Why it matters: In a closely watched case that tests the limits of copyright protection, on May 18, 2015, the Ninth Circuit sitting en banc reversed its panel decision in Garcia v. Google et al. and found that the district court had not abused its discretion when it denied the motion for preliminary injunction filed by an actress who claimed a “dubious and unprecedented” copyright ownership interest in her performance contained within the controversial film Innocence of Muslims.
Detailed discussion: On May 18, 2015, the Ninth Circuit sitting en banc reversed its panel decision and upheld the district court’s denial of injunctive relief in Garcia v. Google et al., finding the plaintiff actress’s copyright ownership claim to her performance in a controversial film to be highly doubtful both legally and factually and could not serve as a basis for a “takedown” injunction of the film. The Court stated at the outset that “[i]n this case, a heartfelt plea for personal protection is juxtaposed with the limits of copyright law and fundamental principles of free speech. The appeal teaches a simple lesson—a weak copyright claim cannot justify censorship in the guise of authorship.”
To briefly recap the facts: In 2011, actress Cindy Lee Garcia (Garcia) gave a cameo performance with two lines in what she was led to believe was an “action-adventure thriller” set in ancient Arabia titled Desert Warrior, for which she was paid $500. Garcia later learned that the movie’s writer-director (now in jail on an unrelated matter) was using five seconds of her footage in an anti-Muslim film titled Innocence of Muslims that, among other things, depicted the Prophet Mohammed as a murderer, pedophile and homosexual. Garcia’s lines were dubbed over into Arabic so that she appeared to be posing a derogatory question about the Prophet. Almost a year after she filmed the part, in July 2012, the writer-director posted an almost 14-minute trailer from Innocence of Muslims to YouTube (the video-sharing site owned by Google). After it was translated into Arabic, news outlets credited it with inciting the subsequent violent incidents that occurred throughout the Middle East (including the September 11 Benghazi attack). Shortly thereafter, an Egyptian cleric issued a fatwa against anyone involved in Innocence of Muslims, including the actors, and Garcia began receiving death threats. Garcia attempted through various means (including multiple “takedown” notices under the Digital Millennium Copyright Act) to get Google to remove the film from YouTube and its other platforms, but when that failed she turned to the courts. On September 19, 2012, Garcia sued unsuccessfully in California state court for a TRO and preliminary injunction, alleging invasion of privacy, false light and various other torts. She voluntarily dismissed that case on September 25, 2012, after her request for injunctive relief was denied, and instigated her federal lawsuit for a preliminary injunction in district court for the Central District of California a day later on September 26. This time, Garcia relied on the federal copyright laws and claimed a copyright ownership interest in her performance in the film that was being infringed. District Court Judge Michael W. Fitzgerald denied the injunction on November 30, finding that Garcia was not likely to succeed on the merits of her “unclear” copyright claim. Moreover, given that at that point the trailer had already been online for five months, the injunction was not necessary to prevent irreparable harm.
Garcia appealed the district court decision to the Ninth Circuit (panel), which in February 2014 reversed the district court in a divided decision with Judge Alex Kozinski writing the majority opinion. Even though the panel found Garcia’s copyright claim to be “fairly debatable,” it still found it likely that she would succeed on the merits and suffer irreparable harm from continued play of the trailer. Thus, the panel granted the preliminary injunction requiring Google to remove the trailer from YouTube and other Google platforms (the panel had issued a 24-hour “secret takedown order” at the beginning of the appeal, which it later limited to versions of the trailer that contained Garcia’s performance). Apart from stating that the First Amendment does not protect copyright infringement, the panel did not address the First Amendment ramifications of its decision.
The Ninth Circuit sitting en banc sided with the district court and dissolved the panel’s injunction. While the Court was “sympathetic to [Garcia’s] plight” given the “vicious frenzy” against her that the trailer incited, it emphasized that “the claim against Google is grounded in copyright law, not privacy, emotional distress, or tort law, and Garcia seeks to impose speech restrictions under copyright laws meant to foster rather than repress free expression.”
The Court found that the applicable law and facts did not “clearly favor” Garcia’s copyright claim so as to warrant an injunction. Under the Copyright Act, the Court found Innocence of the Muslims to be an “audiovisual work characterized as a motion picture and is derivative of the script,” and that “Garcia is the author of none of this and makes no copyright claim to the film or the script. Instead, Garcia claims that her five-second performance itself merits copyright protection.” The Court placed great weight on the fact that the U.S. Copyright Office had found that Garcia’s performance was not a copyrightable work, writing when it rejected her application that “longstanding practices do not allow a copyright claim by an individual actor or actress in his or her performance contained within a motion picture.” The Copyright Office went on to say that Innocence of Muslims is a “single integrated work . . . . Assuming Ms. Garcia’s contribution was limited to her acting performance, we cannot register her performance apart from the motion picture.” The Court stated that a finding of copyright ownership in an individual performance within a motion picture would “splinter” the motion picture into many different works, resulting in a legal morass.
Moreover, the Court found that Garcia’s claims of irreparable harm were “too attenuated from the purpose of copyright” and cited to her months-long delay in seeking an injunction after the trailer was uploaded, among other things, as undercutting her irreparable harm claim. The Court concluded that, based on the “doubtful copyright claim” and lack of irreparable harm, the district court did not abuse its discretion in denying the injunction.
As to free speech concerns, the Court stated that the panel’s injunction “gave short shrift to the First Amendment values at stake” and “censored and suppressed a politically significant film—based upon a dubious and unprecedented theory of copyright. In so doing, the panel deprived the public of the ability to view firsthand, and judge for themselves, a film at the center of an international uproar.” The Court further noted that “[t]he panel’s takedown order of a film of substantial interest to the public is a classic prior restraint of speech.”
The Court concluded that “[a]t this stage of the proceedings, we have no reason to question Garcia’s claims that she was duped by an unscrupulous filmmaker and has suffered greatly from her disastrous association with the Innocence of Muslims film. Nonetheless, the district court did not abuse its discretion when it denied Garcia’s motion for a preliminary injunction under the copyright laws.” In his dissent, Judge Kozinski continued to argue for copyright protection of Garcia’s performance and did not mince words about his thoughts on the majority opinion, stating at the outset that “the majority is wrong and makes a total mess of copyright law, right here in the Hollywood Circuit.”
Click here to read the Ninth Circuit en banc opinion in Cindy Lee Garcia v. Google, Inc., YouTube LLC et al., 12-57302 (9th Cir. 2015) (en banc).