On Monday, December 15, 2014, the Ninth Circuit en banc will hear argument in Garcia v. Google, Inc. 766 F3d 929 (9th Cir. 2014), amending 743 F.3d 1258 (9th Cir. 2014).  A three judge panel of the Ninth Circuit previously reversed the trial court and held that an actor owns a copyright interest in his or her performance, however small, in a film.  Plaintiff actress received $500 for three and a half days of filming in a movie which never materialized.  Instead, plaintiff’s scene was inserted into an anti-Islamic film with her voice partially dubbed over so that she appeared to be asking, “Is your Mohammed a child molester?”  The film aired on Egyptian television resulting in protests, including one Egyptian cleric issuing a fatwa calling for the killing of everyone involved with the film.  Plaintiff also received death threats.  The film was available on YouTube.  Plaintiff requested that Google (the parent company of YouTube) remove the video.  Plaintiff then sought a preliminary injunction in the federal district court which the court denied.

Disagreeing with the district court, two of the three appellate judges ruled that plaintiff had established a likelihood of success in the action such that she was entitled to injunctive relief.  They did so by holding that plaintiff had a protectable copyright interest in her brief performance:  “An actor’s performance, when fixed, is copyrightable if it evinces ‘some minimal degree of creativity . . . no matter how crude, humble or obvious it might be’.”  There was a strong dissent.  The original opinion met with a tidal wave of criticism.  Google petitioned for rehearing, supported by numerous amici briefs.  The Ninth Circuit responded by amending the opinion but changed nothing of substance.  (Garcia v. Google, Inc. 766 F3d 929.)

In November 2014, a vote of a majority of nonrecused judges on the Ninth Circuit  ordered that the case “be reheard . . . .  The three-judge opinion shall not be cited as precedent by or to any court of the Ninth Circuit.”  En banc reviews are rare.  Here the court apparently ordered the review because the proceeding “involves a question of exceptional importance.”  Issues for the court’s en banc consideration involve questions of whether:

  • the actress’s performance was not a “work” subject to copyright protection;
  • the actress was not an “author,”
  • the visual performance was not “fixed in a tangible medium of expression.”

The three judge panel court’s decision issuing the injunction also raises a prior restraint issue under the First Amendment.  If the court rules en banc similar to the three judge panel court’s ruling, a number of additional issues are of concern, including the following:

  • Will an actor be able to claim copyright infringement if she asserts the film, for example, through editing, depicts her performance in a manner she claims is different than a producer or director allegedly represented to her, whether or not there is a written agreement for a work-for-hire or a license?
  • Will producers now be forced to obtain broad work-for-hire agreements or licenses in every instance?

The ruling of the Ninth Circuit en banc, whatever the result, presages one of the most, if not the most, important intellectual property decisions of 2014 for the court and will no doubt generate much commentary and a likely petition for certiorari to the Supreme Court.