In a stunning decision recently released by the United States Court of Appeals for the Ninth Circuit, Google was ordered to remove the now-infamous film, “Innocence of Muslims”, from YouTube. While the ruling challenges traditional understandings of copyright ownership and protected expression under US copyright law, the Court’s unprecedented opinion also has significant implications for Internet Service Providers (ISPs) and Online Service Providers (OSPs) responding to takedown requests, as well as the future of online free speech.
“Innocence of Muslims”
In 2012, producer Mark Basseley Youssef cast Cindy Lee Garcia, a struggling actress, in a minor role in the film “Dessert Warrior”, a production that would never come to fruition. Garcia’s performance would instead appear in a 13-minute controversial film released on YouTube entitled “Innocence of Muslims”. The film portrayed the prophet Mohammed as a murderer and sexual deviant. Five seconds of Garcia’s previous work on Dessert Warrior were used in the film, and the clip was partially dubbed over so that she appeared to ask, “Is your Mohammed a child molester?”
It was only when the Muslim backlash began that Garcia realized what had happened.
The inflammatory film immediately sparked political controversy for its anti-Islamic content, causing outrage throughout the Muslim community. Garcia began to receive threats to her life, and petitioned Google to remove the content from YouTube. After Google refused her repeated requests, on the basis that she was not the copyright owner of the film, Garcia initiated legal action to obtain an injunction, requiring Google to take down the video on copyright infringement grounds.
Decision by the United States Court of Appeals for the Ninth Circuit - Reconceiving Notions of Copyright Ownership
In a 2-1 decision, Chief Judge Alex Kozinski proposed that an actor’s performance in a film is copyrightable, when fixed, if it evinces some minimal degree of creativity. This statement appears inconsistent with Aalmuhammed v. Lee, a longstanding authority on what it means to be an author. In that case, the court held that a creative contribution does not suffice to establish authorship of a movie. However, Kozinski argued that Garcia’s situation could be distinguished from Aalmuhammed, as Garcia was not asserting ownership over the whole work: “[n]othing in the Copyright Act suggests that a copyright interest in a creative contribution to a work simply disappears because the contributor doesn’t qualify as a joint author to the entire work.”
Despite the fact that Garcia conceded she had no creative control over the script or her performance, the majority held that Garcia likely has a copyright interest in her personal contribution, being “the portion of the film that represents her individual creativity.” Finding for Garcia, the Court ordered Google to remove all copies of “Innocence of “Muslims” from YouTube and every other platform within Google’s control. In addition, the order requires that Google take all reasonable steps to prevent further uploads of the film.
Most contributions to a motion picture are created as works made for hire (the US equivalent of works made in the course of employment under Canadian copyright law), which prevents the actor from claiming copyright in his or her performance. Alternatively, the filmmaker’s use of the actor’s performance will usually be permitted due to an explicit or implied license. As such, it may be a rare occasion where actors can claim copyright in their individual performance in a film.
Nevertheless, the different interpretations of the divided Court illustrates the uncertainty over the application of the law in this area. The majority found that Garcia had a copyright interest in her contribution, although the dissenting judge noted that Garcia was "an actress acting out a script that she did not write under the direction of someone else who provides all of the instruments, tools and leadership.” Characterized in this manner, it is difficult to see how Garcia’s performance jives with traditional conceptions of authorship and copyright-protected expression under both US and Canadian law.
The decision implies that anyone who contributes creative expression to a movie or other form of copyrighted work may have an independent copyright interest, which they can use as a sword against the work’s distribution and performance.
What’s the Big Deal?
To avoid liability and benefit from the safe harbor provisions in the US Digital Millennium Copyright Act (DMCA), ISPs and OSPs (service providers) must abide by the legislation’s "notice and takedown" (NTD) rules under § 512. Under the DMCA, service providers are required to prevent infringement by expeditiously taking down allegedly infringing subject matter when they receive an allegation of infringement from a copyright owner.
While the Ninth Circuit’s take-down-and-stay order originally required Google to remove the film in its entirety, in response to Google’s objections, the Court later restricted the order to versions of the film that include Garcia’s performance. However, the tailoring of the order does not alter the fact that the Court’s novel approach to copyright ownership increases the burden on service providers in responding to allegations of copyright infringement under the DMCA.
The NTD system has already been heavily criticized for introducing a pre-judicial determination of copyright infringement on the part of service providers, who have no expertise in copyright law. As a result, service providers will often remove content based on tenuous or unsubstantiated copyright infringement claims in an effort to immunize themselves from liability.
By expanding the scope of authorship to contributors who wouldn’t previously have been considered copyright owners, the Garcia decision forces online content platforms to ascertain which of the actors in a particular video have a legitimate copyright claim. As Andrew McDiarmid of the US Center for Democracy and Technology comments: “DMCA takedown notices from frustrated bit players, which last week would have been easily ignored as not coming from the copyright holder for the work, might now be honored for fear of litigation.”
Suppose an individual alleges infringement of their contribution to a copyrighted work and notifies the service provider, as Garcia did. Due to last week’s decision and the liability structure of the DMCA, rather than dispute the claim, that service provider is much more likely to remove the entire work without bothering to determine the legitimacy of the person’s copyright interest or going through the hassle of removing only those segments pertaining to the claimant’s particular contribution. It seems reasonably inevitable that the Garcia decision, combined with the NTD regime, will prove to be a significant barrier to freedom of expression.
Such damaging repercussions may have been avoided under a notice-and-notice system of service provider liability, such as the one implemented by the Canadian Copyright Modernization Act. Under our Canadian scheme, service providers are not liable for infringement as long as they forward the notice from the copyright owner to its allegedly infringing end user. There is no requirement that the service provider remove the disputed content. Under such a system, the consequences of the Garcia decision for service providers would be limited to the administrative hassle of forwarding significantly more alleged infringement notices from a greater pool of potential copyright owners. This is particularly noteworthy given that it may be easier for someone in Ms. Garcia's shoes to claim copyright infringement in Canada in light of performers' neighbouring rights and newly enacted moral rights, which contemplate the copyright interest of performers in certain circumstances.
Although a US decision, the Court’s ruling in this case may have a chilling effect for internet users and content creators worldwide, as the future of online expression and democratic dialogue is dangerously threatened under the notice-and-takedown provisions of the DMCA.
 Gregory Hagen, "'Modernizing' ISP Liability" in Michael Geist, ed, In the Public Interest: Canadian Copyright Reform (Irwin Law: 2005) at 361.
 Sheryl N. Hamilton, “Made in Canada: A Unique Solution to Internet Service Provider Liability and Copyright Issues” in Michael Geist, ed, In the Public Interest: Canadian Copyright Reform (Irwin Law: 2005) at 300.