Cindy Garcia v. Google, Inc. , 766 F.3d 929 ( 2014 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
CINDY LEE GARCIA, No. 12-57302
Plaintiff-Appellant,
D.C. No.
v. 2:12-cv-08315-
MWF-VBK
GOOGLE, INC., a Delaware
Corporation; YOUTUBE, LLC, a
California limited liability company, ORDER AND
Defendants-Appellees, AMENDED
OPINION
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.
Appeal from the United States District Court
for the Central District of California
Michael W. Fitzgerald, District Judge, Presiding
2 GARCIA V. GOOGLE, INC.
Argued and Submitted
June 26, 2013—Seattle, Washington
Filed February 26, 2014
Amended July 11, 2014
Before: Alex Kozinski, Chief Judge, Ronald M. Gould
and N. Randy Smith, Circuit Judges.
Opinion by Chief Judge Kozinski;
Dissent by Judge N.R. Smith
SUMMARY*
Copyright / Preliminary Injunction
The panel filed (1) an order amending a previous opinion
and dissent and stating that a petition for rehearing en banc
remained pending, (2) an amended opinion, and (3) an
amended dissent in an appeal from the district court’s denial
in a copyright case of a preliminary injunction requiring the
removal from YouTube.com of an anti-Islamic film that used
a performance that the plaintiff made for a different film.
Reversing the district court’s denial of the preliminary
injunction, the panel concluded that the plaintiff established
a likelihood of success on the merits of her claim of
infringement of her performance within the film because she
proved (1) that she likely had a protectible interest in the
performance and (2) that the filmmaker did not own an
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
GARCIA V. GOOGLE, INC. 3
interest as a work for hire and exceeded any implied license
to use the plaintiff’s performance.
The panel held that the plaintiff established the likelihood
that irreparable harm would result if an injunction did not
issue because she was subject to death threats and took action
as soon as she began receiving the threats. The plaintiff also
established sufficient causal connection between the
infringement of her copyright and the harm she alleged.
The panel also held that the balance of the equities and
the public interest weighed in favor of injunctive relief.
Dissenting, Judge N.R. Smith wrote that the facts and law
did not clearly favor issuing a mandatory preliminary
injunction to the plaintiff. He wrote that the plaintiff did not
establish a likelihood that she had a copyrightable interest in
her acting performance, nor did she clearly show that the
performance was not a work made for hire. In addition, the
district court did not abuse its discretion in its ruling on
irreparable harm, and the balance of the equities and the
public interest did not favor the issuance of a preliminary
injunction.
COUNSEL
M. Cris Armenta (argued), The Armenta Law Firm APC, Los
Angeles, California and Credence Sol, Chauvigng, France,
for Plaintiff-Appellant.
Timothy L. Alger (argued) and Sunita Bali, Perkins Coie
LLP, Palo Alto, California, for Defendants-Appellees.
4 GARCIA V. GOOGLE, INC.
ORDER
The opinion and dissent filed February 26, 2014, and
reported at 743 F.3d 1258, are amended to conform to the
attached Amended Opinion and Amended Dissent, 12-57302.
No further petitions for rehearing will be entertained. The
petition for rehearing en banc remains pending.
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?”
GARCIA V. GOOGLE, INC. 5
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 Millennium Copyright Act. See generally 17 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,
1
Although Garcia’s suit also named the film’s producers, only Google,
which owns YouTube, answered the complaint.
6 GARCIA V. GOOGLE, INC.
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 (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.
2
The dissent suggests that we must defer to the district court’s statement
that “the nature of [Garcia’s] copyright interest is not clear.” But we defer
to a lower court’s decision, not its equivocation.
It’s worth noting what the district court’s three-page order doesn’t do:
It doesn’t decide whether Garcia has a copyright interest in her
performance, whether her performance is a “work,” whether Garcia is the
“author” of her performance or whether her performance is a work for
hire. Nor does it address the balance of the equities or the public interest,
despite the fact that a district court must “weigh in its analysis the public
interest implicated by [an] injunction, as Winter now requires.” Stormans,
Inc. v. Selecky, 586 F.3d 1109, 1138 (9th Cir. 2009).
GARCIA V. GOOGLE, INC. 7
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). The dissent claims that “Garcia’s interest in her acting
performance may best be analyzed as a joint work with
Youssef.” Dissent 25 n.3. But work is joint only if the
authors involved in its creation intend that it be so. See 17
U.S.C. § 101. Garcia expressly disclaims such intent and
there is no evidence that Youssef intended to create a joint
work. We thus have no basis for finding a joint intent on this
record.
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. 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). 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
8 GARCIA V. GOOGLE, INC.
contribution is fixed, the key question remains whether it’s
sufficiently creative to be protectible.3
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 (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.
3
Neither party raised the issue of whether the author of a dramatic
performance must personally fix his work in a tangible medium. Because
the question is not properly before us, we do not decide it. The parties are
free to raise it in the district court on remand.
GARCIA V. GOOGLE, INC. 9
Aalmuhammed isn’t to the contrary because it does not, as
the dissent would have it, “articulate[] general principles of
authorship.” Dissent 27. 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 363.4
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.
4
Our decision today does not “read[] the authorship requirement out of
the Copyright Act and the Constitution.” Dissent 28. An author “in a
constitutional sense” is one “‘to whom anything owes its origin;
originator; maker.’” Feist Publ’ns, 499 U.S. at 346 (quoting Burrow-Giles
Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)). In other words, the
creator of copyrightable artistic expression is an author. Which is why,
for example, Sinéad O’Connor can claim a copyright in her performance
of “Nothing Compares 2 U” even though the song was written by Prince.
10 GARCIA V. GOOGLE, INC.
See 849 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 also
17 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 that
the actor might be considered to have infringed the
screenwriter’s copyright. And an infringing derivative work
isn’t entitled to copyright protection. See 17 U.S.C. § 103(a);
see also U.S. Auto Parts Network, Inc. v. Parts Geek, LLC,
692 F.3d 1009, 1016 (9th Cir. 2012).
Of course, by hiring Garcia, giving her the script and
turning a camera on her, Youssef implicitly granted her a
license to perform his screenplay. See Effects Assocs., Inc. v.
Cohen, 908 F.2d 555, 558–59 (9th Cir. 1990). This doesn’t
mean that Garcia owns a copyright interest in the entire
scene: She can claim copyright in her own contribution but
not in “preexisting material” such as the words or actions
GARCIA V. GOOGLE, INC. 11
spelled out in the underlying script. 17 U.S.C. § 103(b); see
also U.S. Auto Parts Network, Inc., 692 F.3d at 1016. Garcia
may assert a copyright interest only in the portion of
“Innocence of Muslims” that represents her individual
creativity, but even if her contribution is relatively minor, it
isn’t de minimis. See Feist, 499 U.S. at 359, 363. We need
not and do not decide whether every actor has a copyright in
his performance within a movie. It suffices for now to hold
that, while the matter is fairly debatable, Garcia is likely to
prevail based on the record and arguments before us.
Nothing we say today precludes the district court from
concluding that Garcia doesn’t have a copyrightable interest,
or that Google prevails on any of its defenses. We note, for
example, that after we first issued our opinion, the United
States Copyright Office sent Garcia a letter denying her
request to register a copyright in her performance. Because
this is not an appeal of the denial of registration, the
Copyright Office’s refusal to register doesn’t “preclude[] a
determination” that Garcia’s performance “is indeed
copyrightable.” OddzOn Prods., Inc. v. Oman, 924 F.2d 346,
347 (D.C. Cir. 1991). But the district court may still defer to
the Copyright Office’s reasoning, to the extent it is
persuasive. See Inhale, Inc. v. Starbuzz Tobacco, Inc.,
739 F.3d 446, 448–49 (9th Cir. 2014).
After we first published our opinion, amici raised other
issues, such as the applicability of the fair use doctrine, see
17 U.S.C. § 107, and section 230 of the Communications
Decency Act, see 47 U.S.C. § 230. Because these defenses
were not raised by the parties, we do not address them. The
district court is free to consider them if Google properly
raises them.
12 GARCIA V. GOOGLE, INC.
As the above discussion makes clear, any analysis of the
rights that might attach to the numerous creative
contributions that make up a film can quickly become
entangled in an impenetrable thicket of copyright. But it
rarely comes to that because copyright interests in the vast
majority of films are covered by contract, the work for hire
doctrine or implied licenses. See F. Jay Dougherty, Not a
Spike Lee Joint? Issues in the Authorship of Motion Pictures
Under U.S. Copyright Law, 49 UCLA L. Rev. 225, 238,
317–18, 327–33 (2001). Here, Google argues that Garcia’s
performance was a work made for hire or, alternatively, that
she granted Youssef an implied license to use her
performance in “Innocence of Muslims.”
2. Work For Hire
Under the work for hire doctrine, the rights to Garcia’s
performance vested in Youssef if Garcia was Youssef’s
employee and acted in her employment capacity or was an
independent contractor who transferred her interests in
writing. See 17 U.S.C. §§ 101, 201(b); see also Cmty. for
Creative Non-Violence v. Reid, 490 U.S. 730, 751 (1989).
The “term ‘employee’” refers “to a hired party in a
conventional employment relationship,” and the question of
employment is analyzed under traditional principles of
agency. Reid, 490 U.S. at 743, 751. Garcia’s case is a good
example of why it is difficult to categorize an actor,
particularly one in a small role, as a conventional employee.
Youssef hired Garcia for a specific task, she only worked for
three days and she claims she received no health or other
traditional employment benefits. See id. at 751–52. As
we’ve recognized, this difficulty is why 17 U.S.C. § 101
“specifically addresses the movie . . . industr[y], affording
GARCIA V. GOOGLE, INC. 13
moviemakers a simple, straightforward way of obtaining
ownership of the copyright in a creative contribution—
namely, a written agreement.” Effects Assocs., 908 F.2d at
558. Youssef didn’t obtain a written agreement,5 and Garcia
simply doesn’t qualify as a traditional employee on this
record.
The dissent believes Garcia was an employee primarily
because “Youssef controll[ed] both the manner and means of
making the film, including the scenes featuring Garcia” and
Youssef “was engaged in the business of film making at the
time.” Dissent 34. But there’s no evidence in the record that
Youssef directed the film or that he controlled the manner in
which any part of the film—much less Garcia’s scene—was
shot. In fact, Youssef has claimed only that he wrote the
screenplay.
There’s nothing in the record to suggest that Youssef was
in the “regular business” of making films. Reid, 490 U.S. at
752. He’d held many jobs, but there’s no indication he ever
worked in the film industry. And there’s no evidence he had
any union contracts, relationships with prop houses or other
film suppliers, leases of studio space or distribution
agreements. The dissent would hold that Youssef was in the
“regular business” of filmmaking simply because he made
“Innocence of Muslims.” But if shooting a single amateur
5
Neither party claims that Garcia signed a work for hire agreement. In
the district court, Google produced an agreement, purportedly signed by
Garcia, that transferred all of her rights in her performance to the film’s
producers. Garcia responded by submitting the declaration of a
handwriting expert opining that Garcia’s signature had been forged. The
district court didn’t address the agreement or its authenticity.
14 GARCIA V. GOOGLE, INC.
film amounts to the regular business of filmmaking, every
schmuck with a videocamera becomes a movie mogul.
3. Implied License
A non-exclusive license may be implied from conduct and
arises where a plaintiff “create[s] a work at defendant’s
request and hand[s] it over, intending that defendant copy and
distribute it.” Effects Assocs., 908 F.2d at 558. We’ve found
an implied license where the plaintiff’s contribution to a film
or other work would otherwise be worthless or of “minimal
value.” Id. at 559; see also Oddo v. Ries, 743 F.2d 630, 634
(9th Cir. 1984). That is the case here. Garcia auditioned for
a role in a particular film, was paid for her performance and
had every reason to believe Youssef would eventually release
the film. Without an implied license, the performance for
which she was paid would be unusable. Therefore, we agree
with Google that Garcia granted Youssef an implied license.
Any such license must be construed broadly. If the scope
of an implied license was exceeded merely because a film
didn’t meet the ex ante expectation of an actor, that license
would be virtually meaningless. See Foad Consulting Grp.,
Inc. v. Azzalino, 270 F.3d 821, 837–38 (9th Cir. 2001)
(Kozinski, J., concurring). A narrow, easily exceeded license
could allow an actor to force the film’s author to re-edit the
film—in violation of the author’s exclusive right to prepare
derivative works. See 17 U.S.C. § 106(2). Or the actor could
prevent the film’s author from exercising his exclusive right
to show the work to the public. See 17 U.S.C. § 106(4). In
other words, unless these types of implied licenses are
GARCIA V. GOOGLE, INC. 15
construed very broadly, actors could leverage their individual
contributions into de facto authorial control over the film.6
Nevertheless, even a broad implied license isn’t
unlimited. See Oddo, 743 F.2d at 634. Garcia was told she’d
be acting in an adventure film set in ancient Arabia. Were
she now to complain that the film has a different title, that its
historical depictions are inaccurate, that her scene is poorly
edited or that the quality of the film isn’t as she’d imagined,
she wouldn’t have a viable claim that her implied license had
been exceeded. But the license Garcia granted Youssef
wasn’t so broad as to cover the use of her performance in any
project. Here, the problem isn’t that “Innocence of Muslims”
is not an Arabian adventure movie: It’s that the film isn’t
intended to entertain at all. The film differs so radically from
anything Garcia could have imagined when she was cast that
it can’t possibly be authorized by any implied license she
granted Youssef.
A clear sign that Youssef exceeded the bounds of any
license is that he lied to Garcia in order to secure her
participation, and she agreed to perform in reliance on that
lie. Youssef’s fraud alone is likely enough to void any
agreement he had with Garcia. See 26 Samuel Williston &
Richard A. Lord, A Treatise on the Law of Contracts § 69:4
(4th ed. 2003). But even if it’s not, it’s clear evidence that his
inclusion of her performance in “Innocence of Muslims”
6
Construing such implied licenses narrowly would also undermine our
joint authorship jurisprudence. Most actors don’t qualify as joint authors.
See Aalmuhammed, 202 F.3d at 1232–33. Yet, if any actor who doesn’t
like the final version of a movie could keep it from being released, he’d
have more control over the film than a joint author. See 1 Nimmer on
Copyright § 6.10[A][1][a], at 6–36 (“[A] joint owner may exploit the work
himself, without obtaining the consent of the other joint owners.”).
16 GARCIA V. GOOGLE, INC.
exceeded the scope of the implied license and was, therefore,
an unauthorized, infringing use.
The situation in which a filmmaker uses a performance in
a way that exceeds the bounds of the broad implied license
granted by an actor will be extraordinarily rare. But this is
such a case. Because it is, Garcia has demonstrated that she’s
likely to succeed on the merits of her claim. Winter, 555 U.S.
at 20.
B. Irreparable Harm
Garcia argues that she suffers irreparable harm both
because of the ongoing infringement of her copyright and
because that infringement subjects her to continuing, credible
death threats. Irreparable harm isn’t presumed in copyright
cases. Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 980–81
(9th Cir. 2011). Therefore, Garcia must show that the
damage to her reputation and threats against her life
constitute irreparable harm.
The district court found that Garcia failed to make this
required showing, primarily because she didn’t bring suit
until several months after “Innocence of Muslims” was
uploaded to YouTube. It’s true that a “long delay before
seeking a preliminary injunction implies a lack of urgency
and irreparable harm.” Oakland Tribune, Inc. v. Chronicle
Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985). But this is
so because a preliminary injunction is based “‘upon the
theory that there is an urgent need for speedy action’” and by
“‘sleeping on its rights a plaintiff demonstrates [a] lack of’”
urgency. Lydo Enters., Inc. v. City of Las Vegas, 745 F.2d
1211, 1213 (9th Cir. 1984) (quoting Gillette Co. v. Ed
Pinaud, Inc., 178 F. Supp. 618, 622 (S.D.N.Y. 1959)).
GARCIA V. GOOGLE, INC. 17
There’s no dispute that, here, Garcia took legal action as soon
as the film received worldwide attention and she began
receiving death threats—in other words, as soon as there was
a “need for speedy action.” Id. Because the need for
immediate action didn’t arise until she was threatened, Garcia
wasn’t dilatory in bringing the lawsuit.
The harm Garcia complains of is real and immediate. See
City of L.A. v. Lyons, 461 U.S. 95, 111 (1983). She has
provided unrefuted evidence that the threats against her are
ongoing and serious, she has already been forced to take
significant security precautions when traveling and she
moved to a new home and relocated her business as a safety
measure. Although past injuries aren’t sufficient to establish
irreparable harm for purposes of an injunction, id. at 103,
Garcia has amply demonstrated that, absent an injunction,
she’ll continue to suffer concrete harms—whether in the form
of ongoing security requirements or actual harm to her
person.
Beyond establishing that she faces an imminent harm,
Garcia must show a “sufficient causal connection” between
that harm and the conduct she seeks to enjoin such that the
injunction would effectively curb the risk of injury. Perfect
10, 653 F.3d at 981–82. Despite her understandable focus on
the threats against her life, Garcia has brought a copyright
action. Therefore, she needs to show that the harm she
alleges is causally related to the infringement of her
copyright.
She’s made such a showing. Youssef’s unauthorized
inclusion of her performance in “Innocence of Muslims”
undisputedly led to the threats against Garcia. Google argues
that any harm arises solely out of Garcia’s participation in
18 GARCIA V. GOOGLE, INC.
“Innocence of Muslims” and not out of YouTube’s continued
hosting of the film. But Garcia has shown that removing the
film from YouTube will help disassociate her from the film’s
anti-Islamic message and that such disassociation will keep
her from suffering future threats and physical harm.
Although Google asserts that the film is so widespread that
removing it from YouTube will have no effect, it has
provided no evidence to support this point.7 Taking down the
film from YouTube will remove it from a prominent online
platform—the platform on which it was first displayed—and
will curb the harms of which Garcia complains.
It is not irrelevant that the harm Garcia complains of is
death or serious bodily harm, which the dissent fails to
mention. Death is an “irremediable and unfathomable” harm,
Ford v. Wainwright, 477 U.S. 399, 411 (1986), and bodily
injury is not far behind. To the extent the irreparable harm
inquiry is at all a close question, we think it best to err on the
side of life.
C. Balance of the Equities and The Public Interest
Youssef lied to Garcia about the project in which she was
participating. Her performance was used in a way that she
7
Contrary to the dissent’s suggestion, Garcia’s declaration doesn’t
establish that the film has been “widely discussed and disseminated.”
Dissent 36. It states only that Garcia reached out to the media to let the
world know that she “d[id] not condone the film.” We reject the dissent’s
uncharitable argument that Garcia should be penalized for attempting to
protect her life and reputation by distancing herself from “Innocence of
Muslims.” We also reject Google’s preposterous argument that any harm
to Garcia is traceable to her filing of this lawsuit. Any publicity generated
by Garcia’s lawsuit is a necessary product of her attempt to protect herself
and her legal rights after Google refused to do so.
GARCIA V. GOOGLE, INC. 19
found abhorrent and her appearance in the film subjected her
to threats of physical harm and even death. Despite these
harms, and despite Garcia’s viable copyright claim, Google
refused to remove the film from YouTube. It’s hard to see
how Google can defend its refusal on equitable grounds and,
indeed, it doesn’t really try. Instead, it argues that an
injunction would be inequitable because of the overwhelming
public interest in the continued hosting of “Innocence of
Muslims” on YouTube.
The problem with Google’s position is that it rests
entirely on the assertion that Garcia’s proposed injunction is
an unconstitutional prior restraint of speech. But the First
Amendment doesn’t protect copyright infringement. Cf.
Eldred v. Ashcroft, 537 U.S. 186, 219–220 (2003). “First
Amendment protections are ‘embodied in the Copyright Act’s
distinction between copyrightable expression and
uncopyrightable facts and ideas,’ and in the ‘latitude for
scholarship and comment’ safeguarded by the fair use
defense.” Golan v. Holder, 132 S. Ct. 873, 890 (2012)
(quoting Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539, 560 (1985)). Google hasn’t raised fair use as
a defense in this appeal, see page 11 supra, so we do not
consider it in determining its likelihood of success. This does
not, of course, preclude Google from raising the point in the
district court, provided it properly preserved the defense in its
pleadings.
Because Garcia has demonstrated a likelihood of success
on her claim that “Innocence of Muslims” infringes her
copyright, Google’s argument fails. The balance of equities
therefore clearly favors Garcia and, to the extent the public
interest is implicated at all, it, too, tips in Garcia’s direction.
20 GARCIA V. GOOGLE, INC.
* * *
This is a troubling case. Garcia was duped into providing
an artistic performance that was used in a way she never
could have foreseen. Her unwitting and unwilling inclusion
in “Innocence of Muslims” led to serious threats against her
life. It’s disappointing, though perhaps not surprising, that
Garcia needed to sue in order to protect herself and her rights.
But she has sued and, more than that, she’s shown that
she is likely to succeed on her copyright claim, that she faces
irreparable harm absent an injunction and that the balance of
equities and the public interest favor her position. The
district court abused its discretion in finding otherwise.
REVERSED AND REMANDED8
N.R. SMITH, Circuit Judge, dissenting
Because the facts and law do not “clearly favor” issuing
a preliminary injunction to Garcia, the district court did not
abuse its discretion in denying Garcia’s requested relief. As
a result, I must dissent.
8
Concurrent with this opinion, we have issued an order directing Google
to take down all copies of “Innocence of Muslims” from YouTube and
any other platforms within its control and to take all reasonable steps to
prevent further uploads. This temporary injunction shall remain in place
until the district court is able to enter a preliminary injunction consistent
with our opinion.
GARCIA V. GOOGLE, INC. 21
I. Standard of Review
The majority opinion omits applying the requisite
standard of review that is especially pertinent to Garcia’s
requested relief. Mandatory preliminary injunctions, similar
to the one issued today, are “particularly disfavored.” Stanley
v. Univ. of S. Cal., 13 F.3d 1313, 1320 (9th Cir. 1994).
Different from the usual “prohibitory injunction,” a
“mandatory injunction goes well beyond simply maintaining
the status quo pendente lite.” Id. (internal quotation marks
omitted). As an example, requiring a university to reappoint
a faculty member whose contract had expired constitutes a
mandatory injunction. Id.; see also, e.g., Marlyn
Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d
873, 879 (9th Cir. 2009) (“[T]he affirmative step of recalling
[a] product” is also a mandatory injunction.). In the instant
dispute, Garcia requests relief through a mandatory
injunction. Rather than asking to maintain the status quo
pending litigation, Garcia demands Google immediately
remove a film from YouTube. Therefore, her request must be
“subject to a higher degree of scrutiny because such relief is
particularly disfavored under the law of this circuit.”Stanley,
13 F.3d at 1320. This higher degree of scrutiny requires
courts to be “extremely cautious” and “deny such relief
unless the facts and law clearly favor the moving party.” Id.
at 1319–20 (internal quotation marks omitted, emphasis
added). Indeed, mandatory injunctions “are not issued in
doubtful cases.” Anderson v. United States, 612 F.2d 1112,
1115 (9th Cir. 1979) (internal quotation marks omitted).
This standard’s importance must be appreciated in
conjunction with the general standard with which this court
reviews a district court’s decision to deny preliminary
22 GARCIA V. GOOGLE, INC.
injunctive relief: “abuse of discretion.” Alliance for the Wild
Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). As
a result, the majority may only reverse if it were illogical or
implausible, United States v. Hinkson, 585 F.3d 1247,
1263–64 (9th Cir. 2009), for the district court to conclude that
the law and facts did not clearly favor Garcia, Stanley,
13 F.3d at 1320.1
Given this standard, the majority errs in requiring Google
to pull the film from YouTube—at this stage of the litigation.
The district court did not abuse its discretion in concluding
that the law and facts did not clearly favor Garcia. Instead,
the majority makes new law in this circuit in order to reach
the result it seeks. We have never held that an actress’s
performance could be copyrightable. Indeed, “[t]here is little
case law or statutory authority as to the position of
performers as authors of an audiovisual work under U.S.
law.” F. Jay Dougherty, Not a Spike Lee Joint? Issues in the
Authorship of Motion Pictures under U.S. Copyright Law,
49 UCLA L. Rev. 225, 300 (2001).
II. Application of the Winter Factors
“A plaintiff seeking a preliminary injunction must
establish that he is likely to succeed on the merits, that he is
likely to suffer irreparable harm in the absence of preliminary
1
As this is the relevant standard of review, the district court’s
application of it is hardly “equivocation.” See maj. op. at 6 n.2.
Furthermore, the amended portions of the majority opinion only confirm
that the law and facts do not clearly favor Garcia: “Nothing we say today
precludes the district court from concluding that Garcia doesn’t have a
copyrightable interest, or that Google prevails on any of its defenses.”
Maj. op. at 11. Where the law and facts must clearly favor Garcia in order
for her to prevail, the majority’s equivocation cements its error.
GARCIA V. GOOGLE, INC. 23
relief, that the balance of equities tips in his favor, and that an
injunction is in the public interest.” Winter v. Natural Res.
Def. Council, Inc., 555 U.S. 7, 20 (2008).
A. Garcia’s Likely Success on the Merits of Her
Copyright Claim
The district court concluded that it was unclear whether
Garcia had a copyright interest in her acting performance.
The district court’s discretionary conclusion hardly appears
illogical or implausible.
1. Copyright Interest
A protected interest under the Copyright Act must be an
“original work[] of authorship fixed in any tangible medium
of expression. . . .” 17 U.S.C. § 102(a). Garcia does not
clearly have a copyright interest in her acting performance,
because (1) her acting performance is not a work, (2) she is
not an author, and (3) her acting performance is too personal
to be fixed.2
a. Work
To be protected, Garcia’s acting performance must be a
“work.” Id. Congress has listed examples of copyrightable
works, like architectural works, motion pictures, literary
works, and pictorial or sculptural works. Id. The nature of
these works is significantly different from an actress’s
2
The majority relies solely on a showing of originality to conclude
Garcia has a copyrightable interest in her acting performance, maj. op. at
8 (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345
(1991)), but the Constitution and the Copyright Act require much more.
24 GARCIA V. GOOGLE, INC.
individual performance in a film, casting doubt on the
conclusion that the latter can constitute a work. See Microsoft
Corp. v. C.I.R., 311 F.3d 1178, 1184–85 (9th Cir. 2002)
(“The doctrine of noscitur a sociis counsels that words should
be understood by the company they keep.”).
Section 101 of the Act is also instructive, because it
differentiates a work from the performance of it. It defines
“perform a ‘work’” to mean “to recite, render, play, dance or
act it.” 17 U.S.C. § 101 (emphasis added). Given this
provision, it is difficult to understand how Congress intended
to extend copyright protection to this acting performance.
While Congress distinguishes the performance from the work
itself, the majority blurs this line. Its position contemplates
something very different from amalgamating independently
copyrightable interests into a derivative work. See id. at
§ 103(b).
Consistent with section 101, section 102(b) outlines that
which is not given copyright protection. It states: “In no case
does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the
form in which it is described, explained, illustrated, or
embodied in such work.” Id. at § 102(b). An acting
performance resembles the “procedure” or “process” by
which “an original work” is performed. Id. Therefore, “[i]n
no case does copyright protection” extend to an acting
performance, “regardless of the form in which it is described,
illustrated, or embodied in” the original work. Id.
In sum, a motion picture is a work. Id. at § 102(a). A
segment independently produced and then incorporated into
a motion picture is also a work. See, e.g., Effects Assocs., Inc.
GARCIA V. GOOGLE, INC. 25
v. Cohen, 908 F.2d 555, 556 (9th Cir. 1990). However, the
Copyright Act does not clearly place an acting performance
within its sphere of copyrightable works. As a result, the law
and facts do not clearly favor finding a copyrightable interest
in Garcia’s acting performance.
b. Authorship
Like the work requirement, the Copyright Act also
premises copyright protection on authorship. 17 U.S.C.
§ 102(a). Authorship is also a constitutional copyright
requirement. See U.S. Const. Art. I, § 8, cl. 8; Burrow-Giles
Lithographic Co. v. Sarony, 111 U.S. 53, 56 (1884).
Aalmuhammed v. Lee is the most relevant case in this circuit
on the question of authorship. 202 F.3d 1227 (9th Cir. 2000).
Though the Aalmuhammed court discussed authorship in the
context of joint authors of a film (which Garcia does not
claim to be), it articulated general principles of authorship
that assist in analyzing Garcia’s interest in her acting
performance.3
The Aalmuhammed court explained that “[t]he word
[author] is traditionally used to mean the originator or the
person who causes something to come into being.” Id. at
1232. In other words, the author is the “person with creative
control.” Id. Thus, “an author ‘superintends’ the work by
exercising control.” Id. at 1234 (quoting Burrow-Giles,
3
Furthermore, Garcia’s interest in her acting performance may best be
analyzed as a joint work with Youssef, considering she relied on
Youssef’s script, equipment, and direction. See 17 U.S.C. § 101 (“A ‘joint
work’ is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of
a unitary whole.”).
26 GARCIA V. GOOGLE, INC.
111 U.S. at 61) (alteration omitted). Another framing by the
court defined an author as “‘he to whom anything owes its
origin.’” Id. at 1233 (quoting Burrow-Giles, 111 U.S. at 58).
An author might also be “‘the inventive or master mind’ who
‘creates, or gives effect to the idea.’” Id. at 1234 (quoting
Burrow-Giles, 111 U.S. at 61). Indeed, authorship “requires
more than a minimal creative or original contribution to the
work.” Id. at 1233 (citing Burrow-Giles, 111 U.S. at 58)
(emphasis added).4 These principles comport with the
“general rule,” that “the author is the party who actually
creates the work, that is, the person who translates an idea
into a fixed, tangible expression entitled to copyright
protection.” Commty. for Creative Non-Violence v. Reid,
490 U.S. 730, 737 (1989).
In concluding that Aalmuhammed was not a joint author
of the film, Malcolm X, the court found that he (1) “did not at
any time have superintendence of the work,” (2) “was not the
person ‘who . . . actually formed the picture by putting the
persons in position, and arranging the place,” (3) could not
“benefit” the work “in the slightest unless [the director] chose
to accept [his recommendations],” and (4) made “valuable
contributions to the movie,” but that alone was “not enough
for co-authorship of a joint work.” Aalmuhammed, 202 F.3d
at 1235.
Garcia’s contribution is less significant than
Aalmuhammed’s. She conceded in her complaint and
affidavit that she had no creative control over the script or her
performance. Youssef provided the script, the equipment, and
the direction. As a result, Garcia was not the originator of
4
The majority opinion cannot coexist with this statement. See maj. op.
at 8.
GARCIA V. GOOGLE, INC. 27
ideas or concepts. She simply acted out others’ ideas or script.
Her brief appearance in the film, even if a valuable
contribution to the film, does not make her an author. Indeed,
it is difficult to understand how she can be considered an
“inventive or master mind” of her performance under these
facts.
The majority dismisses Aalmuhammed as inapposite,
instead bolstering its conclusion with reference to acting
manuals and treatises. See maj. op. at 8–9. In so doing, it goes
too far in attempting to distinguish Aalmuhammed. First, the
Aalmuhammed court articulated general principles of
authorship that it pulled from the Supreme Court case,
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53
(1884). See, e.g., Aalmuhammed, 202 F.3d at 1233 (“Burrow-
Giles is still good law. . . .”). Burrow-Giles has nothing to do
with joint works; instead, the Court interpreted “author” as
featured in Article I, Section 8, Clause 8 of the U.S.
Constitution. See 111 U.S. at 56. Second, the majority’s one
quotation from Aalmuhammed, maj. op. at 9, is taken out of
context. The very next line in that opinion makes clear that
copyright protection is premised on authorship, whether the
work is joint or otherwise:
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. We
recognize that a contributor of an expression
may be deemed to be the “author” of that
expression for purposes of determining
whether it is independently copyrightable.
28 GARCIA V. GOOGLE, INC.
Aalmuhammed, 202 F.3d at 1232. Finally, Section 102(a) of
the Copyright Act and Article I, Section 8, Clause 8 of the
U.S. Constitution both premise copyright protection on
authorship. Therefore, not only does the majority decline to
apply the most relevant precedent in this circuit on the
question before it, it also reads the authorship requirement out
of the Copyright Act and the Constitution.5
Even the commentators agree that Aalmuhammed not
only applies to Garcia’s claim, but also forecloses her
realization of a copyrightable interest in her acting
performance. See, e.g., Dougherty, Not a Spike Lee Joint?, 49
UCLA L. Rev. at 306 (“Under the judicially enhanced joint
work requirements,” an actress’s performance would be
“physically inseparable from other cinematic contributions.”
(citing Aalmuhammed, 202 F.3d at 1232)); Lee,
Entertainment and Intellectual Property Law § 12:7 (2013)
(“Under [Aalmuhammed], . . . individual contributors will
rarely qualify as joint authors”).
The majority lauds an actress’s creative role in a film,
maj. op. at 8, but the practical impact of its decision must not
be ignored. Garcia’s role in the film is minimal. Yet the
majority concludes that she somehow created a work
Congress intended to protect under the Copyright Act.
Considering the number of contributors who inject the same
or a greater amount of creativity into a film, the majority’s
omission of any inquiry into authorship indeed creates “an
5
The majority’s sole reliance on Feist Publications to conclude that an
acting performance is copyrightable, maj. op. at 8–9, gives insufficient
weight to the constitutional and statutory authorship requirement. In Feist
Publications, the specific question was not of authorship but of originality.
See 499 U.S. at 347.
GARCIA V. GOOGLE, INC. 29
impenetrable thicket of copyright.” Maj. op. at 12.
Meanwhile, though Aalmuhammed’s interpretation of the
Copyright Act has been debated in academic circles, “it
adopts a standard that promotes clarity in the motion picture
industry.” Lee, Entertainment and Intellectual Property Law
§ 12:7.
Because Garcia does not qualify as an author under
Aalmuhammed, the law and facts do not clearly favor
protecting her acting performance under the Copyright Act.
c. Fixation
Lastly, the subject matter protected by the Copyright Act
must also be “fixed in [a] tangible medium of
expression. . . .” 17 U.S.C. § 102(a). Copyright preemption
cases are instructive on the question of fixation.
For preemption purposes, the courts generally agree that
“the scope of the subject matter of copyright law is broader
than the protection it affords.” Montz v. Pilgrim Films &
Television, Inc., 649 F.3d 975, 979 (9th Cir. 2011) (en banc);
see U.S. ex rel Berge v. Bd. of Trs. of Univ. of Ala., 104 F.3d
1453, 1463 (4th Cir. 1997). In other words, the subject matter
underlying a state law claim preempted by the Copyright Act
may nevertheless not be protected by the Copyright Act. By
implication, subject matter supporting a non-preempted state
law claim is definitely not protected by the Copyright Act. A
number of cases from this circuit discuss subject matter akin
30 GARCIA V. GOOGLE, INC.
to an acting performance and prove useful on the question of
fixation.6
In Midler v. Ford Motor Co., Bette Midler sued Ford for
misappropriating her voice in a commercial. 849 F.2d 460,
462 (9th Cir. 1988). Although Ford properly had a license
from the song’s copyright holder, it paid someone to imitate
Midler in singing the song Midler made famous. Id. Although
ultimately holding for Ford, the court rejected its argument
that Midler’s claim was preempted by copyright law. “A
voice is not copyrightable. The sounds are not ‘fixed.’ What
is put forward . . . here is more personal than any work of
authorship.” Id.; see also Sinatra v. Goodyear Tire & Rubber
Co., 435 F.2d 711 (9th Cir. 1970).
In Laws v. Sony Music Entertainment, we distinguished
Midler from its facts in holding that the plaintiff’s claim was
preempted by the Copyright Act, because “Sony was not
imitating ‘Very Special’ as [the plaintiff] might have sung it.
Rather, it used a portion of ‘Very Special’ as sung by [the
plaintiff].” 448 F.3d 1134, 1141 (9th Cir. 2006). Where Sony
had a license to the entire song, its use of a portion of it under
that license could not be attacked outside the copyright laws.
Id.
6
The majority opinion dismisses the line of copyright preemption
precedent. Maj. op. at 9 (“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.”). However, these cases feature the same judges interpreting
the same Copyright Act, whether the question is one of copyright
infringement or copyright preemption. Thus, the majority’s distinction is
without difference; it fails to overcome the fact that subject matter
underlying a non-preempted state law claim, like that in Midler, is clearly
without the Copyright Act’s protection. See Montz, 649 F.3d at 979.
GARCIA V. GOOGLE, INC. 31
Jules Jordan Video, Inc. v. 144942 Canada, Inc.,
617 F.3d 1146 (9th Cir. 2010), is like Laws. Defendants in
Jules Jordan copied (without authorization) pornographic
DVDs produced and copyrighted by Jules Jordan Video, then
reproduced, counterfeited, and sold their copies to third
parties. Id. at 1153. Because Jules Jordan held a copyright in
the original DVDs, this court found that the Copyright Act
preempted its state law right of publicity claim against
Defendants.
The subject matter in Jules Jordan and Laws concerned
entire copyrighted works—video and music recordings.
Differently, Midler involved the imitation of a singer’s voice.
Combined, these cases show that, just as the singing of a song
is not copyrightable, while the entire song recording is
copyrightable, the acting in a movie is not copyrightable,
while the movie recording is copyrightable.7
A musical recording involves many moving parts,
including the tune, lyrics, instrumental musicians, vocalists,
and a production team that edits and prepares the final song.
While the ultimate product is copyrightable, Ninth Circuit
precedent dictates that a vocalist’s singing of the song is not
copyrightable. See Midler, 849 F.2d at 462. An acting
performance depends upon similar moving parts: a script,
multiple actors’ and actresses’ performances, guidance from
directors and staff, and editing and other production
preparation. The movie is ultimately copyrightable. See
7
This is not the case where an independently authored clip is used in a
film, as in Effects Assocs., 908 F.2d at 557–58. Rather, this analogy
assumes facts similar to the instant case: an actress acting out a script she
did not write under the direction of someone else who provides all of the
instruments, tools, and leadership.
32 GARCIA V. GOOGLE, INC.
17 U.S.C. § 102(a). But one actress’s individual acting
performance in the movie, like a vocalist singing a song, “is
more personal than any work of authorship.” Midler,
849 F.2d at 462. As a result, it is not fixed. See id.
Just as “an actor does far more than speak words on a
page,” maj. op. at 8, so too does a vocalist. Indeed, one might
say that otherwise, “every schmuck” is a vocalist, “because
everyone . . . knows how to read.” Id. (quoting Sanford
Meisner & Dennis Longwell, Sanford Meisner on Acting 178
(1987)) (quotation marks omitted). An actress like Garcia
makes a creative contribution to a film much like a vocalist’s
addition to a musical recording. Garcia did not write the
script; she followed it. Garcia did not add words or thoughts
to the film. She lent her voice to the words and her body to
the scene. Her creativity came in the form of facial
expression, body movement, and voice. Similarly, a singer’s
voice is her personal mobilization of words and musical notes
to a fluid sound. Inflection, intonation, pronunciation, and
pitch are the vocalist’s creative contributions. Yet, this circuit
has determined that such, though perhaps creative, is too
personal to be fixed. See Midler, 849 F.2d at 462.
Under this line of cases, an actress’s performance in a
film is more like the personal act of singing a song than the
complete copyrighted works in Laws and Jules Jordan. As a
result, it does not seem copyrightable. Thus, the law and facts
do not clearly support Garcia’s claim that her acting
performance is protected under the Copyright Act.
GARCIA V. GOOGLE, INC. 33
Considering work, authorship, and fixation, Garcia has
not demonstrated how the facts and law clearly favor her
claim of a copyrightable interest in her acting performance.8
2. Work for Hire Doctrine
Even if the majority were correct in finding a
copyrightable interest in Garcia’s acting performance,
preliminary injunctive relief would be unwarranted. The
district court did not address the application of the work for
hire doctrine. Yet, the law and facts do not clearly show that
Garcia was not working for hire.
“In the case of a work made for hire, the employer or
other person for whom the work was prepared is considered
the author for purposes of this title. . . .” 17 U.S.C. § 201(b).
“A ‘work made for hire’ is a work prepared by an employee
within the scope of his or her employment. . . .” Id. at § 101.
Therefore, “[i]n determining whether a hired party is an
employee under the general common law of agency, we
consider the hiring party’s right to control the manner and
means by which the product is accomplished.” Reid, 490 U.S.
at 751.
8
The majority’s amended opinion also attempts to hedge its conclusion
that Garcia has a copyright interest in her acting performance by avoiding
counter arguments it failed to address, because they were not raised by the
parties. Maj. op. at 11, 19. Yet, the majority could consider these
arguments sua sponte “under exceptional circumstances, where substantial
public interests are involved, or where to not do so would be unduly harsh
to one or both of the parties.” United States v. Hoyt, 888 F.2d 1257, 1258
(9th Cir. 1989). The majority’s failure to even engage this inquiry, instead
quickly dismissing arguments against its view, confirms its error.
34 GARCIA V. GOOGLE, INC.
Among the other factors relevant to this
inquiry are the skill required; the source of the
instrumentalities and tools; the location of the
work; the duration of the relationship between
the parties; whether the hiring party has the
right to assign additional projects to the hired
party; the extent of the hired party’s discretion
over when and how long to work; the method
of payment; the hired party’s role in hiring
and paying assistants; whether the work is
part of the regular business of the hiring party;
whether the hiring party is in business; the
provision of employee benefits; and the tax
treatment of the hired party.
Id. at 751–52 (internal citations omitted). Though “[n]o one
of these factors is determinative,” id. at 752, the hiring party’s
control “is the central inquiry here.” JustMed, Inc. v. Byce,
600 F.3d 1118, 1125 (9th Cir. 2010).
The work for hire doctrine “is important in the analysis of
motion picture authorship because in the United States most
contributions to a motion picture are created as works made
for hire.” Dougherty, Not a Spike Lee Joint?, 49 UCLA L.
Rev. at 238. Here, Garcia conceded in her complaint and
affidavit that Youssef “managed all aspects of production,”
controlling both the manner and means of making the film,
including the scenes featuring Garcia. Further, this “central”
factor is not the only one supporting a work for hire finding
here. The bulk of the other factors also suggest that Garcia is
an employee. Youssef provided the instrumentalities and
tools, dictated the filming location, decided when and how
long Garcia worked, and was engaged in the business of film
making at the time. Additionally, Garcia did not hire or pay
GARCIA V. GOOGLE, INC. 35
assistants. Contrary to the majority’s conclusion, maj. op. at
12–14, the facts and law do not clearly favor finding that
Garcia was not working for hire.9
In Reid, the Court decided a sculptor was not an
employee, even though Community for Creative Non-
Violence “directed enough of Reid’s work to ensure that he
produced a sculpture that met their specifications.” Reid,
490 U.S. at 752. However, “all the other circumstances
weigh[ed] heavily against finding an employment
relationship.” Id. This case differs considerably from Reid.
The central factor of control and many other factors “weigh
heavily” for finding an employment relationship.
In sum, the majority gives zero deference to the district
court’s position on the likelihood for success factor. To
justify its opinion, the majority must show the district court
abused its discretion in determining the law and facts did not
clearly show Garcia was likely to succeed on the merits. This,
the majority has failed to do.
B. Irreparable Harm
The district court decided that because “[t]he Film was
posted for public viewing on YouTube” five months prior to
Garcia bringing suit, she “has not demonstrated that the
requested preliminary relief would prevent any alleged
harm.” The majority has failed to demonstrate how the
district court abused its discretion in so holding.
9
While the majority may dispute which person was actually directing
the film, it cannot overcome Garcia’s own admissions in her complaint
that substantiate these facts; she was not in control.
36 GARCIA V. GOOGLE, INC.
Indeed, the district court’s application of the law to the
facts of this case here was not an abuse of discretion. A
“[p]laintiff’s long delay before seeking a preliminary
injunction implies a lack of urgency and irreparable harm.”
Oakland Tribune, Inc. v. Chronicle Publ’g Co., 762 F.2d
1374, 1377 (9th Cir. 1985). The district court gave significant
weight to Garcia’s delay in filing suit, even given Garcia’s
explanation for her delay. See maj. op. at 16–17. This is not
illogical or implausible. Were Garcia really trying to protect
her purported copyright interest in her acting performance,
one would expect her to have brought this action immediately
after learning of the alleged infringing behavior. Considering
“[t]he relevant harm is the harm that . . . occurs to the parties’
legal interests,” Garcia has failed to explain her delay in
terms of harm to her alleged copyright interest. See Salinger
v. Colting, 607 F.3d 68, 81 & n.9 (2d Cir. 2010) (“[T]he
justification of the copyright law is the protection of the
commercial interest of the artist/author. It is not to coddle
artistic vanity or to protect secrecy, but to stimulate creation
by protecting its rewards.” (internal quotation marks
omitted)).
Further, by Garcia’s own admission, the film has been
widely discussed and disseminated; Garcia admits in her
affidavit that she “went public and advised the world through
media that [she] did not condone the film.” Thus, while
Garcia has provided undisputed evidence of past threats and
injuries, she has failed to link her allegations of future harm
to potential future viewings of the film on YouTube. See
Perfect 10 v. Google, Inc., 653 F.3d 976, 982 (9th Cir. 2011);
Ctr. for Food Safety v. Vilsack, 636 F.3d 1166, 1173 (9th Cir.
2011).
GARCIA V. GOOGLE, INC. 37
Therefore, it is not illogical or implausible to conclude
that the law and facts do not clearly demonstrate how Garcia
will suffer continued irreparable harm caused by the presence
of the film on YouTube. See Small v. Operative Plasterers’
and Cement Masons’ Int’l Ass’n Local 200, 611 F.3d 483,
494 (9th Cir. 2010).
Rather than focusing on the logic or plausibility of the
district court’s decision, the majority substitutes its own
explanation of why Garcia’s delay should not be held against
her. Maj. op. at 16–18. However, the weight attached by the
district court to certain facts when measuring irreparable
harm is not for this court to second guess. See Earth Island
Inst. v. Carlton, 626 F.3d 462, 475 (9th Cir. 2010).
C. Balancing the Equities
When considering the propriety of preliminary injunction
relief, “a stronger showing of one element may offset a
weaker showing of another.” Alliance for the Wild Rockies,
632 F.3d at 1131. The district court applied this concept in
concluding preliminary injunctive relief was unwarranted
without considering the balance of the equities or the public
interest.
However, the balance of the equities does not clearly
favor Garcia. A court must “balance the interests of all parties
and weigh the damage to each.” Stormans, Inc. v. Selecky,
586 F.3d 1109, 1138 (9th Cir. 2009).
Google argues that the balance of the equities does not
clearly favor Garcia, because “[a] court order requiring
removal from YouTube of the Film or any portion thereof
would impose a substantial burden on free expression,
38 GARCIA V. GOOGLE, INC.
without preventing any future harm to Appellant.” Garcia is
only faced with potential infringement of her potential
copyright interest pending a final disposition of this lawsuit.
Further, she is not completely without fault in these
circumstances. If she valued her acting performance to the
extent she now claims, why didn’t she protect her
performance by contract? The facts evidence that she acted
for three days and was paid $500 dollars. Balancing the harm
faced by both Garcia and Google, the law and facts do not
clearly favor Garcia.
In its basis concerning the balance of the equities, the
majority discusses Youssef’s reproachable conduct. Maj. op.
at 18–19. However, Youssef is not a party to this appeal, and
Google was not a party to any of Youssef’s actions.
Therefore, the balance of the equities does not clearly
favor Garcia.
D. Public Interest
“In exercising their sound discretion, courts of equity
should pay particular regard for the public consequences in
employing the extraordinary remedy of injunction.” Johnson
v. Couturier, 572 F.3d 1067, 1082 (9th Cir. 2009) (quoting
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7,
24(2008)) (emphasis added). In fact, “‘the court may in the
public interest withhold relief until a final determination of
the rights of the parties, though the postponement may be
burdensome to the plaintiff.’” Stormans, 586 F.3d at 1139
(quoting Weinberger v. Romero-Barcelo, 456 U.S. 305,
312–313 (1982)).
GARCIA V. GOOGLE, INC. 39
The public’s interest in a robust First Amendment cannot
be questioned. See Sammartano v. First Judicial Dist. Court,
303 F.3d 959, 974 (9th Cir. 2002). Opposite this vital public
interest is Garcia’s allegation of copyright infringement.
Properly enforcing the Copyright Act is also an important
public interest. See Small v. Avanti Health Sys., LLC,
661 F.3d 1180, 1197 (9th Cir. 2011). Indeed, if Google were
actually infringing Garcia’s copyright, the First Amendment
could not shelter it. See Eldred v. Ashcroft, 537 U.S. 186,
219–20 (2003).
But the case at bar does not present copyright
infringement per se. Instead (in an unprecedented opinion),
the majority concludes that Garcia may have a copyright
interest in her acting performance. Maj. op. at 10. As a result,
Google’s contention, that issuing a preliminary injunction on
these facts may constitute a prior restraint of speech under the
First Amendment, identifies an important public interest.
Thus, the law and facts do not clearly demonstrate how
granting a preliminary injunction in Garcia’s favor would
serve the public interest.
III. Conclusion
The Stanley standard counseling extreme caution when
considering granting a mandatory preliminary injunction is
premised on principles of judicial restraint. Instead, the
majority abandons restraint to procure an end (ordering the
film be taken down) by unsuitable means (the Copyright Act).