En Banc ‘Innocence of Muslims' Ruling Says Actor Didn't Hold Copyright in Film

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By Anandashankar Mazumdar

May 18 --An actor--allegedly tricked into appearing in an anti-Muslim film and its trailer--didn't hold a copyright interest in her performance separate from the work as a whole, the U.S. Court of Appeals for the Ninth Circuit, sitting en banc, ruled 10-1 on May 18.

Reversing a ruling by a three-judge panel that YouTube must take down the video that drew death threats against those involved, the court said that the posting was protected by the First Amendment.

The 2014 ruling by Judge Alex Kozinski had been widely criticized both by free speech advocates and by the motion picture industry.

Numerous copyright scholars and practitioners also had predicted that Kozinski's ruling would not survive.

However, some practitioners consulted by Bloomberg BNA were surprised by the scope of the en banc ruling, suggesting that the controversy is far from over.

The en banc court's ruling was a surprise in terms of its scope, according to Jordan A. Sigale of Dunlop Codding P.C., Chicago.

“The Ninth Circuit did not need to reach the merits of the copyright claim,” Sigale said in an e-mail message to Bloomberg BNA. Referring to a concurring opinion in the matter, he said that the court could have ruled based on the requirements for granting an injunction.

“Kozinski's prior ruling was immediately dissolved by the en banc panel's ruling. However, Judge Kozinski and the unfortunate issues created by the majority opinion on copyright authorship are not going away,” Sigale said. “Copyright law in the Ninth Circuit has been weakened by this decision. I hope with the passage of time, litigants will see this opinion as being limited to its specific facts and move past it.”

'Complete Win for Google.'

Kozinksi himself stuck to his guns, dissenting from the en banc opinion and asserting that the majority was rewriting copyright law for the sake of an “overstated” risk.

The majority rejected Kozinski's arguments, declaring that his dissenting opinion “spins speculative hypotheticals” and “sounds a false alarm” while “substituting moral outrage and colorful language for legal analysis.”

Christopher Jon Sprigman, a law professor at New York University, told Bloomberg BNA that “the en banc opinion is a complete win for Google--but more importantly, it is a win for creators who work in fields, like filmmaking or theatre, where productions typically require people to collaborate in large groups.”

“The Ninth Circuit panel’s opinion was a trap for the unwary--it would have led to endless fights over the ownership of works where people collaborate, because it gave even the most minor contributors colorable claims to part ownership,” Sprigman, who had filed an amicus brief in the matter favoring Google's position, said.

Death Threats

The dispute originates in a video uploaded to YouTube in 2012 purporting to promote a movie called “Innocence of Muslims.” The post touched off a firestorm among Muslims around the world and a fatwa was issued in Egypt urging the killing of all those who had participated in the production.

Cindy Lee Garcia had been hired to play a small role in the movie and she began receiving death threats for her appearance in five seconds of the YouTube video. She sued Google Inc. and its subsidiary YouTube LLC, seeking a preliminary injunction to have the video taken down.

A federal district court denied the preliminary injunction motion, but on appeal, the Ninth Circuit's Chief Judge Alex Kozinski held that Garcia held an enforceable copyright interest in her acting in the video and had the right under federal copyright law to control its distribution (39 PTD, 2/27/14).

Kozinski's opinion was widely criticized (41 PTD, 3/3/14) and the Ninth Circuit granted en banc rehearing of the matter. The court heard arguments in December (242 PTD, 12/17/14).

'Swiss Cheese of Copyrights.'

Having reheard the case en banc, the appeals court concluded that the district court had not abused its discretion in denying Garcia's motion for an injunction against Google.

The court first rejected the idea that the performance that was shown in a portion of the video was a protectable original and creative work in which Garcia could claim rights as an author.

“The mandatory injunction censored and suppressed a politically significant film--based on a dubious and unprecedented theory of copyright.”
--Judge Mary Margaret McKeown

The court also cited for support an opinion by the Copyright Office rejecting Garcia's claim to authorship in a protectable work.

Acknowledging the kind of right that Garcia asserted would result in a “legal morass,” the court said, and it quoted from Google's argument that it would make “Swiss cheese of copyrights.”

Furthermore, in order for an author to earn copyright protection for a work, that work must be fixed in a perceivable medium by the author, at the author's direction or by the consent of the author.

The court said that in this case, Garcia herself was not the person making the fixation--that is, the video or film--or directing its creation, so she could not claim authorship rights from the making of that fixation.

Next, the court said that Garcia had failed to establish that she would suffer irreparable harm in the absence of an injunction.

In particular, the court stressed that the type of harm that Garcia must show is a harm to her copyright interests. In this case, Garcia had focused on the physical threat to herself, which is not the kind of harm relevant to copyright law, the court said.

Claims under privacy law or personality rights or defamation law would be more appropriate for this kind of alleged harm, the court said. Copyright law didn't serve this purpose, it said.

Prior Restraint

The court also said that the injunction represented a prior restraint in violation of free speech rights.

“The takedown order was unwarranted and incorrect as a matter of law,” the court said. “It also gave short shrift to the First Amendment values at stake. The mandatory injunction censored and suppressed a politically significant film--based on a dubious and unprecedented theory of copyright.”

This portion of the opinion was highlighted by Mark A. Lemley, a law professor at Leland Stanford Jr. University, Stanford, Calif., who had signed an amicus brief supporting Google's position.

“The court holds that copyright doesn't get an automatic free ride under the First Amendment, and condemns the panel's injunction as a prior restraint on speech,” Lemley said in an e-mail message to Bloomberg BNA. “That holding may have a broader impact than the copyright ruling.”

The court's opinion was issued by Judge Mary Margaret McKeown and joined by Judges Sidney R. Thomas, Marsha S. Berzon, Johnnie B. Rawlinson, Richard R. Clifton, Consuelo M. Callahan, N. Randy Smith, Mary H. Murguia, and Morgan B. Christen.

'The Hollywood Circuit.'

Judge Paul J. Watford entered a concurring opinion stating that the court should limit its ruling to the finding that Garcia had failed to establish irreparable harm in support of her motion for an injunction.

Judge Alex Kozinski, who had authored the now-reversed 2014 decision, entered a defiant dissent.

“I won't be a party to it,” he said, referring to the majority's opinion.

“The majority is wrong and makes a total mess of copyright law, right here in the Hollywood Circuit,” Kozinski said. “In its haste to take internet service providers off the hook for infringement, the court today robs performers and other creative talent of rights Congress gave them.”

He labeled as “newfangled” the majority's conclusion that an actor's performance is not a protectable work that would cast “doubt on the copyrightability of vast swaths of material created during production of a film or other composite work.”

He suggested that such a definition would deprive from protection things like “take-outs, the alternative scenes, the special effects never used.”

“The majority is wrong and makes a total mess of copyright law, right here in the Hollywood Circuit.”
--Judge Alex Kozinski

Roger N. Behle Jr. of Foley Bezek Behle & Curtis LLP, Costa Mesa, Calif., discounted this prospect.

Behle told Bloomberg BNA that in his view, even a small five-second clip in which Garcia's acting was featured could not be created solely with Garcia's creative input. It would involve decisions by directors and screen writers and costumers and set designers and a range of technical crewmembers.

Garcia might argue that such a work was a joint work of all these contributors, but instead she was arguing that she was the sole author of the performance represented by the fixation in question.

“You can't say 'disregard what they were doing and just look at my performance by itself,' ” Behle said.

Thus a takeout or alternative take would have the same copyright status as a short section featuring Garcia, one that the producer of the overall film held rights in.

However, Sigale agreed with Kozinski's point that, for example, a musician is not required to record his own music in order to hold rights in it.

“Moreover, copyright law recognizes the separate performance rights in the various members of a band (e.g. vocalists, guitarists, drummer) as well as the producer of the sound recording,” Sigale said. “Similar concerns can and should be raised by choreographers and the like, whose contributions to larger works had long been recognized. This opinion calls all of that into question.”

'Frankly My Dear…'

Kozinski mocked the idea that an actor has not created something sufficiently creative or original by stating that to dispute his position “is to claim that 'Gone With the Wind' would be the same movie if Rhett Butler were played by Peter Lorre.”

The Copyright Office's statement that individual actors do not hold individual rights in their performances was discounted by Kozinski as being inconsistent with other statements.

In particular, he noted that the register of copyrights had been part of a U.S. delegation that stated that U.S. law was consistent with the Beijing Treaty on Audiovisual Performances, which, he said, did recognize such a right.

Kozinski also said that the fear that giving actors a separate copyright interest in their performances would harm the film industry was “overstated.”

He noted that most actors are subject to contracts or the work-made-for-hire doctrine. Most of the remainder would be found to have granted a license to the producers to use their performances.

“Very few performers would be left to sue at all, and the ones that remain would have to find suing worth their while,” he said.

James Grimmelmann, a law professor at the University of Maryland, Baltimore, sharply criticized this portion of the dissenting opinion.

“Extras and set dressers are not authors of the movies they work on,” Grimmelmann said in an e-mail message to Bloomberg BNA. “Kozinski's vivid writing in dissent diverts attention from how deeply confused he is about copyright law's structure. He has mixed up copyright's originality, authorship, and fixation requirements, and projected his own bafflement onto the majority's straightforward and sensible holding.”

In an e-mail message to Bloomberg BNA, a YouTube spokesperson said, “We have long believed that the previous ruling was a misapplication of copyright law. We're pleased with this latest ruling by the Ninth Circuit.”

Corynne McSherry of the Electronic Frontier Foundation, San Francisco, which filed an amicus brief supporting Google, said in an e-mail message to Bloomberg BNA that “We may, and do sympathize with Ms. Garcia’s plight, but rewriting copyright law to justify a dramatic restraint on speech is not the right way to address it.”

“The original appellate decision not only misread copyright law, it undermined fundamental free speech principles,” McSherry said. “Today’s decision remedies that. We only wish it had come a great deal sooner.”

Garcia's counsel issued a press release on May 18 stating that the ruling “has artificially shrunk rights that Congress gave copyright authors, by deciding that actors do not have copyright interests in their own dramatic performances and that the First Amendment requires that the controversial trailer stay up on the internet because it is of political significance.”

The statement said that given Garcia's “limited financial resources” to fight Google, she would be unlikely to petition the U.S. Supreme Court for review.

Garcia was represented by the Armenta Law Firm ACP, Manhattan Beach, Calif. Google was represented by Hogan Lovells US LLP, Washington.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text at http://www.bloomberglaw.com/public/document/Cindy_Garcia_v_Google_Inc_et_al_Docket_No_1257302_9th_Cir_Dec_21_/15

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