Ninth Circuit Issues Controversial Copyright Decision

The Ninth Circuit recently issued an opinion in the case of Garcia v. Google, No. 12-57302, 2014 U.S. App. LEXIS 3694 (9th Cir. Feb. 26 2014), arising out of an actress' performance in a highly controversial film entitled The Innocence of Muslims . The Arabic translation of the film went viral on the Internet and led to protests across the Middle East. The film played a pivotal role in the debate over the Sept. 11, 2012 attacks on the U.S. diplomatic compound in Benghazi Libya, the 2012 presidential election, and the subsequent demise of Susan Rice's nomination for Secretary of State.

The Ninth Circuit has held that an actress with a small role the film has an independent copyright interest in her performance. Google has sought en banc review. If not vacated, the decision will have important copyright law implications for the motion picture industry, online content providers, and numerous other creators and distributors of copyrighted material.

While not discussed here, the Ninth Circuit's opinion ordering Google to remove all copies of the film from YouTube also raises important First Amendment issues and has drawn opposition from major news outlets.

The Innocence of Muslims

The plaintiff, Cindy Lee Garcia, works part-time as an actress in California. In July 2011, Garcia responded to a casting call for a film titled Desert Warriors, which was represented as an “historical Arabian Desert adventure film.” Garcia had a small role in the film. She had only a few lines in a single scene and received $500 for her performance.

Garcia claims that the filmmakers had no intention of making an adventure film; rather without her knowledge, they set out to make an anti-Islamic polemic against the Prophet Mohammed, misled her into appearing in the film, and dubbed over her voice to include lines that she never spoke, calling Mohammed a child molester.

In July 2012, the producer Mark Basseley Youssef posted a 14-minute version of the film to YouTube, which is owned and operated by Google. Garcia appears for about five seconds in the film.

In September 2012, an Egyptian cleric issued a fatwa against all involved in the film, calling on Muslims to “kill the director, the producer, and the actors and everyone who helped and promoted the film.” Garcia alleges that she received death threats, and her family, fearing for their own safety, informed her that she could no longer see her grandchildren, who she regularly babysat. Garcia further claims that she was fired because her employer believed she placed her coworkers at risk of attacks.

Garcia Fails to Obtain Relief in State Court

In her efforts to seek relief, Garcia started in California state court. On Sept. 19, 2012, she filed a complaint in Los Angeles Superior Court asserting state law claims for invasion of privacy, right of publicity, unfair business practices, and intentional infliction of emotional distress against Google, YouTube, and the film ' s producer. Garcia asserted no federal copyright claims. Garcia sought an order compelling Google to remove the film from YouTube. The following day, Judge Luis Lavin rejected her request, finding that “Plaintiff has not shown a likelihood of success on the merits.” See, Civil Minutes, Garcia v. Nakoula,'BC492358 (Cal. Sup. Ct. Sept. 20, 2012). A few days later, Garcia voluntarily dismissed her state court action.

Garcia Seeks Relief In Federal Court

Garcia then shifted her focus to federal copyright claims. On Sept. 24, 2012, she began to send notices under the Digital Millennium Copyright Act (DMCA), 17 U.S.C. '512 (http://1.usa.gov/1tD94K5) to Google, demanding that it remove all copies of the film from YouTube. The next day she applied for a copyright in her performance in the film.

Google declined to remove the film from YouTube. Garcia then sued Google and YouTube in the U.S. District Court for the Central District of California, asserting claims for copyright infringement, in addition to some of the previously asserted state law claims. See, Complaint, Garcia v. Nakoula, 2:12-cv-08315-MWF-VBK (C.D. Cal. Sept. 26, 2012) (ECF No. 1). On Oct. 17, 2012, she moved for a preliminary injunction seeking to have Google take down all copies of the film from YouTube.

In response to Garcia's copyright claims, Google submitted a copy of a document obtained from Youssef, purportedly signed by Garcia, releasing all of her rights (including any copyright interests) in her performance. Garcia claimed her signature had been forged and in support of that claim submitted the declaration of a James Blanco, a proffered handwriting expert, whose opinions have since been rejected in other proceedings. See, Ceglia v. Zuckerberg, No. 10-CV-00569A(F), 2013 U.S. Dist. LEXIS 45500 (W.D.N.Y. Mar. 26, 2013) (handwriting expert for individual, currently under federal indictment for mail and wire fraud, claiming an ownership interest in Facebook). Judge Michael Fitzgerald elected not to consider the disputed release in deciding Garcia's motion.

On Nov. 30, 2012, Judge Fitzgerald denied Garcia's motion. See, Civil Minutes, Garcia v. Nakoula, 2:12-cv-08315-MWF-VBK (C.D. Cal. Nov. 30, 2012) (ECF No. 39). He held that Garcia was unlikely to succeed on the merits of her copyright claims, because she could not establish a copyright in her performance in the film. The court further held that Garcia had unreasonably delayed in seeking the injunction after first seeing the film on YouTube. The court also found that ordering removal of the film from YouTube would constitute a mandatory injunction, and that Garcia could not meet the heightened standard required to obtain this relief.

On Decc. 21, 2012, Garcia appealed to the Ninth Circuit, but did not seek to expedite the appeal. Six months later, on June 26, 2013, a panel of the Ninth Circuit heard oral argument.

The Ninth Circuit's Decision

Almost eight months later, the Ninth Circuit issued an order under seal directing Google to take down all copies of the film from YouTube and any other platforms within its control, and to take all reasonable steps to prevent further uploads. See, Order, Garcia v. Google, No. 12-57302 (9th Cir. Feb. 19, 2014) (ECF No. 40). The court directed that neither the parties nor their counsel could reveal the existence of the order. The court later explained that it prohibited the parties from revealing the existence of the order “to prevent a rush to copy and proliferate the film before Google can comply with the order.” See, Order, Garcia v. Google, No. 12-57302 (9th Cir. Feb. 21, 2014) (ECF No. 43).

On Feb. 26, 2014, the Ninth Circuit released its public opinion in the case, with Chief Judge Alex Kozinski and Judge Ronald Gould ruling in favor of Garcia. The majority found that Garcia was likely to prevail on her copyright claims and had established the other factors, such as irreparable harm, required to obtain a preliminary injunction.

Judge Randy Smith issued a lengthy dissent, expressing his view that “the majority abandons restraint to procure an end (order the film be taken down) by unsuitable means (the Copyright Act).” Finding the decision irreconcilable with controlling Ninth Circuit authority, Judge Smith warned that “the majority makes new law in this circuit in order to reach the results it seeks.” Judge Smith would have found that Garcia does not have a copyright interest in her performance, because: 1) her performance is not a “work”; 2) she is not an “author”; and 3) her performance is too personal to be “fixed” as those terms are understood under the Copyright Act. Judge Smith further strongly disagreed with the majority's conclusion that to the extent Garcia's performance could qualify as a “work,” it was not a “work for hire.”

The Denial of Google's Motion to Stay

A day after issuance of the opinion, Google filed an emergency motion for a stay pending the disposition of a petition for en banc review. Google warned that “[u]nder the panel's rule, minor players in everything from Hollywood films to home videos can wrest control of those works from their creators, and service providers like YouTube will lack the ability to determine who has a valid copyright.” The next day, the Ninth Circuit denied that motion. The court, however, modified its order to provide that it “does not preclude the posting or display of any version of 'Innocence of Muslims' that does not include Cindy Lee Garcia's performance.” See, Order, Garcia v. Google, No. 12-57302 (9th Cir. Feb. 28, 2014) (ECF No. 45).

On March 6, 2014, the court provided notice that a judge on the Ninth Circuit had made a sua sponte request for a vote on whether to rehear the order denying a stay of the panel's prior orders. The court subsequently notified the parties that the vote had been taken and a majority of the non-recused active judges did not favor rehearing the stay order en banc. See, Order, Garcia v. Google, No. 12-57302 (9th Cir. March 14, 2014) (ECF No. 63).

Google's Petition for Rehearing En Banc

While the Ninth Circuit did not vote to rehear the denial of the request for a stay of the opinion, it will still have an opportunity to decide whether to grant en banc review of the panel's opinion.

On March 12, 2014, Google filed a petition seeking rehearing by the full Ninth Circuit. With its petition, Google submitted a newly-issued Copyright Office decision on Garcia's application to register a copyright in her performance in the film. On March 6, 2014, a week after the Ninth Circuit issued its opinion, the Copyright Office finally issued its own opinion regarding Garcia's application. Reaching the opposite result, the Copyright Office held that “dramatic performances in motion pictures” are “part of the integrated work-the motion picture” and that “Garcia has no separable claim to copyright authorship in her performance.” The Copyright Office held that if, as she claims, “her contribution was not as a work made for hire, she may assert a claim in joint authorship in the motion picture, but not sole authorship of her performance in a portion of the work.” On that basis, the Copyright Office refused Garcia's request to register a copyright in her performance in the motion picture.

In its petition, Google points out that even if Garcia could establish joint-authorship in the work, it would do her no good; “she would be just like any other co-author: powerless to prevent Youssef from uploading the film to YouTube or licensing others to do so.” Only by making the novel claim that she has an independent copyright interest in her performance could she have hoped to obtain the relief she sought ' forcing Google to take down the film over Youssef's objection.

Google further notes the potentially absurd results from finding that an actor has an independently copyrightable interest in a film performance. Google argues that “Francis Ford Coppola, for example, might own the copyright to 'The Godfather' ' minus a six-second piece here, a 30-second piece there, and a two-minute portion at the end.” Google further argues that under the panel's ruling, “everyone from extras to backup dancers could control how (and whether) films get distributed. And platforms like YouTube would be caught in the middle, forced to adjudicate endless takedown requests that would turn on hard-to-resolve disputes of fact.”

In its opinion, the panel had suggested that the case would not fundamentally alter the landscape of how an actor's performance in a film would be treated. The panel noted the highly unusual nature of Garcia's case, specifically that she claims to have been tricked into appearing in a film, with the plan to use her performance for a purpose that she could never have imagined. In most cases, the panel noted that an actor's performance would either be considered a work for hire or the actor would be deemed to have provided an implied license to use the performance.

In its petition, Google argues that the panel provides cold comfort. Faced with such questions as to what a person in a video could have imagined when she was cast, whether the filmmaker lied to her, or whether the actor agreed to perform in reliance on that lie, Google argues that it would have no choice but to block videos in deference to anyone who claimed an independent copyright interest in their performance in the video.

Garcia's Opposition to Google's Petition for Rehearing En Banc

On April 3, 2014, Garcia filed her opposition to Google's petition. Garcia argues that the panel properly found that she has an independent copyright interest in her performance. Garcia notes that while most actors would be found either to have expressly waived any copyright interests or provided an implied license to the filmmaker to use the performance, the panel appropriately found that having tricked her into appearing in the film, the filmmaker had no such rights in this case. Garcia further argues that she cannot have been considered a joint author in the work because she never intended her performance to be part of The Innocence of Muslims; she intended her performance to be part of Desert Warriors.

Garcia urges the Ninth Circuit to disregard the newly issued opinion of the Copyright Office. Objecting to its authenticity and claiming that the Copyright Office provided Google the letter outside of its “established procedures”, she requests that “the Court disregard the letter due to its questionable provenance.” Garcia further argues that even if properly in the record, the Ninth Circuit should still decline to adopt the Copyright Office's reasoning. Garcia plans to appeal the Copyright Office's decision.

Will the Ninth Circuit Review the Case En Banc?

The Ninth Circuit has received numerous amicus briefs from a broad spectrum of interested parties such as Facebook, Netflix, Pinterest, Twitter, Yahoo!, National Public Radio, the Los Angeles Times, the Washington Post, and the documentary filmmaker Morgan Spurlock of “Super Size Me” fame, all of which disagree with the panel's opinion. It remains to be seen whether the full Ninth Circuit will review the decision.

J. Alexander Lawrence is a Partner in the New York office of Morrison & Foerster LLP.

The Ninth Circuit recently issued an opinion in the case of Garcia v. Google, No. 12-57302, 2014 U.S. App. LEXIS 3694 (9th Cir. Feb. 26 2014), arising out of an actress' performance in a highly controversial film entitled The Innocence of Muslims . The Arabic translation of the film went viral on the Internet and led to protests across the Middle East. The film played a pivotal role in the debate over the Sept. 11, 2012 attacks on the U.S. diplomatic compound in Benghazi Libya, the 2012 presidential election, and the subsequent demise of Susan Rice's nomination for Secretary of State.

The Ninth Circuit has held that an actress with a small role the film has an independent copyright interest in her performance. Google has sought en banc review. If not vacated, the decision will have important copyright law implications for the motion picture industry, online content providers, and numerous other creators and distributors of copyrighted material.

While not discussed here, the Ninth Circuit's opinion ordering Google to remove all copies of the film from YouTube also raises important First Amendment issues and has drawn opposition from major news outlets.

The Innocence of Muslims

The plaintiff, Cindy Lee Garcia, works part-time as an actress in California. In July 2011, Garcia responded to a casting call for a film titled Desert Warriors, which was represented as an “historical Arabian Desert adventure film.” Garcia had a small role in the film. She had only a few lines in a single scene and received $500 for her performance.

Garcia claims that the filmmakers had no intention of making an adventure film; rather without her knowledge, they set out to make an anti-Islamic polemic against the Prophet Mohammed, misled her into appearing in the film, and dubbed over her voice to include lines that she never spoke, calling Mohammed a child molester.

In July 2012, the producer Mark Basseley Youssef posted a 14-minute version of the film to YouTube, which is owned and operated by Google. Garcia appears for about five seconds in the film.

In September 2012, an Egyptian cleric issued a fatwa against all involved in the film, calling on Muslims to “kill the director, the producer, and the actors and everyone who helped and promoted the film.” Garcia alleges that she received death threats, and her family, fearing for their own safety, informed her that she could no longer see her grandchildren, who she regularly babysat. Garcia further claims that she was fired because her employer believed she placed her coworkers at risk of attacks.

Garcia Fails to Obtain Relief in State Court

In her efforts to seek relief, Garcia started in California state court. On Sept. 19, 2012, she filed a complaint in Los Angeles Superior Court asserting state law claims for invasion of privacy, right of publicity, unfair business practices, and intentional infliction of emotional distress against Google, YouTube, and the film ' s producer. Garcia asserted no federal copyright claims. Garcia sought an order compelling Google to remove the film from YouTube. The following day, Judge Luis Lavin rejected her request, finding that “Plaintiff has not shown a likelihood of success on the merits.” See, Civil Minutes, Garcia v. Nakoula,'BC492358 (Cal. Sup. Ct. Sept. 20, 2012). A few days later, Garcia voluntarily dismissed her state court action.

Garcia Seeks Relief In Federal Court

Garcia then shifted her focus to federal copyright claims. On Sept. 24, 2012, she began to send notices under the Digital Millennium Copyright Act (DMCA), 17 U.S.C. '512 (http://1.usa.gov/1tD94K5) to Google, demanding that it remove all copies of the film from YouTube. The next day she applied for a copyright in her performance in the film.

Google declined to remove the film from YouTube. Garcia then sued Google and YouTube in the U.S. District Court for the Central District of California, asserting claims for copyright infringement, in addition to some of the previously asserted state law claims. See, Complaint, Garcia v. Nakoula, 2:12-cv-08315-MWF-VBK (C.D. Cal. Sept. 26, 2012) (ECF No. 1). On Oct. 17, 2012, she moved for a preliminary injunction seeking to have Google take down all copies of the film from YouTube.

In response to Garcia's copyright claims, Google submitted a copy of a document obtained from Youssef, purportedly signed by Garcia, releasing all of her rights (including any copyright interests) in her performance. Garcia claimed her signature had been forged and in support of that claim submitted the declaration of a James Blanco, a proffered handwriting expert, whose opinions have since been rejected in other proceedings. See, Ceglia v. Zuckerberg, No. 10-CV-00569A(F), 2013 U.S. Dist. LEXIS 45500 (W.D.N.Y. Mar. 26, 2013) (handwriting expert for individual, currently under federal indictment for mail and wire fraud, claiming an ownership interest in Facebook). Judge Michael Fitzgerald elected not to consider the disputed release in deciding Garcia's motion.

On Nov. 30, 2012, Judge Fitzgerald denied Garcia's motion. See, Civil Minutes, Garcia v. Nakoula, 2:12-cv-08315-MWF-VBK (C.D. Cal. Nov. 30, 2012) (ECF No. 39). He held that Garcia was unlikely to succeed on the merits of her copyright claims, because she could not establish a copyright in her performance in the film. The court further held that Garcia had unreasonably delayed in seeking the injunction after first seeing the film on YouTube. The court also found that ordering removal of the film from YouTube would constitute a mandatory injunction, and that Garcia could not meet the heightened standard required to obtain this relief.

On Decc. 21, 2012, Garcia appealed to the Ninth Circuit, but did not seek to expedite the appeal. Six months later, on June 26, 2013, a panel of the Ninth Circuit heard oral argument.

The Ninth Circuit's Decision

Almost eight months later, the Ninth Circuit issued an order under seal directing Google to take down all copies of the film from YouTube and any other platforms within its control, and to take all reasonable steps to prevent further uploads. See, Order, Garcia v. Google, No. 12-57302 (9th Cir. Feb. 19, 2014) (ECF No. 40). The court directed that neither the parties nor their counsel could reveal the existence of the order. The court later explained that it prohibited the parties from revealing the existence of the order “to prevent a rush to copy and proliferate the film before Google can comply with the order.” See, Order, Garcia v. Google, No. 12-57302 (9th Cir. Feb. 21, 2014) (ECF No. 43).

On Feb. 26, 2014, the Ninth Circuit released its public opinion in the case, with Chief Judge Alex Kozinski and Judge Ronald Gould ruling in favor of Garcia. The majority found that Garcia was likely to prevail on her copyright claims and had established the other factors, such as irreparable harm, required to obtain a preliminary injunction.

Judge Randy Smith issued a lengthy dissent, expressing his view that “the majority abandons restraint to procure an end (order the film be taken down) by unsuitable means (the Copyright Act).” Finding the decision irreconcilable with controlling Ninth Circuit authority, Judge Smith warned that “the majority makes new law in this circuit in order to reach the results it seeks.” Judge Smith would have found that Garcia does not have a copyright interest in her performance, because: 1) her performance is not a “work”; 2) she is not an “author”; and 3) her performance is too personal to be “fixed” as those terms are understood under the Copyright Act. Judge Smith further strongly disagreed with the majority's conclusion that to the extent Garcia's performance could qualify as a “work,” it was not a “work for hire.”

The Denial of Google's Motion to Stay

A day after issuance of the opinion, Google filed an emergency motion for a stay pending the disposition of a petition for en banc review. Google warned that “[u]nder the panel's rule, minor players in everything from Hollywood films to home videos can wrest control of those works from their creators, and service providers like YouTube will lack the ability to determine who has a valid copyright.” The next day, the Ninth Circuit denied that motion. The court, however, modified its order to provide that it “does not preclude the posting or display of any version of 'Innocence of Muslims' that does not include Cindy Lee Garcia's performance.” See, Order, Garcia v. Google, No. 12-57302 (9th Cir. Feb. 28, 2014) (ECF No. 45).

On March 6, 2014, the court provided notice that a judge on the Ninth Circuit had made a sua sponte request for a vote on whether to rehear the order denying a stay of the panel's prior orders. The court subsequently notified the parties that the vote had been taken and a majority of the non-recused active judges did not favor rehearing the stay order en banc. See, Order, Garcia v. Google, No. 12-57302 (9th Cir. March 14, 2014) (ECF No. 63).

Google's Petition for Rehearing En Banc

While the Ninth Circuit did not vote to rehear the denial of the request for a stay of the opinion, it will still have an opportunity to decide whether to grant en banc review of the panel's opinion.

On March 12, 2014, Google filed a petition seeking rehearing by the full Ninth Circuit. With its petition, Google submitted a newly-issued Copyright Office decision on Garcia's application to register a copyright in her performance in the film. On March 6, 2014, a week after the Ninth Circuit issued its opinion, the Copyright Office finally issued its own opinion regarding Garcia's application. Reaching the opposite result, the Copyright Office held that “dramatic performances in motion pictures” are “part of the integrated work-the motion picture” and that “Garcia has no separable claim to copyright authorship in her performance.” The Copyright Office held that if, as she claims, “her contribution was not as a work made for hire, she may assert a claim in joint authorship in the motion picture, but not sole authorship of her performance in a portion of the work.” On that basis, the Copyright Office refused Garcia's request to register a copyright in her performance in the motion picture.

In its petition, Google points out that even if Garcia could establish joint-authorship in the work, it would do her no good; “she would be just like any other co-author: powerless to prevent Youssef from uploading the film to YouTube or licensing others to do so.” Only by making the novel claim that she has an independent copyright interest in her performance could she have hoped to obtain the relief she sought ' forcing Google to take down the film over Youssef's objection.

Google further notes the potentially absurd results from finding that an actor has an independently copyrightable interest in a film performance. Google argues that “Francis Ford Coppola, for example, might own the copyright to 'The Godfather' ' minus a six-second piece here, a 30-second piece there, and a two-minute portion at the end.” Google further argues that under the panel's ruling, “everyone from extras to backup dancers could control how (and whether) films get distributed. And platforms like YouTube would be caught in the middle, forced to adjudicate endless takedown requests that would turn on hard-to-resolve disputes of fact.”

In its opinion, the panel had suggested that the case would not fundamentally alter the landscape of how an actor's performance in a film would be treated. The panel noted the highly unusual nature of Garcia's case, specifically that she claims to have been tricked into appearing in a film, with the plan to use her performance for a purpose that she could never have imagined. In most cases, the panel noted that an actor's performance would either be considered a work for hire or the actor would be deemed to have provided an implied license to use the performance.

In its petition, Google argues that the panel provides cold comfort. Faced with such questions as to what a person in a video could have imagined when she was cast, whether the filmmaker lied to her, or whether the actor agreed to perform in reliance on that lie, Google argues that it would have no choice but to block videos in deference to anyone who claimed an independent copyright interest in their performance in the video.

Garcia's Opposition to Google's Petition for Rehearing En Banc

On April 3, 2014, Garcia filed her opposition to Google's petition. Garcia argues that the panel properly found that she has an independent copyright interest in her performance. Garcia notes that while most actors would be found either to have expressly waived any copyright interests or provided an implied license to the filmmaker to use the performance, the panel appropriately found that having tricked her into appearing in the film, the filmmaker had no such rights in this case. Garcia further argues that she cannot have been considered a joint author in the work because she never intended her performance to be part of The Innocence of Muslims; she intended her performance to be part of Desert Warriors.

Garcia urges the Ninth Circuit to disregard the newly issued opinion of the Copyright Office. Objecting to its authenticity and claiming that the Copyright Office provided Google the letter outside of its “established procedures”, she requests that “the Court disregard the letter due to its questionable provenance.” Garcia further argues that even if properly in the record, the Ninth Circuit should still decline to adopt the Copyright Office's reasoning. Garcia plans to appeal the Copyright Office's decision.

Will the Ninth Circuit Review the Case En Banc?

The Ninth Circuit has received numerous amicus briefs from a broad spectrum of interested parties such as Facebook, Netflix, Pinterest, Twitter, Yahoo!, National Public Radio, the Los Angeles Times, the Washington Post, and the documentary filmmaker Morgan Spurlock of “Super Size Me” fame, all of which disagree with the panel's opinion. It remains to be seen whether the full Ninth Circuit will review the decision.

J. Alexander Lawrence is a Partner in the New York office of Morrison & Foerster LLP .