Cindy Garcia v. Google, Inc.

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, OPINION

Defendants-Appellees,

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

Argued and Submitted En Banc

December 15, 2014—Pasadena California

Filed May 18, 2015

Before: Sidney R. Thomas, Chief Judge, and Alex

Kozinski, M. Margaret McKeown, Marsha S. Berzon,

Johnnie B. Rawlinson, Richard R. Clifton, Consuelo M.

Callahan, N. Randy Smith, Mary H. Murguia, Morgan

Christen and Paul J. Watford, Circuit Judges.

Opinion by Judge McKeown;

Concurrence by Judge Watford;

Dissent by Judge Kozinski

SUMMARY*

Copyright / Preliminary Injunction

The en banc court affirmed the district court’s denial of

Cindy Lee Garcia’s motion for a preliminary injunction

requiring Google, Inc., to remove the film Innocence of

Muslims from all of its platforms, including YouTube.

A movie producer transformed Garcia’s five-second

acting performance for a film titled Desert Warrior into part

of a blasphemous video proclamation against the Prophet

Mohammed. Innocence of Muslims was credited as a source

*

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 3

of violence in the Middle East, and Garcia received death

threats.

The en banc court held that the district court did not abuse

its discretion in denying Garcia’s motion for a mandatory

preliminary injunction because the law and facts did not

clearly favor her claim to a copyright in her acting

performance as it appeared in Innocence of Muslims. The en

banc court credited the expert opinion of the Copyright

Office, which had refused to register Garcia’s performance

apart from the film. The en banc court also held that in the

context of copyright infringement, the only basis upon which

the preliminary injunction was sought, Garcia failed to make

a clear showing of irreparable harm to her interests as an

author.

The en banc court dissolved the three-judge panel’s

amended takedown injunction against the posting or display

of any version of Innocence of Muslims that included

Garcia’s performance. The en banc court held that the

injunction was unwarranted and incorrect as a matter of law

and was a prior restraint that infringed the First Amendment

values at stake.

Concurring in the judgment, Judge Watford wrote that the

majority should not have reached the issue of copyright law,

but rather should have affirmed, without controversy, on the

basis of Garcia’s failure to establish a likelihood of

irreparable harm.

Dissenting, Judge Kozinski wrote that Garcia’s dramatic

performance met all of the requirements for copyright

protection. He wrote that her copyright claim was likely to

4 GARCIA V. GOOGLE

succeed and that she had made an ample showing of

irreparable harm.

COUNSEL

M. Cris Armenta, The Armenta Law Firm ACP, Los Angeles,

California; Credence Sol, La Garenne, Chauvigng, France;

and Jason Armstrong, Bozeman, Montana, for Plaintiff-

Appellant.

Neal Kumar Katyal, Christopher T. Handman, Dominic F.

Perella, and Sean Marotta, Hogan Lovells US LLP,

Washington, D.C.; and Timothy Alger and Sunita Bali,

Perkins Coie LLP, Palo Alto, California, for Defendants-

Appellees Google, Inc. and YouTube LLC.

Michael H. Page and Joseph C. Gratz, Durie Tangrie LLP,

San Francisco, California, for Amicus Curiae Netflix, Inc..

Christopher Jon Sprigman, New York University School of

Law, New York, New York; Christopher Newman, George

Mason University School of Law, Arlington, Virginia; and

Jennifer S. Grannick, Stanford Law School, Stanford,

California, for Amici Curiae Professors of Intellectual

Property.

Matt Schruers, Washington, D.C., for Amicus Curiae

Computer & Communications Industry Association.

Corynne McSherry and Vera Ranieri, Electronic Frontier

Foundation, San Francisco, California; Lee Rowland and

Brian Hauss, American Civil Liberties Union, New York,

New York; Sherwin Siy and John Bergmayer, Public

GARCIA V. GOOGLE 5

Knowledge, Washington, D.C.; Art Neill and Teri Karobonik,

New Media Rights, San Diego, California; Erik Stallman,

Center for Democracy & Technology, Washington, D.C.; and

Jonathan Band, Jonathan Band PLLC of Washington, D.C.,

for Amici Curiae Electronic Frontier Foundation, American

Civil Liberties Union, Public Knowledge, Center for

Democracy and Technology, New Media Rights, American

Library Association, Association of College and Research

Libraries, and Association of Research Libraries.

Catherine R. Gellis, Sausalito, California, for Amici Curiae

Floor 64, Inc., and Organization for Transformative Works.

Christopher S. Reeder, Robins, Kaplan, Miller & Ciresi LLP,

Los Angeles, California; David Leichtman and Michael A.

Kolcun, Robins, Kaplan, Miller & Ciresi LLP, New York,

New York; and Kathryn Wagner, Stacy Lefkowitz, and

Kristine Hsu, New York, New York, for Amicus Curiae

Volunteer Lawyers for the Arts, Inc.

Andrew P. Bridges, David L. Hayes, Kathryn J. Fritz, and

Todd R. Gregorian, Fenwick & West LLP, San Francisco

California, for Amici Curiae Adobe Systems, Inc.,

Automattic, Inc., Facebook, Inc., Gawker Media, LLC,

IAC/Interactive Corp., Kickstarter, Inc., Pinterest, Inc.,

Tumblr, Inc., and Twitter, Inc.

Venkat Balasubramani, Focal PLLC, Seattle, Washington;

Eric Goldman, Santa Clara University School of Law, Santa

Clara, California, for Amici Curiae Internet Law Professors.

Gary L. Bostwick, Bostwick Law, Los Angeles, California;

Jack I. Lerner, UCI Intell. Prop., Arts & Tech. Clinic, Irvine,

California; Michael C. Donaldson, Donaldson + Callif, LLP,

6 GARCIA V. GOOGLE

Beverly Hills, California; Lincoln D. Bandlow, Lanthrop &

Gage LLP, Los Angeles, California; and Rom Bar-Nissim,

Los Angeles, California, for Amici Curiae International

Documentary Association, Film Independent, Fredrik Gertten

and Morgan Spurlock.

Kelli L. Sager, Dan Laidman and Brendan N. Charney, Davis

Wright Tremaine LLP, Los Angeles, California, for 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.

Duncan Crabtree-Ireland and Danielle S. Van Lier, SAG-

AFTRA, Los Angeles, California; Thomas R. Carpenter,

Actors’ Equity Association, New York, New York; Jennifer

P. Garner, American Federation of Musicians of the United

States and Canada, New York, New York; Dominick Luquer,

International Federation of Actors, Brussels, Belgium; and

Elichai Shaffir, Counsel for Alliance of Canadian Cinema,

Television, and Radio Artists, Toronto, Ontario, for Amici

Curiae Screen Actors Guild–American Federation of

Television and Radio Artists; Actors’ Equity Association;

American Federation of Musicians of the United States and

Canada; International Federation of Actors; Alliance of

Canadian Cinema, Television, and Radio Artists; Equity UK;

Media, Entertainment and Arts Alliance–Equity Division

(Australia & New Zealand); and South African Guild of

Actors.

GARCIA V. GOOGLE 7

Paul Alan Levy and Scott Michelman, Public Citizen

Litigation Group, Washington, D.C., for Amicus Curiae

Public Citizen.

Justin Hughes, Loyola Law School, Los Angeles, California,

for Amici Curiae Professors Shyamkrishna Balganesh, Justin

Hughes, Pete Menell, and David Nimmer.

OPINION

McKEOWN, Circuit Judge:

In this case, a heartfelt plea for personal protection is

juxtaposed with the limits of copyright law and fundamental

principles of free speech. The appeal teaches a simple

lesson—a weak copyright claim cannot justify censorship in

the guise of authorship.

By all accounts, Cindy Lee Garcia was bamboozled when

a movie producer transformed her five-second acting

performance into part of a blasphemous video proclamation

against the Prophet Mohammed.1 The producer—now in jail

on unrelated matters—uploaded a trailer of the film,

Innocence of Muslims, to YouTube. Millions of viewers soon

watched it online, according to Garcia. News outlets credited

the film as a source of violence in the Middle East. Garcia

received death threats.

1

We use the transliteration “Mohammed” because both parties use this

spelling. We note that, according to the American Library

Association-Library of Congress Arabic Romanization Table, available

at http://www.loc.gov/catdir/cpso/roman.html, an alternate transliteration

is “Muhammad.”

8 GARCIA V. GOOGLE

Asserting that she holds a copyright interest in her

fleeting performance, Garcia sought a preliminary injunction

requiring Google to remove the film from all of its platforms,

including YouTube. The district court denied the injunction,

finding that Garcia did not establish likely success on the

merits for her copyright claim. Nor did she demonstrate that

the injunction would prevent any alleged harm in light of the

film’s five-month presence on the Internet. A divided panel

of our court reversed, labeled her copyright claim as “fairly

debatable,” but then entered a mandatory injunction requiring

Google to remove the film. That injunction was later limited

to versions of the film featuring Garcia’s performance.

As Garcia characterizes it, “the main issue in this case

involves the vicious frenzy against Ms. Garcia that the Film

caused among certain radical elements of the Muslim

community.” We are sympathetic to her plight. Nonetheless,

the claim against Google is grounded in copyright law, not

privacy, emotional distress, or tort law, and Garcia seeks to

impose speech restrictions under copyright laws meant to

foster rather than repress free expression. Garcia’s theory can

be likened to “copyright cherry picking,” which would enable

any contributor from a costume designer down to an extra or

best boy to claim copyright in random bits and pieces of a

unitary motion picture without satisfying the requirements of

the Copyright Act. Putting aside the rhetoric of Hollywood

hijinks and the dissent’s dramatics, this case must be decided

on the law.

In light of the Copyright Act’s requirements of an

“original work[] of authorship fixed in any tangible medium,”

17 U.S.C. § 102(a), the mismatch between Garcia’s copyright

claim and the relief sought, and the Copyright Office’s

rejection of Garcia’s application for a copyright in her brief

GARCIA V. GOOGLE 9

performance, we conclude that the district court did not abuse

its discretion in denying Garcia’s request for the preliminary

injunction. As a consequence, the panel’s mandatory

injunction against Google was unjustified and is dissolved

upon publication of this opinion.

BACKGROUND AND PROCEDURAL HISTORY

In July 2011, Cindy Lee Garcia responded to a casting

call for a film titled Desert Warrior, an action-adventure

thriller set in ancient Arabia. Garcia was cast in a cameo role,

for which she earned $500. She received and reviewed a few

pages of script. Acting under a professional director hired to

oversee production, Garcia spoke two sentences: “Is George

crazy? Our daughter is but a child?” Her role was to deliver

those lines and to “seem[] concerned.”

Garcia later discovered that writer-director Mark Basseley

Youssef (a.k.a. Nakoula Basseley Nakoula or Sam Bacile)

had a different film in mind: an anti-Islam polemic renamed

Innocence of Muslims. The film, featuring a crude

production, depicts the Prophet Mohammed as, among other

things, a murderer, pedophile, and homosexual. Film

producers dubbed over Garcia’s lines and replaced them with

a voice asking, “Is your Mohammed a child molester?”

Garcia appears on screen for only five seconds.

Almost a year after the casting call, in June 2012, Youssef

uploaded a 13-minute-and-51-second trailer of Innocence of

Muslims to YouTube, the video-sharing website owned by

Google, Inc., which boasts a global audience of more than

10 GARCIA V. GOOGLE

one billion visitors per month.2 After it was translated into

Arabic, the film fomented outrage across the Middle East,

and media reports linked it to numerous violent protests. The

film also has been a subject of political controversy over its

purported connection to the September 11, 2012, attack on

the United States Consulate in Benghazi, Libya.

Shortly after the Benghazi attack, an Egyptian cleric

issued a fatwa against anyone associated with Innocence of

Muslims, calling upon the “Muslim Youth in America[] and

Europe” to “kill the director, the producer[,] and the actors

and everyone who helped and promoted this film.” Garcia

received multiple death threats.

Legal wrangling ensued. Garcia asked Google to remove

the film, asserting it was hate speech and violated her state

law rights to privacy and to control her likeness. Garcia also

sent Google five takedown notices under the Digital

Millenium Copyright Act, 17 U.S.C. § 512, claiming that

YouTube’s broadcast of Innocence of Muslims infringed her

copyright in her “audio-visual dramatic performance.”

Google declined to remove the film.

On September 19, 2012, Garcia first sued Google,

Youssef, and other unnamed production assistants in Los

Angeles Superior Court. Her complaint alleged a

compendium of torts and assorted wrongdoing under

California law. As against Google, Garcia made claims for

invasion of privacy, false light, and violating her right to

publicity. She brought the same claims against Youssef and

added fraud, unfair business practices, slander, and

2

See YouTube.com Press Statistics, https://www.youtube.com/yt/

press/statistics.html (last visited May 13, 2015).

GARCIA V. GOOGLE 11

intentional infliction of emotional distress. The state court

denied Garcia’s motion for a “temporary restraining order and

for an order to show cause re preliminary injunction,”

because she had “not shown a likelihood of success on the

merits.” On September 25, 2012, Garcia voluntarily

dismissed her state court suit.

One day later, Garcia turned to federal court. She filed

suit in the United States District Court for the Central District

of California and again named Google and Youssef as co-

defendants. Garcia alleged copyright infringement against

both defendants and revived her state law claims against

Youssef for fraud, unfair business practices, libel, and

intentional infliction of emotional distress.

Garcia then moved for a temporary restraining order and

for an order to show cause on a preliminary injunction—but

only on the copyright claim. She sought to bar Google from

hosting Innocence of Muslims on YouTube or any other

Google-run website.

On November 30, 2012, the district court denied Garcia’s

motion for a preliminary injunction. As an initial matter, the

court concluded that “Garcia ha[d] not demonstrated that the

requested relief would prevent any alleged harm,” because,

by that point, the film trailer had been on the Internet for five

months. Nor did Garcia establish a likelihood of success on

the merits. In particular, the district court found that the

nature of Garcia’s copyright interest was unclear, and even if

she could establish such a copyright, she granted the film

directors an implied license to “distribute her performance as

a contribution incorporated into the indivisible whole of the

Film.”

12 GARCIA V. GOOGLE

A divided panel of our court reversed. More than a year

and a half after the film was first uploaded, the panel majority

first issued a secret takedown order, giving Google twenty-

four hours to remove all copies of Innocence of Muslims from

YouTube and other Google-controlled platforms. The panel

embargoed disclosure of the order until it issued its opinion.

The panel later amended the order to allow YouTube to post

any version of the film that did not include Garcia’s

performance.

In its later-issued opinion, the panel majority reversed the

district court and granted Garcia’s preliminary injunction.

Garcia v. Google, Inc., 743 F.3d 1258, amended by Garcia v.

Google, Inc., 766 F.3d 929 (9th Cir. 2014). Despite

characterizing Garcia’s copyright claim as “fairly debatable,”

the panel majority nonetheless concluded that Garcia was

likely to prevail on her copyright claim as to her individual

performance in Innocence of Muslims. 766 F.3d at 935. In

contrast to the district court’s factual finding of an implied

license from Garcia to Youssef, the panel opinion held that

the license ran in the opposite direction: “Youssef implicitly

granted [Garcia] a license to perform his screenplay,” and that

Garcia did not grant Youssef an implied license to

incorporate her performance into the film. Id. at 935–38.

Finally, the panel majority held that, because of the death

threats against her, Garcia had established irreparable harm

and the equities and public interest favored an injunction. Id.

at 938–40. The opinion did not address the First Amendment

consequences of the mandatory takedown injunction, beyond

stating that the First Amendment does not protect copyright

infringement.

Judge N.R. Smith dissented. He wrote that Garcia had

not met the high burden required for a mandatory preliminary

GARCIA V. GOOGLE 13

injunction because she was unlikely to succeed on her

copyright claim. Id. at 941 (N.R. Smith, J., dissenting).

Specifically, Garcia was not likely to prove her performance

was a “work,” nor would she likely meet the copyright

requirements of authorship and fixation, among other

shortcomings with her claim. Id. at 946. In sum, “[b]ecause

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.” Id. at 940.

We granted rehearing en banc.3 Garcia v. Google, Inc.,

771 F.3d 647 (9th Cir. 2014).

ANALYSIS

I. THE DISTRICT COURT’S DECISION

Garcia sued under a slew of legal theories, but she moved

for a preliminary injunction on just one of them: the

copyright claim. Hence, copyright is the only basis for the

appeal. Garcia’s tort allegations—and claimed harm

resulting from those torts, such as emotional distress—do not

figure into our analysis.

We begin with the basics.

3

In connection with en banc proceedings, we received thirteen amicus

briefs from a broad array of interested parties, including copyright and

Internet law scholars; content, Internet service, and technology providers;

actors; media organizations; and nonprofit groups. The briefs were

helpful to our understanding of the implications of this case from various

points of view. We thank amici for their participation.

14 GARCIA V. GOOGLE

The district court’s order denying Garcia’s motion for a

preliminary injunction is reviewed for abuse of discretion.

Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131

(9th Cir. 2011). Because our review is deferential, “[w]e will

not reverse the district court where it ‘got the law right,’ even

if we ‘would have arrived at a different result,’ so long as the

district court did not clearly err in its factual determinations.”

Id. (internal citation omitted).

The Supreme Court has emphasized that preliminary

injunctions are an “extraordinary remedy never awarded as of

right.” Winter v. NRDC, 555 U.S. 7, 24 (2008). The district

court correctly identified that Garcia must satisfy Winter’s

four-factor test. “A plaintiff seeking a preliminary injunction

must show that: (1) she is likely to succeed on the merits,

(2) she is likely to suffer irreparable harm in the absence of

preliminary relief, (3) the balance of equities tips in her favor,

and (4) an injunction is in the public interest.” Farris v.

Seabrook, 677 F.3d 858, 864 (9th Cir. 2012) (citing Winter,

555 U.S. at 20).

The first factor under Winter is the most important—

likely success on the merits. Aamer v. Obama, 742 F.3d

1023, 1038 (D.C. Cir. 2014) (“We begin with the first and

most important factor: whether petitioners have established

a likelihood of success on the merits.”). Because it is a

threshold inquiry, when “a plaintiff has failed to show the

likelihood of success on the merits, we ‘need not consider the

remaining three [Winter elements].’” Ass’n des Eleveurs de

Canards et d’Oies du Quebec v. Harris, 729 F.3d 937, 944

(9th Cir. 2013) (quoting DISH Network Corp. v. F.C.C.,

653 F.3d 771, 776–77 (9th Cir. 2011)).

GARCIA V. GOOGLE 15

Garcia’s burden here is doubly demanding: Because

Garcia seeks a mandatory injunction, she must establish that

the law and facts clearly favor her position, not simply that

she is likely to succeed.

Why? Garcia’s requested injunction required Google to

take affirmative action—to remove (and to keep removing)

Innocence of Muslims from YouTube and other sites under its

auspices, whenever and by whomever the film was uploaded.

This relief is treated as a mandatory injunction, because it

“orders a responsible party to ‘take action.’” Marlyn

Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d

873, 879 (9th Cir. 2009) (citation omitted). As we have

cautioned, a mandatory injunction “goes well beyond simply

maintaining the status quo pendente lite [and] is particularly

disfavored.”4 Stanley v. Univ. of S. Cal., 13 F.3d 1313, 1320

(9th Cir. 1994) (internal citations omitted)). The “district

court should deny such relief ‘unless the facts and law clearly

favor the moving party.’” Id. (quoting Anderson v. United

States, 612 F.2d 1112, 1114 (9th Cir.1979)). In plain terms,

mandatory injunctions should not issue in “doubtful cases.”

Park Vill. Apartment Tenants Ass’n v. Mortimer Howard

Trust, 636 F.3d 1150, 1160 (9th Cir. 2011).

As we shall see, the district court did not abuse its

discretion in concluding that Garcia was not likely to succeed

on her copyright claim—much less that the law and facts

4

“The status quo means the last, uncontested status which preceded the

pending controversy.” N.D. ex rel. Parents v. Haw. Dep’t of Educ.,

600 F.3d 1104, 1112 n.6 (9th Cir. 2010) (internal citation and quotation

marks omitted). The status quo preceding this litigation was that

Innocence of Muslims was uploaded to and available for viewing on

YouTube. The preliminary injunction issued by the panel majority

disrupted that status quo by ordering Google to remove the film.

16 GARCIA V. GOOGLE

clearly compel suppression of a controversial and politically

significant film.

A. COPYRIGHT

The central question is whether the law and facts clearly

favor Garcia’s claim to a copyright in her five-second acting

performance as it appears in Innocence of Muslims. The

answer is no. This conclusion does not mean that a plaintiff

like Garcia is without options or that she couldn’t have sought

an injunction against different parties or on other legal

theories, like the right of publicity and defamation.5

Under the Copyright Act, “[c]opyright protection subsists

. . . in original works of authorship fixed in any tangible

medium of expression . . . [including] motion pictures.”

17 U.S.C. § 102(a). That fixation must be done “by or under

the authority of the author.” 17 U.S.C. § 101. Benchmarked

against this statutory standard, the law does not clearly favor

Garcia’s position.

5

Down the road, Garcia also may have a contract claim. She recalls

signing some kind of document, though she cannot find a copy. We take

no position on this claim. Nor do we consider whether Garcia’s

performance was a work made for hire. See 17 U.S.C. § 101 (defining

“work made for hire” as work “prepared by an employee within the scope

of his or her employment” or, where both parties sign a written agreement,

a work “specially ordered or commissioned . . . as a part of a motion

picture. . .”); see also § 201(b) (in case of work made for hire, the

employer or person for whom the work is prepared is the author, subject

to express agreement otherwise). In district court proceedings, the parties

disputed whether Garcia signed a work-made-for-hire agreement, and the

issue is not before us on appeal.

GARCIA V. GOOGLE 17

The statute purposefully left “works of authorship”

undefined to provide for some flexibility. See 1 Nimmer on

Copyright § 2.03. Nevertheless, several other provisions

provide useful guidance. An audiovisual work is one that

consists of “a series of related images which are intrinsically

intended to be shown” by machines or other electronic

equipment, plus “accompanying sounds.” 17 U.S.C. § 101.

In turn, a “motion picture” is an “audiovisual work[]

consisting of a series of related images which, when shown

in succession, impart an impression of motion, together with

accompanying sounds, if any.” Id. These two definitions

embody the work here: Innocence of Muslims is an

audiovisual work that is categorized as a motion picture and

is derivative of the script. Garcia is the author of none of this

and makes no copyright claim to the film or to the script.6

Instead, Garcia claims that her five-second performance itself

merits copyright protection.

In the face of this statutory scheme, it comes as no

surprise that during this litigation, the Copyright Office found

that Garcia’s performance was not a copyrightable work

when it rejected her copyright application. The Copyright

Office explained that its “longstanding practices do not allow

a copyright claim by an individual actor or actress in his or

her performance contained within a motion picture.” Thus,

“[f]or copyright registration purposes, a motion picture is a

single integrated work. . . . Assuming Ms. Garcia’s

contribution was limited to her acting performance, we

6

In another odd twist, one of Garcia’s primary objections rests on the

words falsely attributed to her via dubbing. But she cannot claim

copyright in words she neither authored nor spoke. That leaves Garcia

with a legitimate and serious beef, though not one that can be vindicated

under the rubric of copyright.

18 GARCIA V. GOOGLE

cannot register her performance apart from the motion

picture.”

We credit this expert opinion of the Copyright Office—

the office charged with administration and enforcement of the

copyright laws and registration.7 See Inhale, Inc. v. Starbuzz

Tobacco, Inc., 755 F.3d 1038, 1041–42 (9th Cir. 2014). The

Copyright Office’s well-reasoned position “reflects a ‘body

of experience and informed judgment to which courts and

litigants may properly resort for guidance.’” Southco, Inc. v.

Kanebridge Corp., 390 F.3d 276, 286 n.5 (3d Cir. 2004) (en

banc) (Alito, J.) (quoting Yates v. Hendon, 541 U.S. 1, 3

(2004)).8

In analyzing whether the law clearly favors Garcia,

Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000),

7

As Nimmer notes, when “the question as to copyrightabilty forms the

core of the dispute between the parties, . . . input from the Copyright

Office—the governmental agency that possesses special expertise in

determining the bounds of copyright protection—[can] be of great value.”

2 Nimmer on Copyright § 7.16[B][3][b][vi].

8

The dissent’s suggestion that this case is somehow governed by the

Beijing Treaty on Audiovisual Performances is misplaced. See Dissent at

38–39. At present, the treaty is aspirational at best. It has yet to take

effect because only six countries have ratified or acceded to the

treaty—well short of the thirty it needs to enter into force. See World

Intellectual Property Organization, Summary of the Beijing Treaty on

Audiovisual Performances (2012), available at www.wipo.int/treaties/

en/ip/beijing/summary_beijing.html (last visited May 13, 2015). Although

the United States signed the treaty in 2012, it has not been ratified by the

U.S. Senate. Article II, Section 2 of the Constitution requires the

concurrence of a two-thirds majority of that body. The dissent’s reference

to the fact sheet from the Patent and Trademark Office, which unlike the

Copyright Office lacks legal authority to interpret and administer the

Copyright Act, is similarly inapposite. See Dissent at 39.

GARCIA V. GOOGLE 19

provides a useful foundation. There, we examined the

meaning of “work” as the first step in analyzing joint

authorship of the movie Malcolm X. The Copyright Act

provides that when a work is “prepared by two or more

authors with the intention that their contributions be merged

into inseparable or interdependent parts of a unitary whole,”

the work becomes a “joint work” with two or more authors.

17 U.S.C. § 101 (emphasis added). Garcia unequivocally

disclaims joint authorship of the film.

In Aalmuhammed, we concluded that defining a “work”

based upon “some minimal level of creativity or originality

. . . would be too broad and indeterminate to be useful.”9

202 F.3d at 1233 (internal quotation marks omitted). Our

animating concern was that this definition of “work” would

fragment copyright protection for the unitary film Malcolm X

into many little pieces:

So many people might qualify as an “author”

if the question were limited to whether they

made a substantial creative contribution that

that test would not distinguish one from

another. Everyone from the producer and

director to casting director, costumer,

9

Although the ultimate issue in Aalmuhammed pertained to joint

authorship, the definition of “work” was essential, just as in our case, to

the analysis. 202 F.3d at 1233–34; see also Richlin v. Metro-Goldwyn-

Mayer Pictures, Inc., 531 F.3d 962, 968 (9th Cir. 2008) (relying on

Aalmuhammed in reasoning that to determine authorship, the court must

first determine the “work” to be examined).

20 GARCIA V. GOOGLE

hairstylist, and “best boy” gets listed in the

movie credits because all of their creative

contributions really do matter.

Id.

Garcia’s theory of copyright law would result in the legal

morass we warned against in Aalmuhammed—splintering a

movie into many different “works,” even in the absence of an

independent fixation. Simply put, as Google claimed, it

“make[s] Swiss cheese of copyrights.”

Take, for example, films with a large cast—the proverbial

“cast of thousands”10—such as Ben-Hur or Lord of the

Rings.11 The silent epic Ben-Hur advertised a cast of 125,000

people. In the Lord of the Rings trilogy, 20,000 extras

tramped around Middle-Earth alongside Frodo Baggins

(played by Elijah Wood). Treating every acting performance

as an independent work would not only be a logistical and

financial nightmare, it would turn cast of thousands into a

new mantra: copyright of thousands.

10

The term “cast of thousands” originated as a Hollywood “[a]dvertising

come-on referring to the crowds of background players in a spectacular

epic film.” Blumenfeld’s Dictionary of Acting and Show Business 48

(Hal Leonard Corp. 2009).

11

For information on Ben-Hur, see Ben-Hur, IMDb,

http://www.imdb.com/title/tt0052618/ (last visited Jan. 21, 2015), and

Ben-Hur: A Tale of the Christ, Trivia, IMDb, http://www.imdb.com/title/

tt0016641/trivia (last visited Jan. 30, 2015). For information on Lord of

the Rings, see Lord of the Rings: The Fellowship of the Ring, IMDb,

http://www.imdb.com/title/tt0120737/ (last visited Jan. 21, 2015), and

Lord of the Rings: The Fellowship of the Ring, Trivia, IMDb,

http://www.imdb.com/title/tt0120737/trivia (last visited Jan. 30, 2015).

GARCIA V. GOOGLE 21

The dissent spins speculative hypotheticals about

copyright protection for book chapters, movie outtakes,

baseball games, and Jimi Hendrix concerts. See Dissent at

35, 38. This hyperbole sounds a false alarm. Substituting

moral outrage and colorful language for legal analysis, the

dissent mixes and matches copyright concepts such as

collective works, derivative works, the requirement of

fixation, and sound recordings. The statutory definitions and

their application counsel precision, not convolution. See, e.g.,

17 U.S.C. §§ 101, 103, 114, 201. The citation to Effects

Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990)

(Kozinski, J.), is particularly puzzling. There, neither party

disputed the plaintiff’s copyright, and the plaintiff

independently fixed the special-effects footage and licensed

it to the filmmakers. See id. at 556 n.2

The reality is that contracts and the work-made-for-hire

doctrine govern much of the big-budget Hollywood

performance and production world. See 1 Nimmer on

Copyright § 6.07[B][2]. Absent these formalities, courts have

looked to implied licenses. See Effects Assocs., 908 F.2d at

559–60. Indeed, the district court found that Garcia granted

Youssef just such an implied license to incorporate her

performance into the film.12 But these legal niceties do not

necessarily dictate whether something is protected by

copyright, and licensing has its limitations. As filmmakers

12

Any copyright claim aside, the district court found that Garcia granted

Youssef a non-exclusive implied license to use her performance in the

film. Although Garcia asked Youssef about Desert Warrior’s content, she

in no way conditioned the use of her performance on Youssef’s

representations. On this record, we cannot disturb the district court’s

finding as clearly erroneous. Pom Wonderful LLC v. Hubbard, 775 F.3d

1118, at *2 (9th Cir. 2014) (noting that factual findings reviewed for clear

error).

22 GARCIA V. GOOGLE

warn, low-budget films rarely use licenses. Even if

filmmakers diligently obtain licenses for everyone on set, the

contracts are not a panacea. Third-party content distributors,

like YouTube and Netflix, won’t have easy access to the

licenses; litigants may dispute their terms and scope; and

actors and other content contributors can terminate licenses

after thirty five years. See 17 U.S.C. § 203(a)(3). Untangling

the complex, difficult-to-access, and often phantom chain of

title to tens, hundreds, or even thousands of standalone

copyrights is a task that could tie the distribution chain in

knots. And filming group scenes like a public parade, or the

1963 March on Washington, would pose a huge burden if

each of the thousands of marchers could claim an

independent copyright.

Garcia’s copyright claim faces yet another statutory

barrier: She never fixed her acting performance in a tangible

medium, as required by 17 U.S.C. § 101 (“A work is ‘fixed’

in a tangible medium of expression when its embodiment in

a copy or phonorecord, by or under the authority of the

author, is sufficiently permanent or stable to permit it to be

perceived, reproduced, or otherwise communicated for a

period of more than transitory duration.”) (emphasis added).

According to the Supreme Court, “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.” Cmty. for Creative Non-Violence v. Reid,

490 U.S. 730, 737 (1989). Garcia did nothing of the sort.13

13

The Copyright Office draws a distinction between acting

performances like Garcia’s, which are intended to be an inseparable part

of an integrated film, and standalone works that are separately fixed and

incorporated into a film. We in no way foreclose copyright protection for

the latter —any “discrete work in itself that is later incorporated into a

GARCIA V. GOOGLE 23

For better or for worse, Youssef and his crew “fixed”

Garcia’s performance in the tangible medium, whether in

physical film or in digital form. However one might

characterize Garcia’s performance, she played no role in

fixation. On top of this, Garcia claims that she never agreed

to the film’s ultimate rendition or how she was portrayed in

Innocence of Muslims, so she can hardly argue that the film

or her cameo in it was fixed “by or under [her] authority.”

17 U.S.C. § 101.

In sum, the district court committed no error in its

copyright analysis. Issuance of the mandatory preliminary

injunction requires more than a possible or fairly debatable

claim; it requires a showing that the law “clearly favor[s]”

Garcia. See Stanley, 13 F.3d at 1320. Because neither the

Copyright Act nor the Copyright Office’s interpretation

supports Garcia’s claim, this is a hurdle she cannot clear.

B. IRREPARABLE HARM

Although we could affirm the district court solely on the

copyright issue, see DISH Network, 653 F.3d at 776–77, we

address irreparable harm because the grave danger Garcia

claims cannot be discounted and permeates the entire lawsuit.

At first blush, irreparable harm looks like Garcia’s

strongest argument. Garcia understandably takes seriously

the fatwa and threats against her and her family, and so do

we. The difficulty with Garcia’s claim is that there is a

mismatch between her substantive copyright claim and the

motion picture,” as the Copyright Office put it. See Effects Assocs.,

908 F.2d at 558–59 (recognizing independent copyrightability of special

effects footage incorporated into film).

24 GARCIA V. GOOGLE

dangers she hopes to remedy through an injunction. Garcia

seeks a preliminary injunction under copyright law, not

privacy, fraud, false light or any other tort-based cause of

action. Hence, Garcia’s harm must stem from copyright—

namely, harm to her legal interests as an author. Salinger v.

Colting, 607 F.3d 68, 81 & n.9 (2d Cir. 2010) (“The relevant

harm is the harm that . . . occurs to the parties’ legal interests

. . . .”).

Looking to the purpose of copyright underscores the

disjunction Garcia’s case presents. Article 1, Section 8 of the

U.S. Constitution provides that copyrights “promote the

Progress of Science and useful arts.” Hence, the “Framers

intended copyright itself to be the engine of free expression.

By establishing a marketable right to the use of one’s

expression, copyright supplies the economic incentive to

create and disseminate ideas.” Harper & Row Publishers,

Inc. v. Nation Enters., 471 U.S. 539, 558 (1985); see also

Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (noting that

“copyright’s purpose is to promote the creation and

publication of free expression”) (emphasis in original). In

keeping with copyright’s function, “the justification of the

copyright law is the protection of the commercial interest of

the []author. It is not to . . . protect secrecy, but to stimulate

creation by protecting its rewards.” Salinger, 607 F.3d at 81

n.9 (quoting New Era Publ’ns Int’l, ApS v. Henry Holt & Co.,

695 F. Supp. 1493, 1526 (S.D.N.Y. 1988)).

As Garcia frames it, “the main issue in this case involves

the vicious frenzy against Ms. Garcia that the Film caused

among certain radical elements of the Muslim community,”

which has caused “severe emotional distress, the destruction

of her career and reputation” and credible death threats. With

respect to irreparable harm, she argues that “[t]he injuries she

GARCIA V. GOOGLE 25

seeks to avoid—damage to her reputation, unfair[,] forced

promotion of a hateful Film, and death—will be avoided if

any injunction issues.”

This relief is not easily achieved under copyright law.

Although we do not take lightly threats to life or the

emotional turmoil Garcia has endured, her harms are

untethered from—and incompatible with—copyright and

copyright’s function as the engine of expression.

In broad terms, “the protection of privacy is not a function

of the copyright law. . . . To the contrary, the copyright law

offers a limited monopoly to encourage ultimate public

access to the creative work of the author.” Bond v. Blum,

317 F.3d 385, 395 (4th Cir. 2003); see also Monge v. Maya

Magazines, Inc., 688 F.3d 1164, 1177 (9th Cir. 2012)

(quoting Bond and “pointedly” noting copyright cases are

analyzed “only under copyright principles, not privacy law”).

Likewise, authors cannot seek emotional distress damages

under the Copyright Act, because such damages are unrelated

to the value and marketability of their works. See In re

Dawson, 390 F.3d 1139, 1146 n.3 (9th Cir. 2004) (noting that

“‘actual damages’ in the context of the Copyright Act . . .

cover only economic damages” (internal citation omitted));

Mackie v. Rieser, 296 F.3d 909, 917 (9th Cir. 2002) (rejecting

copyright damages where “the infringement did not in any

way influence the market value” of a piece of outdoor

artwork but instead boiled down to the author’s “personal

objections to the manipulation of his artwork”).

By way of example, erstwhile professional wrestler and

reality TV star Hulk Hogan wanted to enjoin Gawker.com

from posting a sex tape of Hogan with a mistress, claiming

26 GARCIA V. GOOGLE

copyright infringement. Bollea v. Gawker Media, LLC,

913 F. Supp. 2d 1325, 1327 (M.D. Fla. 2012). The district

court found an absence of irreparable harm because Hogan

“produced no evidence demonstrating that he will suffer

irreparable harm in the copyright sense absent a preliminary

injunction. The only evidence in the record reflecting harm

to [Hogan] relates to harm suffered by him personally and

harm to his professional image due to the ‘private’ nature of

the Video’s content. This evidence does not constitute

irreparable harm in the context of copyright infringement.”

Id. at 1329; cf. New Era Publ’ns, 695 F. Supp. at 1499

(denying injunction sought “not in good faith for its intended

purpose of protecting the value of publication rights, but

rather to suppress a derogatory study of the founder of the

Church of Scientology”).

Privacy laws, not copyright, may offer remedies tailored

to Garcia’s personal and reputational harms. On that point,

we offer no substantive view. Ultimately, Garcia would like

to have her connection to the film forgotten and stripped 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 in the United

States. See Case C-131/12, Google Spain SL v. Agencia

Española de Protección de Datos (AEPD),

ECLI:EU:C:2014:616 (May 13, 2014) (requiring Google to

consider individual requests to remove personal information

from its search engine); Internet Law—Protection of Personal

Data—Court of Justice of the European Union Creates

Presumption that Google Must Remove Links to Personal

Data Upon Request, 128 Harv. L. Rev. 735 (2014).

Nor is Garcia protected by the benefits found in many

European countries, where authors have “moral rights” to

GARCIA V. GOOGLE 27

control the integrity of their works and to guard against

distortion, manipulation, or misappropriation. See Kelley v.

Chicago Park Dist., 635 F.3d 290, 296 (7th Cir. 2011)

(describing differences in moral rights in American copyright

law versus other countries). Except for a limited universe of

works of visual art, such as paintings and drawings protected

under the Visual Artists Rights Act of 1990, United States

copyright law generally does not recognize moral rights.

17 U.S.C. § 106A. Motion pictures specifically are excluded

from moral rights protection. § 106A; § 101 (“[W]ork of

visual art does not include . . . any . . . motion picture or other

audiovisual work . . . .”).

In short, Garcia’s harms are too attenuated from the

purpose of copyright. We do not foreclose that in a different

circumstance with a strong copyright claim, a court could

consider collateral consequences as part of its irreparable

harm analysis and remedy. 17 U.S.C. § 502 (providing that

the court may grant injunctions “as it may deem reasonable

to prevent or restrain infringement of a copyright”). But such

a case is not before us.

Garcia waited months to seek an injunction after

Innocence of Muslims was uploaded to YouTube in July

2012; she did not seek emergency relief when the film first

surfaced on the Internet. The district court did not abuse its

discretion by finding this delay undercut Garcia’s claim of

irreparable harm. See Oakland Tribune, Inc. v. Chronicle

Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985) (“Plaintiff’s

long delay before seeking a preliminary injunction implies a

lack of urgency and irreparable harm.”); 4 Nimmer on

Copyright § 14.06[A][3][c] (noting unreasonable delay can

defeat irreparable injury and the length of time “need not be

great”). Garcia notes that she moved swiftly once the film

28 GARCIA V. GOOGLE

was translated into Arabic and sparked death threats against

her. But that proves the point: the gravamen of Garcia’s harm

is untethered from her commercial interests as a performer,

and instead focuses on the personal pain caused by her

association with the film.

The district court did not abuse its discretion in

determining that Garcia failed to muster a clear showing of

irreparable harm. See Flexible Lifeline Sys., Inc. v. Precision

Lift, Inc., 654 F.3d 989, 999–1000 (9th Cir. 2011) (“Harm

must be proved, not presumed.” (quoting 4 Nimmer on

Copyright § 14.06[A][5])).

In the face of a doubtful copyright claim and the absence

of irreparable harm to Garcia’s interests as an author, we need

not consider the final two Winter factors, the balance of

equities and public interest.

II. THE PANEL’S INJUNCTION

In February 2014, the panel majority issued the following

injunction: “Google, Inc. shall take down all copies of

‘Innocence of Muslims’ from YouTube.com and from any

other platforms under Google’s control, and take all

reasonable steps to prevent further uploads of ‘Innocence of

Muslims’ to those platforms.” Soon after, the panel amended

the order to state that the prohibition did “not preclude the

posting or display of any version of ‘Innocence of Muslims’

that does not include Cindy Lee Garcia’s performance.”

Although the first order was more sweeping, the second

cast the court in the uneasy role of film editor. The

amendment only mattered if Google assumed authority to

change the content of someone else’s copyrighted film. To

GARCIA V. GOOGLE 29

no one’s surprise, the end result was the same: the entire film

remained removed from YouTube.

The takedown order was unwarranted and incorrect as a

matter of law, as we have explained above. It also gave short

shrift to the First Amendment values at stake. The mandatory

injunction censored and suppressed a politically significant

film—based upon a dubious and unprecedented theory of

copyright. In so doing, the panel deprived the public of the

ability to view firsthand, and judge for themselves, a film at

the center of an international uproar.

Although the intersection between copyright and the First

Amendment is much-debated,14 the Supreme Court teaches

that copyright is not “categorically immune from challenges

under the First Amendment.” Eldred, 537 U.S. at 221

(internal citation omitted). To be sure, this is not a case of

garden-variety copyright infringement, such as seeking to

restrain the use of copyrighted computer code. The panel’s

takedown order of a film of substantial interest to the public

is a classic prior restraint of speech. Alexander v. United

States, 509 U.S. 544, 550 (1993) (“Temporary restraining

orders and permanent injunctions—i.e., court orders that

actually forbid speech activities—are classic examples of

prior restraints.”). Prior restraints pose the “most serious and

the least tolerable infringement on First Amendment rights,”

Hunt v. NBC, 872 F.2d 289, 293 (9th Cir. 1989) (citation

omitted), and Garcia cannot overcome the historical and

14

See, e.g., Joseph P. Bauer, Copyright and the First Amendment:

Comrades, Combatants, or Uneasy Allies?, 67 Wash. & Lee L. Rev. 831

(2010); Mark A. Lemley & Eugene Volokh, Freedom of Speech and

Injunctions in Intellectual Property Cases, 48 Duke L.J. 147 (1998).

30 GARCIA V. GOOGLE

heavy presumption against such restraints with a thin

copyright claim in a five-second performance.

The amended injunction issued February 28, 2014 is

dissolved immediately and has no force or effect.

CONCLUSION

At this stage of the proceedings, we have no reason to

question Garcia’s claims that she was duped by an

unscrupulous filmmaker and has suffered greatly from her

disastrous association with the Innocence of Muslims film.

Nonetheless, the district court did not abuse its discretion

when it denied Garcia’s motion for a preliminary injunction

under the copyright laws.

AFFIRMED.

WATFORD, Circuit Judge, concurring in the judgment:

We don’t have to craft new rules of copyright law to

resolve this appeal. We just have to follow the law we

established a few years ago, without controversy, on the

subject of irreparable harm. The majority’s decision to do

more is a mistake in my view, and not just because much of

what the majority says about copyright law may be wrong.

See Dissent at 34–38. We are usually well advised to decide

no more than we need to, even when resolving routine

appeals typical of those we’re likely to see in the future. We

should be all the more cautious when resolving an appeal like

this one, a case that could not be more atypical as far as

copyright infringement actions go and one that is highly

GARCIA V. GOOGLE 31

charged on both sides to boot. Because the risk of making

bad law in these circumstances is particularly high, we should

aim to decide as narrowly as we can, leaving the task of

crafting broad new rules for a case in which it is actually

necessary to do so. See Frederick Schauer, Do Cases Make

Bad Law?, 73 U. Chi. L. Rev. 883, 916 (2006).

Had we chosen to decide narrowly here, we could have

affirmed the district court’s denial of a preliminary injunction

by focusing solely on the irreparable harm prong. Garcia

bore the burden of showing that “irreparable injury is likely

in the absence of” the requested injunction. Winter v. Natural

Res. Def. Council, Inc., 555 U.S. 7, 22 (2008). The only form

of injury Garcia has alleged that could qualify as irreparable

is the risk of death she faces as a result of the fatwa issued

against her. Unlike the majority, I’m willing to assume that

the risk of death qualifies as irreparable injury in this context.

But under our decision in Perfect 10, Inc. v. Google, Inc.,

653 F.3d 976 (9th Cir. 2011), Garcia also had to prove a

“causal connection” between the irreparable injury she faces

and the conduct she hopes to enjoin. Id. at 982. In other

words, she had to show that removing the film from YouTube

would likely eliminate (or at least materially reduce) the risk

of death posed by issuance of the fatwa.

The district court did not abuse its discretion by

concluding, albeit for reasons different from those I offer

here, that Garcia failed to satisfy the irreparable harm prong.

The sad but unfortunate truth is that the threat posed to Garcia

by issuance of the fatwa will remain whether The Innocence

of Muslims is available on YouTube or not. Garcia is subject

to the fatwa because of her role in making the film, not

because the film is available on YouTube. The film will

undoubtedly remain accessible on the Internet for all who

32 GARCIA V. GOOGLE

wish to see it even if YouTube no longer hosts it. Bottom

line: Garcia’s requested injunction won’t change anything

about the content of the film or the part, however limited, she

played in its making.

Of course, Garcia’s role in making the film has been

completely misunderstood. She never actually uttered the

highly offensive words her character speaks in the film. She

had no idea that the scenes in which she appeared would later

be used as part of an anti-Islam diatribe, and she strongly

opposes the film’s message. Correcting these misperceptions

might well eliminate or reduce the threat Garcia faces, but she

has already taken numerous steps to do just that. She has

publicly denounced the film and done everything within her

power—including bringing this lawsuit—to disassociate

herself from the film’s hateful message.

The declaration submitted by Garcia’s expert on Islamic

and Middle Eastern law—the only evidence she offered that

addresses causation directly—candidly describes the tenuous

causation theory Garcia relies on. Garcia’s expert did not

assert that removing the film from YouTube would likely

cause the fatwa against her to be lifted. He instead noted that

Garcia’s “public statements condemning the film here have

been received in the Muslim world with controversy,” and

opined that removing the film from YouTube would cause

others to believe that Garcia’s condemnations are sincere: “If

she is successful in pulling the content down from the

internet, it will likely help her in terms of believability of her

message condemning the film and its message.” (Emphasis

added.)

In my view, this sparse evidence does not show that

removing the film from YouTube would be likely to mitigate

GARCIA V. GOOGLE 33

the risk of death Garcia faces. At most, the expert’s bare

assertion establishes that granting the requested injunction

will have an incremental but impossible-to-measure effect on

Garcia’s credibility. The declaration notably stops short of

suggesting that the injunction would have any impact (let

alone a likely impact) on the actions of the necessary

audience: the cleric who issued the fatwa and those who

would be inclined to carry it out. Nor is it obvious why

success in getting the district court to order the film’s

removal from YouTube would be critical to bolstering the

believability of Garcia’s message. Demanding the take-down

injunction seems to speak loudly and clearly in its own right

about the sincerity of her views on the film.

The district court did not abuse its discretion in

concluding that, on this record, Garcia failed to satisfy the

irreparable harm prong. Under our decision in Perfect 10,

that alone requires us to affirm the district court’s denial of a

preliminary injunction. 653 F.3d at 982. I concur in the

judgment for that reason only.

KOZINSKI, Circuit Judge, dissenting:

Garcia’s dramatic performance met all of the

requirements for copyright protection: It was copyrightable

subject matter, it was original and it was fixed at the moment

it was recorded. So what happened to the copyright? At

times, the majority says that Garcia’s performance was not

copyrightable at all. And at other times, it seems to say that

Garcia just didn’t do enough to gain a copyright in the scene.

Either way, the majority is wrong and makes a total mess of

copyright law, right here in the Hollywood Circuit. In its

34 GARCIA V. GOOGLE

haste to take internet service providers off the hook for

infringement, the court today robs performers and other

creative talent of rights Congress gave them. I won’t be a

party to it.

I

Youssef handed Garcia a script. Garcia performed it.

Youssef recorded Garcia’s performance on video and saved

the clip. Until today, I understood that the rights in such a

performance are determined according to elementary

copyright principles: An “original work[] of authorship,”

17 U.S.C. § 102(a), requires only copyrightable subject

matter and a “minimal degree of creativity.” Feist Publ’ns,

Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). The

work is “fixed” when it is “sufficiently permanent or stable to

permit it to be perceived, reproduced, or otherwise

communicated for a period of more than transitory duration.”

17 U.S.C. § 101. And at that moment, the “author or authors

of the work” instantly and automatically acquire a copyright

interest in it. 17 U.S.C. § 201(a). This isn’t exactly String

Theory; more like Copyright 101.

Garcia’s performance met these minimal requirements;

the majority doesn’t contend otherwise. The majority

nevertheless holds that Garcia’s performance isn’t a “work,”

apparently because it was created during the production of a

later-assembled film, Innocence of Muslims. Maj. Op. 17–20.

But if you say something is not a work, it means that it isn’t

copyrightable by anyone. Under the majority’s definition of

“work,” no one (not even Youssef) can claim a copyright in

any part of Garcia’s performance, even though it was

recorded several months before Innocence of Muslims was

assembled. Instead, Innocence of Muslims—the ultimate

GARCIA V. GOOGLE 35

film—is the only thing that can be a “work.” If this is what

my colleagues are saying, they are casting doubt on the

copyrightability of vast swaths of material created during

production of a film or other composite work.

The implications are daunting. If Garcia’s scene is not a

work, then every take of every scene of, say, Lord of the

Rings is not a work, and thus not protected by copyright,

unless and until the clips become part of the final movie. If

some dastardly crew member were to run off with a copy of

the Battle of Morannon, the dastard would be free to display

it for profit until it was made part of the final movie. And, of

course, the take-outs, the alternative scenes, the special

effects never used, all of those things would be fair game

because none of these things would be “works” under the

majority’s definition. And what about a draft chapter of a

novel? Is there no copyright in the draft chapter unless it gets

included in the published book? Or if part of the draft gets

included, is there no copyright in the rest of it?

This is a remarkable proposition, for which the majority

provides remarkably little authority. Aalmuhammed v. Lee,

202 F.3d 1227 (9th Cir. 2000), the only case that the majority

cites, says just the opposite. In Aalmuhammed, we

considered a claim by a contributor to the movie Malcolm X

that he was a joint author of the entire movie. Id. at 1230.

Everyone in Aalmuhammed agreed that the relevant “work”

was Malcolm X. The only question was whether the

contributor was a joint author of that work. We went out of

our way to emphasize that joint authorship of a movie is a

“different question” from whether a contribution to the movie

can be a “work” under section 102(a). Id. at 1233. And we

clearly stated that a contribution to a movie can be

copyrightable (and thus can be a “work”). Id. at 1232.

36 GARCIA V. GOOGLE

The majority’s newfangled definition of “work” is

directly contrary to a quarter-century-old precedent that has

never been questioned, Effects Associates, Inc. v. Cohen,

908 F.2d 555 (9th Cir. 1990). There, we held that a company

that created special effects footage during film production

retained a copyright interest in the footage even though it

became part of the film. Id. at 556–58; see also Oddo v. Ries,

743 F.2d 630, 633–34 (9th Cir. 1984). The majority tries to

distinguish Effects Associates by arguing that the footage

there was a “standalone work[] that [was] separately fixed

and incorporated into a film.” Maj Op. 22 n.13. But Garcia’s

performance was also “separately fixed and incorporated

into” Innocence of Muslims. Why then are the seven shots

“featuring great gobs of alien yogurt oozing out of a defunct

factory” interspersed in The Stuff, 908 F.2d at 559, any more

a “standalone work” than Garcia’s performance? Youssef

wasn’t required to use any part of Garcia’s performance in the

film; he could have sold the video clip to someone else. The

clip might not have had much commercial value, but neither

did the special effects scenes in Effects Associates. Nothing

in the Copyright Act says that special effects scenes are

“works” entitled to copyright protection but other scenes are

not. And what about scenes that have actors and special

effects? Are those scenes entitled to copyright protection (as

in Effects Associates), or are they denied copyright protection

like Garcia’s scene?

II

A. The majority also seems to hold that Garcia is not

entitled to copyright protection because she is not an author

of the recorded scene. According to the majority, Garcia

can’t be an author of her own scene because she “played no

role in [her performance’s] fixation.” Maj. Op. 22–23.

GARCIA V. GOOGLE 37

But a performer need not operate the recording equipment

to be an author of his own performance. See H.R. Rep. No.

94-1476, at 56 (1976); S. Rep. No. 94-473, at 53–54 (1975);

see also 1 Nimmer on Copyright § 2.10[A][3] at 2-178.4 to 2-

178.5. Without Garcia’s performance, all that existed was a

script. To convert the script into a video, there needed to be

both an actor physically performing it and filmmakers

recording the performance. Both kinds of activities can result

in copyrightable expression. See 1 Nimmer on Copyright

§ 2.09[F] at 2-165 to 2-171 (discussing Baltimore Orioles,

Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663

(7th Cir. 1986)).1 Garcia’s performance had at least “some

minimal degree of creativity” apart from the script and

Youssef’s direction. See Feist, 499 U.S. at 345. One’s

“[p]ersonality always contains something unique. It

expresses its singularity even in handwriting, and a very

modest grade of art has in it something which is one man’s

alone.” Bleistein v. Donaldson Lithographing Co., 188 U.S.

239, 250 (1903). To dispute this is to claim that Gone With

the Wind would be the same movie if Rhett Butler were

played by Peter Lorre.

1

Professor Nimmer agrees with the first premise of Baltimore Orioles,

namely, that a contributor of a copyrightable expression that’s captured on

video may retain a copyright interest in it. 1 Nimmer on Copyright

§ 2.09[F] at 2-166. That’s because both the underlying human activity and

the creative aspects of the video itself may be copyrightable. Id.

Professor Nimmer disagrees with the Seventh Circuit’s decision in

Baltimore Orioles on the basis that the underlying human activity in that

case (the baseball game) didn’t contain any creative elements. 1 id.

§ 2.09[F] at 2-167 to 2-171. But Garcia’s acting performance is clearly

copyrightable subject matter. See Laws v. Sony Music Entm’t, Inc.,

448 F.3d 1134, 1142 (9th Cir. 2006) (citing Fleet v. CBS, Inc., 58 Cal.

Rptr. 2d 645, 651 (Ct. App. 1996)); 1 Nimmer on Copyright § 2.09[F] at

2-170 n.85.

38 GARCIA V. GOOGLE

Actors usually sign away their rights when contracting to

do a movie, but Garcia didn’t and she wasn’t Youssef’s

employee. I’d therefore find that Garcia acquired a copyright

in her performance the moment it was fixed. When dealing

with material created during production of a film or other

composite work, the absence of a contract always complicates

things. See Effects Associates, 908 F.2d at 556

(“Moviemakers do lunch, not contracts.”). Without a contract

the parties are left with whatever rights the copyright law

gives them. It’s not our job to take away from performers

rights Congress gave them. Did Jimi Hendrix acquire no

copyright in the recordings of his concerts because he didn’t

run the recorder in addition to playing the guitar? Garcia may

not be as talented as Hendrix—who is?—but she’s no less

entitled to the protections of the Copyright Act.

B. While the Copyright Office claims that its

“longstanding practices” don’t recognize Garcia’s copyright

interest, it doesn’t seem that the Register of Copyrights got

the memo. The Register was a member of the U.S. delegation

that signed the Beijing Treaty on Audiovisual Performances.

See U.S. Copyright Office, Annual Report of the Register of

Copyrights 8 (2012). The Treaty would recognize Garcia’s

rights in her performance. It provides that “performers” have

the “exclusive right of authorizing . . . the fixation of their

unfixed performances,” and “reproduction of their

performances fixed in audiovisual fixations, in any manner or

form.” World Intellectual Property Organization, Beijing

Treaty on Audiovisual Performances, Art. 6(ii), 7 (2012).

The Patent Office, which led the delegation, states that

U.S. law is “generally compatible” with the Treaty, as “actors

and musicians are considered to be ‘authors’ of their

performances providing them with copyright rights.” U.S.

GARCIA V. GOOGLE 39

Patent & Trademark Office, Background and Summary of the

2012 WIPO Audiovisual Performances Treaty 2 (2012).

Although the Copyright Office hasn’t issued a statement of

compatibility, it’s hard to believe that it would sign on if it

believed that the Treaty’s key provisions are inconsistent with

U.S. copyright law. In fact, the Copyright Office praised the

Treaty as “an important step forward in protecting the

performances of television and film actors throughout the

world.” U.S. Copyright Office, NewsNet: Beijing

Audiovisual Performances Treaty (2012),

http://copyright.gov/newsnet/2012/460.html. Except in the

Ninth Circuit.

The Copyright Office’s position is thus inconsistent at

best. And, in any event, neither the Copyright Office’s

reasoning nor the authority it relies on in its letter to Garcia

fare any better than the majority’s. The Copyright Office

would refuse copyright registration to an actor like Garcia

because “an actor or an actress in a motion picture is either a

joint author in the entire work or, as most often is the case, is

not an author at all by virtue of a work made for hire

agreement.” However, Garcia isn’t a joint author of the entire

movie and didn’t sign any agreements. She doesn’t fit into

either category. Like the majority, the Copyright Office

would wish this problem away by refusing registration unless

the copyright claimant personally recorded his performance.

But nothing in the legislative history relied on by the

Copyright Office (which concerned joint authorship of an

entire film) suggests that a non-employee doesn’t retain any

copyright interest in a video clip of his acting performance

because it’s recorded by the film’s producer. See H.R. Rep.

No. 94-1476, at 120.

40 GARCIA V. GOOGLE

III

The harm the majority fears would result from

recognizing performers’ copyright claims in their fixed,

original expression is overstated. The vast majority of

copyright claims by performers in their contributions are

defeated by a contract and the work for hire doctrine. See 1

Nimmer on Copyright § 6.07[B][2] at 6-28 to 6-29; 2 William

F. Patry, Patry on Copyright § 5:17 (2010). And most of the

performers that fall through the cracks would be found to

have given an implied license to the film’s producers to use

the contribution in the ultimate film. See Effects Associates,

908 F.2d at 558. Very few performers would be left to sue at

all, and the ones that remain would have to find suing worth

their while. They wouldn’t be able to claim the valuable

rights of joint authorship of the movie, such as an undivided

share in the movie or the right to exploit the movie for

themselves. See 1 Nimmer on Copyright § 6.08 at 6-34 to 6-

36. Rather, their copyright claims would be limited to the

original expression they created. See Aalmuhammed,

202 F.3d at 1232; Effects Associates, 908 F.2d at 559. Which

is why filmmaking hasn’t ground to a halt even though we

held a quarter-century ago that “where a non-employee

contributes to a book or movie, . . . the exclusive rights of

copyright ownership vest in the creator of the contribution,

unless there is a written agreement to the contrary.” Effects

Associates, 908 F.2d at 557.

Regardless, the Supreme Court has reminded us that

“speculation about future harms is no basis for [courts] to

shrink authorial rights.” N.Y. Times Co. v. Tasini, 533 U.S.

483, 505–06 (2001). In Tasini, freelance authors argued that

the inclusion in databases of their articles that originally

appeared in periodicals infringed their copyrights in the

GARCIA V. GOOGLE 41

works. Id. at 487. Publishers warned that “‘devastating’

consequences,” including massive damages awards, would

result if the Court were to hold for the freelancers. Id. at 504.

The Court nonetheless held for the freelancers, turning back

the parade of horribles deployed by the publishers. The Court

explained that there are “numerous models for distributing

copyrighted works and remunerating authors for their

distribution.” Id. at 504–05. Tasini is a powerful reminder

that movie producers, publishers and distributors will always

claim that the sky is falling in cases that might recognize an

individual contributor’s copyright interest in material he

created.2 They will always say, as Google says here, that

holding in the contributor’s favor will make “Swiss cheese”

of copyrights. Maj. Op. 20.

But under our copyright law, the creators of original,

copyrightable material automatically acquire a copyright

interest in the material as soon as it is fixed. There’s no

exception for material created during production of a film or

other composite work. When modern works, such as films or

plays, are produced, contributors will often create separate,

copyrightable works as part of the process. Our copyright

law says that the copyright interests in this material vest

2

Ditto in Community for Creative Non-Violence v. Reid, 490 U.S. 730

(1989), which concerned the scope of a “work made for hire.” Id. at 738.

Amici representing, among others, publishers and technology companies

advocated for a broad definition of “employee.” They predicted “ever-

increasing interference with the dissemination of creative works” if the

Court didn’t adopt their definition of “employee.” Brief of the Computer

& Business Equipment Manufacturers’ Ass’n et al. in Support of

Petitioners at 4–5, Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730

(1989) (No. 88-293). But the Court adopted the narrower definition of

“employee” used in agency law. Reid, 490 U.S. at 750–51. It appears that

creative works have been disseminating just fine in spite of Reid.

42 GARCIA V. GOOGLE

initially with its creators, who will then have leverage to

obtain compensation by contract. The answer to the “Swiss

cheese” bugbear isn’t for courts to limit who can acquire

copyrights in order to make life simpler for producers and

internet service providers. It’s for the parties to allocate their

rights by contract. See Effects Associates, 908 F.2d at 557.

Google makes oodles of dollars by enabling its users to

upload almost any video without pre-screening for potential

copyright infringement. Google’s business model, like that

of the database owners in Tasini, assumes the risk that a

user’s upload infringes someone else’s copyright, and that it

may have to take corrective action if a copyright holder

comes forward.

The majority credits the doomsday claims at the expense

of property rights that Congress created. Its new standard

artificially shrinks authorial rights by holding that a

performer must personally record his creative expression in

order to retain any copyright interest in it, speculating that a

contrary rule might curb filmmaking and burden the internet.

But our injunction has been in place for over a year; reports

of the internet’s demise have been greatly exaggerated. For

the reasons stated here and in the majority opinion in Garcia

v. Google, Inc., 766 F.3d 929, 933–36 (9th Cir. 2014), I

conclude that Garcia’s copyright claim is likely to succeed.

I’d also find that Garcia has made an ample showing of

irreparable harm. It’s her life that’s at stake. See id. at

938–39.