Monday, May 18, 2015 saw the Ninth Circuit Court of Appeals reversing itself in the closely watched case of Garcia v. Google.[ref]2015 WL 2343586 United States Court of Appeals, Ninth Circuit. All page references will be to the original opinion of the Court.[/ref] The earlier decision caused a lot of consternation around the copyright world, especially in Hollywood. The previous three judge panel ruled, for the first time, that an actor had a copyright in her individual performance in a motion picture.[ref]Garcia v. Google 743 F.3d 1258 amended by Garcia v. Google 766 F.3d 929, Ninth Circuit Court of Appeals 2014[/ref] So alarming was this ruling that the Ninth Circuit granted a motion from one of its own Judges[ref]Ninth Circuit Judge Asks for Panel Vote on Denial of Google's Request for Stay in "Innocence of Muslims" Copyright Case[/ref] to rehear the case en banc, i.e. before all the Judges of the Ninth Circuit.[ref]Garcia v. Google, 771 F.3d 647 Ninth Circuit Court of Appeals 2014[/ref] The en banc proceeding attracted no less than 13 "friend of the court" briefs[ref]2015 WL 2343586 at page 13[/ref] from companies like Netflix, Facebook, Gawker, Pinterest, and Twitter, media outlets like the Washington Post and New York Times, and labor unions like the Screen Actors Guild and the American Federation of Musicians.[ref]Id. at 4-6[/ref] The facts are simple enough and not in dispute: "In July 2011, Cindy Lee Garcia responded to a casting call for a film titled Desert Warrior, an action-adventure thriller set in ancient Arabia. Garcia was cast in a cameo role, for which she earned $500. She received and reviewed a few pages of script. Acting under a professional director hired to oversee production, Garcia spoke two sentences: "Is George crazy? Our daughter is but a child?" Her role was to deliver those lines and to "seem concerned." Garcia later discovered that writer-director Mark Basseley Youssef …had a different film in mind: an anti-Islam polemic renamed Innocence of Muslims. The film, featuring a crude production, depicts the Prophet Mohammed as, among other things, a murderer, pedophile, and homosexual. Film producers dubbed over Garcia's lines and replaced them with a voice asking, "Is your Mohammed a child molester?" Garcia appears on screen for only five seconds. …Youssef uploaded a 13 minute and 51 second trailer of Innocence of Muslims to YouTube, the video-sharing website owned by Google, Inc ... [T]he film fomented outrage across the Middle East, and media reports linked it to numerous violent protests… [A]n Egyptian cleric issued a fatwa against anyone associated with Innocence of Muslims, calling upon the "Muslim Youth in America and Europe" to "kill the director, the producer[,] and the actors and everyone who helped and promoted this film." Garcia received multiple death threats. …Legal wrangling ensued. Garcia asked Google to remove the film, asserting it was hate speech and violated her state law rights to privacy and to control her likeness. Garcia also sent Google five takedown notices under the Digital Millennium Copyright Act, 17 U.S.C. § 512, claiming that YouTube's broadcast of Innocence of Muslims infringed her copyright in her "audio-visual dramatic performance." Google declined to remove the film."[ref]Id. at 9-10[/ref] Garcia sued in federal Court on a variety of theories including fraud, libel and intentional infliction of emotional distress, but moved for a temporary restraining order against Google only on her copyright claim.[ref]Id. at 11[/ref] This would later prove to be significant. The District Court denied her request, "[i]n particular, the district court found that the nature of Garcia's copyright interest was unclear, and even if she could establish such a copyright, she granted the film directors an implied license to "distribute her performance as a contribution incorporated into the indivisible whole of the Film."[ref]Id.[/ref] A three Judge panel (in a 2-1 split) ruled that Garcia did have a copyright in her performance as an actor,[ref]Garcia v. Google 743 F.3d 1258 amended by Garcia v. Google 766 F.3d 929, Ninth Circuit Court of Appeals 2014[/ref] something that had never been ruled to be the case by any Court previously. The outcry over the ruling was immediate and widespread. According to Fortune magazine "[n]ews of the ruling led to a massive pushback by Google and civil liberties groups, who argued that the ruling was a dangerous prior restraint on free speech. Meanwhile, Hollywood also expressed alarm over the ruling since it was based on a principle that individual actors have a separate copyright in their performance—raising the possibility that almost anyone involved in a movie could claim ownership of the whole thing."[ref]In win for Google, court lifts ban on 'Innocence of Muslims' video[/ref] The U.S. Copyright Office refused to follow the Court's ruling. They rejected Garcia's copyright application stating that its "'longstanding practices do not allow a copyright claim by an individual actor or actress in his or her performance contained within a motion picture.' Thus, ‘[f]or copyright registration purposes, a motion picture is a single integrated work.... Assuming Ms. Garcia's contribution was limited to her acting performance, we cannot register her performance apart from the motion picture.'"[ref]2015 WL 2343586 at page 17[/ref] In reversing the decision of the previous panel, the en banc panel ruled as follows:
  • The reasoning of the Copyright Office was persuasive.[ref]Id. at 18[/ref]
  • Garcia expressly disclaimed that she was a "joint author" of Innocence of Muslims.[ref]Id. at 19[/ref]
  • Garcia was not an "author" as her performance was not fixed "by or under" her authority.[ref]Id. at 22[/ref]
  • The ruling of the District Court that she had given an "implied license to use her performance" was not clearly erroneous.[ref]Id. at 21 and at footnote 12[/ref]
  • Treating every acting performance as an independent work would create thousands of copyrights where there should only be one, resulting in a "logistical and financial nightmare."[ref]Id. at 20[/ref]
  • While the death threats certainly amounted to "irreparable harm" to Garcia, the harm was not caused by the violation of her rights in a copyright, which was the sole legal reason given for her initial motion for temporary restraining order.[ref]Id. at 24[/ref]
Needless to say, Judge Alex Kozinski, the author of the original opinion, disagrees. "Without Garcia's performance, all that existed was a script. To convert the script into a video, there needed to be both an actor physically performing it and filmmakers recording the performance. Both kinds of activities can result in copyrightable expression. (citation omitted) Garcia's performance had at least "some minimal degree of creativity" apart from the script and Youssef's direction. (citation omitted) One's "[p]ersonality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something which is one man's alone." (citation omitted) To dispute this is to claim that Gone With the Wind would be the same movie if Rhett Butler were played by Peter Lorre."[ref]Id. at 37[/ref] All of this sounds good, except when you apply it to the actual facts of the case. Garcia's performance lasted all of five seconds. Her two lines of dialogue we removed and replaced by another actress dubbing in new dialogue. So her "performance" that Judge Kozinski wishes to grant her a copyright in, consists of facial expressions and body movement. I fail to see how these aspects, standing alone, create an original work of authorship. The act of walking not only fails to rise to the level of authorship but is hardly original. Are facial expressions, part instinct, partly a learned trait, really original enough to give copyright protection to it? Certainly body movements can be the subject of copyright, if they constitute a "dance." What Garcia did was in no way a dance. Similarly, actors can bring a great deal to a role, but the main job of the actor is to convincingly portray what is already present in the script. The words to be spoken have already been decided upon. The emotions to be portrayed are either in the script (explicitly or implicitly), or supplied by the director. If the actor does not convincingly portray what the director is looking for, the scene is done over. This is what the majority is saying when it rules that the five seconds of Garcia's performance was not done "by or under the authority" of Garcia as an author. Garcia had no input nor any ability to make decisions over what the final components of the film would be. Judge Kozinski counters by asking: "Did Jimi Hendrix acquire no copyright in the recordings of his concerts because he didn't run the recorder in addition to playing the guitar? Garcia may not be as talented as Hendrix—who is?—but she's no less entitled to the protections of the Copyright Act."[ref]Id. at 38[/ref] This argument leaps over several steps. Consider that the songs that Hendrix might perform in concert all have existing copyrights. Making a sound recording of them is a derivative work which requires permission.[ref]17 USC 101 see definition of "derivative work"[/ref] If the recordings were made without his consent, the recordings would be illegal bootlegs. Hendrix would not need to turn on the tape machine himself, but certainly his permission would be required. Here, the script has a copyright and the film is a derivative work made from it. Garcia had no pre-existing copyright to bring to the project. Her sole contribution was to recite lines already written for her and display emotions that were already given to her. In order to claim a copyright interest, she would have to bring some kind of original expression beyond that which has already been provided to her. I do not see that this has occurred. I would agree that if an actor brought significant new expression to a scene, there might be a copyright claim. This would be the case where the bare outlines of a scene are given to the actors, and the resulting scenes are improvised. (It is rumored that many of the scenes in the first Iron Man motion picture were improvised.) Again, this is not what happened with the Innocence of Muslims. Even in the situation where there is whole scale improvisation, the actor cannot escape the issue of implied license. Garcia showed up to the set, recited her lines, and collected $500. (The issue of work for hire was moot as some writing was executed but no one could locate it.[ref]2015 WL 2343586 at page 16, footnote 5[/ref]) There is with these actions a general implied license to use the fruits of her labors in the finished film. Garcia is not without any remedy. She has causes of action for breach of contract and fraud. But these do not grant her what she really wants, which is for the Innocence of Muslims film to be removed from YouTube. "It's her life that's at stake," growls Judge Kozinski.[ref]Id. at 42 emphasis in original[/ref] Yes, here is where the old adage of "hard cases make bad law" returns to center stage (sorry). This is the same Judge Kozinski who warned against the pernicious over-expansion of intellectual property rights. "Overprotecting intellectual property is as harmful as underprotecting it… The panel's opinion is a classic case of overprotection. Concerned about what it sees as a wrong done to [the Plaintiff], the panel majority erects a property right of remarkable and dangerous breadth."[ref]White v. Samsung Electonics 989 F.2d 1512 (dissenting opinion)[/ref] Sort of like saying there was a separate distinguishable copyright in a performance that lasts five seconds, with all the dialogue replaced by another actress.