not feelings”, the intrinsic test requires them to find feelings. In other words, even where substantial protectable parts of a work are reproduced in another work, it may still be held that it is not an infringing work, simply because of the different feelings it creates. And since a jury’s verdict on a work’s ‘total concept and feel’ has never been reviewed or reversed by the Ninth Circuit – due to procedural principles – the two appellate judges stated that the intrinsic test has been favouring defendants for decades. To illustrate, even in situations where the defendant accepts that their work was “100% exactly the same as the [claimant’s]” (see p. 23 of the decision), jury’s perception of the works that appear in completely different mediums can render an obvious infringement decision to a verdict of non-infringement.
Considering all this, Judges Wardlaw and Johnstone urged the Court to abolish the intrinsic test either by replacing it with a more “consistent and even-handed” assessment or by merely focusing on the extrinsic test, thereby always filtering out the unprotectable elements while objectively assessing substantial similarity. This would allow for more consistent and predictable judgments that closely align with the aims and scope of copyright law.
The intrinsic test is also capable of rendering copyright protection over a work meaningless (e.g., the copyright enjoyed by the photograph in this case, the character copyright in Biani v Showtime [see also IPKat cited above]). It is one thing to hold, from the outset, that even a striking resemblance between a photograph and a tattoo cannot amount to infringement, and completely another thing to say that, although infringing, the specific tattoo in question can benefit from the fair use defence, given (i) the adjustments made by the tattoo artist to accommodate the “inherent challenges in replicating a photograph on human skin” and (ii) the fact that the tattoo not being capable of acting as a substitute in the market for the photograph. While this case was purely requiring the courts to assess the fairness of unauthorisedly reproducing the photograph and transformativeness of the tattoo, the very existence of the intrinsic test prevented the courts from discussing all these.
Image credit: ChatGPT
Background and decision
Jeffrey Sedlik is a professional photographer who took an iconic photograph of jazz musician Miles Davis. He adjusted Davis’s fingers to represent both the “Shh!” gesture and a series of musical notes; played with Davis’s hair before the shoot; instructed Davis on his facial expression (e.g., to make his eyebrows slightly furrowed); and made some creative choices regarding, inter alia, the lighting, background, and shooting angle. All these make the Davis photograph an original work of Sedlik’s. Over time the photographer has licenced the photograph for the creation of some derivative works for both commercial and non-commercial purposes.
Katherine Von Drachenberg is a tattoo artist who tattoos mostly her friends, usually without charging them. One such friend was Blake Farmer, a trumpeter, who specifically wanted Sedlik’s photograph of Davis to be tattooed on his arm. Von Drachenberg prepared a sketch using a tracing paper to copy the photograph as closely as possible and then followed that copy while tattooing.
 |
| Von Drachenberg’s tattoo. |
After seeing this tattoo together with his photograph on Von Drachenberg’s social media accounts, Sedlik made an unsuccessful attempt to discuss the matter, which eventually resulted in a lawsuit before the District Court for the Central District of California.
 |
| One of Von Drachenberg’s social media posts. |
Based on the jury’s findings, the District Court, in essence, held that the tattoo is not substantially similar to the photograph. As per the substantial similarity assessment developed by the Ninth Circuit, an allegedly infringing work needs to have (i) objective similarities to the original work because of the reproduction of protectable elements and (ii) substantially similar total concept and feel to the original one, judged solely by an ordinary reasonable observer (e.g., a jury composed of laypersons). The first point refers to the “extrinsic” test, while the second point to the controversial “intrinsic” test. In the case at hand, as the jury considered the two works to have significantly different total concepts and feels primarily because of appearing in very different mediums, the District Court concluded that the tattoo did not infringe the copyright over the photograph.
Although Sedlik appealed, he could not get a different outcome. The Ninth Circuit was “reluctant to reverse a jury’s application of the intrinsic test” because of its explicit reliance on the layperson’s impressions, rather than expert testimonies or court assessments.
Why is this an important case?
The key issue arising from the case is the acknowledgement of the Ninth Circuit itself that the intrinsic test “has lost its legal content” and that it has “fundamental flaws”. Despite agreeing with the Court’s findings, Judges Wardlaw and Johnstone suggested that the ultimate outcome is inappropriate and that it is now time to dispense with the intrinsic test.After emphasising that the intrinsic test was developed to protect the whole of an expression, the judges accepted that it no longer serves that purpose, distorts copyright law, and the Supreme Court has never agreed that a test based on the “spontaneous impression” of an ordinary observer to be a “dispositive factor”. Against this background, it becomes apparent that considering any similarity between two works is significantly inconsistent with the law.
Numerous factors may cause two creations to seem similar, including the repetition of underlying ideas, references to the same common sources, or building on the same concept or method. It may be tempting to say that, by reproducing such elements found in an earlier work, a later artist must have seen and copied from that earlier work. However, without allowing room for the need to repeat some elements found in other works, one can never truly talk about the progress of the arts because it depends heavily on drawing inspiration from, referring to, or even imitating some parts of earlier works in the creation of new ones. Thus, as has been raised earlier by this Kat [see IPKat here], it is crucial to distinguish the harmless reproduction of unprotectable elements from the potentially harmful imitation of protected features and come to a conclusion by considering solely the latter.
Moreover, relying on juries’ intuition in identifying whether a defendant’s later creation infringes a claimant’s earlier work, rather than an objective assessment, leads to unpredictable and unfair outcomes, as highlighted by Judges Wardlaw and Johnstone. As long as the later work creates a different feeling or impression in the minds of the jury, it becomes impossible to hold that the defendant infringed the claimant’s copyright. Although “a jury’s job is to find facts, not feelings”, the intrinsic test requires them to find feelings. In other words, even where substantial protectable parts of a work are reproduced in another work, it may still be held that it is not an infringing work, simply because of the different feelings it creates. And since a jury’s verdict on a work’s ‘total concept and feel’ has never been reviewed or reversed by the Ninth Circuit – due to procedural principles – the two appellate judges stated that the intrinsic test has been favouring defendants for decades. To illustrate, even in situations where the defendant accepts that their work was “100% exactly the same as the [claimant’s]” (see p. 23 of the decision), jury’s perception of the works that appear in completely different mediums can render an obvious infringement decision to a verdict of non-infringement.
Considering all this, Judges Wardlaw and Johnstone urged the Court to abolish the intrinsic test either by replacing it with a more “consistent and even-handed” assessment or by merely focusing on the extrinsic test, thereby always filtering out the unprotectable elements while objectively assessing substantial similarity. This would allow for more consistent and predictable judgments that closely align with the aims and scope of copyright law.
Concluding remarks
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| A Kat getting a tattoo of her favourite celebrity Kat! |
Image credit: ChatGPT
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