The Ninth Circuit Court of Appeals ordered Google to take the inflammatory anti-Islamic film “Innocence of Muslims” down from You Tube and all platforms it controls and to take reasonable steps to prevent additional uploads. The Ninth Circuit’s order results from actress Cindy Lee Garcia’s copyright infringement claim against Google. Garcia prevailed in her appeal of the district court’s denial of her preliminary injunction motion to order Google to remove the film from You Tube. The Ninth Circuit ruled that Garcia was likely to succeed on the merits of her copyright claim against Google, that Google’s ongoing infringement caused Garcia irreparable harm and that the balance of the equities and the public interest tipped in Garcia’s favor.
Aspiring actress Cindy Lee Garcia agreed to act in a film entitled “Desert Warrior.” The film was written and produced by Mark Basseley Youssef. Garcia received $500 for acting in a minor role limited to four pages of script, filmed over three and one-half days. Garcia’s scene was not used in Desert Warrior, but appeared in “Innocence of Muslims.” Garcia’s performance was partially dubbed over with the line “Is your Mohammed a child molester?” That’s an extreme insult to many Muslims.
Innocence of Muslims was uploaded on You Tube and shown on Egyptian television, An Egyptian cleric delivered a fatwa, a decree, commanding death for all involved with the film. Garcia has received death threats and other threats of physical violence. The threats have compelled her to take extra security precautions and to relocate her home and business.
Garcia filed eight Digital Millennium Copyright Act (DMCA) take down notices with Google, attempting to get Innocence of Muslims removed from You Tube. Google refused to remove the video, so Garcia sued Google to force removal of the video. The district court ruled in Google’s favor on Garcia’s motion for a preliminary injunction. The district court ruled that Garcia delayed in bringing her lawsuit, that she was unlikely to succeed on the merits and that issuing an injunction was unlikely to prevent any alleged harm. The Ninth Circuit reversed. This post focuses on the Ninth Circuit’s copyright issues discussions.
The standard for issuing a preliminary injunction requires considering four factors: 1) the likelihood of plaintiff’s success on the merits; 2) the likelihood that irreparable harm will result if an injunction doesn’t issue; 3) the balance of the equities; and 4) the public interest.
Independent Copyright Interest
Garcia did not claim an interest in the film Innocence of Muslims. Her claim was that she owns an independently copyrightable interest in her performance.
The Ninth Circuit ruled that Garcia is not a joint author in Innocence of Muslims, because she did not intend for her performance to be part of a joint work. The failure to create joint work does not necessarily deprive her of a copyright interest in her own performance in the film.
Google argues that Garcia didn’t make a protectible contribution to the film because Youssef wrote the dialogue she spoke, managed all aspects of the production and later dubbed over a portion of her scene. But an actor does far more than speak words on a page; he must live his part inwardly, and then give to his experience an external embodiment. That embodiment includes body language, facial expression and reactions to other actors and elements of a scene. Otherwise, every shmuck is an actor because everyone knows how to read.
An actor’s performance, when fixed, is copyrightable if it evinces some minimal degree of creativity no matter how crude, humble or obvious it might be. That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all. It’s clear that Garcia’s performance meets these minimum requirements.
(Opinion pdf pages 7-8).
Once Garcia established that she might have a copyright interest in her performance, she was then required to establish that her performance was not a work made for hire or an implied license to Youssef.
Work Made for Hire
A work is a work made for hire if it is prepared by an employee in the course of her employment or there is a written agreement that it is a work made for hire. Only nine categories of works qualify for a work made for hire outside of the employment context. Motion pictures is one of those nine categories. 17 U.S.C. §101. The significance of a work made for hire is that the employer or other person for whom the work was prepared is considered the author and owns the copyright. §201(b).
The Ninth Circuit ruled that Garcia was not an employee. “Youssef hired Garcia for a specific task, she only worked for three days and she claims she received no health or other traditional employment benefits.” (Opinion pdf page 11).
Garcia’s performance was also not a work made for hire under the motion picture category to the work made for hire definition, as Youssef did not obtain a written agreement from Garcia.
The Ninth Circuit agreed that Garcia granted Youssef an implied license. Further, the implied license in the actor/motion picture context should be construed very broadly, otherwise, “actors could leverage their individual contributions into de facto authorial control over the film.” (Opinion pdf page 14). However, Youssef exceeded the scope of Garcia’s implied license.
The license Garcia granted Youssef wasn’t so broad as to cover the use of her performance in any project. Here, the problem isn’t that Innocence of Muslims is not an Arabian adventure movie: It’s that the film isn’t intended to entertain at all. 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 Youssef.
A clear sign that Youssef exceeded the bounds of any license is that he lied to Garcia in order to secure her participation, and she agreed to perform in reliance on that lie. Youssef’s fraud alone is likely enough to void any agreement he had with Garcia. But even if it’s not, it’s clear evidence that his inclusion of her performance in Innocence of Muslims exceeded the scope of the implied license and was, therefore, an unauthorized, infringing use.
(Opinion pdf pages 14-15).
This case is Garcia v. Google, No. 12-57302, Ninth Circuit Court of Appeals. Chief Judge Alex Kozinski wrote the court’s opinion and was joined by Circuit Judge Ronald M. Gould.
Circuit Judge N. Randy Smith wrote the dissenting opinion.
As persuasive as Chief Judge Kozinski is, and I always enjoy reading his opinions, I think Judge Smith has the better copyright analysis regarding whether acting is a work, the authorship requirement and the fixation requirement. I think the majority was correct in its work made for hire analysis.
Judge Smith differentiated between a prohibitory injunction, which maintains the status quo pending litigation, and a mandatory injunction, which requires the defendant to take a particular action. Mandatory injunctions are particularly disfavored and require a higher degree of scrutiny. The injunction issued in this case was a mandatory injunction. Judge Smith argued that Garcia should have been required to show that the facts and law clearly favored her position.
Judge Smith accused the majority of making “new law in this circuit in order to reach the result it seeks.” (Opinion pdf page 21).
Garcia does not clearly have a copyright interest in her acting performance, because (1) her acting performance is not a work, (2) she is not an author, and (3) her acting performance is too personal to be fixed.
(Opinion pdf page 21).
An acting performance is not a work. The Copyright Act distinguishes between a work and the performance of a work. The Copyright Act does not protect ideas, procedures or processes. An acting performance is a procedure or process. A motion picture is a work, but the acting performances in the motion picture are not works.
Garcia is not an author.
Authorship is a constitutional copyright requirement under Article I, §8, cl. 8.
The author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.
(Opinion pdf page 24).
Garcia did not contribute ideas or concepts and had no creative control over either the script or her performance. Her film appearance did not make her an author. Copyright protection is premised on authorship. According to Judge Smith, the majority “reads the authorship requirement out of the Copyright Act and the Constitution.” (Opinion pdf page 26).
Garcia’s Performance Did Not Meet the Fixation Requirement.
The Copyright Act requires that the work be fixed in a tangible medium of expression. §102(a). Judge Smith made an analogy to musical recordings.
A musical recording involves many moving parts, including the tune, lyrics, instrumental musicians, vocalists, and a production team that edits and prepares the final song. While the ultimate product is copyrightable, Ninth Circuit precedent dictates that a vocalist’s singing of the song is not copyrightable. An acting performance depends upon similar moving parts: a script, multiple actors’ and actresses’ performances, guidance from directors and staff, and editing and other production preparation. The movie is ultimately copyrightable. But one actress’s individual acting performance in the movie, like a vocalist singing a song, is more personal than any work of authorship. As a result, it is not fixed.
Just as an actor does far more than speak words on a page, so too does a vocalist. Indeed, one might say that otherwise, every schmuck is a vocalist, because everyone knows how to read. An actress like Garcia makes a creative contribution to a film much like a vocalist’s addition to a musical recording. Garcia did not write the script; she followed it. Garcia did not add words or thoughts to the film. She lent her voice to the words and her body to the scene. Her creativity came in the form of facial expression, body movement, and voice. Similarly, a singer’s voice is her personal mobilization of words and musical notes to a fluid sound. Inflection, intonation, pronunciation, and pitch are the vocalist’s creative contributions. Yet, this circuit has determined that such, though perhaps creative, is too personal to be fixed.
(Opinion pdf pages 29-30).
Garcia’s Performance Was a Work for Hire
Judge Smith thought that Youssef’s management of the production, his control of the manner and means of making the film, Garcia’s lack of control over when and how long she worked, and Garcia’s lack of her own assistants all favored a finding that Garcia was working for hire.