In Garcia v. Google,  No. 12-57302 (9th Cir. May 18, 2015), the en banc  Ninth Circuit reversed a prior panel decision and held that an actress was not entitled to a preliminary injunction removing all copies of a film from YouTube because she held no copyright in her individual performance. In July 2011, Cindy Lee Garcia (“Garcia”) responded to a casting call for a film entitled Desert Warrior, an action-adventure set in ancient Arabia. Garcia was cast in a cameo role and delivered two lines of dialogue. Garcia later learned that the film was actually an anti-Islamic project renamed Innocence of Muslims. Film producers dubbed over Garcia’s lines and replaced them with a voice asking, “Is your Mohammed a child molester?” Garcia appeared on screen for only five seconds.  The director of Innocence of Muslims, Mark Basseley Youssef (“Youssef”) uploaded a trailer for the film to YouTube. After it was translated into Arabic, the film was linked to numerous violent protests in the Middle East. Garcia received multiple death threats.

Garcia asked YouTube to remove the film, asserting that it was hate speech and violated her state law rights to privacy and to control her likeness. Garcia also sent five takedown notices under the Digital Millennium Copyright Act, claiming that YouTube’s broadcast of Innocence of Muslims infringed her copyright in her “audio-visual dramatic performance.” On September 26, 2012, Garcia filed a complaint naming Google (which owns YouTube) and Youssef as co-defendants. The complaint alleged copyright infringement against both defendants and also alleged state law claims against Youssef for fraud, unfair business practices, libel and intentional inflection of emotional distress. Garcia then moved for a temporary restraining order and for an order to show cause on a preliminary injunction with respect to her copyright claim. Garcia sought to bar Google from hosting Innocence of Muslims on YouTube or any other Google-run website.

On November 30, 2012, the district court denied the motion for a preliminary injunction. As a preliminary matter, the court concluded that Garcia had failed to demonstrate that a preliminary injunction would prevent any alleged harm, because at that point, the film trailer had been on the Internet for five months. Nor did Garcia establish a likelihood of success on the merits. In particular, the district court found that the nature of Garcia’s copyright interest was unclear, and even if such a copyright interest existed, she granted the film directors an implied license to distribute her performance as a contribution incorporated into the indivisible whole of the film.

A three-judge panel of Ninth Circuit reversed. The Court first issued a secret takedown order, giving Google 24 hours to remove all copies of the film from YouTube and other Google-controlled platforms. Disclosure of the order was embargoed until the Court issued its opinion. The order was later amended to allow YouTube to post any version of the film that did not include Garcia’s performance. In its later-issued opinion, the Court concluded that Garcia was likely to prevail on her copyright claim as to her individual performance in the film. The Court also held that any implied license ran from Garcia to Youssef and that Youssef had granted Garcia a license to perform his screenplay and that Garcia had not granted Youssef an implied license to incorporate her performance into the film. Finally, because of the death threats she had received, Garcia established irreparable harm and the equities favored an injunction.

The Court later granted rehearing en banc and reversed the prior panel decision. First, the Court found that Garcia needed to establish that the law and facts clearly favored her position, and not simply that she was likely to succeed on the merits, because she was requesting a mandatory injunction that would require Google to take affirmative action to remove (and to keep removing) Innocence of Muslims from YouTube and other sites, whenever and by whomever the film was unloaded. The Court then found that Garcia had not established a copyright in her performance.  Under the Copyright Act, copyright protection subsists in original works of authorship fixed in any tangible medium of expression. The fixation must be done by or under the authority of the author. The film is an audiovisual work that is categorized as a motion picture and is derivative of the script. Garcia was the author of neither and made no copyright claim to the film or the script.

The Court credited the expert opinion of the U.S Copyright Office, which had denied Garcia’s application for copyright during the course of the litigation. The Copyright Office stated that its “longstanding practices do not allow a copyright claim by an individual actor or actress in his or her performance contained with a single motion picture.” Thus, “for copyright registration purposes, a motion picture is a single integrated work…Assuming Ms. Garcia’s contribution was limited to her acting performance, we cannot register her performance apart from the motion picture.”

Garcia’s copyright claim was also denied because her performance was never fixed in a tangible medium as required by 17 U.S.C. § 101. (“A work is ‘fixed’ in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable or permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration”). Youssef and his team were the individuals who “fixed” Garcia’s performance in a tangible medium. Moreover, given that Garcia claimed that she never agreed to the film’s ultimate rendition of her performance, she could not argue that the film or her cameo in it was fixed “by or under her authority.” The Court noted that Garcia’s theory of copyright law would lead to the splintering of a movie into many different works, even in the absence of an independent fixation.

The Court also addressed the issue of irreparable harm. Although the Court took seriously the death threats against Garcia and her family, for a preliminary injunction, the harm needed to stem from copyright, i.e. her interests as an author. An injunction limiting distribution of the film would be incompatible with the goals of copyright law, which is to encourage public access to creative works. The Court also found it relevant that Garcia waited months to seek an injunction after the film was uploaded to YouTube in July 2012 and did not seek emergency relief when the film was first uploaded. Garcia’s argument that she quickly moved for an injunction after the film was translated into Arabic and sparked death threats against her was further evidence that her harm did not stem from her commercial interests as a performer but were instead focused on the personal harm caused by association with the film.

Finally, the Court dissolved the prior order requiring Google to remove any copies of the film that featured Garcia’s performance. Such an order was contrary to the First Amendment because it suppressed a politically significant film, based on a weak copyright claim.

Judge Watford, concurring, would have reversed the Panel and affirmed the District Court’s denial of the preliminary injunction for lack of proof of irreparable harm, without reaching the copyright and other merits issues.

Judge Kozinski, dissenting, would have affirmed, because “Garcia’s dramatic performance met all of the requirements for copyright protection: It was copyrightable subject matter, it was original and it was fixed at the moment it was recorded. So what happened to the copyright? At times, the majority says that Garcia’s performance was not copyrightable at all. And at other times, it seems to say that Garcia just didn’t do enough to gain a copyright in the scene. Either way, the majority is wrong and makes a total mess of copyright law, right here in the Hollywood Circuit.”

Politically-charged cases make law.  Good or bad?