The 9th Circuit Rights the Balance Between Copyright Law and the First Amendment

The 9th Circuit has dissolved a sweeping preliminary injunction that had ordered Google to take down copies of "Innocence of Muslims," an anti-Islam film trailer that was linked to violent protests in the Middle East in 2012. The May 18, 2015, decision by the en banc court came nearly a year and a half after a divided panel ordered the video removed while a performer's copyright claim worked its way through the courts.

The novel application of copyright law to suppress a newsworthy video drew protests from media organizations, a number of whom expressed concerns in an amicus brief that the original panel's expansive interpretation of injunctive relief under copyright law could allow disgruntled subjects of news coverage to block unflattering articles or broadcasts while evading traditional First Amendment protections. In vacating the injunction, the court majority agreed with a central premise of the media amicus brief, writing that the "panel's takedown order of a film of substantial interest to the public is a classic prior restraint of speech." Noting that a "weak copyright claim cannot justify censorship in the guise of authorship," the court held that such takedown orders must meet a heavy burden to justify the restriction on speech.

"Innocence of Muslims" and an International Controversy

"Innocence of Muslims" depicts the prophet of Islam as, among other things, a pedophile and murderer. After the crude film was posted on YouTube and translated into Arabic, it caused outrage in the Middle East and was cited as the cause of violent protests, including the September 11, 2012, attack on the U.S. Consulate in Benghazi (which resulted in the death of U.S. Ambassador Christopher Stevens). After the 2012 attack, officials in President Obama's administration referred to the possibility that the film had spontaneously instigated the attack, but others disagreed, arguing that the attack was a planned act of terrorism that the United States should have anticipated.

An Egyptian cleric later issued a fatwa against anyone associated with the film. Following the fatwa, Cindy Lee Garcia, an actress in the film, sought to enjoin Google (which owns YouTube) from hosting the film. Garcia alleged that she had been told her performance would appear in a desert adventure story and she read innocuous lines given to her by the film's director, Mark Basseley Youssef. Youssef allegedly dubbed in different lines later to make it appear that Garcia's character was accusing the prophet of being a child molester.

Garcia sued Google and Youssef in California state court, seeking to enjoin further distribution of the film based on claims sounding in privacy. After the state court suit was quickly dismissed, Garcia brought a copyright action against Google in federal court. In the federal action, she claimed a copyright interest in her five-second performance, complained that Google had not responded to her takedown requests, and argued that continued public availability of the film was likely to cause her irreparable harm, including possibly death.

The Secret Preliminary Injunction and Gag Order

The district court denied the preliminary injunction, but a divided panel of the 9th Circuit reversed. The panel majority granted the injunction, requiring Google to take down all copies of the film featuring Garcia. (The panel initially issued its order in secret, prohibiting Google from telling the public about the takedown, or the court's order, until the panel filed its opinion a week later.)

Then-Chief Judge Alex Kozinski authored the panel majority's decision, holding that Garcia was likely to succeed on the merits because her performance was itself copyrightable under the "minimal creativity" standard set out in Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991). The majority found that Garcia possessed all rights to her performance because it had not been shown that 1) she contributed her performance within the scope of employment, 2) she had executed a work-made-for-hire agreement, or 3) she had granted Youssef an implied license to use her performance (given that Youssef used dubbing to change the content of her lines without her consent). The panel majority also found that irreparable harm would likely result from the alleged infringement because Youssef's posting of Garcia's performance caused Garcia to receive credible death threats.

The majority rejected Google's argument that the public interest favored continued access to newsworthy materials, stating that "the First Amendment doesn't protect copyright infringement." Judge N. Randy Smith dissented, disagreeing with the majority's substantive analysis of the copyright claim and also suggesting that the injunction was an impermissible prior restraint.

A wide array of news organizations, filmmakers, Internet companies, academics, and free speech advocacy groups filed amicus briefs supporting Google's request for rehearing. Some argued that the court's reasoning would drastically expand the number of people who could assert a copyright over a work and would allow any of these new copyright "owners" to assert a shaky copyright claim as a basis for forcing the takedown of expressive works, including news coverage. Some amici argued that this novel theory of copyright—making claims available to any person who contributed "minimal creativity" to an expressive work, without even considering the First Amendment—could provide an end-run around speech protections that limit prior restraints in other contexts, such as in defamation or privacy torts. Others warned that the ruling could encourage would-be censors to use threats as a sort of "heckler's veto" to encourage the suppression of works with which they disagree.

The 9th Circuit agreed in November 2014 to rehear the case en banc. But the court denied Google's request to stay the panel's ruling. Consequently, Google remained subject to the takedown order for nearly 15 months, until the issuance of the en banc opinion.

The En Banc Decision 

The 9th Circuit ultimately vacated the injunction in a 10–1 decision written by Judge M. Margaret McKeown, with Judge Kozinski the only dissenter. The en banc opinion noted Garcia's "heartfelt plea for personal protection," but held that copyright law and First Amendment principles foreclosed her request for a preliminary injunction.

"A Classic Prior Restraint" 

The court determined that the takedown order "gave short shrift to the First Amendment values at stake." It rejected the nostrum that "the First Amendment doesn't protect copyright infringement," and clarified that copyright law "is not categorically immune from challenges under the First Amendment," citing the Supreme Court's decision in Eldred v. Ashcroft, 537 U.S. 186 (2003). Accordingly, the en banc decision confirmed the takedown order was "a classic prior restraint of speech" and held that the "heavy presumption" against such restraints simply could not be overcome with such a thin copyright claim, especially given that the film was "controversial and politically significant."

Takedown Orders Are Mandatory Injunctions 

The en banc court's analysis of the four-factor preliminary-injunction test likely will help creators and distributors avoid takedowns of expressive works in questionable cases. The opinion confirms that takedown orders are mandatory injunctions that are subject to a heightened showing of likelihood of success. Although the panel majority had required Garcia to show only that she was likely to succeed on the merits of her copyright claim, the en banc court held that, because the takedown order required Google to take affirmative action—"to remove (and to keep removing) Innocence of Muslims from YouTube"—it was a mandatory injunction. Accordingly, Garcia had to show that the law and facts "clearly favor" her position—a difficult task in the context of a novel theory of copyright.

No "Copyright of Thousands" 

On the facts presented, the en banc court held that Garcia could not show that the law "clearly favor[ed]" her position; instead, the court held that Garcia's theory of copyright ownership would undermine the purpose of the Copyright Act by splintering copyright ownership among thousands of contributors. (Judge Watford argued in a concurrence that the court should have decided the case on narrower grounds.)

The en banc court zeroed in on the key issue raised by Garcia's copyright theory: whether a contributor's performance can be considered a copyrighted work that is separate from the work in which it is contained. The court answered in the negative, drawing on guidance from the Copyright Office and its prior decision in Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000). The en banc court's reasoning focused on the threat that Garcia's theory would "fragment copyright protection" for integrated works, and raise the specter of a "copyright cherry-picking" whereby "any contributor from a costume designer down to an extra…[would be enabled] to claim copyright in random bits and pieces of a unitary motion picture without satisfying the requirements of the Copyright Act." Thus, a "cast of thousands" in an ambitious film would yield a "copyright of thousands." The court also noted that under Garcia's theory, "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"—a point raised by media organizations in their amicus brief.

Copyright Law Is "Meant To Foster Rather Than Repress Free Expression" 

The en banc court also was concerned that Garcia's theory would empower plaintiffs to use copyright as a tool of censorship, an outcome it found particularly undesirable given that copyright was actually meant to encourage creation and distribution of expressive works.

Given that Garcia faced credible death threats from religious extremists, the court wrote that "at first blush, irreparable harm looks like Garcia's strongest argument." But the court noted that, for purposes of a preliminary injunction, an alleged "irreparable" harm is only relevant if it affects a legal interest protected by the movant's cause(s) of action. Thus, when a preliminary injunction is sought based solely on a claim of copyright, the movant must show irreparable harm to the movant's "interests as an author."

To determine the contours of Garcia's "interests as an author," the court considered the Copyright Act's purpose, and held that copyright law is "meant to foster rather than repress free expression." As the Supreme Court noted in Harper & Row Publishers, Inc., v. Nation Enterprises, 471 U.S. 439 (1985), copyright "supplies the economic incentive to create and disseminate ideas." In other words, copyright does not protect personal safety or dignitary interests, and therefore, harm to those interests cannot justify taking down copyrighted material.

"Ultimately," the Court observed, "Garcia would like to have her connection to the film forgotten and stripped away from YouTube. Unfortunately for Garcia, such a 'right to be forgotten,' although recently affirmed by the Court of Justice for the European Union, is not recognized by the United States." This statement should come as no surprise to American speech advocates, but reaffirms the principle that copyright cannot be used to conceal or restrain public facts.

At the same time the en banc opinion was issued, Judge Stephen Reinhardt filed a separate opinion dissenting from the Court's decision in March 2014 not to rehear the denial of Google's request for a stay of the takedown order. Judge Reinhardt expressed dismay that "our court allowed an infringement of First Amendment rights to remain in effect for 15 months before we finally issued our opinion dissolving the unconstitutional injunction issued by a divided three-judge panel." Noting that the film's role in the Benghazi attack has been the subject of congressional hearings, Judge Reinhardt stated that the panel's order "condoned censorship of political speech of the highest First Amendment magnitude."

Conclusion

After 15 months, several rounds of briefing, and 13 separate amicus briefs, the 9th Circuit dissolved a prior restraint that had restricted access to a politically significant film at the center of world-historical events. This victory is worth celebrating, and the court's reasoning will forestall future attempts to restrain expressive works based on thin copyright claims. It is also worth noting the role that amici played in this victory: the court majority expressly thanked the 13 amici who submitted briefs, specifically mentioning several groups. The court's reasoning also reflected arguments made by some of the amici, which reaffirms the importance of weighing in on important constitutional cases.

As Judge Reinhardt points out, however, this victory nonetheless is bittersweet, given the lengthy period of time in which the public was denied regular access to a film bound up in world events and news organizations and commentators were prevented from featuring the film directly in their coverage of these events. Hopefully the outcome of this case, and the strong opinion issued by Judge Reinhardt, will persuade other courts to reject heckler's vetoes, and to subject all takedown orders to the most exacting First Amendment scrutiny.

Davis Wright Tremaine LLP attorneys Kelli L. Sager, Dan Laidman, and Brendan Charney represented Amici Curiae Los Angeles Times Communications LLC; The E.W. Scripps Company; Advance Publications, Inc.; The New York Times Company; The Washington Post; the Reporters Committee for Freedom of the Press; National Public Radio, Inc.; the National Press Photographers Association; the California Newspaper Publishers Association; and the First Amendment Coalition in this matter.