Garcia v. Google reversed; many sigh in relief

Garcia v. Google, Inc., No. 12-57302, — F.3d – (9th Cir.
May 18, 2105) (en banc)
Judge McKeown wrote the majority opinion. Garcia was fooled
into taking part in a movie that turned out to be the awful Innocence of Muslims, and received death
threats because of it. She sought an injunction on copyright grounds, which was
first denied, then granted, now lifted as the en banc court affirms the
district court’s denial of an injunction.
The court began by describing Garcia’s burden as “doubly
demanding: Because Garcia seeks a mandatory injunction, she must establish that
the law and facts clearly favor her position, not simply that she is likely to
succeed.” It’s a mandatory injunction because it requires Google to take
affirmative action to remove, and keep removing, Innocence of Muslims from Google sites. Mandatory injunctions are
disfavored except on strong showings of entitlement.
Starting with likely success on the merits: Garcia’s
five-second “acting performance” didn’t give her a claim in a copyright. She
might have publicity, defamation, or contract claims, but not copyright.
Copyright subsists “in original works of authorship fixed in
any tangible medium of expression . . . [including] motion pictures.” Fixation
must be done “by or under the authority of the author.” Here, Innocence of Muslims is a motion picture
and a derivative work of the script. Garcia was the author of neither, but
instead claimed separate protection for her five-second performance. The
Copyright Office found that her performance was not a copyrightable work of its
own, explaining that its “longstanding practices do not allow a copyright claim
by an individual actor or actress in his or her performance contained within a
motion picture.” For copyright purposes, “a motion picture is a single
integrated work.” The court credited this expert opinion, which “reflects a
‘body of experience and informed judgment to which courts and litigants may
properly resort for guidance.’”
By contrast, the dissent’s invocation of the Beijing Treaty
on Audiovisual Performances was misplaced. First, the treaty is not in force;
only six of the necessary thirty countries have ratified it. Second, though the
US signed the treaty, the Senate has not ratified it. Though the PTO issued a
fact sheet saying that performers’ performances were protected by copyright
law, the PTO lacks legal authority to interpret the Copyright Act. (RT: Also,
it may still be the case that primary performances
make performers co-authors or even sole authors where they control the
recording—Garcia didn’t rely on joint authorship or sole authorship claims as
to the film as a whole.)
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), was a
useful starting point; the meaning of “work” is the first step in analyzing
joint authorship.  When a work is
“prepared by two or more authors with the intention that their contributions be
merged into inseparable or interdependent parts of a unitary whole,” the work
becomes a “joint work.” But Garcia disclaimed joint authorship of the film.  Defining a “work” based upon “some minimal
level of creativity or originality . . . would be too broad and indeterminate
to be useful.”  Aalmuhammed’s animating concern was that a broad definition of “work”
“would fragment copyright protection for the unitary film Malcolm X into many little pieces.” We shouldn’t splinter a film
into many different “works” in the absence of independent fixation. “Treating
every acting performance as an independent work would not only be a logistical
and financial nightmare, it would turn cast of thousands into a new mantra:
copyright of thousands.”
The dissent’s hypotheticals could be addressed with careful
application of statutory definitions. 
(The IP profs are still going at this, but I’m with the majority here.)  The dissent’s reliance on Effects Associates,
Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) ([pointedly] Kozinski, J.), was
inapposite, because no one in that case challenged the existence of an
independent copyright on the special-effects footage that was independently

Contracts and WFH govern “much of the big-budget Hollywood performance and
production world,” and implied licenses often take care of the rest (the district
court found one here). “But these legal niceties do not necessarily dictate
whether something is protected by copyright, and licensing has its limitations.
As filmmakers warn, low-budget films rarely use licenses.” Plus, contracts aren’t
perfect, especially for third-party distributors like YouTube and Netflix, who won’t
have easy access to any licenses; “litigants may dispute their terms and scope;
and actors and other content contributors can terminate licenses after thirty
five years. Untangling the complex, difficult-to-access, and often phantom
chain of title to tens, hundreds, or even thousands of standalone copyrights is
a task that could tie the distribution chain in knots.”  And filming group scenes “like a public
parade, or the 1963 March on Washington, would pose a huge burden if each of
the thousands of marchers could claim an independent copyright.”
In a footnote, the court of appeals found that the district
court’s implied license finding wasn’t clearly erroneous.  “Although Garcia asked Youssef about Desert
Warrior’s content, she in no way conditioned the use of her performance on
Youssef’s representations.”
In addition, the court held, Garcia didn’t fix her acting
performance in a tangible medium.  She
wasn’t the one who did the fixation. 
(The court noted the Copyright Office’s distinction between acting
performances “intended to be an inseparable part of an integrated film” and “standalone
works that are separately fixed and incorporated into a film,” the latter of which
could be protected by copyright.) 
Youssef and his crew did the fixation. 
And Garcia claimed that she never agreed to the film’s ultimate
rendition “so she can hardly argue that the film or her cameo in it was fixed ‘by
or under [her] authority.’”
The district court didn’t err, and the law didn’t clearly
favor Garcia.  But just in case, the
court went on to address irreparable harm, because of the alleged threat to
Garcia’s life. “Garcia understandably takes seriously the fatwa and threats
against her and her family, and so do we.” 
The problem was that there was no match between these risks and her
substantive copyright claim. 
For irreparable harm in a copyright claim, as opposed to a
fraud or false light claim, her harm needed to be “harm to her legal interests
as an author.”  Copyright is supposed to
promote progress and create an incentive to disseminate works; its justification
is the protection of an author’s commercial interest, not the protection of
secrecy.  Garcia’s “severe emotional
distress, the destruction of her career and reputation,” and receipt of
credible death threats, were “untethered from—and incompatible with—copyright
and copyright’s function as the engine of expression.”  Copyright’s function is not to protect
privacy or to guard against emotional distress: “such damages are unrelated to
the value and marketability of [authors’] works.” US law doesn’t provide a
right to be forgotten or moral rights. “We do not foreclose that in a different
circumstance with a strong copyright claim, a court could consider collateral
consequences as part of its irreparable harm analysis and remedy. But such a
case is not before us.”
In addition, Garcia waited months to seek an injunction, and
it wasn’t an abuse of discretion to weigh this delay undercut her irreparable
harm claim.  Garcia acted once the film
was translated into Arabic and sparked death threats against her. “But that
proves the point: the gravamen of Garcia’s harm is untethered from her
commercial interests as a performer, and instead focuses on the personal pain
caused by her association with the film.”
The panel’s injunction, which ordered Google to take down
all copies of the film from all platforms under its control, and take “all
reasonable steps” to prevent further uploads, was wrongly granted.  Even in its amended form, which allowed the
posting of any version of the film without Garcia’s performance, was wrong,
putting the court “in the uneasy role of film editor.”  It would only matter if Google (or someone
else) decided to edit another’s copyrighted film.  “To no one’s surprise, the end result was the
same: the entire film remained removed from YouTube.”  Not only was this order incorrect as a matter
of law, it disserved the First Amendment by suppressing a politically significant
film.  Copyright isn’t categorically
immune from First Amendment challenge, and the takedown order directed at “a
film of substantial interest to the public” was a classic prior restraint.  A thin copyright claim was no warrant for
such action.
Judge Watford concurred, and would have ruled solely on
irreparable harm, reserving touchy copyright issues for later.  He would have accepted that the risk of death
qualified as irreparable injury, but concluded that Garcia couldn’t prove a
causal connection between the irreparable injury and the conduct she sought to
enjoin: she couldn’t show that removing the film from YouTube would materially
reduce the risk of death she faced. “Garcia is subject to the fatwa because of
her role in making the film, not because the film is available on YouTube.”  Correcting misperceptions about her role in
the film—she was duped into participating, she never said the offensive words
her character speaks in the film, and she strongly opposed the film’s message—could
help, but she’s already done everything within her power to dissociate herself
from the film.  Garcia’s expert on
Islamic and Middle Eastern law didn’t claim that removing the film from YouTube
would likely cause the fatwa against her to be lifted, but merely opined: “If
she is successful in pulling the content down from the internet, it will likely
help her in terms of believability of her message condemning the film and its
message.” That was too little in the way of evidence of likely impact on the
key audience, especially given that demanding
the takedown alone spoke of her sincerity.
Judge Kozinski dissented. Garcia’s dramatic performance had
the minimal creativity to be copyrightable subject matter, it was original, and
it was fixed at the moment it was recorded. 
That’s enough.  [That’s enough to
make it at least part of a work … but who’s the author of that work?]  The majority says that Garcia’s performance
wasn’t a work, “apparently because it was created during the production of a
later-assembled film. But if you say something is not a work, it means that it
isn’t copyrightable by anyone.” So the majority’s definition of work means that
no one has a copyright in any part of Garcia’s performance, “even though it was
recorded several months before Innocence
of Muslims
was assembled.” If only the film is a work, then the
copyrightability of “vast swaths of material created during production of a
film or other composite work” is in doubt, such as every take that doesn’t
become part of a final movie. “If some dastardly crew member were to run off with a copy
of the Battle of Morannon [from Lord of the Rings], the dastard would be free
to display it for profit until it was made part of the final movie. And, of
course, the take-outs, the alternative scenes, the special effects never used,
all of those things would be fair game because none of these things would be ‘works’
under the majority’s definition.”  The same
for draft chapters of books, or parts thereof.
RT: There may be unusual cases, but most takes, for example,
should be at least derivative works or reproductions of the script, which is
copyrightable, so I don’t see a practical problem developing. The question is
which hypotheticals you find most troubling/plausible, and I think the risk of
making every five seconds into its own work—with corresponding effects on
substantial similarity and fair use analysis—justifies taking the risks
Kozinski identifies instead.
Effects Associates
dictates a contrary result, because it held that a special effects company
retained a copyright interest in its footage even though it became part of the
film.  Like the special effects shots,
Garcia’s performance was also “separately fixed and incorporated into” Innocence of Muslims.  Youssef could’ve sold the clip featuring Garcia
to someone else; it might not have had much value, but then neither did the
special effects from The Stuff. 
Here I think Kozinski cleverly equivocates between “Garcia’s
performance” and “the footage.”  Garcia’s
performance was not separately fixed
from the other elements that made up the movie that were in the shots with her;
it was fixed along with them.  That wasn’t
true of the distinct shots created in a different place and at a different time
in Effects Associates.  If (as Kozinski ten suggests) the effects had
been later added into a greenscreened performance where the actors were staring
at tennis balls, I think you’d get the Garcia result and not the Effects Associates result.  I don’t think we’ll ever get a perfectly pure
rule here, but that’s copyright for you.
This isn’t an unfamiliar question. Statutory damages cases
ask us to identify how many “works” are at issue, and while the statute
provides an answer for compilations that are infringed, it doesn’t provide all
the answers.  For example: suppose someone
makes a for-profit, nontransformative, non-fair use Batman movie—alley, gunshot, pearls falling into a puddle, all that
jazz.  I take it we wouldn’t want to say
that the infringer had infringed each of the gazillion registered works that
make up the Batman corpus and recount
their own versions of this story.  What
the infringer has done is infringe the Batman
story (we can also count characters, but then we have to ask whether the characters are registered; anyway,
counting by number of characters is a very different thing than counting by
number of registered works).  By
contrast, someone who reproduces the Dark
movies has copied specific works and the statutory damages should be
calculated that way (and not as an infringement of all the other registered works that also tell the Batman story).  Of course we get
slightly different definitions of “works” from the different situations,
because we have different concerns about the interests invaded. But I don’t think
that makes the whole edifice illegitimate.
Anyhow, back to the dissent: the majority erred in saying
that Garcia couldn’t be an author because she didn’t play a role in the
fixation.  A work is fixed when the
fixation is by or under the authority of
the author.  She’s an author because
without her, there was only a script. 
Her performance had at least “some minimal degree of creativity.” “To
dispute this is to claim that Gone With the Wind would be the same movie if
Rhett Butler were played by Peter Lorre.” (RT: Okay, that’s overblown. Innocence of Muslims is surely no GWTW,
and Garcia’s 5-second character no Rhett Butler.  Actually, now that I’m thinking about this,
isn’t Kozinski’s argument here a workaround for the rule that a character has
to be sufficiently defined to be protected by copyright?  After all, Garcia’s physical characteristics
aren’t “creative” or “original” in the copyright sense, so it’s just what she
does in those five seconds that he argues makes her an author.)

Because Garcia didn’t sign away her rights, she acquired a copyright in her
performance the moment it was fixed. “It’s not our job to take away from
performers rights Congress gave them.” The Register of Copyrights was a member
of the U.S. delegation that signed the Beijing Treaty on Audiovisual
Performances, which would recognize Garcia’s rights in her performance because
it provides that “performers” have the “exclusive right of authorizing . . .
the fixation of their unfixed performances,” and “reproduction of their
performances fixed in audiovisual fixations, in any manner or form.”  The PTO said that U.S. law was “generally
compatible” with the Treaty, as “actors and musicians are considered to be
‘authors’ of their performances providing them with copyright rights.” The
Copyright Office surely wouldn’t have signed on if it believed that the
Treaty’s key provisions were inconsistent with U.S. copyright law. (Surely!
After all, US negotiators are never
and never
engage in policy laundering
of that type.)
The Copyright Office said “an actor or an actress in a
motion picture is either a joint author in the entire work or, as most often is
the case, is not an author at all by virtue of a work made for hire agreement.”
But Garcia isn’t in either category, so she must be an author.  (It’s the “so” where we part company.  This really should be fixed by a better
understanding of joint authorship.)
There’s not much risk of harm from Kozinski’s position,
since “[t]he vast majority of copyright claims by performers in their
contributions are defeated by a contract and the work for hire doctrine. And
most of the performers that fall through the cracks would be found to have
given an implied license to the film’s producers to use the contribution in the
ultimate film.”  The remaining few wouldn’t
be able to claim the “valuable” rights of joint authorship. (RT: Yeah, only
total ownership of a chunk!  That doesn’t pose any problems at all!) That’s why Effects
didn’t cause filmmaking to grind to a halt. Anyway, the Supreme
Court said in Tasini that
“speculation about future harms is no basis for [courts] to shrink authorial
rights,” and neither the predicted database disasters or the disasters
predicted by amici in CCNV took
place.  (Actually, the Tasini situation is rather more
complicated than that, and the case just ended after two decades—but at least
that was susceptible to class treatment!)
The risks that this rule imposes on producers and ISPs is
for them to fix by contract.  “Google
makes oodles of dollars by enabling its users to upload almost any video
without pre-screening for potential copyright infringement. Google’s business
model, like that of the database owners in Tasini,
assumes the risk that a user’s upload infringes someone else’s copyright, and
that it may have to take corrective action if a copyright holder comes forward.”  (Takeaway: Kozinski really, really doesn’t
like ISPs.)
Doomsday claims are overstated: “our injunction has been in
place for over a year; reports of the internet’s demise have been greatly
exaggerated.” Garcia’s copyright claim was likely to succeed and she made an
ample showing of irreparable harm. “It’s her life that’s at stake.”

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