United States: "Hollywood Circuit" Court Issues En Banc Decision In Garcia V. Google: No Copyright Protection For Fleeting Dramatic Performance

Last Updated: May 19 2015
Article by David A. Kluft

On May 18, 2015, the Ninth Circuit sitting en banc vacated its prior decision in Garcia v. Google. The prior decision, authored by Judge Alex Kozinksi, controversially held that an actress had standing to issue a DMCA takedown notice to YouTube because she had a distinct copyright in her performance within a film, even though she was not an author of the film as a whole. The en banc decision dissolves a previously issued injunction and reaffirms a more traditional view of film authorship for copyright purposes.


Cindy Lee Garcia agreed to act in a low budget film called "Desert Warrior," for which she was paid $500. The film she signed up for was never made, but the footage was repurposed into the now-infamous "Innocence of Muslims" trailer, in which Garcia's lines were redubbed so that she appeared to be asking, "Is your Mohammed a child molester?"  When the trailer appeared on YouTube (owned by Google), Garcia became the subject of death threats and even a fatwa. She sued the filmmakers for fraud and, when YouTube refused to comply with her DMCA takedown notices, she also sued YouTube for copyright infringement.

The District Court rejected Garcia's request for an injunction against YouTube on the grounds that, by Garcia's own admission, she was not an author or co-author of the film, and therefore had no legitimate copyright interest in it.  But on February 26, 2014, in an opinion authored by Judge Kozinksi, a divided panel of the Ninth Circuit held that Garcia indeed had a protectable copyright interest in her 5-second performance in the trailer, and that she was entitled to injunctive relief.

It seemed that most copyright experts — including the Copyright Office itself — disagreed with the decision, and many — including yours truly — howled at the blogosphere for en banc review. For us howlers, this new Ninth Circuit opinion, authored by Judge Margaret McKeown, restored some order.

Copyright Cherry Picking: The Ninth Circuit En Banc Majority

The en banc majority rejected Garcia's copyright claim for two reasons. First, she was not an author in the copyright sense. Although copyright law grants joint ownership to works made up of contributions by more than one author to a unitary whole, here Garcia had disclaimed any authorship in the film itself. Rather, she was advancing the novel theory that her five-second performance was protected by a separate copyright. That theory, the majority held, relies on an overly broad definition of copyright authorship, especially in the context of the film industry. This "copyright cherry picking" would enable any contributor from a "costume designer down to an extra or best boy to claim copyright in random bits and pieces of a unitary motion picture without satisfying the requirements of the Copyright Act." Moreover, as a practical matter, the Court believed that such fractured ownership would grind the film industry to a crawl with disputes over "complex, difficult-to-access and often phantom chain of title to tens, hundreds or even thousands of standalone copyrights."

Second, to merit copyright protection, a work must be "fixed in a tangible medium of expression," and that fixation must be done "by or under the authority of the author."  Here, the only fixation of Garcia's performance was in the film, a work she claims she did not ultimately authorize and to which she disclaims any authorship. Therefore, Garcia was unable to meet the fixation requirement.

Finally, the majority held that Garcia had not made a showing of irreparable harm, because the physical danger she hoped to remedy by an injunction did not stem from her alleged legal interests in a copyrighted work. In other words, the copyright interest itself was not being harmed and therefore the alleged "harms are untethered from – and incompatible with – copyright and copyright's function as an engine of expression."

Lack of Causal Connection: Judge Watford's Concurrence

Judge Paul Watford concurred, opining that Garcia had failed to prove irreparable harm for an additional reason: she had made no showing that removal of the video from YouTube would stop the death threats or dissolve the fatwa, which was issued because of "her role in making the film, not because the film is available on YouTube." Thus, there was no "causal connection" between the injury she faced and the conduct she sought to enjoin. Judge Watford concluded that, given the lack of irreparable harm, it was inappropriate and unnecessary for the majority to reach any substantive copyright law issues.

Alien Yogurt Revisited: Judge Kozinkski's Dissent

Judge Kozinksi's dissent accused the majority of making a "total mess of copyright law, right here in the Hollywood Circuit." Judge Kozinski further declared: "I won't be a party to it."  The majority in turn described Judge Kozinski's opinion as "substituting moral outrage and colorful language for legal analysis."

The dissent's main substantive argument was that Garcia's performance met each element necessary for copyright protection (it was original, it was in a fixed form, etc...), so that ended the matter.  Judge Kozinksi characterized the majority view as denying protection to Garcia's performance merely because it was created during the production of a later-assembled film, and argued that this view has "daunting" implications:

If Garcia's scene is not a work, then every take of every scene of, say, Lord of the Rings is not a work, and thus not protected by copyright, unless and until the clips become part of the final movie. If some dastardly crew member were to run off with a copy of the Battle of Morannon, 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. And what about a draft chapter of a novel? Is there no copyright in the draft chapter unless it gets included in the published book? Or if part of the draft gets included, is there no copyright in the rest of it?

Judge Kozinksi reinforced this argument by citing to his own opinion in Effects Associates, Inc. v. Cohen, about which we have previously written. In that case, the plaintiff special effects studio created footage of "alien yogurt" to be incorporated into the defendant's film, The Stuff. The parties got into an dispute over the bill, but the defendant used the footage anyway. The case was decided on the grounds of implied license, but was predicated on the assumption that the special effects studio held or retained copyright in the effects footage.  Thus, Judge Kozinski queried:

Why then are the seven shots "featuring great gobs of alien yogurt oozing out of a defunct factory" . . . any more a "standalone work" than Garcia's performance?

The answer to Judge Kozinski's interesting question is buried unceremoniously in a footnote in the majority opinion. The alien yogurt footage was a standalone work because it was independently created in full and independently fixed by what was not disputed to be a single authorial unit – the special effects studio. Only after that was it sent to the defendant and combined with other contributions to create The Stuff. Garcia's performance, by contrast, never existed as a standalone and independently fixed work before it was blended with the work of others. Even if one were to view the footage of Garcia's scene as a separate fixed work, Garcia was not the sole author of that work. Rather, her acting contribution was inextricably combined with the contributions of the rest of the cast and crew as it was fixed. Put another way, unless the alien yogurt itself was the one asserting copyright in the special effects footage, the cases are not analogous.

This may be the end of the line for Garcia's attempts to take down the video, but we've thought that several times before. Garcia still has the right to seek a rehearing (within 14 days) and/or to file a petition for a Writ of Certiorari with the Supreme Court of the United States.

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