The Ninth Circuit became the first federal appellate court to hold that an actor has a copyright interest in her performance, holding that a district court abused its discretion in denying a motion for preliminary injunction. The decision by Chief Judge Alex Kozinski in Garcia v. Google, Inc., Case No. 12-57308, requires Google to take down an anti-Islamic film and take reasonable steps to prevent further uploads. In a harshly worded dissent, Judge N. Randy Smith accused the majority of “mak[ing] new law in this circuit in order to reach the result it seeks” because the court “ha[s] never held that an actress’s performance could be copyrightable.” 

The plaintiff, Cindy Lee Garcia, claimed the film’s writer and producer paid her $500 to play a minor role in an adventure film. But that movie never materialized, and instead, Garcia discovered her performance on Google’s YouTube platform in a different film, with her performance partially dubbed over with the inflammatory language “Is your Mohammed a child molester?” An Egyptian cleric issued a fatwa calling for the killing of everyone involved with the film, and Garcia received death threats. When Google refused to remove the video in response to her takedown notices under the Digital Millennium Copyright Act, she sued.

The district court refused to enter a preliminary injunction, but the Ninth Circuit reversed. Writing for the majority, Judge Kozinski stated that “[a]n actor’s performance, when fixed, is copyrightable” if it evinces “some minimal degree of creativity,” acknowledging that the question is “rarely litigated.” The Court found Garcia’s performance satisfied this standard.

The majority rejected Google’s claim that any work in which Garcia owned a copyright interest was one made for hire and thus belonged to the filmmaker, even though the filmmaker had given Garcia the script and directed the production. It also rejected Google’s implied license defense.

The panel appears to have been significantly influenced by the underlying facts, which it called “troubling,” and Google’s refusal to take the video down, which it found “disappointing, though perhaps not surprising.”

In dissent, Judge Smith wrote that Garcia’s acting performance is not a “work” within the meaning of the Copyright Act; Garcia was not the author of any such work, since she admitted the filmmaker provided the script, equipment, and direction; and in any event, the work would have been one made for hire, since Garcia conceded the filmmaker “managed all aspects of production.” 

Finally, Judges Kozinski and Smith disagreed on the element of irreparable harm, with the former finding such harm existed by virtue of death threats and Garcia’s showing that those threats would lessen if Google removed the video, and the latter reasoning that Garcia delayed several months in bringing suit and the video had by now been widely discussed and disseminated. 

The Court’s opinion raises free speech concerns. Although the majority and dissent agreed that the First Amendment does not protect against copyright infringement, it justified removal of the film only by finding a copyright interest where few (if any courts) had found one before. The parties apparently had not raised the fair use defense, which would have directly implicated the First Amendment.