Chief Judge Alex Kozinski, United States court of appeal for the Ninth Circuit
Chief Judge Alex Kozinski, United States court of appeal for the Ninth Circuit (Jason Doiy)

Controversy has followed “Innocence of Muslims” ever since the 14-minute video was uploaded to YouTube and dubbed into Arabic. After provoking violent and sometimes deadly protests around the world, the film is now setting off a legal firestorm at the U.S. Court of Appeals for the Ninth Circuit.

The combination of Google’s uncompromising litigation position on behalf of its subsidiary and Chief Judge Alex Kozinski’s outside-the-box handling of the case, which included a secret takedown order that Google was forbidden from making public for a week, has proven highly combustible in technology, media, motion picture and academic circles—and apparently even the court itself.

At least one Ninth Circuit judge called for en banc review of Kozinski and Judge Ronald Gould’s refusal to stay their decision pending further appellate review. On Friday afternoon the court announced that it would not reconsider the stay order en banc.

It would be rare for the court to convene en banc to reconsider an order, Ben Feuer of the California Appellate Law Group said earlier last week, though the court’s rules do provide for it.

Google’s petition for rehearing on the merits remains pending, and earlier this month the U.S. Copyright Office took a position directly at odds with Kozinski’s.

Feuer said anything could happen in a case like Garcia v. Google, where existing law and precedents did not anticipate technology that allows billions of people around the world to watch a video. “There’s just no easy answer here,” he said.

On Feb. 26 the Ninth Circuit issued its public opinion ordering Google to take down the film clip from YouTube, granting the preliminary injunction requested by an actress who argued that its continued broadcast infringed her performance copyright and jeopardized her safety.

If Kozinski’s panel opinion stands, it will mark the third major loss for Google before the Ninth Circuit in the last six months. In September the court declined to dismiss a privacy class action stemming from Google’s Street View project. In January the court turned down Google’s (and Apple, Intel and Adobe System’s) bid for early appellate review of a class action alleging they conspired not to recruit each other’s employees.

Google has been criticized in some quarters for refusing Garcia’s request to take down the video. Kozinski seemed to echo that sentiment in his opinion. “It’s disappointing, though perhaps not surprising, that Garcia needed to sue in order to protect herself and her rights,” he wrote.

Google is represented by Perkins Coie partner Timothy Alger, a former Google deputy GC. The company has added Hogan Lovells partner Neal Katyal in its bid for en banc proceedings.

Making Movies

Cindy Lee Garcia says she was paid $500 to appear in a low-budget adventure movie with the working title “Desert Warrior.” But the movie’s writer-producer, Mark Basseley Youssef, transformed it without her knowledge into the anti-Islamic “Innocence of Muslims.” During the five seconds in which Garcia’s character appears, her voice is partially overdubbed so that she appears to be asking, “Is your Mohammed a child molester?”

“These, of course, are fighting words to many faithful Muslims,” Kozinski wrote in his opinion. An airing of the film on Egyptian television sparked protests that led to worldwide news coverage, and an Egyptian cleric issued a fatwa that called for the killing of everyone involved in the film.

Garcia’s appellate briefs are peppered with examples of the many death threats she’s received. She’s been banned from La Guardia Airport because of the security risk she presents. Her attorney, M. Cris Armenta, has been asked to inform court security whenever Armenta visits Los Angeles Superior Court, even on unrelated matters.

“Ms. Garcia’s life has changed in ways that most people cannot imagine,” Armenta wrote in court papers, “all because a convicted fraudster lied to trick her into appearing in a film that then went ‘viral’ on Google and YouTube’s worldwide platforms.”

As it happens, Kozinski is a renowned movie buff. Several times a year he screens “Kozinski’s Favorite Flicks” for courthouse staff and friends, often presenting insights from individuals involved with the creation of the featured movie. His son works as a film editor. “He knows what he’s doing” with the Garcia opinion, says Feuer, “and he knows what it means.”

Kozinski ruled that Garcia held a copyright interest as an actor whose performance evinced at least a minimal level of creativity. Because she’s facing credible threats of death or bodily injury, she’s shown a likelihood of irreparable harm justifying an injunction removing the video from YouTube.

“We need not and do not decide whether every actor has a copyright in his performance within a movie,” Kozinski wrote. “It suffices for now to hold that, while the matter is fairly debatable, Garcia is likely to prevail.”

Judge N. Randy Smith dissented, saying, “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.”

Acting in Secret

While the ruling itself made headlines across Hollywood and Silicon Valley, it’s what happened in secret a week earlier that the full court briefly reconsidered. The court issued a sealed order directing Google to take down all copies of “Innocence of Muslims” from and any other platform under the company’s control. “Neither the parties nor counsel shall disclose this order, except as necessary to the takedown process, until the opinion in this case issues,” the order stated.

Google moved for an emergency stay the next day, which the panel denied, although it later allowed Google to display versions of the movie that have excised Garcia’s performance.

The fast-paced and secretive action left some interested parties scrambling to catch up. On March 12 Fenwick & West partner Andrew Bridges gently suggested the court might put off the vote on whether to reconsider the stay order so that his clients, Facebook, Pinterest and Twitter among others, could weigh in as amici curiae. That request went unheeded.

Google did, however, receive amicus support from media outlets warning about “government censorship.”

“The panel’s statement that it was acting to prevent a rush to proliferate the video before its removal from YouTube overlooks the fact that the video had been available online since July 2012, and that it remains available on other websites unaffected by the injunction,” Davis Wright Tremaine partner Kelli Sager wrote on behalf of the Los Angeles Times and others.

Perhaps more puzzling is that Kozinski wrote just two years ago in the Stanford Law Review about the futility of removing content from the Internet. “That is one of the great dangers of the Internet and particularly of Web 2.0,” he wrote. “No matter how private, dangerous, hurtful, sensitive or secret a piece of information may be, any fool with a computer and an Internet connection—which means just about everybody—can post it online, never again to be private or secret.” Eventually, “bots and crawlers pick it up and the Wayback Machine makes sure the genie is never, ever to be stuffed back into the bottle.”

Clash Over Copyrights

On the merits, the extension of copyright to an actor’s performance has some support among IP experts. Copyright scholar David Nimmer told The Hollywood Reporter that he agrees with the decision, and George Mason University IP professor Christopher Newman said that it’s “definitely plausible.”

“For the most part, we don’t want copyright ownership to get too fragmented,” Newman said, giving a veto to any contributor to a collaborative work. But, he said, the Copyright Act doesn’t speak clearly on the issue. And between the procedural posture as an injunction case and the unusual facts surrounding Garcia’s employment, the ruling’s precedential value might be limited anyway, he said.

The Copyright Office has now thrown a wrench into the works, taking the opposite position on the merits from Kozinski. Garcia’s performance “was one of many actors’ performances that went into the making of the integrated motion picture that was fixed by others in the creation of the motion picture as a whole,” Robert Kasunic, associate register of copyrights, wrote to Garcia’s lawyer on March 6. “As such, the office must refuse registration in Ms. Garcia’s claim in her individual performance in the motion picture.”

That complicates things, Newman said. “Courts disagree with the copyright office all the time,” he said, but if other Ninth Circuit judges want to take up the merits en banc, the “conflict” with the Copyright Office could give them an argument to make.

Given the bold steps he was taking in the case, should Kozinski have bounced his ideas off other members of the court before proceeding?

“Generally, I don’t think judges who are on a panel talk about an opinion they’re working on with judges not on the panel,” said Newman, who once clerked for Kozinski. “I would be surprised if that were the case.”

Feuer, who clerked for Ninth Circuit Judge Carlos Bea, agreed, saying the panel judges focus on making the best decision they can with the facts and law they have. “Even if the en banc panel goes the other way, your original panel decision can serve as the basis for a petition for certiorari,” he points out. “Some law professor may teach your panel opinion someday.”

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