<i>En Banc</i> Ninth Circuit Overturns Injunction In Anti-Islamic Video Case

Case Background

In July 2011, Cindy Garcia, a part time actress, responded to a casting call for a film with the working title “Desert Warriors.” She had only a few lines in a single scene and received $500 for her performance. The producer had another actress overdub her voice with new lines.

About a year later, having completed the movie, the producer uploaded his work to YouTube. Ms. Garcia found herself appearing in an anti-Islamic account of the life of the Prophet Muhammad in which she accuses Muhammed of being a child molester. For several months no one took much notice of the film. In September 2012, however, the video went viral, sparked protests across the Middle East, and led to death threats against everyone involved in the film, including Ms. Garcia. The video was reportedly the catalyst for the attacks on the United States Consulate in Benghazi.

Wanting the film removed from YouTube, Ms. Garcia filed an action in state court in Los Angeles against YouTube's parent company Google asserting state law claims. Unable to get relief in state court, Ms. Garcia turned her attention to copyright law. As the first step, Ms. Garcia issued takedown notices to YouTube under the Digital Millennium Copyright Act (DMCA), Pub. L. No. 105-304, 112 Stat. 2860 (1998). After YouTube refused to remove the film from its site, she immediately sued Google for copyright infringement in federal court, asserting that she had a copyright interest in her five-second performance in the film.

In November 2012, Judge Michael Fitzgerald of the Central District of California denied Ms. Garcia's request for a preliminary injunction. He held that she was not likely to succeed on her copyright claims because she had no copyright interest in her performance. Ms. Garcia appealed to the Ninth Circuit.

In February 2013, the Ninth Circuit issued a sealed order 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. 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 could comply with the order.

A few days later, then-Chief Judge Alex Kozinski wrote for the majority of the three-judge panel finding that Ms. 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 N. Randy Smith issued a strong dissent expressing his view that Ms. Garcia had no copyright interest in her five-second performance in the film. Garcia v. Google, Inc., 766 F.3d 929 (9th Cir.), amending 743 F.3d 1258 (9th Cir. 2014).

Over a year later, on May 18, 2015, the Ninth Circuit issued its en banc opinion affirming the district court's order denying Ms. Garcia's motion for a preliminary injunction and dissolving the panel's injunction against the posting or display of the film. Garcia v. Google, Inc., No. 12-57302, 2015 U.S. App. LEXIS 8105 (9th Cir. Cal. May 18, 2015).

The Decision's Impact

Although most everyone expected the panel's decision to be overturned, audible sighs of relief were heard across Hollywood and Silicon Valley. The decision posed serious threats to important segments of the California economy.

Recognizing the threat to the film industry, the Ninth Circuit held that Ms. Garcia's “theory can be likened to 'copyright cherry picking,' which would enable any contributor from a costume designer down to an extra or best boy to claim copyright in random bits and pieces of a unitary motion picture without satisfying the requirements of the Copyright Act.”

For big-budget blockbuster films with “casts of thousands,” like “Ben-Hur” or “Lord of the Rings,” the Ninth Circuit recognized that “[t]reating every acting performance as an independent work would not only be a logistical and financial nightmare, it would turn [a] cast of thousands into a new mantra: copyright of thousands.” And, while noting that “contracts and the work-made-for-hire doctrine govern much of the big-budget Hollywood performance and production world,” the Ninth Circuit recognized that this is not the case for all filmmakers. “[L]ow-budget films rarely use licenses.” Even for filmmakers who customarily use such agreements, they have their limits. Parties may dispute their terms and certain agreements can be subject to termination under the Copyright Act after a number of years.

The panel's decision posed a different set of problems for Internet content providers like YouTube, Netflix or Hulu. “Untangling the complex, difficult-to-access, and often phantom chain of title to tens, hundreds, or even thousands of standalone copyrights is a task that could tie the distribution chain in knots.” To avoid potentially devastating copyright damages, Internet content providers must comply with the DMCA notice and takedown regime. The panel's decision made compliance with that system all the more complicated. When confronted with a DMCA takedown notice from a person who appears in a film, but has no copyright in the work, a website, such as YouTube, has no legal obligation to remove the video. The panel's decision had muddied the legal landscape. Internet content providers were then faced with the difficult choice of either removing video content upon the demand of individuals with dubious copyright claims, or risking crippling statutory damages awards under the Copyright Act. Confronted with such a decision, website owners had no real choice but to remove the content.

While the Ninth Circuit based its decision entirely on copyright law, the case also presented serious First Amendment questions. Holding “a weak copyright claim cannot justify censorship in the guise of authorship,” the Ninth Circuit criticized the panel for giving “short shrift to the First Amendment values at stake.” The Ninth Circuit held that the “injunction censored and suppressed a politically significant film ' based upon a dubious and unprecedented theory of copyright,” and that in doing so “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 Dissent

In a separate opinion, Judge Stephen Reinhardt expressed his dismay that the Ninth Circuit did not act sooner. Garcia v. Google, Inc., No. 12-57302, 2015 U.S. App. LEXIS 8103 (9th Cir. May 18, 2015). He lamented that “our court allowed an infringement of First Amendment rights to remain in effect for fifteen months before we finally issued our opinion dissolving the unconstitutional injunction issued by a divided three-judge panel.” While he agreed with the en banc decision, he expressed his regret that “the action comes too late to avoid the irreparable injury to First Amendment Rights.”

Conclusion

Notwithstanding the delay in getting to this point, the Ninth Circuit has rightly corrected serious errors in the application of copyright law that posed real threats to copyright owners and distributors alike. When it comes to copyright law, these two camps seldom see eye-to-eye, but they have joined in their approval of the Ninth Circuit's decision.

J. Alexander Lawrence is a partner in Morrison and Foerster LLP's New York office.

More than a year after a divided panel of the Ninth Circuit issued a controversial and roundly criticized decision in Garcia v. Google that an actress appearing in a five-second segment of a film could use copyright law to force YouTube to remove the film from its website, the Ninth Circuit sitting en banc has rejected the panel's decision.

Hollywood studios, Internet companies, and copyright experts applauded the Ninth Circuit's ruling. Newspapers, media outlets and other First Amendment champions joined in their approval.

The panel's holding posed serious risks to the interests of filmmakers and Internet content providers, like YouTube, Netflix or Hulu. And, the news media found the panel's order mandating that Google suppress a video at the center of intense public debate to be deeply troubling.

Case Background

In July 2011, Cindy Garcia, a part time actress, responded to a casting call for a film with the working title “Desert Warriors.” She had only a few lines in a single scene and received $500 for her performance. The producer had another actress overdub her voice with new lines.

About a year later, having completed the movie, the producer uploaded his work to YouTube. Ms. Garcia found herself appearing in an anti-Islamic account of the life of the Prophet Muhammad in which she accuses Muhammed of being a child molester. For several months no one took much notice of the film. In September 2012, however, the video went viral, sparked protests across the Middle East, and led to death threats against everyone involved in the film, including Ms. Garcia. The video was reportedly the catalyst for the attacks on the United States Consulate in Benghazi.

Wanting the film removed from YouTube, Ms. Garcia filed an action in state court in Los Angeles against YouTube's parent company Google asserting state law claims. Unable to get relief in state court, Ms. Garcia turned her attention to copyright law. As the first step, Ms. Garcia issued takedown notices to YouTube under the Digital Millennium Copyright Act (DMCA), Pub. L. No. 105-304, 112 Stat. 2860 (1998). After YouTube refused to remove the film from its site, she immediately sued Google for copyright infringement in federal court, asserting that she had a copyright interest in her five-second performance in the film.

In November 2012, Judge Michael Fitzgerald of the Central District of California denied Ms. Garcia's request for a preliminary injunction. He held that she was not likely to succeed on her copyright claims because she had no copyright interest in her performance. Ms. Garcia appealed to the Ninth Circuit.

In February 2013, the Ninth Circuit issued a sealed order 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. 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 could comply with the order.

A few days later, then-Chief Judge Alex Kozinski wrote for the majority of the three-judge panel finding that Ms. 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 N. Randy Smith issued a strong dissent expressing his view that Ms. Garcia had no copyright interest in her five-second performance in the film. Garcia v. Google, Inc., 766 F.3d 929 (9th Cir.), amending 743 F.3d 1258 (9th Cir. 2014).

Over a year later, on May 18, 2015, the Ninth Circuit issued its en banc opinion affirming the district court's order denying Ms. Garcia's motion for a preliminary injunction and dissolving the panel's injunction against the posting or display of the film. Garcia v. Google, Inc., No. 12-57302, 2015 U.S. App. LEXIS 8105 (9th Cir. Cal. May 18, 2015).

The Decision's Impact

Although most everyone expected the panel's decision to be overturned, audible sighs of relief were heard across Hollywood and Silicon Valley. The decision posed serious threats to important segments of the California economy.

Recognizing the threat to the film industry, the Ninth Circuit held that Ms. Garcia's “theory can be likened to 'copyright cherry picking,' which would enable any contributor from a costume designer down to an extra or best boy to claim copyright in random bits and pieces of a unitary motion picture without satisfying the requirements of the Copyright Act.”

For big-budget blockbuster films with “casts of thousands,” like “Ben-Hur” or “Lord of the Rings,” the Ninth Circuit recognized that “[t]reating every acting performance as an independent work would not only be a logistical and financial nightmare, it would turn [a] cast of thousands into a new mantra: copyright of thousands.” And, while noting that “contracts and the work-made-for-hire doctrine govern much of the big-budget Hollywood performance and production world,” the Ninth Circuit recognized that this is not the case for all filmmakers. “[L]ow-budget films rarely use licenses.” Even for filmmakers who customarily use such agreements, they have their limits. Parties may dispute their terms and certain agreements can be subject to termination under the Copyright Act after a number of years.

The panel's decision posed a different set of problems for Internet content providers like YouTube, Netflix or Hulu. “Untangling the complex, difficult-to-access, and often phantom chain of title to tens, hundreds, or even thousands of standalone copyrights is a task that could tie the distribution chain in knots.” To avoid potentially devastating copyright damages, Internet content providers must comply with the DMCA notice and takedown regime. The panel's decision made compliance with that system all the more complicated. When confronted with a DMCA takedown notice from a person who appears in a film, but has no copyright in the work, a website, such as YouTube, has no legal obligation to remove the video. The panel's decision had muddied the legal landscape. Internet content providers were then faced with the difficult choice of either removing video content upon the demand of individuals with dubious copyright claims, or risking crippling statutory damages awards under the Copyright Act. Confronted with such a decision, website owners had no real choice but to remove the content.

While the Ninth Circuit based its decision entirely on copyright law, the case also presented serious First Amendment questions. Holding “a weak copyright claim cannot justify censorship in the guise of authorship,” the Ninth Circuit criticized the panel for giving “short shrift to the First Amendment values at stake.” The Ninth Circuit held that the “injunction censored and suppressed a politically significant film ' based upon a dubious and unprecedented theory of copyright,” and that in doing so “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 Dissent

In a separate opinion, Judge Stephen Reinhardt expressed his dismay that the Ninth Circuit did not act sooner. Garcia v. Google, Inc., No. 12-57302, 2015 U.S. App. LEXIS 8103 (9th Cir. May 18, 2015). He lamented that “our court allowed an infringement of First Amendment rights to remain in effect for fifteen months before we finally issued our opinion dissolving the unconstitutional injunction issued by a divided three-judge panel.” While he agreed with the en banc decision, he expressed his regret that “the action comes too late to avoid the irreparable injury to First Amendment Rights.”

Conclusion

Notwithstanding the delay in getting to this point, the Ninth Circuit has rightly corrected serious errors in the application of copyright law that posed real threats to copyright owners and distributors alike. When it comes to copyright law, these two camps seldom see eye-to-eye, but they have joined in their approval of the Ninth Circuit's decision.

J. Alexander Lawrence is a partner in Morrison and Foerster LLP's New York office.