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June 30, 2015 Practice Points

Ninth Circuit Reversal in the 'Innocence of Muslims' Saga

By overturning its original opinion in Garcia v. Google, Inc. the Ninth Circuit has cured most of the headaches it caused the legal community and copyright owners.

By Christina Rossi

By overturning its original opinion in Garcia v. Google, Inc. the Ninth Circuit has cured most of the headaches it caused the legal community and copyright owners. Cindy Lee Garcia sued Google (as YouTube's parent company) for refusing to take down a film she had appeared in. Her original discourse had been altered post-production to insult the Islamic faith. The film, Innocence of Muslims, infuriated many in the Muslim community and caused Garcia to receive death threats. In 2014, a Ninth Circuit panel overturned the district court's denial of a preliminary injunction seeking to have the video removed.  Complaints about the decision were swift and vocal, ranging from considerations of the utilitarian purpose of copyright law to First Amendment concerns. Although the anxiety caused by the Ninth Circuit's original opinion has been eased by its recent en banc decision, the problematic situation that drove Cindy Lee Garcia to request an injunction remains.

The biggest problem with Judge Kozinski's original opinion was the leverage it gave even the smallest contributor to a larger copyrighted work. Judge Kozinski's decision found that actors and actresses have a personal copyright interest in their performance, stemming from their creativity in bringing a role to life. That creativity included facial expressions, body language, and reactions to other actors and elements in a scene. The decision dodged the work-for-hire doctrine by finding that Garcia was not an employee and the film's producer was not in the "regular business" of filmmaking. Judge Kozinski also found that Garcia had given an implied license, but that the producer went beyond its limitations.

As Judge McKeown explained in the Ninth Circuit's en banc decision, this theory would allow any minor participant in a larger production to hold it hostage based on copyright claims to random bits and pieces. Even using licensure would create a nightmare for the distribution chain. Essentially, this theory would turn a "cast of thousands" into a "copyright of thousands" in many popular movies like Lord of the Rings. The en banc decision set things straight by saying that neither the Copyright Act nor the Copyright Office's interpretation supported Garcia's claims, so she likely could not succeed on the merits.

The en banc decision also quieted the fears of many who called Garcia a prior restraint on speech. The three judge panel required Google to take the video down, which prevented public access to the film. In the en banc opinion, Judge McKeown noted Garcia's claim was not "garden-variety" copyright infringement, but was a request to remove speech from the public sphere. She noted this type of prior restraint poses the "most serious and the least tolerable" restriction on First Amendment rights. Garcia's claim was not strong enough to overcome the deep commitment to protecting political speech, which was threatened by the Ninth Circuit's original opinion.

A DMCA takedown and copyright action was not the appropriate means of achieving Garcia's ultimate goal—the removal of the video. The original Ninth Circuit opinion was a classic example of the maxim "bad facts make bad law." However, plaintiffs seeking to have defamatory or potentially harmful materials removed from the internet still have a problem. Judge McKeown noted in her opinion that the court did not take Garcia's emotional turmoil lightly, but she recognized copyright law could not offer her any help. Without a proper remedy for plaintiffs like Garcia, the potential for creating bad law from these types of bad facts remains.

Keywords: intellectual property, litigation, first amendment, Kozinski, Google, Cindy Lee Garcia, copyright

Christina Rossi is with the Class of 2016 at the Washington and Lee University School of Law in Lexington, Virginia.

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Christina Rossi – June 30, 2015