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Feb. 28 --A recent ruling by the U.S. Court of Appeals for the Ninth Circuit that an actor might hold a protectable copyright interest in her performance in a film and that on this basis could demand that the YouTube video-sharing service take down the film has set off a bewildered outrage in the copyright and free speech communities.
In a Feb. 26 opinion, the Ninth Circuit's chief judge, Alex Kozinski, reversed a district court's denial of a motion for a preliminary injunction sought by Cindy Lee Garcia, an actor who found herself playing a small role in a firestorm that set off protests, riots, and violence around the world.
At the center of the legal controversy is Kozinski, a well-respected judge and accomplished writer and commentator, known as a prodigy ever since becoming the youngest person appointed to a federal circuit bench at the age of 35 by then-President Ronald W. Reagan. Kozinski has considerable experience in presiding over intellectual property cases, and his opinions are often peppered with characteristically elegant, witty or biting turns of phrase.
For example, in Mattel Inc. v. MCA Records Inc., 296 F.3d 894, 63 USPQ2d 1715, 1718 (9th Cir. 2002) (150 PTD, 8/5/02), which found that the pop song “Barbie Girl” was protected by the First Amendment from a trademark infringement claim, Kozinski's opinion ended with the injunction that “The parties are advised to chill.”
In dissenting in White v. Samsung Electronics America Inc., 971 F.2d 1395, 44 U.S.P.Q.2d 1189 (9th Cir. 1997), Kozinski observed about the Ninth Circuit that “for better or worse, we are the Court of Appeals for the Hollywood Circuit.”
In that same dissent from a decision that empowered television presenter Vanna White with a cause of action against a TV commercial that used her likeness in the form of a robot, Kozinski set out a principle for limiting the scope of IP rights:
Overprotecting intellectual property is as harmful as underprotecting it. Creativity is impossible without a rich public domain. Nothing today, likely nothing since we tamed fire, is genuinely new: Culture, like science and technology, grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it's supposed to nurture.
Kozinski has also in the past advocated the scrapping of the fair use doctrine and also eliminating injunctive relief in the case of infringing derivative works, offering copyright holders only monetary compensation (196 PTD, 10/11/06).
In that 2006 speech, Kozinski offered his opinion about Dr. Seuss Enterprises LP v. Penguin Books USA Inc., 109 F.3d 1394, 42 USPQ2d 1184 (9th Cir. 1997)--which enjoined the publication and distribution of a humorous retelling of the O.J. Simpson case in the form of “The Cat in the Hat”--by composing his own Seussian poetry, including the following rhymes:
Those lawyers for Seuss were so sly and so slick,
That they wrote a complaint and they filed it real quick.
We took a look.
We saw a book.
We saw a book writ by a crook.
In July 2012, Mark Basseley Youssef uploaded to YouTube a 15-minute video--“The Innocence of Muslims”--which purported to be a proportional trailer of a two-hour film about Islam's Prophet Muhammad. The footage used included scenes filmed for “Desert Warrior,” but much of the dialogue had been overdubbed to make references to Muhammad, including many references considered by Muslims to be insulting or blasphemous.
In September of that year, outrage over the film clip boiled over into a series of global protests and demonstrations, including a fatwa by an Egyptian cleric calling for the deaths of those involved in the production of the film, including all the actors.
One of the actors was Cindy Lee Garcia, who had a small role in “Desert Warrior,” some of her lines had been overdubbed and included in the 15-minute video, including one associating Muhammad with pedophilia. Garcia, who became the subjects of personal harassment and death threats, sent eight notices to YouTube seeking to have the video taken down.
Garcia then filed several claims against Youssef, but also included in her subsequent legal complaint a plea for a preliminary injunction directing YouTube to remove the video. She failed to win at the trial court level, but on Feb. 26, the Ninth Circuit and Kozinski granted her plea, finding that she held copyright interest in her performance and that a preliminary injunction was appropriate (39 PTD, 2/27/14).
Notably, YouTube was sent the injunction a week before it was issued and it was accompanied by a gag order prohibiting disclosure of its existence. YouTube Inc. and its parent company, Google Inc., have already filed to seek a stay of the injunction while they consider their legal options.
In its motion, Google noted that the injunction was considerably broader than that requested by Garcia, one that requires takedown of “all copies of 'Innocence of Muslims' ” without identifying any specific videos and also mandating that YouTube prevent all future uploads.
Google has also indicated that it intends to file for en banc rehearing before the Ninth Circuit.
This ruling caught copyright scholars and practitioners by surprise, including Christopher Jon Sprigman, a law professor at New York University.
“I've taken a look at the decision, and it's a mess,” Sprigman told Bloomberg BNA on Feb. 27.
Sprigman said that looking at the decision with some degree of charity, it might be possible to put some of the blame on copyright jurisprudence itself, particularly that involving the creativity requirement.
“Copyright has a really low creativity threshold, so you can blame copyright law to some degree for Judge Kozinski's conclusion that this actress's contributions, despite having an incredibly low quantum of creativity, could be a copyrightable contribution. That raises the question of whether copyright's originality threshold is too low.”
A performance is not a work. It can provide expression in a work, but IT IS NOT A WORK.
The only thing worse than the Innocence of Muslims copyright decision is Innocence of Muslims itself. It's just astonishingly bad.
“I was not expecting something dramatic,” Grimmelmann told Bloomberg BNA on Feb. 27. “I understood Ms. Garcia's claim to be completely foreclosed by bedrock copyright law. There's a work of authorship, which is the film, and since Ms. Garcia is not an author of the film,” there is nothing in which she might hold copyright interest.
Indeed, even after reading the text of the opinion, it is still “not clear what the work is that she has an interest in and what work she is an author of,” Grimmelmann said. “The opinion doesn't explain itself, because to be clearer would have made it obvious that it is bending the law.”
As a basic matter, he conceded that the court was “entirely correct that actors can produce copyrightable expression.” However, he said, “The test has never been 'Did somebody produce creative expression?' The test is 'Is somebody an author of a creative and original work of expression fixed in a tangible medium?' ”
As to how an experienced judge could reach what in his view was a baffling conclusion, Grimmelmann attributed it to the “sympathetic status of the plaintiff and his swashbuckling style.”
“Very smart judges--and Kozinski is an extremely smart judge--have an unfortunate tendency to just go off on a frolic when they get the bit between their teeth and what results is an opinion that has a beautiful internal logic and can't survive contact with existing case law or the real world,” he said.
Even though copyright law should not have given her a remedy, “Cindy Garcia has one of the most sympathetic doomed claims I've ever seen,” Grimmelmann said. “And it's natural to want to give her some relief.”
However, he said, the ruling did “not really make things anything better for her.” Garcia's participating in the anti-Islamic film is already known around the world, and an injunction issuing two years after the original uploading to YouTube and a year-and-a-half after the triggering of the global protests no longer really protects her reputation or her safety.
Laura Goldbard George of Stroock & Stroock & Lavan LLP, New York, agreed.
“Although the court found irreparable harm because of the threats against her life and there is no particular time period on which a preliminary injunction must be brought, it certainly appears that the length of time that has taken place is longer than is typical and would not support a finding of irreparable harm,” she told Bloomberg BNA Feb. 28. “Normally when you talk about irreparable harm, you're talking about a short period of time, but two years to wait for a preliminary injunction typically would not support a finding of irreparable harm.”
Furthermore, Grimmelmann said, “It blows an enormous hole in settled industry practices.”
“We have a long, long tradition of vesting copyright control in the people who are responsible for production of a movie--that is, the director, the production team--which concentrates ownership and makes licensing possible,” he said. Without the assurance of this standard, the movie industry would be in turmoil, according to Grimmelmann.
Sprigman's opinion was in accord: “This is going to create a potentially giant headache for Hollywood,” he said.
Although movie producers are “well advised to get releases from anyone anyway,” Sprigman said, “Mistakes are made. We're going to get litigation over whether individual actors have copyrightable interests in a variety of works. It's a potential litigation-generating machine.”
Even though the big-time movie industry governs its business through numerous contracts, “it's not like every instance of a potentially copyrightable contribution is going to be covered by a contract,” Sprigman said. “This kind of rule where even the most minimal--virtually zero--contribution entitles someone to get an injunction against a movie is potentially worrisome.”
Commenters also reacted to the free speech implications of the injunction. Andrew McDiarmid of the Center for Democracy and Technology issued a statement on Feb. 28 labeling the decision “troubling” and one that “will have lasting repercussions for online free expression if it is not reconsidered.” The statement said:
In ordering the takedown in this case, the court failed to give adequate weight to the free expression interests at stake. Indeed, the court barely addressed free expression at all, despite the fact that the video has been the subject of extensive international debate about free expression online. …
[T]his video and the prospect of censoring it have been major flashpoints in the debate over online free expression. Yet, yesterday's opinion dismissed these concerns with a single sentence, stating that 'the First Amendment doesn't protect copyright infringement.” While that may be true, this isn't straightforward wholesale piracy. The novel copyright claim here pertains to only 5 seconds of the overall video, which appears to be otherwise non-infringing. At this stage of the case, when actual infringement has not been conclusively determined, the court should have weighed the very real free-expression implications from blocking the entire video against Garcia's interest in halting the dissemination of her performance in the video. From reading the opinion, you'd hardly know that blocking the video n a worldwide basis raises any free-expression issues at all.
These two aspects--the gag order and the breadth of the injunction--were both problematic in terms of free speech, Grimmelmann said, specifically with regard to the enjoining of the entire 15-minute film, of which a very small portion is theoretically subject to Garcia's copyright interest.
Sprigman called the injunction “a screaming First Amendment violation,” and one of “stunningly poor judgment,” but he put some of the blame on the U.S. Supreme Court's decisions in Eldred v. Ashcroft, 537 U.S. 186, 65 U.S.P.Q.2d 1225 (2003) (11 PTD, 1/16/03), and Golan v. Holder, 132 S. Ct. 873, 101 U.S.P.Q.2d 1297 (2012) (11 PTD, 1/19/12), “because in the Eldred case and in the Golan case, the Supreme Court gave the back of its hand to the idea that copyright can burden free speech.
He observed, as an aside, that “you can't get a video taken down because it's insulting Islam, and you can't get a video taken down because it's revenge porn,” and it was astonishing that Garcia was able to get this video taken down with such a tenuous claim to copyright interest “complete with a gag order.”
Sprigman also attributed the outcome to the sensational nature of the case.
“Obviously, really bad facts often make really bad law,” he said. “Sometimes there are harms in the world for which there is no remedy. There should be no copyright remedy here, nor a restraint on free speech that accompanies it.”
“I think that the court was so offended by what happened here and by how badly she was duped that they decided to give her a copyright protected right in her performance was the only way to protect her,” she said. “I think that there was a wrong here but I do not think that there was a copyright violation.”
As to the future of this proceeding, Goldbard said, “I think there are so many industries that will stand behind fighting this decision that I don't there is a choice but to first take an en banc rehearing and see whether further action needs to be taken.”
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Goldbard is a member of this publication's board of advisors.
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