Garcia v. Google, Inc.

• Decision Date: 26 February 2014
• Docket Number: No. 12–57302.,12–57302.
• Citation: 743 F.3d 1258
• Parties: Cindy Lee GARCIA, Plaintiff–Appellant, v. GOOGLE, INC., a Delaware Corporation; YouTube, LLC, a California limited liability company, Defendants–Appellees, and Nakoula Basseley Nakoula, an individual, aka Sam Bacile; Mark Basseley Youssef; Abanob Basseley Nakoula; Matthew Nekola; Ahmed Hamdy; Amal Nada; Daniel K. Caresman; Kritbag Difrat; Sobhi Bushra; Robert Bacily; Nicola Bacily; Thomas J. Tanas; Erwin Salameh; Yousseff M. Basseley; Malid Ahlawi, Defendants.
• Court: U.S. Court of Appeals — Ninth Circuit

743 F.3d 1258

Cindy Lee GARCIA, Plaintiff–Appellant,

v.GOOGLE, INC., a Delaware Corporation; YouTube, LLC, a California limited liability company, Defendants–Appellees,andNakoula Basseley Nakoula, an individual, aka Sam Bacile; Mark Basseley Youssef; Abanob Basseley Nakoula; Matthew Nekola; Ahmed Hamdy; Amal Nada; Daniel K. Caresman; Kritbag Difrat; Sobhi Bushra; Robert Bacily; Nicola Bacily; Thomas J. Tanas; Erwin Salameh; Yousseff M. Basseley; Malid Ahlawi, Defendants.

No. 12–57302.

United States Court of Appeals,Ninth Circuit.

Argued and Submitted June 26, 2013.

Filed Feb. 26, 2014.

M. Cris Armenta (argued), The Armenta Law Firm APC, Los Angeles, CA and Credence Sol, Chauvigny, France, for Plaintiff–Appellant.

Timothy L. Alger (argued) and Sunita Bali, Perkins Coie LLP, Palo Alto, CA, for Defendants–Appellees.

Appeal from the United States District Court for the Central District of California, Michael W. Fitzgerald, District Judge, Presiding. D.C. No. 2:12–cv–08315–MWF–VBK.

Before: ALEX KOZINSKI, Chief Judge, RONALD M. GOULD and N. RANDY SMITH, Circuit Judges.

OPINION

KOZINSKI, Chief Judge:

While answering a casting call for a low-budget amateur film doesn't often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa. But that's exactly what happened to Cindy Lee Garcia when she agreed to act in a film with the working title “Desert Warrior.”

The film's writer and producer, Mark Basseley Youssef—who also goes by the names Nakoula Basseley Nakoula and Sam Bacile—cast Garcia in a minor role. Garcia was given the four pages of the script in which her character appeared and paid approximately $500 for three and a half days of filming. “Desert Warrior” never materialized. Instead, Garcia's scene was used in an anti-Islamic film titled “Innocence of Muslims.” Garcia first saw “Innocence of Muslims” after it was uploaded to YouTube.com and she discovered that her brief performance had been partially dubbed over so that she appeared to be asking, “Is your Mohammed a child molester?”

These, of course, are fighting words to many faithful Muslims and, after the film aired on Egyptian television, there were protests that generated worldwide news coverage. An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the film, and Garcia soon began receiving death threats. She responded by taking a number of security precautions and asking that Google remove the video from YouTube.

In all, Garcia filed eight takedown notices under the Digital Millenium Copyright Act. See generally17 U.S.C. § 512. When Google resisted, she supplied substantive explanations as to why the film should be taken down. Google still refused to act, so Garcia applied for a temporary restraining order seeking removal of the film from YouTube, claiming that the posting of the video infringed her copyright in her performance.¹ The district court treated the application as a motion for a preliminary injunction, and denied it because Garcia had delayed in bringing the action, had failed to demonstrate “that the requested preliminary relief would prevent any alleged harm” and was unlikely to succeed on the merits because she'd granted Youssef an implied license to use her performance in the film.

I. Discussion

While we review the denial of a preliminary injunction for abuse of discretion, Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir.2011), the “legal premises underlying a preliminary injunction” are reviewed de novo. A & M Records, Inc. v. Napster, Inc., 284 F.3d 1091, 1096 (9th Cir.2002). In granting or denying a preliminary injunction, the district court must consider four factors: a plaintiff's likely success on the merits, the likelihood that irreparable harm will result if an injunction doesn't issue, the balance of equities and the public interest. Winter v. Natural Res. Def. Council, 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008). The district court found against Garcia on the first two factors and didn't consider the last two.²

A. Likelihood of Success on the Merits

Garcia doesn't claim a copyright interest in “Innocence of Muslims” itself; far from it. Instead, she claims that her performance within the film is independently copyrightable and that she retained an interest in that copyright. To succeed on this claim, Garcia must prove not only that she likely has an independent interest in her performance but that Youssef doesn't own any such interest as a work for hire and that he doesn't have an implied license to use her performance.

1. An Independent Copyright Interest

A film is typically conceived of as “a joint work consisting of a number of contributions by different ‘authors.’ ” 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 6.05 at 6–14 (1990). Garcia argues that she never intended her performance to be part of a joint work, and under our precedent she doesn't qualify as a joint author. See Aalmuhammed v. Lee, 202 F.3d 1227, 1231–36 (9th Cir.2000). But just because Garcia isn't a joint author of “Innocence of Muslims” doesn't mean she doesn't have a copyright interest in her own performance within the film.³

Whether an individual who makes an independently copyrightable contribution to a joint work can retain a copyright interest in that contribution is a rarely litigated question. See Thomson v. Larson, 147 F.3d 195, 206 (2d Cir.1998) (dismissing similar argument on procedural grounds); see also David Nimmer, Address, Copyright in the Dead Sea Scrolls: Authorship and Originality, 38 Hous. L.Rev. 1, 186–87 & n. 942 (2001). But nothing in the Copyright Act suggests that a copyright interest in a creative contribution to a work simply disappears because the contributor doesn't qualify as a joint author of the entire work. 17 U.S.C. § 102(a) (“Copyright protection subsists ... in original works of authorship fixed in any tangible medium....”). Where, as here, the artistic contribution is fixed, the key question remains whether it's sufficiently creative to be protectible.⁴

Google argues that Garcia didn't make a protectible contribution to the film because Youssef wrote the dialogue she spoke, managed all aspects of the production and later dubbed over a portion of her scene. But an actor does far more than speak words on a page; he must “live his part inwardly, and then ... give to his experience an external embodiment.” Constantin Stanislavski, An Actor Prepares 15, 219 (Elizabeth Reynolds Hapgood trans., 1936). That embodiment includes body language, facial expression and reactions to other actors and elements of a scene. Id. at 218–19. Otherwise, “every shmuck ... is an actor because everyone ... knows how to read.” Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987).

An actor's performance, when fixed, is copyrightable if it evinces “some minimal degree of creativity ... ‘no matter how crude, humble or obvious' it might be.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (quoting 1 Nimmer on Copyright § 1.08[C][1] ). That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all. Cf.17 U.S.C. § 102(a)(4) (noting “pantomimes and choreographic works” are eligible for copyright protection). It's clear that Garcia's performance meets these minimum requirements.

Aalmuhammed isn't to the contrary because it does not, as the dissent would have it, “articulate[ ] general principles of authorship.” Dissent at 1272. Aalmuhammed only discusses what is required for a contributor to a work to assert joint ownership over the entire work: “We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution.” 202 F.3d at 1232.Aalmuhammed plainly contemplates that an individual can make a “copyrightable contribution” and yet not become a joint author of the whole work. Id. For example, the author of a single poem does not necessarily become a co-author of the anthology in which the poem is published. It makes sense to impose heightened requirements on those who would leverage their individual contribution into ownership of a greater whole, but those requirements don't apply to the copyrightability of all creative works, for which only a “minimal creative spark [is] required by the Copyright Act and the Constitution.” Feist Publ'ns, 499 U.S. at 363, 111 S.Ct. 1282.⁵

Nor does Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), speak to the problem before us. First, of course, Midler isn't a copyright case at all—it's a right of publicity case that happens to discuss copyright in the context of preemption, not infringement. Second, Midler discusses the copyrightability of a performer's voice—not her performance. See849 F.2d at 462. A performer's voice is analogous to her image, which we've said “is not a work of authorship” under the Copyright Act. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1004 (9th Cir.2001). But that doesn't answer the question of whether the artist's creativity, expressed through her voice or image, is protected by copyright. Just because someone's voice—its particular timbre and quality—can't be copyrighted, doesn't mean that a performance made using that voice can never be protected. In fact, many vocal performances are copyrighted. See, e.g., Laws v. Sony Music Entm't, Inc., 448 F.3d 1134, 1141 (9th Cir.2006).

Recognizing that Garcia may have a copyright interest in her performance isn't the end of the inquiry. A screenplay is itself a copyrightable creative work and a film is a derivative work of the screenplay on which it is based. See Gilliam v. Am. Broad. Cos., 538 F.2d 14, 20 (2d Cir.1976); see also17 U.S.C. § 101; 2 Nimmer on Copyright § 2.10[A] n. 8. Where, as here, an actor's performance is based on a script, the performance is likewise derivative of the script, such...