A copyright suit over a tattoo of jazz legend Miles Davis has appeals judges calling to overturn the long-criticized test an influential appeals court uses to decide how similar an alleged copy is to the original work.
The US Court of Appeals for the Ninth Circuit upheld a jury verdict finding the tattoo inked by celebrity artist Kat Von D didn’t infringe the photograph of Davis she traced to create it because the works aren’t “substantially similar.” But two judges issued a rare plea for the circuit to throw out the “flawed” and “standardless” test courts in the circuit use, which led jurors to decide the works aren’t enough alike to find infringement.
Those judges “were right that the intrinsic test is a dumpster fire and it needs to be redone,” said Santa Clara University law professor Eric Goldman. “It’s really shocking that it’s survived as long as it has.”
The Ninth Circuit for 50 years has used a two-part inquiry to determine substantial similarity. After an extrinsic test that compares portions of the works that are protectable by copyright law, it turns to the intrinsic test: a creation unique to the circuit that asks jurors to decide whether a reasonable person would find the “total concept and feel” of the works substantially similar.
The extrinsic test’s mixed question of law and fact can frequently be addressed by a judge, while the vaguely defined intrinsic test is almost always a pure factual determination—the type left to a jury.
But replacing the intrinsic test may prove tricky. No one similarity test is perfect, Goldman said. “I don’t even really know how to teach them in class. Frankly, it’s just all vibes.”
The opinion said the appellate panel couldn’t replace the jurors’ interpretation with its own. The circuit’s precedent forced the judges to uphold the verdict, even though it’s “an understatement to say that the tattoo is substantially similar” to the photograph, Judge Anthony D. Johnstone’s concurrence said.
Judge Kim McLane Wardlaw, in a separate concurrence, said the test contradicts and distorts federal copyright law by protecting the general public’s “spontaneous” impression instead of creators’ works.
The full Ninth Circuit could overrule its precedent if it agrees to rehear the case en banc. But the court seldom grants such requests, taking up only 15 cases en banc in 2025, according to the circuit’s statistics.
The concurrences can be tallied as two votes in favor of a full rehearing, said Knobbe Martens partner Mark Lezama, noting how uncommon it is for a majority opinion to raise the possibility.
The panel Thursday granted the photographer’s request for more time to ask for a rehearing.
Potential Replacements
The Ninth Circuit established the intrinsic test in 1970 in a dispute over greeting cards, overruling a district court that found no infringement, even though the cards bore a “remarkable resemblance.”
The appellate court agreed with the lower court that most of the elements, such as common phrases, in isolation weren’t protectable, but said taken together the cards were substantially similar “in total concept and feel.”
Fifty-one years later, photographer Jeffrey Sedlik sued Katherine Von Drachenberg, alleging a free tattoo she inked on a friend infringed his portrait of Davis.
The case went to trial in 2022 after the US District Court for the Central District of California denied Sedlik summary judgment, ruling he failed to articulate the specific similarities between the works. The jury sided with Von D in 2024, and Sedlik appealed.
The appellate judges previewed their concerns during oral argument in July. The current test washes out the value of copyrights “by allowing a jury to reach unreviewable, subjective determinations,” Johnstone said at the time.
Creating an alternative, ideal test is almost an impossible task, Goldman said, because “there’s no way to define the standards between ‘substantial similarity’ and ‘insubstantial similarity’ in a way that everyone’s gonna like—or maybe that anyone’s gonna like.”
The Ninth Circuit could adopt one of the “better” tests used by other circuits, he said, but “it’s one of those great legal frontiers where, no matter how the words are expressed, we’re always going to have border cases where they can’t be resolved.”
Lezama pointed to the Second Circuit’s Abstraction-Filtration-Comparison test as a potential replacement. The probe ensures tight focus on the protectable elements of a work, he said, and would “address the potential for mischief with the intrinsic test.”
Still, he stressed the importance of the intrinsic test’s originating purpose. “By dissecting a work into only its protectable elements, you lose sight of the bigger picture and the expressive, protectable selection and arrangement of otherwise perhaps individually unprotectable elements.”
Imbalance
Johnstone and Wardlaw both concentrated their concurrences on how the intrinsic test can be unfair to plaintiffs, suggesting a test focused on filtering protectable and unprotectable elements, rather than the overall concept, would’ve resulted in a finding of substantial similarity.
For now it remains a distinct bar that plaintiffs must clear. And avoiding an unpredictable jury requires convincing a judge that the answer to a nebulous test with no clear standard is so obvious a reasonable juror couldn’t find otherwise.
“The lesson for defense lawyers is, ‘Always request a jury trial,’” intellectual property attorney Mitchell Stein of Patrick Doerr said. “It is possible to win a summary judgment as a copyright plaintiff on the intrinsic test. It’s hard, though.”
But the test favors plaintiffs in some ways, too, Goldman and Lezama said.
“Revamping it is actually likely to cause more plaintiffs to lose,” Goldman said, because the test allows juries to consider “the total concept and feel of a work” when copyright law expressly doesn’t cover concepts.
A clearer test would help guide discussion about what parts of a work are protectable, he said, but it wouldn’t change copyright owners’ general approach to take the most expansive views of their rights.
“Nobody relies on the test if they can avoid it.”
The case is Sedlik v. Von Drachenberg, 9th Cir., No. 24-3367, 1/2/26.
Kyle Jahner in Raleigh, N.C. also contributed to this story.
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