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May 18th, 2015
No Copyright in Five-Second Performance: Ninth Circuit Dissolves Prior Takedown Injunction
In a much anticipated opinion, the Ninth Circuit has dissolved a takedown injunction previously issued against Google and YouTube, prohibiting the companies from posting or displaying any version of the controversial film Innocence of Muslims that included Ms. Cindy Lee Garcia. The full appellate court held that Ms. Garcia did not hold a copyright in her five-second performance in the film.
In 2011, Ms. Garcia responded to a casting call for a small role in a film entitled Desert Warrior, an action-thriller set in ancient Arabia. Her part consisted of a few scripted sentences, acted out under the direction of a professional director. Later Ms. Garcia discovered that, without her knowledge or consent, her five-second performance was dubbed over and included in a crude, offensive film entitled Innocence of Muslims. When the trailer for the film was uploaded to YouTube, an international uproar ensued. After Ms. Garcia received death threats, she sent a DMCA takedown notice to Google, claiming that YouTube's broadcast of the film infringed her copyright in her "audio-visual dramatic performance." When Google declined to remove the film, Ms. Garcia brought a copyright infringement suit in California federal court, seeking a preliminary injunction requiring Google and YouTube to immediately take down the film.
The lower court denied her injunction for several reasons, including that Ms. Garcia had not shown a likelihood of success on the merits of her copyright claim. The Ninth Circuit reversed and granted Ms. Garcia a preliminary injunction. The Court initially required Google and YouTube to remove the film completely, but then modified its order to bar any version of the film that included Ms. Garcia's performance. The Court concluded that Ms. Garcia was sufficiently likely to prevail on her copyright claim and that she had not granted an implied license to incorporate her performance into the Innocence film. Hollywood, media companies and many intellectual property observers expressed concern. Google and YouTube asked the full Ninth Circuit for further review, claiming the decision threatened to upend and transform the way an entire industry functions.
No Copyright in This Five-Second Performance
In reversing the prior Ninth Circuit order, the full Circuit panel held that while a plaintiff like Ms. Garcia could have other claims against the filmmakers, she had no copyright in her five-second performance. The Court found that Innocence of Muslims was a motion picture and therefore an "audiovisual work" under the Copyright Act - a derivative of the film's script. The Court found that Ms. Garcia had not asserted a copyright claim for either the film as whole, or the script. Rather, she sought separate copyright protection for her performance. The Court first noted that the Copyright Office had denied Ms. Garcia protection in her performance. The Office said 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" and that if Ms. Garcia's contribution to the film was limited to her acting performance, the Office could not register it apart from the film itself - a "single integrated work."
In its own analysis, the Court noted that when a work is prepared by multiple individuals, with the intention that their contributions be merged into inseparable or interdependent parts, the resulting work becomes a single "joint work" with two or more authors. Here, Ms. Garcia had expressly disclaimed any joint authorship in the film as a whole, seeking protection solely in her individual performance as a separate work. The Court, however, found Ms. Garcia's theory of copyright untenable; it would splinter a film into many different works, making "Swiss cheese of copyrights." Moreover, the Court held that Ms. Garcia had not "fixed" her purported "work" as required by the Copyright Act. Rather, the Court found that any fixation was done by the director and his crew. For these reasons, and because Ms. Garcia had failed to show irreparable harm, an injunction was not warranted.
The Court also noted that the takedown order failed to adequately consider First Amendment implications. It found that the order concerned "a film of substantial interest to the public" and that the panel's decision had "deprived the public of the ability to view firsthand, and judge for themselves, a film at the center of an international uproar." Accordingly, the takedown injunction constituted a classic prior restraint of speech, "the most serious and least tolerable infringement of First Amendment rights."
While the behavior of the filmmakers in this case may have been abhorrent, the Court reiterated that there are times when copyright must yield to the First Amendment to protect against restraints on free speech.
In sum, many reading the Court's decision will breathe a sigh of relief. Filmmakers and other content creators and distributors can now feel more confident that the myriad individuals who participate in the creation of an audiovisual work cannot assert individualized copyright claims in their own contributions.
If you have any questions about the Garcia case or other copyright issues, please contact Edward H. Rosenthal at (212) 826 5524 or firstname.lastname@example.org, or any other member of the Frankfurt Kurnit Litigation Group.
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