Swiss cheese, Innocence and a question of guilt: Garcia v Google explained

For those who thought that the US Court of Appeals for the Ninth Circuit had embraced a new theory of copyright in Garcia v Google in February 2014 (here), such expectations were disappointed last month when the Court reversed its decision, denying Garcia's copyright interest in her acting performance within the highly controversial video Innocence of Muslims.

In brief, actress Cindy Lee Garcia, right, featured a five-second clip for a film entitled Desert Warrior. Her performance was subsequently used by the film's producer, a Mark Youssef (formerly known as Nakoula Basseley Nakoula), in Innocence of Muslims, a movie that was offensive to the Islamic prophet Muhammad. Youssef introduced the dubbed version of Garcia's performance into the video, thus making her a participant in his anti-Islam message. Then he uploaded the video on to YouTube, securing a volume of viewers' visits which ran at the rate of more than one billion per month. The video, translated into Arabic, spread throughout the Middle East where it generated violent protests. As a result Ms Garcia received several death threats.

Garcia tried to get the video removed from YouTube by sending a take-down request to Google alleging violation of her state law rights to privacy and to control her likeness. She also sent Google five take-down notices under Article 17 USC, the Digital Millennium Copyright Act, all in vain. Garcia then sued Google and Youssef before a Los Angeles State Court on the basis of a selection of torts that included invasion of privacy and violation of her right to publicity. After dropping that action, she sought a temporary restraining order and an order for a preliminary injunction against the same co-defendants before the District Court of the Central District of California on the basis of copyright infringement, which is where the copyright story begins. The court held that Google was not prohibited from hosting Innocence of Muslims, either because Garcia's copyright interest in the video was not established or because she was taken to have granted an implied licence of her contribution in the video to Youssef.

All in all, Garcia did not prove that the injunction would have prevented any harm, since she did not act promptly by commencing legal proceedings as soon as the video was online and did not establish that she had a copyright interest that was enforceable in the proceedings on the merits. On appeal the Federal Court granted Garcia an injunction, ordering Google to remove all copies of the video. The Court subsequently amended this injunction, instead allowing only versions of the video which did not include Garcia's performance to be distributed on YouTube.

On 18 May last, the Court of Appeals for the Ninth Circuit reheard the case and took a different view. The importance of this final decision in Garcia v Google can be explained in relation to three main points: 

* definition of what is copyright-protectable in audiovisual works, refusing to accept that the existence of an autonomous copyright interest in a single acting performance constituted authorship of the whole work;* the exercise of seeking to balance copyright with freedom to speech and * the consequences of copyright claims on the monitoring of uploaded materials by internet service providers (ISPs).

In holding that no preliminary injunction should have been granted, the Court applied the factors construed in Winter v NRDC, which would require the plaintiff to show (1) that she is likely to succeed on the merits, (2) that she is likely to suffer irreparable harm in the absence of a preliminary injunction, (3) that the balance of equities is in her favour and (4) that granting an injunction is in the public interest. On this basis, said the Court, neither the law nor the facts favoured Garcia's application for relief.

Why couldn't Garcia's copyright claim prevail? Said the Court, Innocence of Muslims was a motion picture, this being an “audiovisual work ... consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any”. However, citing the Copyright Office's expert witness, it affirmed that for the purposes of copyright protection a motion picture is a single integrated work and that the Office recognises no copyright claim by an actor or actress in his or her performance within a motion picture. This being so, Garcia's contribution in Innocence of Muslims could not be considered as joint authorship in the video. If it did, it would pave the way to a dispersion of copyright interests by recognising as many works as the number of contributors involved in them, making "Swiss cheese" of the copyright (at p.20). 

Equally, Hollywood relies on contract law to limit actors' copyright claims, and actors are deemed to have given implied licences to film-makers in the absence of a contract. The Court took the view that Garcia's performance was a work-made-for-hire and that she thus granted an implied licence to Youssef.

The Court emphasised that, from the perspective of third party content distributors, it would not be easy to access any implied licences, meaning that no previous knowledge of possible copyright infringement can be required of them, nor any obligation to monitor the content uploaded. Finally, the fact that Garcia did not fix her performance on a tangible medium of expression ran counter to recognising her as having made any authorial contribution to Innocence of Muslims.

Although the Court might have stopped there, it went on to rule on the irreparable harm requirement. The Court did not disregard the seriousness of the death threats to Garcia but, even conceding that she suffered emotional distress because of the danger to her life, such harm was not connected with her copyright claims. Copyright serves to reward an author's creativity and to boost new creation, not to protect privacy. 

Garcia might better have sought an injunction on the basis of breach of privacy or fraud, said the Court, to provide some relief from her alleged personal and reputation harm. However, in the US there is currently nothing like the EU right to be forgotten [France has recently asked Google to expand the right to be forgotten: see here], as articulated by the Court of Justice of the European Union in Case C-131/12 Google Spain v Agencia Española de Protección de Datos (AEPD) [noted by the IPKat here]. Likewise, the Digital Millennium Act, Article 17, excludes moral right protection in respect of audiovisual works. The Court of Appeals for the Ninth Circuit therefore concluded that no take-down order should have been ordered against Google, especially since that would entail a 'prior restraint of speech' which clashes with First Amendment rights. As the Court stated: "copyright is not categorically immune from challenges under the First Amendment"; the injunction had the effect of depriving the public of "the ability to view firsthand, and judge for themselves, a film at the center of an international uproar".

Judge Kozinski, dissenting, held that Garcia's acting performance was fully copyright-protected and that she acquired copyright at the moment when Youssef fixed her performance in Desert Warrior.  Of the majority decision, he considered that it sacrificed copyright interests for the sake of simplification of film-making productions and service providers' activities.

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