By Mark Verstraete – Edited by Andrew Spore
Garcia v. Google, Inc., No. 12-57302 (9th Cir. Feb. 26, 2014)
On February 26, 2014, the Ninth Circuit reversed a district court decision denying Cindy Lee Garcia’s request for a preliminary injunction forcing YouTube to remove the anti-Islamic film “Innocence of Muslims.” Garcia, slip op. at 19. Writing for the majority, Chief Judge Alex Kozinski found that Garcia was entitled to a preliminary injunction because she had shown a likelihood of success on her copyright claim and that irreparable harm would likely result absent injunctive relief.
Techdirt offers a lengthy criticism of the ruling. Electronic Frontier Foundation worries that the opinion’s specious reasoning could set unfavorable copyright precedent. UCLA School of Law Professor Eugene Volokh, writing for the Washington Post, notes that the injunction applies only versions of the film containing Garcia’s performance.
Garcia was cast by Mark Basseley Youssef to play a small role in the film “Desert Warrior.” Id. at 4. She was paid $500 for her part, and the filming took place over three and a half days. Id. However, “Desert Warrior” was never produced. Id. Instead, Garcia’s footage was dubbed over and used in the film “Innocence of Muslims.” Id. In the scene, Garcia’s part is altered so that she appears to be asking, “Is your Mohammed a child molester?” Id. This incendiary line led to death threats being lodged at Garcia. Id. In response, Garcia filed takedown notices under the Ditigal Millenium Copyright Act in an attempt to have Google remove the film from YouTube. Id. When Google resisted Garcia’s takedown requests, she filed for the injunction. Id. at 5.
Garcia claimed that she was entitled to an injunction because her performance within the film was an independently copyrightable interest, and she never ceded it to Youssef due to the performance being a work for hire or through an implied license. Id. at 6. The district court rejected the injunction on the grounds that it would not prevent the harm and that Garcia was unlikely to succeed on the merits of her claim. Id. at 5.
At the outset, the majority rejected the idea that Garcia’s independent copyright interest could be grounded in joint authorship. Id. at 6. Garcia was not aware of the existence of “Innocence of Muslims,” and thus she did not intend or expect her performance to be used in the film. Id. at 7 n.3. Chief Judge Kozinski noted that, although she was not a joint author, Garcia would have a copyrightable interest if her fixed performance “evince[d] some minimal degree of creativity.” Id. at 8 (internal quotation marks omitted). The majority reasoned that Garcia’s performance met the minimal degree of creativity because an actor must “‘live his part inwardly, and then . . . give to his experience an external embodiment.’” Id. at 8 (quoting Constantin Stanislavski, An Actor Prepares 15, 219 (Elizabeth Reynolds Hapgood trans., 1936)).
As to whether Garcia’s performance was a work for hire, the majority found that there was no employment relationship that would cause Garcia’s copyright interests to be transferred to Youssef. Id. at 12. The majority pointed to the fact that Garcia worked for only three days, she did not receive employment benefits, and there was no written agreement between Youssef and Garcia. Id. at 11.
While the majority found that Garcia had granted Youssef an implied license, the use of Garcia’s performance in the film exceeded the scope of any such implied license because Youssef made an entirely different movie than Garcia anticipated. Id. at 13–15. However, the majority did identify the need for implied licenses to be construed broadly in order to prevent an actor from restricting the release of a movie because it did not satisfy her expectations. Id. at 14. The court also found that Garcia had not delayed in bringing the action and that, absent an injunction, Garcia would suffer irreparable harm as she had been receiving ongoing and serious threats due to Youssef’s inclusion of her performance in the film. Id. at 16.
Judge Smith dissented, finding that the district court had not abused its discretion because the law did not “clearly favor” issuing an injunction. Id. at 19. First, the dissent argued that authorship is required to give rise to a copyright interest. Id. at 26. Because Garcia “was not the originator of the ideas or concepts” and “[s]he simply acted out others’ ideas,” her contribution to the film was not substantial enough to consider authorship. Id. 25. Second, the dissent argued that an actress’s individual performance was not “fixed” and thus could not result in an independent copyright interest. Id. at 30. In order for subject matter to be protected by copyright it needs to be fixed in a tangible medium of expression. 17 USC §102(a). Judge Smith argued that Garcia merely lent her voice and her body to the scene, and it was not sufficiently fixed as to constitute a protected interest. Garcia, slip op. at 30. The dissent also noted that the facts and law did not clearly show that Garcia’s performance was not a work for hire, reasoning that there was an employment relationship between Garcia and Youssef where Youssef controlled “both the manner and the means of making the film, including the scenes featuring Garcia.” Id. at 31–32.
Granting a copyright interest to Garcia may have serious speech implications. Scholar and activist Marvin Ammori notes that providing copyright interests to individuals that are in a film for a fleeting moment could create a “tragedy of the anti-commons.” In such a situation, numerous individuals have psedo-property rights over a work and permission must be granted by each of these individuals before a work can be distributed. This arrangement can seriously curtail the dissemination of information.