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

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