Ninth Circuit’s Longstanding Copyright Test Faces En Banc Challenge in Sedlik v. Von Drachenberg

The longstanding framework governing copyright infringement in the United States Court of Appeals for the Ninth Circuit is now facing a direct challenge.

At issue is the second, subjective step of the Ninth Circuit’s extrinsic/intrinsic framework, under which a jury evaluates whether two works share the same “total concept and feel.” In early January, a Ninth Circuit panel issued its decision in Sedlik v. Von Drachenberg.  Two separate concurring opinions accompanied the decision and openly questioned whether the intrinsic test continues to serve the purposes of the Copyright Act and calling for its reconsideration.

This week, plaintiff Jeffrey Sedlik filed a petition for rehearing en banc, asking the court to replace the extrinsic/intrinsic framework with a single, objective substantial similarity inquiry. Just one day later, the court ordered the defendants to file a response, placing the continued viability of the intrinsic test before the full court. While the existing copyright framework remains binding precedent, the court’s swift request for a response signals renewed attention to the doctrine.

The Prevailing Framework

The Ninth Circuit has long followed a two-step framework in evaluating copyright infringement claims. Under this approach, courts first apply the extrinsic test, which compares specific, protectable elements of the works using objective criteria.  If the plaintiff clears that hurdle, the case proceeds to the intrinsic test, which asks whether an ordinary reasonable observer would find the works substantially similar in their overall “look and feel.”  The intrinsic test is intentionally subjective, conducted without analytic dissection or expert testimony and is treated as a fact question for the jury. [1] In practice, this often means that copyright claims that can meet or create a genuine issue of fact on the extrinsic test will survive summary judgment.

The Sedlik Case

Jeffrey Sedlik is a photographer who staged, styled, and photographed famed musician Miles Davis.  Sedlik alleges that Katherine Von Drachenberg, a tattoo artist and reality television personality known as “Kat von D,” infringed his copyright by creating a sketch and tattoo based on the portrait and by sharing social media posts featuring the image.  After the trial court denied Sedlik’s motion for judgment as a matter of law following a jury verdict for Von Drachenberg, Sedlik appealed to the Ninth Circuit. 

The Ninth Circuit affirmed the trial court’s ruling.  It held that the jury verdict was based on an application of the intrinsic test, and that to reverse that verdict would be tantamount to “supplanting the jury’s subjective interpretation with our own, which we cannot do.” [3]  Judge Wardlaw and Judge Johnstone separately penned concurring opinions raising concerns that a jury’s comparison of two works’ “total concept and feel” turns an inherently legal question of infringement into a subjectively factual question, which renders the result unreviewable by the appellate court.  Judge Wardlaw wrote that the consideration of “total concept and feel” of two works “distort[s] copyright law.” [4]  Judge Wardlaw also wrote that the intrinsic test was inconsistent with Supreme Court precedent and the intent of the Copyright Act, and called on the court to “consider dispensing with it altogether.” [5] Likewise, Judge Johnstone wrote that “the standardless intrinsic test invites juries to reach copyright verdicts unconstrained by copyright law.” [6]  In this case, Judge Johnstone stated that although the tattoo was “100% exactly the same” as the portrait, the intrinsic test led the jury to “deny the substantial similarity between the photograph and the tattoo”—a decision that was immune from review.  [7]

The Limitations of the Intrinsic Test

The concurring opinions in Sedlik are not the first to question the intrinsic test.  In 1990, the court observed in Shaw v. Lindheim that at least applied to literary works, judicial application of the intrinsic test had strayed from the division between expression and ideas and had become “virtually devoid of analysis . . . a mere subjective judgment.” [8]  Several years later, the court acknowledged that the framework as previously applied has been “criticized” by leading commentators, which prompted a reformulation to be more consistent with the law in other circuits.  [9]

The Ninth Circuit has also recognized limitations of the framework when it comes to technical works like software, user interfaces, and APIs, in which protectable expression is largely constrained by function.  In these cases, the scope of protectable expression may be so narrow that it is much more difficult to find substantial similarity—or, as required in such cases, virtual identity— because any similarity stems from the use of common ideas or their logical extensions. [10]

Will Sedlik Lead to En Banc Review?

In his petition for rehearing en banc, Sedlik asks the Ninth Circuit to replace the extrinsic/intrinsic framework with a single, objective substantial similarity analysis focused solely on protectable expression.  Drawing heavily from Judge Wardlaw’s and Judge Johnstone’s concurring opinions, Sedlik argues that the intrinsic test confuses juries and limits meaningful appellate review.

Whether the Ninth Circuit will grant rehearing remains to be seen. As recently as 2021, the court declined an invitation to conform its two-part framework to the Second Circuit’s “ordinary observer” approach, holding that the extrinsic/intrinsic test is binding circuit precedent absent intervening Supreme Court authority that renders it irreconcilable.  [11] Whether the court will now reconsider the intrinsic test in light of the concurring opinions and the pending petition remains uncertain. 

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[1] Skidmore as Tr. for Randy Craig Wolfe Tr. v. Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020).  

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

[3] Id. at 675

[4] Id. at 677 (Wardlaw, J., concurring). 

[5] Id. at 676 (Wardlaw, J., concurring). 

[6] Id. at 680 (Johnstone, J., concurring).

[7] Id. at 685 (Johnstone, J., concurring).

[8] Shaw v. Lindheim, 919 F.2d 1353, 1358 (9th Cir. 1990). 

[9] Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1398 (9th Cir. 1997). 

[10] Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994).

[11] Johannsongs-Publ’g, Ltd. v. Lovland, No. 20-55552, 2021 WL 5564626, at *1 (9th Cir. Nov. 29, 2021).