Ninth Circuit Arguments in <i>Innocence of Muslims</i> Case

Actress Cindy Lee Garcia's two-year quest to scrub the Internet of her appearance in the anti-Islamic film Innocence of Muslims was the departure point for roving arguments before an 11-judge panel of the U.S. Court of Appeals for the Ninth Circuit in December. In a discussion that touched on the copyright interest owed to artists from Celine Dion to an extra in a battle scene of one of the Lord of the Rings movies, the Ninth Circuit considered Garcia's claim to a copyright in her performance in the film and whether it warrants an injunction barring Google Inc. from hosting the video on YouTube. Garcia v. Google Inc., 12-57302.

Garcia originally filed suit in September 2012, claiming she'd agreed to perform in an Arabian adventure project with the working title of Desert Warrior. Only later, she says, did she discover her performance was used in Innocence of Muslims . A 14-minute trailer posted on YouTube ignited violent protests among Muslims and sparked death threats against Garcia and others involved in the film. After filing several takedown notices with Google, Garcia sued for an order that the film be removed. It was in November 2012 that the U.S. District Court for the Central District of California rejected Garcia's request for a preliminary injunction. However, a three-judge panel of the U.S. Court of Appeals for the Ninth Circuit subsequently ruled 2-1 that Google must take down the film, finding that Garcia held a copyright interest in her performance. Garcia v. Google Inc., 743 F.3d 1258 (9th Cir. 2014). The panel's decision was vacated, however, when a majority of the full court voted to take up the case en banc .

Industry Support For Google

Though Innocence of Muslims sparked a global outcry, Garcia's suit seeking to pull the controversial film off YouTube didn't stir much passion at first. “It wasn't that we didn't know about this case,” says Corynne McSherry, the intellectual property director the Electronic Frontier Foundation (EFF). The underlying copyright issues just seemed cut-and-dry. “We just assumed that the Ninth Circuit would affirm the district court's denial of an injunction based on copyright infringement,” she said.

Now, though, along with copyright content companies, Silicon Valley technology companies are focused on Garcia's case, seeing it as threatening anyone who hosts user-generated content. What started as one actress's quest to scrub the Internet of her five-second appearance in a controversial movie has become Silicon Valley's copyright nightmare.

“Put simply, the financial constraints combined with the risks involved in complying with an order like the panel's could drive some online services out of business,” states an amicus curiae brief on behalf of a coalition of technology companies including Facebook, Kickstarter and Twitter.

Since the Ninth Circuit granted en banc review in November, a dozen groups have filed amicus briefs, the vast majority siding with YouTube and its parent company, Google. “We needed to expand on what Google said so the court understands where this is headed,” said EFF's McSherry, who helped write a brief on behalf of her organization, the American Civil Liberties Union, and other public interest groups.

Fenwick & West lawyers represent the technology coalition in its brief. Durie Tangri lawyers wrote a separate brief on behalf of Netflix. The remaining amici range from law professors to news organizations, public interest groups to the Screen Actors Guild-American Federation of Television and Radio Artists ' the last being the lone brief endorsing Garcia's copyright position.

Conspicuously absent from the amici are the major movie studios and their industry group, the Motion Picture Association of America, whose expansive view of copyright interests has often been at odds with Silicon Valley's. It's hard for Hollywood to come out against “anything that might smack of a copyright interest,” said EFF's McSherry. Additionally, the major studios secure copyrights in their movies through contracts with everyone involved in a production.

Small filmmakers, however, did weigh in backing Google. Jack Lerner, an assistant clinical professor at UC-Irvine School of Law, helped write an amicus brief on behalf of the International Documentary Film Association, other independent film groups and filmmakers including Morgan Spurlock, whose Supersize Me was nominated for an Academy Award.

Lerner said that under the Ninth Circuit earlier decision, his clients couldn't risk filming anyone doing anything creative without getting a copyright assignment from them. Filming a parade could impart a copyright interest to members of a passing marching band as could filming an interview with anyone giving a “trademark furrow of the brow” or an interesting turn of phrase, he said.

Case Background

In her 2012 suit, Garcia claimed she was paid $500 for about three-and-a-half days of work. In the film uploaded to YouTube, Garcia's voice was dubbed over to make it appear she was asking, “Is your Muhammad a child molester?” Riots broke out around the world and fatw's were issued against the filmmaker and others who helped make it, including Garcia. The case was argued before the Ninth Circuit in June 2013. Perkins Coie partner Timothy Alger, a former deputy general counsel for litigation at Google, argued for the company and M. Cris Armenta argued for Garcia. Google since added Hogan Lovells appellate specialist Neal Katyal, who handled the en banc arguments.

Then-Chief Circuit Judge Alex Kozinski wrote an opinion joined by Judge Ronald Gould granting Garcia the injunction. The two-judge majority found that Garcia was likely to succeed on her claim that she had a copyright to her own performance, rather than the film as a whole, and that the filmmaker didn't have an implied license to her performance copyright.

“Here the problem isn't that 'Innocence of Muslims' is not an Arabian adventure movie: It's that the movie isn't intended to entertain at all,” Kozinski wrote. “The film differs so radically from anything Garcia could have imagined when she was cast that it can't possibly be authorized by any implied license she granted [the filmmaker].”

Circuit Judge N. Randy Smith dissented by writing that the Ninth Circuit had “never held that an actress's performance could be copyrightable.”

Kozinski, who until December sat on all 11-judge en banc panels as the circuit's chief judge, was drawn to site for the en banc rehearing, as was the dissenter Judge Smith. Judge Gould was not.

Experts Predict Reversal

“If you're reading the tea leaves, you expect [the Ninth Circuit judges] took the case up to reverse the earlier decision,” said Morrison & Foerster's J. Alexander Lawrence, who is not involved in the case.

Google's fellow technology companies clearly saw problems with the decision. Durie Tangri's Michael Page wrote on behalf of Netflix that “rough justice for Ms. Garcia cannot come at the cost of upending decades of established copyright law and settled business practices.”

Santa Clara University School of Law professor Eric Goldman, who filed an amicus brief on behalf of himself and other Internet law professors, said the case has functioned as an elaborate thought exercise because Garcia cannot prove she holds a copyright in her performance. “What I'm really watching for is that whether the judges get the point that this is a giant hypothetical,” Goldman said. “Because if the panel engages on the hypothetical, then all bets are off.”

The Crux of the Case

Armenta opened the recent arguments at the Ninth Circuit by reading a string of the threats Garcia received. After hearing the explicit and often-profane threats, Circuit Judge M. Margaret McKeown said, “Of course we take those threats seriously.” But Judge McKeown quickly cut to the question at the crux of the case, asking whether the threats against Garcia have any bearing on whether the actress holds a copyright to her performance.

McKeown also asked Armenta if, under her reading of copyright law, all the extras in a battle scene could claim a copyright interest to their performance. Armenta said they likely could, but only filmmakers who defraud actors into performing in their projects would be subject to injunctions such as the one she was pursuing for Garcia.

McKeown remained skeptical: “That sounds like a fraud or a right of publicity claim, but not a copyright claim,” she said. Google's lawyer Neal Katyal argued that the district court judge who initially heard Garcia's injunction request was right to deny it. But Katyal faced tough questioning from Judge Kozinski.

Katyal pointed to the burden that technology companies and news organizations would face in dealing with potential copyright claims any time there were allegations of fraud involved.

“What's the fear here?” asked Judge Kozinski.

Under Garcia's theory, Katyal argued, anyone could allege fraud if they were unhappy with the end product of their work. Later in the argument, Judge Kozinski asked what the difference is between Garcia's claim to her performance and Celine Dion's claim to a copyright of a song on the Titanic soundtrack.

“Ms. Garcia has never alleged, Judge Kozinski, to my knowledge that she wanted her performance to be a separate stand-alone work,” Katyal said. “She could have put that in her complaint. She could have put it in her briefs. But it's not in there.”

Ross Todd is a Senior Reporter with The Recorder, the San-Francisco-based ALM sibling of Entertainment Law & Finance.

Actress Cindy Lee Garcia's two-year quest to scrub the Internet of her appearance in the anti-Islamic film Innocence of Muslims was the departure point for roving arguments before an 11-judge panel of the U.S. Court of Appeals for the Ninth Circuit in December. In a discussion that touched on the copyright interest owed to artists from Celine Dion to an extra in a battle scene of one of the Lord of the Rings movies, the Ninth Circuit considered Garcia's claim to a copyright in her performance in the film and whether it warrants an injunction barring Google Inc. from hosting the video on YouTube. Garcia v. Google Inc., 12-57302.

Garcia originally filed suit in September 2012, claiming she'd agreed to perform in an Arabian adventure project with the working title of Desert Warrior. Only later, she says, did she discover her performance was used in Innocence of Muslims . A 14-minute trailer posted on YouTube ignited violent protests among Muslims and sparked death threats against Garcia and others involved in the film. After filing several takedown notices with Google, Garcia sued for an order that the film be removed. It was in November 2012 that the U.S. District Court for the Central District of California rejected Garcia's request for a preliminary injunction. However, a three-judge panel of the U.S. Court of Appeals for the Ninth Circuit subsequently ruled 2-1 that Google must take down the film, finding that Garcia held a copyright interest in her performance. Garcia v. Google Inc., 743 F.3d 1258 (9th Cir. 2014). The panel's decision was vacated, however, when a majority of the full court voted to take up the case en banc .

Industry Support For Google

Though Innocence of Muslims sparked a global outcry, Garcia's suit seeking to pull the controversial film off YouTube didn't stir much passion at first. “It wasn't that we didn't know about this case,” says Corynne McSherry, the intellectual property director the Electronic Frontier Foundation (EFF). The underlying copyright issues just seemed cut-and-dry. “We just assumed that the Ninth Circuit would affirm the district court's denial of an injunction based on copyright infringement,” she said.

Now, though, along with copyright content companies, Silicon Valley technology companies are focused on Garcia's case, seeing it as threatening anyone who hosts user-generated content. What started as one actress's quest to scrub the Internet of her five-second appearance in a controversial movie has become Silicon Valley's copyright nightmare.

“Put simply, the financial constraints combined with the risks involved in complying with an order like the panel's could drive some online services out of business,” states an amicus curiae brief on behalf of a coalition of technology companies including Facebook, Kickstarter and Twitter.

Since the Ninth Circuit granted en banc review in November, a dozen groups have filed amicus briefs, the vast majority siding with YouTube and its parent company, Google. “We needed to expand on what Google said so the court understands where this is headed,” said EFF's McSherry, who helped write a brief on behalf of her organization, the American Civil Liberties Union, and other public interest groups.

Fenwick & West lawyers represent the technology coalition in its brief. Durie Tangri lawyers wrote a separate brief on behalf of Netflix. The remaining amici range from law professors to news organizations, public interest groups to the Screen Actors Guild-American Federation of Television and Radio Artists ' the last being the lone brief endorsing Garcia's copyright position.

Conspicuously absent from the amici are the major movie studios and their industry group, the Motion Picture Association of America, whose expansive view of copyright interests has often been at odds with Silicon Valley's. It's hard for Hollywood to come out against “anything that might smack of a copyright interest,” said EFF's McSherry. Additionally, the major studios secure copyrights in their movies through contracts with everyone involved in a production.

Small filmmakers, however, did weigh in backing Google. Jack Lerner, an assistant clinical professor at UC-Irvine School of Law, helped write an amicus brief on behalf of the International Documentary Film Association, other independent film groups and filmmakers including Morgan Spurlock, whose Supersize Me was nominated for an Academy Award.

Lerner said that under the Ninth Circuit earlier decision, his clients couldn't risk filming anyone doing anything creative without getting a copyright assignment from them. Filming a parade could impart a copyright interest to members of a passing marching band as could filming an interview with anyone giving a “trademark furrow of the brow” or an interesting turn of phrase, he said.

Case Background

In her 2012 suit, Garcia claimed she was paid $500 for about three-and-a-half days of work. In the film uploaded to YouTube, Garcia's voice was dubbed over to make it appear she was asking, “Is your Muhammad a child molester?” Riots broke out around the world and fatw's were issued against the filmmaker and others who helped make it, including Garcia. The case was argued before the Ninth Circuit in June 2013. Perkins Coie partner Timothy Alger, a former deputy general counsel for litigation at Google, argued for the company and M. Cris Armenta argued for Garcia. Google since added Hogan Lovells appellate specialist Neal Katyal, who handled the en banc arguments.

Then-Chief Circuit Judge Alex Kozinski wrote an opinion joined by Judge Ronald Gould granting Garcia the injunction. The two-judge majority found that Garcia was likely to succeed on her claim that she had a copyright to her own performance, rather than the film as a whole, and that the filmmaker didn't have an implied license to her performance copyright.

“Here the problem isn't that 'Innocence of Muslims' is not an Arabian adventure movie: It's that the movie isn't intended to entertain at all,” Kozinski wrote. “The film differs so radically from anything Garcia could have imagined when she was cast that it can't possibly be authorized by any implied license she granted [the filmmaker].”

Circuit Judge N. Randy Smith dissented by writing that the Ninth Circuit had “never held that an actress's performance could be copyrightable.”

Kozinski, who until December sat on all 11-judge en banc panels as the circuit's chief judge, was drawn to site for the en banc rehearing, as was the dissenter Judge Smith. Judge Gould was not.

Experts Predict Reversal

“If you're reading the tea leaves, you expect [the Ninth Circuit judges] took the case up to reverse the earlier decision,” said Morrison & Foerster's J. Alexander Lawrence, who is not involved in the case.

Google's fellow technology companies clearly saw problems with the decision. Durie Tangri's Michael Page wrote on behalf of Netflix that “rough justice for Ms. Garcia cannot come at the cost of upending decades of established copyright law and settled business practices.”

Santa Clara University School of Law professor Eric Goldman, who filed an amicus brief on behalf of himself and other Internet law professors, said the case has functioned as an elaborate thought exercise because Garcia cannot prove she holds a copyright in her performance. “What I'm really watching for is that whether the judges get the point that this is a giant hypothetical,” Goldman said. “Because if the panel engages on the hypothetical, then all bets are off.”

The Crux of the Case

Armenta opened the recent arguments at the Ninth Circuit by reading a string of the threats Garcia received. After hearing the explicit and often-profane threats, Circuit Judge M. Margaret McKeown said, “Of course we take those threats seriously.” But Judge McKeown quickly cut to the question at the crux of the case, asking whether the threats against Garcia have any bearing on whether the actress holds a copyright to her performance.

McKeown also asked Armenta if, under her reading of copyright law, all the extras in a battle scene could claim a copyright interest to their performance. Armenta said they likely could, but only filmmakers who defraud actors into performing in their projects would be subject to injunctions such as the one she was pursuing for Garcia.

McKeown remained skeptical: “That sounds like a fraud or a right of publicity claim, but not a copyright claim,” she said. Google's lawyer Neal Katyal argued that the district court judge who initially heard Garcia's injunction request was right to deny it. But Katyal faced tough questioning from Judge Kozinski.

Katyal pointed to the burden that technology companies and news organizations would face in dealing with potential copyright claims any time there were allegations of fraud involved.

“What's the fear here?” asked Judge Kozinski.

Under Garcia's theory, Katyal argued, anyone could allege fraud if they were unhappy with the end product of their work. Later in the argument, Judge Kozinski asked what the difference is between Garcia's claim to her performance and Celine Dion's claim to a copyright of a song on the Titanic soundtrack.

“Ms. Garcia has never alleged, Judge Kozinski, to my knowledge that she wanted her performance to be a separate stand-alone work,” Katyal said. “She could have put that in her complaint. She could have put it in her briefs. But it's not in there.”

Ross Todd is a Senior Reporter with The Recorder, the San-Francisco-based ALM sibling of Entertainment Law & Finance.