Garcia v Google Inc.: Copyright Ownership, ISP Liability and the Future of Freedom of Expression

In a stunning decision recently released by the United States Court of Appeals for the Ninth Circuit, Google was ordered to remove the now-infamous film, “Innocence of Muslims”, from YouTube. While the ruling challenges traditional understandings of copyright ownership and protected expression under US copyright law, the Court’s unprecedented opinion also has significant implications for Internet Service Providers (ISPs) and Online Service Providers (OSPs) responding to takedown requests, as well as the future of online free speech.

“Innocence of Muslims”

In 2012, producer Mark Basseley Youssef cast Cindy Lee Garcia, a struggling actress, in a minor role in the film “Dessert Warrior”, a production that would never come to fruition. Garcia’s performance would instead appear in a 13-minute controversial film released on YouTube entitled “Innocence of Muslims”.  The film portrayed the prophet Mohammed as a murderer and sexual deviant. Five seconds of Garcia’s previous work on Dessert Warrior were used in the film, and the clip was partially dubbed over so that she appeared to ask, “Is your Mohammed a child molester?”

It was only when the Muslim backlash began that Garcia realized what had happened.

The inflammatory film immediately sparked political controversy for its anti-Islamic content, causing outrage throughout the Muslim community. Garcia began to receive threats to her life, and petitioned Google to remove the content from YouTube. After Google refused her repeated requests, on the basis that she was not the copyright owner of the film, Garcia initiated legal action to obtain an injunction, requiring Google to take down the video on copyright infringement grounds. 

Decision by the United States Court of Appeals for the Ninth Circuit – Reconceiving Notions of Copyright Ownership

In a 2-1 decision, Chief Judge Alex Kozinski proposed that an actor’s performance in a film is copyrightable, when fixed, if it evinces some minimal degree of creativity. This statement appears inconsistent with Aalmuhammed v. Lee, a longstanding authority on what it means to be an author. In that case, the court held that a creative contribution does not suffice to establish authorship of a movie. However, Kozinski argued that Garcia’s situation could be distinguished from Aalmuhammed, as Garcia was not asserting ownership over the whole work: “[n]othing 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 to the entire work.”

Despite the fact that Garcia conceded she had no creative control over the script or her performance, the majority held that Garcia likely has a copyright interest in her personal contribution, being “the portion of the film that represents her individual creativity.” Finding for Garcia, the Court ordered Google to remove all copies of “Innocence of “Muslims” from YouTube and every other platform within Google’s control. In addition, the order requires that Google take all reasonable steps to prevent further uploads of the film.

Most contributions to a motion picture are created as works made for hire (the US equivalent of works made in the course of employment under Canadian copyright law), which prevents the actor from claiming copyright in his or her performance. Alternatively, the filmmaker’s use of the actor’s performance will usually be permitted due to an explicit or implied license.  As such, it may be a rare occasion where actors can claim copyright in their individual performance in a film.

Nevertheless, the different interpretations of the divided Court illustrates the uncertainty over the application of the law in this area.  The majority found that Garcia had a copyright interest in her contribution, although the dissenting judge noted that Garcia was “an actress acting out a script that she did not write under the direction of someone else who provides all of the instruments, tools and leadership.” Characterized in this manner, it is difficult to see how Garcia’s performance jives with traditional conceptions of authorship and copyright-protected expression under both US and Canadian law.

The decision implies that anyone who contributes creative expression to a movie or other form of copyrighted work may have an independent copyright interest, which they can use as a sword against the work’s distribution and performance.

What’s the Big Deal?

To avoid liability and benefit from the safe harbor provisions in the US Digital Millennium Copyright Act (DMCA), ISPs and OSPs (service providers) must abide by the legislation’s “notice and takedown” (NTD) rules under § 512.  Under the DMCA, service providers are required to prevent infringement by expeditiously taking down allegedly infringing subject matter when they receive an allegation of infringement from a copyright owner.[1]

While the Ninth Circuit’s take-down-and-stay order originally required Google to remove the film in its entirety, in response to Google’s objections, the Court later restricted the order to versions of the film that include Garcia’s performance. However, the tailoring of the order does not alter the fact that the Court’s novel approach to copyright ownership increases the burden on service providers in responding to allegations of copyright infringement under the DMCA.

The NTD system has already been heavily criticized for introducing a pre-judicial determination of copyright infringement on the part of service providers, who have no expertise in copyright law.[2] As a result, service providers will often remove content based on tenuous or unsubstantiated copyright infringement claims in an effort to immunize themselves from liability.

By expanding the scope of authorship to contributors who wouldn’t previously have been considered copyright owners, the Garcia decision forces online content platforms to ascertain which of the actors in a particular video have a legitimate copyright claim. As Andrew McDiarmid of the US Center for Democracy and Technology comments: “DMCA takedown notices from frustrated bit players, which last week would have been easily ignored as not coming from the copyright holder for the work, might now be honored for fear of litigation.”

Suppose an individual alleges infringement of their contribution to a copyrighted work and notifies the service provider, as Garcia did.  Due to last week’s decision and the liability structure of the DMCA, rather than dispute the claim, that service provider is much more likely to remove the entire work without bothering to determine the legitimacy of the person’s copyright interest or going through the hassle of removing only those segments pertaining to the claimant’s particular contribution. It seems reasonably inevitable that the Garcia decision, combined with the NTD regime, will prove to be a significant barrier to freedom of expression.

Such damaging repercussions may have been avoided under a notice-and-notice system of service provider liability, such as the one implemented by the Canadian Copyright Modernization Act. Under our Canadian scheme, service providers are not liable for infringement as long as they forward the notice from the copyright owner to its allegedly infringing end user. There is no requirement that the service provider remove the disputed content. Under such a system, the consequences of the Garcia decision for service providers would be limited to the administrative hassle of forwarding significantly more alleged infringement notices from a greater pool of potential copyright owners. This is particularly noteworthy given that it may be easier for someone in Ms. Garcia’s shoes to claim copyright infringement in Canada in light of performers’ neighbouring rights and newly enacted moral rights, which contemplate the copyright interest of performers in certain circumstances.

Although a US decision, the Court’s ruling in this case may have a chilling effect for internet users and content creators worldwide, as the future of online expression and democratic dialogue is dangerously threatened under the notice-and-takedown provisions of the DMCA.

Harriette Codrington is a JD candidate at Osgoode Hall Law School and is enrolled in Professor Carys Craig’s “Copyright in the Digital Age” class. As part of the course requirements, students were given the option of writing a legal blog on a topic of their choice.

 


[1] Gregory Hagen, “‘Modernizing’ ISP Liability” in Michael Geist, ed, In the Public Interest:  Canadian Copyright Reform (Irwin Law: 2005) at 361.

[2] Sheryl N. Hamilton, “Made in Canada:  A Unique Solution to Internet Service Provider Liability and Copyright Issues” in Michael Geist, ed, In the Public Interest:  Canadian Copyright Reform (Irwin Law: 2005) at 300.

5 Comments
  1. Great post, Harriette! I really liked how you linked your analysis of this rather strange decision with a strongly cogent and persuasive argument for why Canada’s NN system is better than the United States’ NTD approach. I also agree with Hamilton in the above-quoted article when she states (at pg. 304) that “the Canadian music industry, the ISPs, and now the legislators have developed a unique approach to ISP liability that avoids many of the shortcomings of NTD while preserving its strengths”.

    As far as the decision, it appears that this is a good example of the well-known legal maxim that “hard cases make bad law”. Central to this decision is the issue of the movie producer’s fraud causing harm to Garcia she could not have foreseen, in that he lied to the actress to secure her participation and she performed in reliance on that misrepresentation. Yet, the producer is not in court defending his fraudulent actions which led to Garcia getting death threats, and instead Google is forced to shoulder this burden to some extent in order to protect its interest in avoiding liability for third-party content. Not only does this appear to be a poor way to create legal precedent for the entertainment and internet industries, but the judicially activist approach of reconceiving notions of authorship to find a remedy for this sympathetic victim will almost surely generate problems down the line.

    The majority’s activism is not only demonstrated by their dubious distinction from Aalmuhammed based on a single line of quotation taken out of context (as the very next line from that case makes clear that copyright protection is premised on authorship), but also the fact that they found an ‘independent’ copyright interest for Garcia rather than some kind of joint authorship. Beyond the simple fact that Garcia was not claiming co-authorship, a finding of joint authorship – as noted in the majority’s seventh footnote – would not allow the actress to prevent other co-authors from exploiting the film; hence, the custom remedy for this “rare case”.

    Sometimes, activism can lead to brilliant new legal theories that allow judicial interpretation of the law to keep pace with changing times; however, I highly doubt that this will hold true here.

  2. I agree with Harjot that this case is very illustrative of the idea that bad facts make bad law, and I also agree that the Canadian NN approach is a unique approach that is cured of some of the obvious shortfalls of the NTD approach in the United States. But aside from the fact that the Ninth Circuit had to play fast and loose with the idea of authorship in order to allow for the take down of the material, the NTD rule in the United States is what gave Ms. Garcia redress in this situation. An NN regime would have not given her the same ability to remove the content. I realize that the general chilling effects that an NTD system has on freedom of speech and expression are much greater and much broader than the coincidentally positive effect it had on Ms. Garcia’s ability to remedy her situation, but it is still interesting to point out a positive consequence of the NTD system.

    However, an NN system may have prevented the disruption of the concept of authorship as a redefinition of the concept to Ms. Garcia’s benefit would not have resulted in the taking down of the material. This could have had the effect of discouraging the court from redefining an established concept of copyright law as the remedy they were seeking to order by this redefinition would not have been available. In this light, not only would an NN system broadly prevent copyright law from abridging speech and expression, but in this specific situation it may also have been able to protect the concept of authorship from being expanded.

    I do believe, though, that this case will not have strong precedential value because it seems rather clear that there were extenuating circumstances that encouraged the court to rule this way.

  3. A very interesting post. There are many discussion points arising from this case: joint authorship, compilations, implied licenses, performances, and intermediary liability and notice systems.

    While it does seem to create an odd precedent, I do agree with majority decision even though they may have pushed some of the limits of copyright law. I wonder how much their decision was influenced by the inflammatory subject matter of the video and the resulting outrage. Though like every case, it always comes down to the particular facts.

    I initially found it troubling the work the work “Innocence of Muslims” was effectively split from a copyrightable work into a compilation of copyrightable performances. However, because in this particular case there was a second film made from the first, I am inclined to agree with the majority. Its reasons would likely have been more palatable in Canada because we recognize copyright for a performance. It seems they do not in the US however, which was part of the reasons of the dissent.

    Justice Kozinski was able to grant Garcia a copyright interest without declaring her a joint author for either film. He found minimally creative copyrightable elements in hey body language and her facial expression – basically in her performance. It was interesting that he noted vocal performances are copyrightable considering she was dubbed over.

    We know that one work can contain multiple layers of copyright. Someone could make a video that contains a performance, which contains a literary expression and so on. It is not too much of a stretch then to consider a movie to be compilation of performances with each actor giving an implied license to use their performance?

    If we think about Garcia’s performance in “Desert Warrior” as an implied license, it is obvious she never consented to having anything she did appear in “Innocence of Muslims”. Her copyrightable interest only crystalized because it appeared in a second film. Surely James Cameron would not be able to splice a few seconds of Leonardo DiCaprio from Titanic into the movie Avatar. The fact that there were two films sufficiently distinguishes this case from Aalmuhammed v. Lee.

    I do not think this ruling gives actors and other contributors too much power over the producer. Justice Kozinski did point out that Garcia would not be able to use her interest to complain about the film’s title, editing, or quality. Though it is a live issue exactly how much editing is required before the implied license fails. I would argue it should be what could be reasonably foreseeable to the actor at the time the film was made.

    So what should the remedy be? In her piece Sheryl Hamilton points out that by bypassing the courts, the notice and takedown system elevates copyright interests over hate propaganda and child pornography offences.

    It seems obvious that the producer did something wrong by using footage of Garcia in such an inflammatory movie without their consent. Considering the death threats, one can be sympathetic to Garcia’s motivations. Even still, perhaps Copyright is not the best area of law to deal with situations like this, but thanks to the DMCA it did have the remedy she sought, even though it was ineffective at first.

    Google obviously did not worry about the ramifications considering it ignored eight takedown notices. While I agree that a notice and takedown order should come from a judicial decision, in this case it did. Though the point is well made that this ruling will only incentivise ISPs to err on the side of caution to avoid liability from questionable copyright infringement claims. This is a good example of why the notice and notice system is better with regard to ISP liability. Intermediaries should remain on the sidelines and let the court settle the dispute. If three judges can’t agree on what exactly is a copyright infringement, how is an ISP to know?

  4. Hello everyone, I just wanted to respond to some of the comments posted here.

    Firstly, I agree with Thanasi that this specific situation shows that the different remedies available in the NN system may have prevented the disruption of the concept of authorship. However, despite whether or not this case will have strong precedential value, I still think it has the potential to cause problems down the line. This is because concerns about “opening the floodgates” are almost always a potential problem associated with judicial activism introducing more litigious issues and possible claims into certain areas of law. In this sense – as John also acknowledged – I agree that this decision pushes the limits of copyright law, and is perhaps not the best area of law to deal with such situations. However, to take the argument further, I refer you to some useful comments I found on a Lexology blog:

    “The panel gave the unfortunate Garcia the injunctive relief she sought. So is the decision all that bad? As a matter of copyright law, yes – if you, your company, or your clients create, distribute, or host copyrighted content. That is because the panel’s pronouncement applies any time more than one person contributed to the creation of a copyrighted work.

    Virtually every movie is the product of numerous contributions. Under the court’s reasoning, any actor in a film – a star, a supporting actor, an extra who appears for a fleeting moment – potentially owns an independent interest in his or her performance. This is not limited to large-production movies. Amateur filmmakers, even individuals who shoot and upload short video clips on their smartphones, face claims for copying their subjects’ “performances.”

    The effects are not limited to the film industry. Record companies rely on background singers, musicians, and sound editors to produce songs. Photographers rely on models, make-up artists, and stylists when they shoot images. The panel put no outer limit on what contributions are covered. Indeed, Garcia appeared for only five seconds in Innocence of Muslims. Any contribution suffices, as long as it meets the low standard for copyright protection. As a result, movie studios, record companies, and other copyright creators and owners could face many new claims from individuals for their contributions.

    Potential liability extends down the distribution chain. Television networks, satellite and cable system operators, radio stations, and online services all play a role in the distribution of content to the public that implicates exclusive rights under the Copyright Act. For internet companies that host content uploaded by users, the repercussions are just as serious. Processing takedown notices from alleged copyright owners is already a daunting challenge; the panel’s decision would let many more new claimants request takedown of their performances…”
    (https://www.lexology.com/library/detail.aspx?g=3b6ff140-49a1-4a85-9f90-b27d5987937a)

    Thus, while I agree Garcia is a sympathetic victim and that the majority’s decision was likely influenced by the video’s inflammatory subject matter, I cannot say that I completely agree with the decision because of its potential “floodgate effects” on numerous entertainment industries beyond merely film (as well as its effects on the internet industry in incentivizing ISPs to err on the side of caution to avoid liability). Although John makes a very valid point that there were 2 movies here to somewhat distinguish it from Aalmuhammed v. Lee…and I agree that the argument can be made that Garcia only intended her authorial contribution to merge into “Desert Warrior” and not “Innocence of the Muslims” (even though “Garcia’s contribution is less significant than Aalmuhammed’s” as mentioned on pg. 25 of the decision)…I still find it troubling that the majority essentially found that a movie could be split into separate and discrete copyrightable elements…because it is the entire film that is supposed to be protected by copyright, despite the presence of neighbouring rights.

    In order to determine authorship and copyright in a movie…you have to look at things like the arrangement or acting form, the combination of incidents that are represented, the dramatic element, who is responsible for them (Director? Producer? Actors? Composers?). The only way we can say this doesn’t matter is if we properly draw up all contracts to distribute the copyrights appropriately. Therefore, I do think it is “too much of a stretch then to consider a movie to be compilation of performances with each actor giving an implied license to use their performance” as John has claimed…because it over-simplifies the question of authorship in movies by mostly considering this from the limited perspective of actors only…and this becomes even more complicated when thinking about contributors in different industries like record companies, photography studios etc.

    Lastly, I should mention that I agree with John in terms of “not think[ing] this ruling [necessarily] gives actors and other contributors too much power over the producer”, mostly because actors do not usually have greater bargaining power than producers such that they could bully them using litigate-or-settle strategies (unlike typical cases of end-user liability). Furthermore, in court, these will be live issues that may come down to evidentiary and factual distinctions (ie. Such custom remedies may only be given in “rare cases” as I mentioned above in my first post).

    For example, Garcia only appeared in 5 seconds of “Innocence of the Muslims”. Perhaps this will mean that any extras or random passersby in a video will only gain an “independent copyright interest” if they appear in more than 5 seconds. On the other hand, Garcia also spent 3.5 days filming the original footage. Again, perhaps this means a random passerby will not be able to claim an independent interest, but an extra who works 4 days and appears in more than 5 seconds of film will be able to bring forward a claim such that it is “not plain and obvious that the claim discloses no reasonable cause of action” (in a manner comparable to Ontario’s Rule 21 of Civil Procedure). Enter the possibilities of frivolous actions and floodgates being opened. I’m not saying that this will necessarily happen…but to misquote the Spiderman comics…potentially giving people “great power” does not mean they will surely exercise it with “great responsibility”.

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