Unwitting Actress in "Innocence of Muslims" Film Entitled to Copyright Preliminary Injunction Against YouTube: Ninth Circuit | Practical Law

Unwitting Actress in "Innocence of Muslims" Film Entitled to Copyright Preliminary Injunction Against YouTube: Ninth Circuit | Practical Law

In Garcia v. Google, Inc., the US Court of Appeals for the Ninth Circuit reversed the district court's denial of a motion for a preliminary injunction and held that plaintiff Garcia showed a likelihood of success on the merits of her copyright infringement claim which alleged a copyright interest in her performance in an anti-Islamic video uploaded to YouTube.

Unwitting Actress in "Innocence of Muslims" Film Entitled to Copyright Preliminary Injunction Against YouTube: Ninth Circuit

by Practical Law Intellectual Property & Technology
Published on 04 Mar 2014 • USA (National/Federal)
In Garcia v. Google, Inc., the US Court of Appeals for the Ninth Circuit reversed the district court's denial of a motion for a preliminary injunction and held that plaintiff Garcia showed a likelihood of success on the merits of her copyright infringement claim which alleged a copyright interest in her performance in an anti-Islamic video uploaded to YouTube.
On February 26, 2014, the US Court of Appeals for the Ninth Circuit issued an opinion in Garcia v. Google, Inc., reversing the US District Court for the Central District of California's denial of Garcia's motion for a preliminary injunction (No. 12-57302, (9th Cir. Feb, 26, 2014)). Garcia sought a preliminary injunction seeking removal of an anti-Islamic film from YouTube after receiving death threats based on her performance in the film, a performance she made for a different film. On appeal, the Ninth Circuit held that:
  • Garcia's performance met the minimum creativity requirements for an acting performance to be copyrightable.
  • Garcia was likely to prevail on her claim of infringement of her performance.

Background

Cindy Lee Garcia was cast in a minor role in the film Desert Warrior by writer and producer Mark Basseley Youssef. Garcia was paid $500 for three and a half days of filming, however Desert Warrior was never released and her scene was used in an anti-Islamic film entitled Innocence of Muslims. After Innocence of Muslims was uploaded to YouTube, Garcia discovered her scene had been altered so that she appeared to be asking an inflammatory question about the Muslim prophet Mohammed. Garcia began receiving death threats and asked Google to remove the video from YouTube. She sent Google eight Digital Millennium Copyright Act notices, however Google refused to take down the video. She then sought a temporary restraining order seeking the removal of the video from YouTube, claiming that the posting of the video violated her copyright in her performance.
The district court treated the application for a temporary restraining order as a motion for a preliminary injunction and denied the motion finding that Garcia:
  • Had delayed in bringing the action.
  • Failed to demonstrate that the preliminary injunction would prevent any alleged harm.
  • Was unlikely to succeed on the merits because she had granted Youssef an implied license to use her performance in the film.

Outcome

On appeal, the Ninth Circuit considered whether:
  • Garcia could establish a likelihood of success on the merits. Specifically, the Ninth Circuit considered whether:
    • Garcia had an independent copyrightable interest in her performance;
    • Garcia's performance was a work for hire; and
    • Garcia granted Youssef an implied license in her performance.
  • Garcia suffered irreparable harm.
  • The balance of equities and the public interest weigh in favor of an injunction.

Garcia's Likelihood of Success

In determining that Garcia was likely to succeed on her claim of copyright infringement, the Ninth Circuit first reasoned that even though Garcia would not qualify as a joint author of Innocence of Muslims, she likely has an independent copyright interest in her performance because under Feist Publications, Inc. v. Rural Telephone Service Company, an actor's performance is copyrightable when it is fixed and evinces a minimal degree of creativity (499 U.S. 340 (1991)). Although Youssef wrote the dialogue Garcia spoke and managed all aspects of the film production, the court found that Garcia's performance encompassed her own creative elements like body language, facial expression and reactions to other actors and elements of the scene. While the Ninth Circuit refrained from holding that every actor has a copyright in his performance within a film, it nonetheless found that Garcia was likely to prevail in claiming copyright in the portion of Innocence of Muslims that represents her individual creativity.
Despite Google's arguments that Garcia's performance was a work for hire, the court disagreed, finding that Garcia was not a traditional employee because:
  • She was hired for a specific task.
  • Her work lasted for only three days.
  • She did not receive health or other traditional employment benefits.
  • Youssef failed to obtain a written work for hire agreement.
Google also argued that Garcia granted Youssef an implied license to use her performance in his film. The Ninth Circuit agreed that Garcia granted this license but concluded that Youssef's use exceeded the scope of the implied license because the movie Garcia thought she was providing the performance for, Desert Warriors, was radically different from the film in which the performance was ultimately used. Additionally, the court pointed out that because Youssef lied to Garcia about the film to get her to participate, this is fraud which would likely void her license as well.

Irreparable Harm

Because irreparable harm is not presumed in copyright cases, Garcia argued she suffered irreparable harm in the ongoing infringement of her copyright as well as the death threats she received. The district court found that she failed to make this showing because she waited several months after the video's posting to bring the action. The Ninth Circuit recognized that a long delay before seeking a preliminary injunction may indicate a lack of irreparable harm. However, in this case, the court noted that Garcia took legal action as soon as she became aware of the altered film and began receiving death threats. Likewise, the court was satisfied that Garcia showed a sufficient causal connection between Youssef's inclusion of her performance in the Innocence of Muslims video and the threats she's received. Although Google argued that Garcia's irreparable harm stems from the video itself, rather than YouTube's hosting of it, the court noted that removing the video from the prominent website would help curb the harms Garcia suffers.

Balance of the Equities and the Public Interest

Google took the position that removing the video from YouTube would be inequitable because of an overwhelming public interest in the continued hosting of the video. While acknowledging the vital public interest, the court noted that the First Amendment does not protect copyright infringement. Because Garcia demonstrated a likelihood of success on the merits, the court found that the balance of equities favored Garcia and reversed and remanded the matter back to the district court.

Dissent

In the dissent, Circuit Judge Smith objected to:
  • The standard of review applied by the majority, arguing that a heightened scrutiny applies in cases involving mandatory injunctions.
  • The majority's finding that Garcia likely has an independent copyrightable interest in her performance, arguing that authorship is required and that Garcia's did not qualify as an author.
  • The majority's holding that Garcia's performance was not a work made for hire.
  • The majority's analysis of irreparable harm.
  • The majority's balancing of the equities.
  • The majority's analysis of the public interest, arguing that a preliminary injunction may constitute a prior restraint of speech under the First Amendment

Practical Implications

The unusual facts of the case make it difficult to assess the decision's ultimate impact. However, the decision suggests that in the Ninth Circuit, copyright interests have the potential to override First Amendment interests. Also, in holding that Garcia likely has an independent copyright interest in her performance, the decision counsels film producers to obtain copyright assignments from all performers.

Subsequent Proceedings

On February 28, 2014, the Ninth Circuit denied Google's emergency stay motion and restated that Google must take down all copies of Innocence of Muslims from YouTube, but included the caveat that versions of the video that do not include Garcia's performance need not be removed (Garcia v. Google, Inc., No. 12-57302, (9th Cir. Feb, 26, 2014) (order denying stay)).
Update: On March 14, 2014, the Ninth Circuit declined to rehear the February 28, 2014 panel order en banc.
Update: On July 11, 2014, the Ninth Circuit issued an amended opinion in which, among other things, it emphasized the district court’s freedom to conclude that Garcia has no copyrightable interest in the video. The court also noted that the district court is free to consider defenses the Ninth Circuit did not address (including fair use and Section 230 of the Communications Decency Act), if Google properly raises them.
Update: On May 18, 2015, the Ninth Circuit issued an en banc opinion affirming the district court's decision denying Garcia's motion for a preliminary injunction and ruling that the district court did not abuse its discretion in ruling that Garcia failed to meet the irreparable harm requirement for obtaining preliminary injunctive relief.