United States: Google Ordered To Remove All Copies Of Anti-Islamic Film From Youtube After Actress With Bit Part Threatened By Outraged Muslims; Decision Puzzles Copyright Attorneys

Last Updated: April 1 2014
Article by J. Alexander Lawrence

An aspiring actress moves to California and finds her life threatened. While standard fare for pulp fiction, the case of Garcia v. Google involves a twist on this well-worn plot line that not even the most imaginative Hollywood scriptwriter could invent.

Cindy Lee Garcia answered a casting call for a low-budget amateur movie with the working title Desert Warrior. The film's writer and producer told her that it would be a "historical Arabian Desert adventure film." Ms. Garcia received $500 for her performance in the film. It turns out the actress was misled by the producer, Mark Basseley Youssef (aka Nakoula Basseley Nakoula, aka Sam Bacile), a Coptic Christian from Egypt, who was reportedly working in conjunction with an American non-profit, Media for Christ. The filmmakers had no intention of making an adventure film; rather, the end product – titled Innocence of Muslims – is an anti-Islamic account of the Prophet Mohammed that many Muslims find highly offensive and blasphemous.

In July 2012, Mr. Youssef posted a 14-minute trailer of the film to YouTube, which is owned and operated by Google. Ms. Garcia appears for about five seconds in the trailer. The film overdubs her voice with lines she never actually spoke. In September 2012, an Egyptian cleric issued a fatwa against all involved in the film, calling on Muslims to "kill the director, the producer, and the actors and everyone who helped and promoted the film." Ms. Garcia claims that she began to receive death threats and was forced to take precautionary measures at great expense to protect herself from retribution.

Sending takedown notices under the Digital Millennium Copyright Act, Ms. Garcia demanded that Google remove all copies of the trailer from YouTube. Google declined to do so. In September 2012, Ms. Garcia sued Google, later also naming YouTube, asserting claims for copyright infringement. In October 2012, Ms. Garcia moved for a preliminary injunction, seeking to have Google take down all copies of the movie trailer from YouTube.

In November 2012, Judge Fitzgerald, a federal judge in Los Angeles, denied Ms. Garcia's motion. In a short opinion, Judge Fitzgerald held that Ms. Garcia was unlikely to be able to establish a copyright in her brief performance in the film. Judge Fitzgerald also found that her motion should be denied because of her delay in seeking the injunction after first seeing the film on YouTube and because of her failure to meet the heightened standard required to obtain a mandatory injunction in the Ninth Circuit.

Ms. Garcia appealed to the Ninth Circuit. On February 19, 2014, the Ninth Circuit issued a secret gag order – which was only later made public – directing Google to take down all copies of Innocence of Muslims from YouTube and any other platforms within its control and to take all reasonable steps to prevent further uploads. The court directed that neither the parties nor their counsel could reveal the existence of the order. The court later explained that it issued the secret gag order "to prevent a rush to copy and proliferate the film before Google can comply with the order."

On February 26, 2014, the Ninth Circuit released its opinion to the public. Two of the members of the three-judge panel sided with Ms. Garcia. The majority found that Ms. Garcia was in fact likely to prevail on her copyright claims and had established the other factors, such as irreparable harm, required to obtain a preliminary injunction.

In a lengthy dissent, Judge Smith expressed his strong disagreement with the majority's holding, complaining that "the majority abandons restraint to procure an end (order the film be taken down) by unsuitable means (the Copyright Act)." Judge Smith warns that "the majority makes new law in this circuit in order to reach the results it seeks." The Ninth Circuit, the circuit in question, is the home of Hollywood and its multibillion-dollar film industry.

In reaching his opinion, Judge Smith considered the bounds of copyright protection set forth in Section 102 of the Copyright Act, which limits copyright protection to "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Judge Smith expressed his view that Ms. 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.

As to the requirement that there be a protectable "work" at issue, Judge Smith considered the types of works that the Copyright Act lists as protectable, none of which include an acting performance. An acting performance is more akin to a procedure or process, which is specifically excluded from copyright protection, than an original work. Judge Smith noted that a motion picture is a "work," but the Copyright Act does not clearly place an acting performance within its sphere of copyrightable works.

As to the authorship requirement, Judge Smith looked to the Ninth Circuit's prior decision in Aalmuhammed v. Lee, in which an expert on the Spike Lee film Malcolm X, who suggested script revisions, directions to actors, and help with the editing, claimed a copyright interest in the final work. The Ninth Circuit rejected his claim. Judge Smith found the majority's decision irreconcilable with Aalmuhammed. He noted that "[c]onsidering the number of contributors who inject the same or a greater amount of creativity into a film" when compared to Ms. Garcia's minor role, the majority's decision creates "an impenetrable thicket of copyright."

As to the fixation requirement, Judge Smith looked to the Ninth Circuit's prior decision in Midler v. Ford Motor Co., in which the popular singer and actress Bette Midler sued Ford for misappropriating her voice in a commercial. Ford had a license in the song and paid someone to mimic Ms. Midler's voice. The Ninth Circuit held that Ms. Midler's voice is not copyrightable. "The sounds are not 'fixed.' What is put forward . . . here is more personal than any work of authorship." Judge Smith recognized that Ninth Circuit precedent led to the conclusion that "just as the singing of a song is not copyrightable, while the entire song recording is copyrightable, the acting in a movie is not copyrightable, while the movie recording is copyrightable."

Finally, Judge Smith strongly disagreed with the majority's conclusion that to the extent Ms. Garcia's performance could qualify as a "work," it was not a "work for hire." Ms. Garcia did not enter into a written "work for hire" agreement. Nonetheless, such agreements are not required under the Copyright Act. The Copyright Act provides that a "work made for hire" is "a work prepared by an employee within the scope of his or her employment." Judge Smith noted that in determining whether an individual is acting as an employee, courts generally look to "the hiring party's right to control the manner and means by which the product is accomplished." In his view, all the evidence pointed to the filmmakers' complete control over Ms. Garcia's work.

Copyright experts have expressed their puzzlement at the majority's legal analysis. In his widely followed blog, law professor Eric Goldman complained that the decision "is so terrible that there's simply no point trying to make sense of it."

On February 27, 2014, a day after the issuance of the opinion, YouTube filed an emergency motion for a stay pending the disposition of a petition for review by the full Ninth Circuit. YouTube warned that "[u]nder the panel's rule, minor players in everything from Hollywood films to home videos can wrest control of those works from their creators, and service providers like YouTube will lack the ability to determine who has a valid copyright."

The next day, the court denied that motion but modified its order to provide that it "does not preclude the posting or display of any version of 'Innocence of Muslims' that does not include Cindy Lee Garcia's performance."

Clicking on a link to the Innocence of Muslims on YouTube results in the following disclaimer: "This video is no longer available due to a copyright claim by an actress over her 5-second appearance in the video. A U.S. court has ordered Google to remove the video. We strongly disagree with this copyright ruling and will fight it. Sorry about that." Of course, the Internet being the Internet, the film is available on other sites.

It turns out that the film has also apparently still been popping up on YouTube from time to time. On March 25, 2014, Ms. Garcia moved for sanctions against Google, claiming it failed to stop users from uploading the film to YouTube. Ms. Garcia also complains that Google continues to publish links on its search engine to other sites where the video is available for viewing or download. Ms. Garcia accuses Google of "thumbing its nose at the Court" and seeks hundreds of thousands of dollars in sanctions. On March 26, 2014, the Ninth Circuit ordered Google to respond to Ms. Garcia's emergency contempt motion within 72 hours.

No one could fail to be sympathetic to Ms. Garcia's situation. Tricked into participating in the production of a hate film, her life has been turned upside down. The Ninth Circuit's decision, however, strains to find a legal justification for the court's desired outcome. As other commentators have noted, this appears to be a case of bad facts making bad law.

The Ninth Circuit panel may not have the last word here. Google has filed a petition seeking rehearing by the full Ninth Circuit. Ms. Garcia's opposition to Google's petition is due in early April, and other interested parties will have the right to submit friend of court briefs shortly after Ms. Garcia files her opposition. Facebook, Pinterest, Twitter, IAC/InterActiveCorp, the Los Angeles Times, the New York Times and the Washington Post have all expressed their intention to weigh in. We will see whether the full Ninth Circuit agrees to review the panel decision.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

J. Alexander Lawrence
Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions