(The opinions expressed here are those of Alison Frankel, a columnist for Reuters.)
By Alison Frankel
NEW YORK, March 14 (Reuters) - Does Chief Justice Alex Kozinski of the 9th Circuit Court of Appeals know more about the Copyright Act than the U.S. Copyright Office?
Not according to Google.
In a new brief to the 9th Circuit, Google has asked the entire court to review a controversial Feb. 26 opinion in which Kozinski and Judge Ronald Gould concluded that Google and YouTube must take down video from the explosive film "Innocence of Muslims" because the movie likely infringes the right of an actress, Cindy Lee Garcia, to control her own five-second performance in the film.
Google's new brief argues that Kozinski and Gould misinterpreted the Copyright Act when they found, in an issue of first impression, that Garcia likely has an independent interest in her performance. And the company's lawyers at Hogan Lovells gave the 9th Circuit a good reason why all of the judges on the court should reconsider Kozinski's take on Garcia's rights: A week after his opinion came out, the U.S. Copyright Office rejected Garcia's application to register a copyright on her performance in "Innocence of Muslims."
In a March 6 letter to Garcia's lawyer, Cris Armenta of The Armenta Law Firm, the Copyright Office said that its "longstanding practices" do not allow actors to copyright individual performances within a movie.
Google is not alone in hoping that the 9th Circuit will reconsider the Kozinski opinion. As the brief points out, the possibility that actors with bit parts may have a right to control the distribution of entire movies has struck fear in film producers and documentarians.
Meanwhile, a group of news organizations, including The New York Times and the Los Angeles Times, has filed an amicus brief arguing that the 9th Circuit's takedown order contradicts important First Amendment principles and ought to be reconsidered. (Technically, the publishers' brief addressed en banc review of the 9th Circuit's decision not to stay the takedown order while Google pursues appeals, but the same arguments also apply more broadly.)
Garcia, on the other hand, has won support from the Screen Actors Guild, which said Kozinski's opinion underscores actors' rights to contractual protection, and (less wholeheartedly) from copyright eminence David Nimmer, a UCLA professor and the co-author of the leading copyright treatise.
Nimmer told Jonathan Handel of The Hollywood Reporter that he agreed with the 9th Circuit majority, though he also said that the dissenting opinion by Judge Randy Smith raised "cogent questions."
Nimmer described the facts of the Garcia case as "squirrely," and they certainly are that.
When Garcia agreed to be filmed by Mark Basseley Youssef (also known as Nakoula Basseley Nakoula and as Sam Bacile), she believed she would be appearing in an adventure film called "Desert Warrior." She was paid $500 for several days of filming, giving a performance in which she tweaked four pages of dialogue written by Youssef.
Garcia never saw the finished cut of the movie - which turned out to be not an Arabian adventure flick but an anti-Muslim screed - until after it inspired riots in Egypt. Only then did she learn that the lines she'd read had been overdubbed to make it appear as though her character was accusing Mohammed of pedophilia.
Spooked by death and assault threats and a fatwa against her by Egyptian clerics, Garcia repeatedly asked Google to remove the film from YouTube, but the site refused. That prompted her lawyers, Armenti and French counsel Credence Sol, to sue Google and YouTube under the novel theory that they were infringing Garcia's copyrights.
U.S. District Judge Michael Fitzgerald of Los Angeles denied Garcia's motion to bar YouTube from hosting "Innocence of Muslims," finding that (among other deficiencies), she was unlikely to prevail on the merits of her infringement claim because she'd granted Youssef an implied license to intellectual property rights in her performance. The 9th Circuit majority disagreed with that analysis.
Under the particular facts of this case, Kozinski wrote, Garcia had implicitly licensed Youssef to use her acting in an adventure movie called "Desert Warrior," not in the movie he actually produced.
"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," the opinion said. "Youssef's fraud alone is likely enough to void any agreement he had with Garcia."
Kozinski took pains to insist that Garcia's independent rights to her performance stem from the "extraordinarily rare" circumstances of a producer defrauding a performer. The opinion carefully avoided sweeping pronouncements about actors' rights in works that involve contributions from large numbers of people.
"We need not and do not decide whether every actor has a copyright in his performance within a movie," the opinion said. "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." The vast majority of movie producers avoid that thicket via implied licenses or work-for-hire agreements, the 9th Circuit majority said, and even Garcia's copyright power "is fairly debatable." But according to the Kozinski opinion, she was likely to prevail on the merits.
Garcia's lawyers had applied for copyright registration of her performance back in September 2012, before her case even got to the 9th Circuit. In December 2012, the Copyright Office sent her lawyer, Armenti, a letter raising concerns about the application.
"For copyright registration purposes, a motion picture is a single integrated work," the letter said. "Assuming Ms. Garcia's contribution was limited to her acting performance, we cannot register her performance apart from the motion picture. Nor does it seem likely that she is entitled to register a claim in the motion picture as a whole in her name."
The letter asked Armenti to respond if Garcia was claiming a copyright to the entire film; Armenti instead passed along her appellate brief on Garcia's copyright in May 2013. After Kozinski's 9th Circuit opinion came out, Armenti sent it to the Copyright Office as well, by regular mail on March 4.
The Copyright Office's March 6 rejection of Garcia's claim does not mention Kozinski's opinion, so it's not clear whether evaluators even received Armenti's letter or considered the appeals court's reasoning. The office's three-page determination (which is attached to Google's brief requesting en banc consideration) describes its traditional interpretation of movies as a single work for copyright purposes.
The only exception, according to the letter, comes when producers commission a separate piece of the film, such as a special effects sequence, that qualifies as its own discrete, creative enterprise. Garcia's performance doesn't fit that exception, the letter said, so it's not entitled to copyright protection.
Google's new brief argues that the 9th Circuit owes deference to the Copyright Office's determination. In fact, Google claims that the appellate panel's opinion violated the office's statutory right to intervene in the Garcia case to defend its interpretation of the Copyright Act because the 9th Circuit determination preceded the Copyright Office's rejection of the actress's application. The entire court, Google said, "should grant rehearing en banc to resolve these splits of authority and restore certainty to the entertainment and distribution industries."
Will the court take the en banc appeal? My bet is yes. On Thursday, Garcia's lawyers were instructed to file a response to Google; their arguments are previewed in a brief they filed Wednesday that addresses a possible reconsideration of Google's rejected stay motion. In essence, the Garcia camp contends that the unique circumstances of this case - in which Garcia never legitimately transferred her rights to Youssef and is at real risk of physical violence - justify the 9th Circuit's copyright holding.
In a phone interview Friday, Armenti told me that the Copyright Office's rejection of Garcia's copyright application doesn't change anything. The office's determination, she said, contradicts the position of the U.S. Patent and Trademark Office, which has said in connection with a proposed international intellectual property treaty that "actors and musicians are considered to be 'authors' of their performances." (Google has said that the USPTO's statements are due no deference, in part because the international treaty has been ratified by only two countries and also because the Copyright Office, not the USPTO, administers the Copyright Act.) Armenti, however, said it is the courts that will ultimately determine Garcia's rights, and the 9th Circuit has already found that her client is likely to win.
"The Copyright Office ruling is not definitive," she told me.
Google lead counsel Neal Katyal of Hogan Lovells, a former acting solicitor general, came into the case after the 9th Circuit ordered Google to take down "Innocence" videos. (Perkins Coie handled the previous 9th Circuit briefing and argument.) Katyal declined my email request for comment. (Reporting By Alison Frankel; Editing by Ted Botha)