Is Every Orc an Author? On Rehearing, Judges Challenge 5-Second Copyright in Garcia v. Google

This article comes from the EFF website and is written by CORYNNE MCSHERRY

A panel of eleven Ninth Circuit federal judges heard oral arguments yesterday in Garcia v. Google, a copyright case arising from the notorious "Innocence of Muslims" video that was associated with violent protests around the world. The appellant, Cindy Lee Garcia, argues that she holds a copyright in her five-second performance in the video (a performance she says was tricked into giving), and is trying to use that claim to get the video pulled off the internet. To the shock of many, last February two Ninth Circuit judges agreed she might have a claim and ordered Google to remove the video from YouTube and prevent future uploads. Yesterday’s hearing revisited the facts and law that led to that decision. 

The judges grilled Garcia’s counsel on the question of copyrightability, challenging the notion that Garcia’s five-second performance could be a copyrightable work.  “Could any person who appeared in the battle scenes of the Lord of the Rings claim rights in the work?” asked Judge Margaret McKeown. And, she wondered, wasn’t this case really an issue of possible fraud, not copyright infringement?

Judge Alex Kozinski, however, suggested that the Beijing Treaty on Audiovisual Performances, which recognizes certain performance rights for actors, requires courts to recognize Ms. Garcia’s claimed copyright interest. However, the treaty is not yet in force, in the U.S. or anywhere else. In any event, as Google counsel explained, it is not clear that the treaty would create a copyright interest in a five-second performance that was part of a much longer work. Judge Kozinski also compared Ms. Garcia’s claim to a 1977 case involving a short performance by a “human cannonball.”

Google’s counsel stressed the burden on service providers and video-makers of recognizing a copyright interest in this case. If every person captured doing something creative on film could claim a copyright in it, service providers could find themselves flooded with takedown notices under the DMCA, resulting in the silencing of all kinds of lawful speech.  

Google’s counsel also attempted to keep the court focused on the preliminary injunction standard, which requires courts to deny the broad injunctive relief Garcia sought if the law does not “clearly favor” the legal claim. In this case, the overwhelming weight of case law (including a recent Ninth Circuit opinion) and even the Copyright Office clearly disfavors Garcia’s theory.  In our view, that, by itself, should have resolved the question.

Monday's hearing follows months of controversy. EFF and many other public interest groups have filed friend-of-the-court briefs in the case, noting (among other concerns) that actors generally do not have a copyright in their performances and that in any case neither Garcia nor the earlier opinion had justified a prior restraint of speech. We hope the Ninth Circuit quickly comes to the same conclusion and lifts the injunction.

Tis article is available on the EFF website at https://www.eff.org/deeplinks/2014/12/every-orc-author-rehearing-judges-challenge-5-second-copyright-garcia-v-google

The CopyKat - last Christmas you ......

As Eleonora reports over on theIPKat, Google has announced that it will be permanently shutting down the Spanish version of Google News, effective from December 16, 2014. The shutdown comes in direct response toamendments to the Spanish intellectual property law (Ley De Propiedad Intellectual) imposing a compulsory fee for the use of snippets of text to link to news articles, by online news aggregators that provide a search service. Google says its news service makes no profit and so hasd decided to pull the service out of Spain.  Richard Gingras, Head of Google News, said "[t]his new legislation requires every Spanish publication to charge services like Google News for showing even the smallest snippet from their publications, whether they want to or not. As Google News itself makes no money (we do not show any advertising on the site) this new approach is simply not sustainable."

Finland has decided to ditch copyright levies on digital devices. Instead a special government fund will be set up to compensate artists for private copying of music and movies. Following a Parliamentary  vote, Finnish MEP Henna Virkkunen said the new system would be “fairer to consumers and better better for artists because they will get more compensation this way”. Even Veronique Desbrosses, general manager of GESAC, which represents authors’ rights, agreed that increased compensation for artists was a positive element, saying “private copying compensation is part of the ecosystem and is essential”.

Chief Judge
Alex Kozinski 

With the eleven person en banc Ninth Circuit panel set to begin to re-hear arguments in Garcia v. Google case today in Pasadena, a number of Silicon Valley technology companies are amongst those resisting Cindy Lee Garcia's quest to "scrub the internet of her 5-second appearance in the controversial trailer for Innocence of the Muslims". Those against actors gaining a recognised copyright in their performances include Netflix, and the remaining amici range from law professors to news organizations, public interest groups to the Screen Actors Guild-American Federation of Television and Radio Artists—the last being the lone brief endorsing Garcia's copyright position. But interestingly no other major content owners from the film, TV or recorded music sectors have joined the battle: yes they want Google to take down infringing items - but no - they don't want performers and recording artists having any rights that might restrict their own commercial objectives. Google, the California Broadcasters Association and the American Civil Liberties Union all "foresee dire consequences if a U.S. appeals court doesn’t overturn a first-of-its-kind ruling" given by Chief Judge Alex Kozinski that gave actress Cindy Lee Garcia a copyright interest in her performance. Small filmmakers have also weighed in, backing Google; Jack Lerner, an assistant clinical professor at UC-Irvine School of Law, helped write an amicus brief on behalf of the International Documentary Film Association, other independent film groups and filmmakers including Morgan Spurlock, whose "Supersize Me" was nominated for an Academy Award. The California Broadcasters Association said that if the February ruling stands, it will open the floodgates to demands by minor players in movies for the removal of their performances from the Internet. More here.


Torrentfreak now reports that the Motion Picture Association Of America is now looking to secure web-blocks in the U.S without requiring new U.S. legislation. It seems having originally investigated how it might resurrect the web-block elements of SOPA/PIPA in Congress without causing so much controversy (which seems to have been a fanciful hope!)  - the MPAA has now opted for seeing if it can find a way to secure web-blocks in the American courts under existing laws, without requiring new legislation to be passed.

For the past three Decembers, a new musical tradition has been quietly taking root in the recorded music sector, stemming from the 2012 revision to European Union copyright law providing that sound recordings would be protected for an extended 70 years (rather than 50). But attached to that extension was a crucial proviso: in order to qualify for the extra 20 years of protection, the recordings had to be released within the first 50 years after they were made. Now Bob Dylan is said to be releasing a nine-LP box set of unreleased material from 1964, to keep the recordings from entering the public domain. The Beach Boys, The Byrds and The Kinks  are also due to release material although a number of websites noted that Universal Music is running out of time if it wants to reboot the copyright in any unreleased Beatles recordings from 1964. This time last year the major and the band's Apple Corps released 'The Beatles Bootleg Recordings 1963' onto iTunes. 

The one-time pirate website FilesTube has been officially "un-blocked" in the UK after relaunching itself as a licensed video aggregator. UK internet service providers were ordered to block their users from accessing  the site by the High Court in an action brought by record industry trade body the BPI in October last year. A relaunched Filestube is now as an aggregator of only legitimate content. and according to Torrentfreak, FilesTube's Poland-based operators had anticipated having to go the English High Court to get their domains unblocked, but the BPI had been monitoring the situation and voluntarily requested the block be removed. Indeed the BPI's General Counsel Kiaron Whitehead told TorrentFreak: "We are pleased that the block has encouraged FilesTube to change its business model so that it no longer appears to infringe music rights. Accordingly, we have agreed to un-block the site, which the ISPs will implement over the next few weeks. We hope that other sites which are subject to blocking orders will follow suit and help to support the development of legal digital entertainment".

Following on from our last blog and from TorrentFreak comes the opinion: "The Pirate Bay was taken offline in a police raid in Sweden. It may only have been the front-end load balancer that got captured, but it was still a critical box for the overall setup, even if all the other servers are running in random, hidden locations. Sure, The Pirate Bay was old and venerable, and quite far from up to date with today’s expectations on a website. That tells you so much more, when you consider it was consistently in the top 50 websites globally: if such a… badly maintained site can get to such a ranking, how abysmal mustn’t the copyright industry be?

The CopyKat - can Batman land a knockout punch for actors in copyright spat?

Those pesky Turtles

It seems SiriusXM has decided to rely on the 1940 case of  RCA v Whiteman et al to persuade  U.S. District Judge Colleen McMahon to reconsider her view that SiriusXM should be paying royalties from the broadcast of pre-1972 sound recordings by The Turtles and other acts. In that case Judge Learned Hand for the Second Circuit Court of Appeals wrote that state law should not let performers, once a phonograph was sold, control how and when it was played saying "we think that the “common-law property” in these performances ended with the sale of the records and that the restriction did not save it; and that if it did, the records themselves could not be clogged with a servitude." Judge McMahon says the 1940 case "might require her to rethink the ruling." More on the series of cases brought by the Turtles' Flo & Eddie here. 

Cisco Systems has said it will initiate a legal action against its fast growing rival, Arista Networks, accusing the company of patent and copyright infringement. Cisco has alleged that Arista has violated its patents and copyrights linked to its networking equipment. With copyright, Cisco's claims tha Arista has not only copied the Cisco product features, but has also apparently copied the language in Cisco's operating manuals - with typos and grammatical errors and all. More here.

Sol-seom by Michael Kenna

A case from South Korea where the plaintiff, Gallery Kong, a Korean image agency representing the interest of professional photographer Michael Kenna, has lost an appeal in a copyright infrngement lawsuit against Korean Air. The dispute concerns a photograph Kenna took of a small island in Gangwon Province under the title of “Island of Pine Trees.” He took the photo February 2007 while coming back from a photo shoot and spent about one and a half hours walking along the embankment to find an appropriate spot for shooting and produced the now famous black-and-white image called “Sol-seom” (meaning an island of pine trees). Korean Air used a similar colour image taken by an amateur photographer in a 2011 TV commercial - resulting in the lawsuit.

The Korean Air image

 

But it was not the same image - and the appellate court upheld the trial judge saying “Creative works using the same natural scenery like mountains, trees, and stones tend to be similar and thus the range of its creativeness is bound to be limited” and  “Given the fact that the object in the photograph is a natural one, a creativeness claim about it is weak and minor adjustments like taking a picture from a different angle can’t be taken as creative elements”. They also commented that the two pictures (one taken by Michael Kenna and the other by an amateur) are different in terms of volume and direction of light and the way the picture was taken. As to the claim by the plaintiff that the pictures are similar in their first impression, the judges answered, “The plaintiff’s work gives an impression of an Oriental ink-and-wash painting while the amateur’s exudes dynamism at the time of sunrise, which are fundamentally different.”

It's an interesting approach, but post the CJEU's Inforpaq decison it seems contrary to the decision made by Sir Colin Birss in Temple Island Collections Ltd v New English Teas Ltd & another [2012] EWPCC 1 -although here the claimant had manipulated a photograph of the House of Parliament to created a disticntive predominalty black and white image with a red routemaster bus on Westminster Bridge, which was then recreated by the defendant. Judge Birss (as he was then) considered the scope of photographic copyright by reference to three aspects which could be considered 'original': (i) Residing in specialities of angle of shot, light and shade, exposure and effects achieved with filters, developing techniques and so on; (ii) Residing in the creation of the scene to be photographed; (iii) Deriving from being in the right place at the right time -  and with a nod to Infopaq - found for the claimant.

Cindy Lee Garcia, the actress who got death threats for her role in a trailer for the rather horrible Innocence of Muslims before taking action against Google to enforce a takedown notice - and convincing the majority of the 9th Circuit Court of Appeals (with the ruling from Chief Judge Alex Kozinski) that actors could have a copyright interest in their performances - has now attracted amici support from SAG-AFTRA, the Actors Equity Association, the American Federation of Musicians and other associated talent labour groups in the entertainment industry. They say that an actor can indeed have a copyrightable interest in a performance that's separate and apart from the interest anyone else holds in a motion picture. SAG-AFTRA and the other performer's guilds have argued for the originality of acting performances to be protected and say that a performance can be considered a pantomime or dramatic work under Section 102 of the U.S. Copyright Act. The brief argues that usually each actor adds something new to the character he or she performs saying "Google and its amici argue that the actor is basically a puppet — an automaton that merely does as the director instructs, reading the words the writer writes, depicted as the cinematographer sees him or her. But this is clearly not the case. The actor imbues the character with originality. Compare, for example, the various actors who have played the character Batman on the big screen — each actor brought something different to their performance of the character that, even when masked in full costume, Christian Bale’s performance stands apart from Michael Keaton’s, or Val Kilmer’s, or George Clooney’s or even Adam West’s television appearances. And the recent casting of Ben Affleck to play the role sparked considerable debate among fans of the character" and "While a director or cinematographer may help guide the actor’s performance, particularly in connection with stage directions, it is the actor’s own original expression that the audience sees" says the brief. Facebook, Twitter, IAC and Pinterest had all requested permission to file an amicus brief supporting Google's position. The dissenting judge in the 9th Circuit, Judge N. Randy Smith, accused the panel's majority of writing new law saying "We have never held that an actress' performance could be copyrightable" but the majority held that "An actor's performance, when fixed, is copyrightable if it evinces 'some minimal degree of creativity ... no matter how crude, humble or obvious it might be".  More in the Hollywood Reporter here

In Australia Attorney General George Brandis and Communications Minister Malcolm Turnbull have written to major copyright holders to urge them to come up with ways to discourage people from infringing copyright online. It's a carrot and stick approach with ministers saying that if the code of practice is not agreed with 120 days, the government will impose its own rules to crack down on illegal downloading and streaming of material on the internet. The planned code of practice “will include a process to notify consumers when a copyright breach has occurred and provide information on how they can gain access to legitimate content,” Mr Turnbull said. The Australian government will also amend the Copyright Act so copyright owners can seek a court order to block a website operated from overseas that Australians use to access content unlawfully although some commentators say the planned scheme would be open to abuse by content owners - Dr Matthew Rimmer told TechWorld "There are a number of whistleblowing sites that have a large number of copyright materials on them" adding  "A site like Wikileaks, for instance, could certainly be targeted under these laws." More here.

And finally an interesting case from the world of music sampling. A US Judge has thown out a case against rapper Jay Z over the use of just one word 'oh' - from a recording and song by Eddie Bo called The Hook & Slings  in his track and video Run This Town with the court saying "Run This Town bears very little and perhaps no similarity at all to Hook & Sling Part I. The melody and lyrics are entirely different. The lyrics do not contain the word “oh.” .. [It appears] only in the background and in such a way as to be audible and aurally intelligible only to the most attentive and capable listener. "This does though seem to sidestep the ruling made in Westbound Records and Bridgeport Music v No Limit Films (September 2004) by the 6th Circuit Court of Appeals: here the court posed the question “If you cannot pirate the whole sound recording, can you ‘lift’ or ‘sample’ something less than the whole?” The Court’s answer to this was in the negative” and the court added “Get a license or do not sample – we do not see this as stifling creativity in any significant way” although that decision can istelf be contrasted by US District Judge Alison Nathan's more recent decision in the Tuf America v Beastie Boys case in 2013 .  More here. and more on music sampling here.

Performances protected by copyright ? Google gets a new hearing

Google Inc. will head back to federal appeals court over the somewhat  controversial decision that forced the Internet giant to take down an anti-Muslim video earlier this year. The 9th U.S. Circuit Court of Appeals has confirmed that it will rehear the case that sided with an actress featured in an inflammatory movie posted on YouTube called “Innocence of Muslims.” In February, the court’s 2-1 decision  (with the original and amended rulings by Judge Alex Kozinski for the majority) said Cindy Lee Garcia had never consented to being in the movie and her performance could be protected by copyright law.  The court will rehear the case en banc, though the current injunction against Google does remain in place.

Updates in the 'Innocence of the Muslims' copyright saga

We had already reported how Cindy Lee Garcia had persuaded a split panel of the U.S. 9th Circuit Court of Appeals that she had rights to her performance in the 13-minute trailer for "Innocence of Muslims" - the "crude piece of anti-Islamic agit-prop": Chief Judge Alex Kozinski held that Garcia held a copyright in her performance despite appearing in only five seconds of the trailer, writing none of her own lines and even having part of her dialogue overdubbed by someone else. The dissenting judge in the case, N. Randy Smith, accused the panel's majority of writing new law saying "We have never held that an actress' performance could be copyrightable" but the majority held that "An actor's performance, when fixed, is copyrightable if it evinces some minimal degree of creativity ... no matter how crude, humble or obvious it might be".  The video was taken down from YouTube - under protest. Now the Hollywood Reporter, amongst others, has revealed some updates in the case:

-  Almost immediately after the ruling, Google filed an emergency motion to stay the order pending a rehearing en banc saying "Under the panel's rule, minor players in everything from Hollywood films to home videos can wrest control of those works from their creators, and service providers like YouTube will lack the ability to determine who has a valid copyright claim". Judge Kozinski denied the motion, but in a rare move "that illustrates the tensions this decision has wrought" another 9th Circuit judge made a sua sponte request to have the Circuit reconsider the stay.

-  Facebook, Twitter, IAC and Pinterest have all requested permission to file an amicus brief supporting Google's position.

 - and media groups and publishers including The New York Times, Washington Post and the Los Angeles Times are also weighed in to support Google.

-  It also transpired that Garcia has been trying to register as the sole author of a "dramatic performance fixed in tangible medium of expression" at the U.S. Copyright Office. In December, 2012, the chief of the performing arts division at the Copyright Office indicated that the registration would be refused because a "motion picture is a single integrated work."; On March 6, the Director of Registration Policy and Practices wrote a letter to Garcia's lawyer firmly refusing registration and noting how the Copyright Office's "longstanding practices do not allow a copyright claim by an individual actor or actress in his or her performance contained within a motion picture.

It seems the sequel is set to open soon!

The CopyKat: Google appeal the Innocence of The Muslims decision, fearing ongoing ramifications

The Dutch anti-piracy group, BREIN, has said that it will take its web-blocking efforts to the Supreme Court in the Netherlands, after the country's High Court overturned earlier blocks instigated against The Pirate Bay in 2012 - calling the blocks "ineffectual", the court also stated that the blockades "constitute an infringement of [people's] freedom to act at their discretion in an appeal brought by ISPs Ziggo and XS4All.


A member of U.S. Congress has introduced legislation aimed at ensuring that the Copyright Royalty Board also consider fair market value when setting songwriter mechanical royalty rates for digital services. The legislation was introduced by Rep. Doug Collins (R-GA), a member of the House Committee on the Judiciary, carrying the name the Songwriter Equity Act. It's purpose is to update provisions in sections 114 and 115 of the Copyright Act to level the playing field for songwriter, composers and publishers to receive fair compensation for the use of their intellectual property - and move towards parity with payments for the use of sound recording. More on Billboard here. 

Actor Hank Azaria has won a legal battle with Cinderella Man star Craig Bierko over a comical sports announcer they both insisted they had created. Azaria's character Jim Brockmire, a brash baseball anouncer, was portrayed by Azaria in the hugely successful FunnyorDie.com video which was a viral hit. Azaria claimed he created the Brockmire character as a party piece in the mid-1980s and only became aware of Bierko's similar creation when they met at a party through mutual friend Matthew Perry. In his ruling U.S. District Judge Gary Feess stated that Azaria had created character attributes and clothing, while Bierko's announcer was "extremely vague". Judge Feess added: "Defendant has offered no description of him other than that he is 'a white, male baseball announcer,' who expresses himself in a 'uniquely American and arguably musical' fashion." The judge also dismissed Bierko's claim that he and Azaria had an implied contract following a 1997 discussion, during which Azaria was told he couldn't use the character. 

one of the offending pendants - with attitude

Rapper Drake's efforts to have a lawsuit against him for producing copies of an owl pendant designed for him by claimants, the jeweller Baden Baden, dismissed have failed after an oral hearing. The motion to dismiss was based on the assertion that Baden Baden couldn't copyright the design because its source was in the public domain - namely, the Egyptian hieroglyph for the letter M, which dates back 5,000 years. Drake's lawyer also argued in the filing that Baden Baden offered no more proof of infringement than screenshots of other people wearing owl pendants without any evidence that Drake created or sold the alleged infringing pendants.  

President Obama has nominated Robert Holleyman as deputy US Trade Representative  - Holleyman was previously head of the Business Software Alliance (BSA) - a background which has raised some concerns , not least as the Trans Pacific Partnership Treaty remains under negotiation.  The TPP, the ambitious 12-nation free trade plan, recently hit a new roadblock after four days of negotiations in Singapore.

Cindy Lee Garcia: A still from YouTube before the take down

Whilst tonight's Oscars have grabbed almost all of the Hollywood headlines, there was an interesting and important copyright related news story after actress Cindy Lee Garcia persuaded the U.S. 9th Circuit Court of Appeals that she had rights to her performance in the 13-minute trailer for "Innocence of Muslims" which has been called "a crude piece of anti-Islamic agit-prop" and which has triggered Muslim outrage across the Middle East and northern Africa. One Egyptian cleric issued a fatwa calling for the death of every actor in it, and Garcia has received death threats. Garcia's victory prompted the Google owned YouTube to remove the trailer from YouTube but not without protest. In a ruling released this week, Chief Judge Alex Kozinski declared for a split three-judge panel that Garcia held a copyright in her performance despite appearing in only five seconds of the trailer, writing none of her own lines and even having part of her dialogue overdubbed by someone else meaning she can limit where her work will be publicly performed, and the court further agreed that America's First Amendment does not apply to copyright infringement cases.  The dissenting judge in the case, N. Randy Smith, accused the panel's majority of writing new law saying "We have never held that an actress' performance could be copyrightable" but the majority held that "An actor's performance, when fixed, is copyrightable if it evinces 'some minimal degree of creativity ... no matter how crude, humble or obvious it might be" adding  "That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all." Judge Kozinski did qualify the ruling adding that most actors and actresses would have given their (implied) consent to be filmed and for their performance to be used when they join a cast but not here: in this case Garcia had been hired  under false pretences. Writer and producer Mark Basseley Youssef had told the actress the part was in a desert adventure - called "Desert Warrior" and this untruth voided any implied licence. Corryne McSherry from the Electronic Frontier Foundation commented "Garcia is claiming a copyright interest in her brief performance, a novel theory and one that doesn't work well here. After all, Garcia herself admits she had no creative control over the movie, but simply performed the lines given to her. There may be a context where an actor could assert some species of authorship, but this doesn't seem to be one of them. Moviemakers of all kinds should be worried indeed." On Thursday Google filed an emergency motion that would allow it to keep the video available until a final decision is made on the copyright issue saying "Under the panel's rule, minor players in everything from Hollywood films to home videos can wrest control of those works from their creators, and service providers like YouTube will lack the ability to determine who has a valid copyright claim".

And finally, the Guardian reports that artist, comedian and writer Miriam Elia is facing the potential of a copyright action from Penguin after she self published here own version of a 'Ladybird' Book - exploring modern art where the traditional characters of Mummy, Peter and Jane grapple with Tracey Emin-style conceptual art. One page, 'God Is Dead', depicts an empty room, in which Mummy introduces the children to a severe form of Nietzschean nihilism,  whilst  another page pokes fun at the giant inflatable animals that the artist and former Wall Street commodities broker Jeff Koons is famous for.  It seems that Penguin haven't been too heavy handed though - and  whilst We Go to the Gallery contains collages made from scenes cut from old Ladybird books, it also contains the artist's own work, and the company has told Elia that it would allow her one month to sell enough books to cover her costs, but any more have to be destroyed. Penguin contacted Elia last month to complain: "It was a bit of a shock. I never really thought about copyright," she said. "Artists just respond to the world in your little room and you're not thinking about much else. You just think: 'Oh, this will be great!". She stressed that Penguin has been sympathetic and has been open to negotiation, but ultimately would not back down on what it saw as infringement of its copyright. It's interesting to consider what difference will the new UK planned exception for parody and pastiche will add to this scenario - from this blogger's perspective certainly an arguable defence.