Tuesday, May 19, 2015

Garcia v. Google reversed; many sigh in relief

Garcia v. Google, Inc., No. 12-57302, -- F.3d – (9th Cir. May 18, 2105) (en banc)
Judge McKeown wrote the majority opinion. Garcia was fooled into taking part in a movie that turned out to be the awful Innocence of Muslims, and received death threats because of it. She sought an injunction on copyright grounds, which was first denied, then granted, now lifted as the en banc court affirms the district court’s denial of an injunction.
The court began by describing Garcia’s burden as “doubly demanding: Because Garcia seeks a mandatory injunction, she must establish that the law and facts clearly favor her position, not simply that she is likely to succeed.” It’s a mandatory injunction because it requires Google to take affirmative action to remove, and keep removing, Innocence of Muslims from Google sites. Mandatory injunctions are disfavored except on strong showings of entitlement.
Starting with likely success on the merits: Garcia’s five-second “acting performance” didn’t give her a claim in a copyright. She might have publicity, defamation, or contract claims, but not copyright.
Copyright subsists “in original works of authorship fixed in any tangible medium of expression . . . [including] motion pictures.” Fixation must be done “by or under the authority of the author.” Here, Innocence of Muslims is a motion picture and a derivative work of the script. Garcia was the author of neither, but instead claimed separate protection for her five-second performance. The Copyright Office found that her performance was not a copyrightable work of its own, explaining 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.” For copyright purposes, “a motion picture is a single integrated work.” The court credited this expert opinion, which “reflects a ‘body of experience and informed judgment to which courts and litigants may properly resort for guidance.’”
By contrast, the dissent’s invocation of the Beijing Treaty on Audiovisual Performances was misplaced. First, the treaty is not in force; only six of the necessary thirty countries have ratified it. Second, though the US signed the treaty, the Senate has not ratified it. Though the PTO issued a fact sheet saying that performers’ performances were protected by copyright law, the PTO lacks legal authority to interpret the Copyright Act. (RT: Also, it may still be the case that primary performances make performers co-authors or even sole authors where they control the recording—Garcia didn’t rely on joint authorship or sole authorship claims as to the film as a whole.)
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), was a useful starting point; the meaning of “work” is the first step in analyzing joint authorship.  When a work is “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole,” the work becomes a “joint work.” But Garcia disclaimed joint authorship of the film.  Defining a “work” based upon “some minimal level of creativity or originality . . . would be too broad and indeterminate to be useful.”  Aalmuhammed’s animating concern was that a broad definition of “work” “would fragment copyright protection for the unitary film Malcolm X into many little pieces.” We shouldn’t splinter a film into many different “works” in the absence of independent fixation. “Treating every acting performance as an independent work would not only be a logistical and financial nightmare, it would turn cast of thousands into a new mantra: copyright of thousands.”
The dissent’s hypotheticals could be addressed with careful application of statutory definitions.  (The IP profs are still going at this, but I’m with the majority here.)  The dissent’s reliance on Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) ([pointedly] Kozinski, J.), was inapposite, because no one in that case challenged the existence of an independent copyright on the special-effects footage that was independently fixed. 

Contracts and WFH govern “much of the big-budget Hollywood performance and production world,” and implied licenses often take care of the rest (the district court found one here). “But these legal niceties do not necessarily dictate whether something is protected by copyright, and licensing has its limitations. As filmmakers warn, low-budget films rarely use licenses.” Plus, contracts aren’t perfect, especially for third-party distributors like YouTube and Netflix, who won’t have easy access to any licenses; “litigants may dispute their terms and scope; and actors and other content contributors can terminate licenses after thirty five years. Untangling the complex, difficult-to-access, and often phantom chain of title to tens, hundreds, or even thousands of standalone copyrights is a task that could tie the distribution chain in knots.”  And filming group scenes “like a public parade, or the 1963 March on Washington, would pose a huge burden if each of the thousands of marchers could claim an independent copyright.”
In a footnote, the court of appeals found that the district court’s implied license finding wasn’t clearly erroneous.  “Although Garcia asked Youssef about Desert Warrior’s content, she in no way conditioned the use of her performance on Youssef’s representations.”
In addition, the court held, Garcia didn’t fix her acting performance in a tangible medium.  She wasn’t the one who did the fixation.  (The court noted the Copyright Office’s distinction between acting performances “intended to be an inseparable part of an integrated film” and “standalone works that are separately fixed and incorporated into a film,” the latter of which could be protected by copyright.)  Youssef and his crew did the fixation.  And Garcia claimed that she never agreed to the film’s ultimate rendition “so she can hardly argue that the film or her cameo in it was fixed ‘by or under [her] authority.’”
The district court didn’t err, and the law didn’t clearly favor Garcia.  But just in case, the court went on to address irreparable harm, because of the alleged threat to Garcia’s life. “Garcia understandably takes seriously the fatwa and threats against her and her family, and so do we.”  The problem was that there was no match between these risks and her substantive copyright claim. 
For irreparable harm in a copyright claim, as opposed to a fraud or false light claim, her harm needed to be “harm to her legal interests as an author.”  Copyright is supposed to promote progress and create an incentive to disseminate works; its justification is the protection of an author’s commercial interest, not the protection of secrecy.  Garcia’s “severe emotional distress, the destruction of her career and reputation,” and receipt of credible death threats, were “untethered from—and incompatible with—copyright and copyright’s function as the engine of expression.”  Copyright’s function is not to protect privacy or to guard against emotional distress: “such damages are unrelated to the value and marketability of [authors’] works.” US law doesn’t provide a right to be forgotten or moral rights. “We do not foreclose that in a different circumstance with a strong copyright claim, a court could consider collateral consequences as part of its irreparable harm analysis and remedy. But such a case is not before us.”
In addition, Garcia waited months to seek an injunction, and it wasn’t an abuse of discretion to weigh this delay undercut her irreparable harm claim.  Garcia acted once the film was translated into Arabic and sparked death threats against her. “But that proves the point: the gravamen of Garcia’s harm is untethered from her commercial interests as a performer, and instead focuses on the personal pain caused by her association with the film.”
The panel’s injunction, which ordered Google to take down all copies of the film from all platforms under its control, and take “all reasonable steps” to prevent further uploads, was wrongly granted.  Even in its amended form, which allowed the posting of any version of the film without Garcia’s performance, was wrong, putting the court “in the uneasy role of film editor.”  It would only matter if Google (or someone else) decided to edit another’s copyrighted film.  “To no one’s surprise, the end result was the same: the entire film remained removed from YouTube.”  Not only was this order incorrect as a matter of law, it disserved the First Amendment by suppressing a politically significant film.  Copyright isn’t categorically immune from First Amendment challenge, and the takedown order directed at “a film of substantial interest to the public” was a classic prior restraint.  A thin copyright claim was no warrant for such action.
Judge Watford concurred, and would have ruled solely on irreparable harm, reserving touchy copyright issues for later.  He would have accepted that the risk of death qualified as irreparable injury, but concluded that Garcia couldn’t prove a causal connection between the irreparable injury and the conduct she sought to enjoin: she couldn’t show that removing the film from YouTube would materially reduce the risk of death she faced. “Garcia is subject to the fatwa because of her role in making the film, not because the film is available on YouTube.”  Correcting misperceptions about her role in the film—she was duped into participating, she never said the offensive words her character speaks in the film, and she strongly opposed the film’s message—could help, but she’s already done everything within her power to dissociate herself from the film.  Garcia’s expert on Islamic and Middle Eastern law didn’t claim that removing the film from YouTube would likely cause the fatwa against her to be lifted, but merely opined: “If she is successful in pulling the content down from the internet, it will likely help her in terms of believability of her message condemning the film and its message.” That was too little in the way of evidence of likely impact on the key audience, especially given that demanding the takedown alone spoke of her sincerity.
Judge Kozinski dissented. Garcia’s dramatic performance had the minimal creativity to be copyrightable subject matter, it was original, and it was fixed at the moment it was recorded.  That’s enough.  [That’s enough to make it at least part of a work … but who’s the author of that work?]  The majority says that Garcia’s performance wasn’t a work, “apparently because it was created during the production of a later-assembled film. But if you say something is not a work, it means that it isn’t copyrightable by anyone.” So the majority’s definition of work means that no one has a copyright in any part of Garcia’s performance, “even though it was recorded several months before Innocence of Muslims was assembled.” If only the film is a work, then the copyrightability of “vast swaths of material created during production of a film or other composite work” is in doubt, such as every take that doesn’t become part of a final movie. “If some dastardly crew member were to run off with a copy of the Battle of Morannon [from Lord of the Rings], the dastard would be free to display it for profit until it was made part of the final movie. And, of course, the take-outs, the alternative scenes, the special effects never used, all of those things would be fair game because none of these things would be ‘works’ under the majority’s definition.”  The same for draft chapters of books, or parts thereof.
RT: There may be unusual cases, but most takes, for example, should be at least derivative works or reproductions of the script, which is copyrightable, so I don’t see a practical problem developing. The question is which hypotheticals you find most troubling/plausible, and I think the risk of making every five seconds into its own work—with corresponding effects on substantial similarity and fair use analysis—justifies taking the risks Kozinski identifies instead.
Effects Associates dictates a contrary result, because it held that a special effects company retained a copyright interest in its footage even though it became part of the film.  Like the special effects shots, Garcia’s performance was also “separately fixed and incorporated into” Innocence of Muslims.  Youssef could’ve sold the clip featuring Garcia to someone else; it might not have had much value, but then neither did the special effects from The Stuff. 
Here I think Kozinski cleverly equivocates between “Garcia’s performance” and “the footage.”  Garcia’s performance was not separately fixed from the other elements that made up the movie that were in the shots with her; it was fixed along with them.  That wasn’t true of the distinct shots created in a different place and at a different time in Effects Associates.  If (as Kozinski ten suggests) the effects had been later added into a greenscreened performance where the actors were staring at tennis balls, I think you’d get the Garcia result and not the Effects Associates result.  I don’t think we’ll ever get a perfectly pure rule here, but that’s copyright for you.
This isn’t an unfamiliar question. Statutory damages cases ask us to identify how many “works” are at issue, and while the statute provides an answer for compilations that are infringed, it doesn’t provide all the answers.  For example: suppose someone makes a for-profit, nontransformative, non-fair use Batman movie—alley, gunshot, pearls falling into a puddle, all that jazz.  I take it we wouldn’t want to say that the infringer had infringed each of the gazillion registered works that make up the Batman corpus and recount their own versions of this story.  What the infringer has done is infringe the Batman story (we can also count characters, but then we have to ask whether the characters are registered; anyway, counting by number of characters is a very different thing than counting by number of registered works).  By contrast, someone who reproduces the Dark Knight movies has copied specific works and the statutory damages should be calculated that way (and not as an infringement of all the other registered works that also tell the Batman story).  Of course we get slightly different definitions of “works” from the different situations, because we have different concerns about the interests invaded. But I don’t think that makes the whole edifice illegitimate.
Anyhow, back to the dissent: the majority erred in saying that Garcia couldn’t be an author because she didn’t play a role in the fixation.  A work is fixed when the fixation is by or under the authority of the author.  She’s an author because without her, there was only a script.  Her performance had at least “some minimal degree of creativity.” “To dispute this is to claim that Gone With the Wind would be the same movie if Rhett Butler were played by Peter Lorre.” (RT: Okay, that’s overblown. Innocence of Muslims is surely no GWTW, and Garcia’s 5-second character no Rhett Butler.  Actually, now that I’m thinking about this, isn’t Kozinski’s argument here a workaround for the rule that a character has to be sufficiently defined to be protected by copyright?  After all, Garcia’s physical characteristics aren’t “creative” or “original” in the copyright sense, so it’s just what she does in those five seconds that he argues makes her an author.)

Because Garcia didn’t sign away her rights, she acquired a copyright in her performance the moment it was fixed. “It’s not our job to take away from performers rights Congress gave them.” The Register of Copyrights was a member of the U.S. delegation that signed the Beijing Treaty on Audiovisual Performances, which would recognize Garcia’s rights in her performance because it provides that “performers” have the “exclusive right of authorizing . . . the fixation of their unfixed performances,” and “reproduction of their performances fixed in audiovisual fixations, in any manner or form.”  The PTO said that U.S. law was “generally compatible” with the Treaty, as “actors and musicians are considered to be ‘authors’ of their performances providing them with copyright rights.” The Copyright Office surely wouldn’t have signed on if it believed that the Treaty’s key provisions were inconsistent with U.S. copyright law. (Surely! After all, US negotiators are never captured and never engage in policy laundering of that type.)
The Copyright Office said “an actor or an actress in a motion picture is either a joint author in the entire work or, as most often is the case, is not an author at all by virtue of a work made for hire agreement.” But Garcia isn’t in either category, so she must be an author.  (It’s the “so” where we part company.  This really should be fixed by a better understanding of joint authorship.)
There’s not much risk of harm from Kozinski’s position, since “[t]he vast majority of copyright claims by performers in their contributions are defeated by a contract and the work for hire doctrine. And most of the performers that fall through the cracks would be found to have given an implied license to the film’s producers to use the contribution in the ultimate film.”  The remaining few wouldn’t be able to claim the “valuable” rights of joint authorship. (RT: Yeah, only total ownership of a chunk!  That doesn't pose any problems at all!) That’s why Effects Associates didn’t cause filmmaking to grind to a halt. Anyway, the Supreme Court said in Tasini that “speculation about future harms is no basis for [courts] to shrink authorial rights,” and neither the predicted database disasters or the disasters predicted by amici in CCNV took place.  (Actually, the Tasini situation is rather more complicated than that, and the case just ended after two decades—but at least that was susceptible to class treatment!)
The risks that this rule imposes on producers and ISPs is for them to fix by contract.  “Google makes oodles of dollars by enabling its users to upload almost any video without pre-screening for potential copyright infringement. Google’s business model, like that of the database owners in Tasini, assumes the risk that a user’s upload infringes someone else’s copyright, and that it may have to take corrective action if a copyright holder comes forward.”  (Takeaway: Kozinski really, really doesn’t like ISPs.)
Doomsday claims are overstated: “our injunction has been in place for over a year; reports of the internet’s demise have been greatly exaggerated.” Garcia’s copyright claim was likely to succeed and she made an ample showing of irreparable harm. “It’s her life that’s at stake.”

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