Judges Question the Test’s Future
Although the panel affirmed the outcome, two judges issued separate concurring opinions sharply criticizing the intrinsic test itself.
U.S. Circuit Judge Kim McLane Wardlaw wrote that the test allows jurors to reach infringement decisions without expert guidance and conflicts with Supreme Court precedent emphasizing careful separation of protected expression from unprotected ideas.
“The intrinsic test is a creation of our court,” Wardlaw wrote. “The Supreme Court has never said that the ordinary observer’s spontaneous impression of the ‘total concept and feel’ of the works, without expert guidance, should be dispositive.”
Judge Anthony Johnstone, in a separate concurrence, traced the origins of the intrinsic test to Ninth Circuit cases from the 1970s and argued that its evolution has distorted copyright analysis by insulating verdicts from meaningful review.
“What began as a factual test for determining substantial similarity of an idea’s overall expression has become a subjective test based on the jury’s own impression,” Johnstone wrote, adding that the doctrine tends to favor defendants and forces courts to “rubber-stamp” verdicts.
Applying that critique to the present case, Johnstone said the similarity between the tattoo and the photograph was undeniable.
“It is an understatement to say that the tattoo is substantially similar to Sedlik’s photograph — it is, as Von Drachenberg’s tattoo shop put it, ‘100% exactly the same,’” he wrote. “In my view, a test that produces such a result cannot be right.”
Wardlaw agreed, stating that if the court were free to reformulate the test, she would have concluded that the tattoo infringed Sedlik’s copyright.
