from the copyright-on-trial dept
Garcia v. Google. If it weren’t for the Monkey Selfie, this case would have been the topic most on the lips copyright and Internet lawyers this year. The facts here, of course, are much less humorous: Garcia, an actress, was allegedly duped by a filmmaker into appearing in his eventually-titled “Innocence of Muslims” movie, which eventually turned out to be an anti-Muslim cinematic screed. A lot of people were offended, and some channeled their outrage into threats against her. Garcia sued the filmmaker for the harm she believes he caused her, but that’s not the issue here.
What is the issue is why this case has turned into such a mess, because what she really wants is for the movie to go away. So she also sued Google to make it go away ? or at least have the court order Google to remove it from YouTube. The thing is, though, courts aren’t supposed to be able to simply order content to be deleted, and for some very good reasons. We have laws (notably Section 230) that insulate intermediaries from take down orders because ordering content to be taken offline means ordering content to be censored.
However, as those who have read Techdirt for any length of time know, American law seems to have a “censorship is bad except when it comes to copyrighted content” exception. Intermediaries are not insulated from demands to take down content when the person asking for its removal can claim that the reason it needs to be removed is because it violates their copyright.
But even then there are some limits on the injunctive power of a court to order content to be removed, particularly at the preliminary injunction stage, which, believe it or not given everything that’s followed, is only as far as her case had gotten. Generally speaking, preliminary injunctions are only issued when there is a likelihood that the party seeking the injunction will ultimately win the case, as well as a likelihood of irreparable harm to it if the court does not issue an injunction right away, before there has been a chance to evaluate the lawsuit on its merits. The district court considering Garcia’s request for a preliminary injunction rejected it on both counts. It didn’t appear Garcia had a valid copyright to sue Google for infringing, and even if she might have, there was no need to issue an injunction before the court had a chance to fully consider the question.
And that would have been the end of it, except the Ninth Circuit, in a three-judge panel led by Judge Kozinski, decided otherwise, first finding her a copyright interest and then using it as the basis to issue a broad injunction to Google ordering the film’s removal from YouTube (the injunction was later dialed back somewhat, but it still remained quite expansive). Which is what caused all this consternation, because if Judge Kozinski were right about her having a legitimate copyright claim, it would stand to change copyright law from how we understood Congress to have crafted it, as well as set the stage for even more efforts to censor online content.
So Google, backed by 10 amicus briefs (including one I wrote on behalf of Techdirt and the Organization for Transformative Works) petitioned the Ninth Circuit for a “rehearing en banc,” which basically asks the entire circuit to rethink this decision, given how much it would wreck if it remained valid precedent. And it worked! The Circuit agreed to reconsider the case and held a hearing on it yesterday in Pasadena.
It was not actually necessary to be at the hearing to follow along given that it was also streamed (and tweeted…). As it was, one judge out of the 11-judge panel, Judge Berzon, participated remotely. But there are always certain intangibles that can only be experienced in person, like seeing what appeared to be some representative of the defendant filmmaker distribute nicely xeroxed packets of propaganda advertising the book of the script for his “Innocence of Muslims” film to everyone in the gallery before the hearing began?
As for the hearing itself, it took about an hour and essentially ended up focusing on these two questions: whether Garcia could have a copyright interest in the 5 seconds she appeared in the final film, and whether the preliminary injunction was appropriate. But the unusual procedural posture of the case caused the two questions to frequently blur together.
Garcia’s lawyer argued first and opened with, “Cindy Lee Garcia is an ordinary women surviving under extraordinary circumstances.” She then went on to spell out some of the awful threats she had gotten, but then the judges quickly jumped in to ask how those threats bear on the preliminary injunction standard. (Note: I frequently refer to the “court” generally, rather than identify the judges specifically, although I did note some of Judge Kozinski’s lines of inquiry due to his particular effect on this case earlier.) Garcia argued that because some of these threats were death threats, that supported the argument that without the injunction she was facing irreparable harm. That may be so, the court then asked, but the possibility of irreparable harm was only one factor considered by the district court. To get her injunction there had to be a threat of irreparable harm as well as a likelihood that she would win on her copyright claim against Google. How was the district court wrong when it decided she had no copyright claim to prevail on?
One issue for Garcia (which the court kept coming back to in various respects) is that she had expressly disclaimed having a copyright in the final movie as a joint author. It’s an argument that comes up from time to time when people who worked on larger productions try to claim partial ownership in the final product on the strength of their contributions to it. As courts, including the Ninth Circuit, have considered the question they generally have looked to the intention of the parties at the outset that all the “contributions be merged into inseparable or interdependent parts of a unitary whole.” But Garcia wasn’t arguing that she now owned a piece of the final “Innocence of Muslims” film; she was arguing that she owned a copyright in her performance made during the 3.5 days of filming.
The court worried about the implications of her argument. What was to keep everyone who made a cameo in a Lord of the Rings battle scene from also claiming a copyright interest in their performance? Garcia’s answer seemed to get at the heart of her copyright claim. In the court’s example everyone knew what the deal was when they worked on the movie. They had agreed, expressly or impliedly, that their performances be captured as part of the whole. But for Garcia, she never consented to ending up in what turned out to be the “Innocence of Muslims” film. The filmmaker had duped her into agreeing to appear in one sort of movie but then used her performance in something completely different. This deception unwound the agreement to subordinate her performance into the whole and allowed her to retain her copyright in the individual contribution.
The court seemed skeptical about this theory, for a number of reasons. For one, where was the work? While on the one hand it often seems like everything is copyrightable these days, its applicability is extremely technical. It requires an (a) original (b) work of (c) authorship that is (d) fixed in a tangible medium. As Google also later argued, she hadn’t made out all of these elements in attesting to the copyrightability of her individual performance made over those 3.5 days. (There is also the issue that of her 3.5-days’ worth of performance, only 5 seconds of it ever made it into the film.)
The court also worried about what the impact of her theory would be. If her retaining a copyright in her performance hinged on the deception, then what was to stop any actor from claiming fraud or mistake and allowing them to claim copyright in their performances as well? This question was particularly relevant for Google’s position, which was argued next. Could all these people then issue takedown notices to intermediaries? As Judge McKeown noted, it would put intermediaries “at risk for thousands, millions of claims made after the fact.” Would all of them have to act to remove this content lest they end up like Google and find themselves on the receiving end of a lawsuit?
In her rebuttal Garcia argued yes. The DMCA (or “free pass card,” as she referred to it) protected intermediaries by getting them out of the dispute between the party who posted content, and the party claiming copyright in it. As long as it deleted the content as soon as it got notice, it could then let the parties fight it out. Google says taking down content is easy, she argued. We’re not asking them to do something hard.
As Google argued during its turn, however, the implications of Garcia’s argument are chilling (particularly, as we argued in our brief, for intermediaries who are not as large or well-funded as Google and for whom taking down content may well be much harder than she described for Google). If all it takes is a claim of fraud to claim a copyright interest, Google argued, it “fragments” copyright and makes every intermediary vulnerable. They can’t adjudge the merits of every copyright claim. Allowing these sorts of claims, especially if they could be predicated on but five seconds of material, would “overload the takedown system.” Intermediaries would simply have to delete content in order to protect themselves, and that would lead to the censorship of myriad protectable speech.
Google made one other main point during its argument, targeting the preliminary injunction the Ninth Circuit had issued and similarly to how the EFF had questioned it in its amicus brief. The appeals court had enjoined speech, and as such there was a question of whether that was permissible under other standards governing injunctions. Garcia argued that it was, saying that there was a difference in the standard governing whether it was a mandatory injunction, which asks someone to do something, and a prohibitory injunction, which restricts someone from doing something in the future. This was a prohibitory injunction, she argued, because all the panel had decided to do is restrict further infringement. Google argued otherwise.
When it changes the status quo, it’s a mandatory injunction. Here there was speech, but as a result of the injunction speech was removed. That makes it look like a mandatory injunction and thus requires a much stronger showing than Garcia could provide that it was warranted. After all, as Judge Thomas noted, “Is there anyone in the world who doesn’t know your client is associated with this movie by now?” The damage has already been done, the “toothpaste out of the tube,” as Google put it, and nothing to be accomplished by censoring the movie now.
The court also tested Google on its argument against Garcia having a copyright, and this discussion led to the examples cited in the title, the first of which being poor Celine Dion who kept being called upon to test various theories. Why does she get a copyright in her singing performance included in Titanic, Judge Kozinski wondered, but not Laurence Olivier for his performance in a film? To which Google answered that when Celine Dion recorded her song the intention was always that the performance be a standalone work then also included in the larger one, whereas for Olivier there was never an intention that his performance ever be considered some individually copyrightable work.
In her rebuttal Garcia took issue with the Celine Dion example. If she had been singing on the bow of the ship, intending for her appearance doing that to become part of the movie, it would have been one thing. But it’s another if then the filmmakers, having captured her performance, then distribute the clip of it to pornographers to be put in their movies. Garcia’s argument is that something similar had happened here, where a performance made in one context she had allowed got used in another that she hadn’t. The question, though, is not whether the law would recognize this injury but whether copyright is the law that does. There are other laws that recognize rights that might be implicated, such as those establishing rights of publicity.
Interestingly a right of publicity case led to another detour by Judge Kozinski to test the contours of Google’s argument, and that raised the second example in the headline. Google had argued that there was no precedent “that a 5 second performance is a separate copyright work.” Judge Kozinski countered by citing Zacchini v. Scripps-Howard Broadcasting, where 15 seconds of Zacchini’s performance had been broadcast on local TV. Because Zacchini was a human cannonball, however, those 15 seconds constituted a significant part of his performance. The Supreme Court found that the rebroadcast may well have caused him an injury the law recognized. But while the Zacchini case stands for the proposition that there can be something to protect in very short performances, it doesn’t stand for the proposition that they are necessarily protected by copyright.
This is an important distinction, because violations of rights of publicity are governed by state law, and intermediaries are insulated from injunctions ordering the removal of content reflecting these injuries by Section 230. The Garcia v. Google case has been about forcing these sorts of injuries to be evaluated through the lens of copyright solely to avoid the bar prohibiting these injunctions, and if this sort of Section 230 end-run is allowed to work here, as Google (and many amici) argued, it will enable all sorts of censorious mischief.
(Note: Judge Kozinski also spent some time exploring the impact of the Beijing AVP treaty on the case at hand, but I will leave it to others to explore the potential implications of this argument, as they are worthy of their own post).