Garcia and Google Continue to Spar Over “Innocence of Muslims”

[Originally posted on the American University Intellectual Property Brief Blog on April 15, 2014, CC-BY]

The “Innocence of Muslims” saga is far from over.

As Sarah O’Connor wrote last month, the Ninth Circuit issued an order which requires “Google to take down all copies of ‘Innocence of Muslims’ from YouTube and any other platforms within its control and to take all reasonable steps to prevent further uploads.” This order is highly controversial, as it not only goes beyond the scope of the so-called “take down” provisions in Section 512 of the Digital Millennium Copyright Act but also found that actors’ performances, when fixed, meet the minimum requirements to be an independently copyrightable work of authorship.

Since the controversial opinion was handed down in February, this docket has been busy. On February 27, the day after the opinion was released, Google filed an emergency motion asking the court to stay the order pending the disposition of their petition for rehearing en banc. This motion was denied the next day, and the court clarified that the take down order applied only to copies of “Innocence of Muslims” that included Cindy Lee Garcia’s performance.

On March 12, Google filed a petition for rehearing en banc arguing against both the injunction and the court’s finding that Garcia holds a copyright in her performance. Google attached a series of correspondence between Garcia’s counsel and the Copyright Office, in which Robert Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practices, refused registration in Garcia’s claim in her individual performance in the motion picture. Kasunic explained that “[i]f her contribution was neither a work made for hire nor the requisite authorship to warrant a claim in a joint work, Ms. Garcia has no separable claim to copyrightable authorship in her performance.” This petition is still pending before the court.

While this petition was pending, Garcia filed an emergency motion for a finding of contempt. Garcia claimed that Google failed to comply with the take down order because a copy was available on their worldwide platform and thus viewable outside the country. Additionally, Garcia challenged Google’s assertion that compliance with this broad order is difficult. Her motion suggested that “[f]or Google, it is a pedestrian, technical exercise to take down those URLs, to hire an intern to just search for ‘Innocence of Muslims.’” Her motion sought sanctions to the tune of $150,000 per violation, presumably based on the statutory damages provisions in Section 504(c) of the Copyright Act. Garcia also asked that the court find Google in contempt for not deleting the posted videos, claiming that “merely disable[ing]” access to them is insufficient, and that the “snide message” displayed was a sign that Google was “ridiculing” the court’s authority and “thumbing its nose at the Court and making a mockery of our judicial system.”

Needless to say, Google filed a thorough response to the motion. Google’s response points out that Google has worked under “tremendous time pressure to develop a new method . . . to identify and block new uploads,” which is far beyond any legal obligation any online service provider would be under absent this order. Google also notes that Garcia’s assertion that this is a “pedestrian, technical exercise” “reflects a deep lack of technical understanding and vastly underestimates the burdens involved” in complying with such a “sweeping take-down, stay-down order.” Google adds that the one copy of the film Garcia cited in her motion “was identified by YouTube before Garcia brought it to Google’s attention and blocked it before she filed her motion.” Additionally, Google points out that the order doesn’t require that YouTube remove copies, but rather disable access to them, citing Section 512. As Google says, “[r]equiring deletion would turn the preliminary injunction into a de facto permanent injunction by leaving YouTube unable to restore the videos if it ultimately prevails.” In response to assertions that copies of “Innocence of Muslims” can be found via search, Google notes that the order only requires removal of copies of the video from platforms under Google’s control, not links to third-party sites. Google notes that “Garcia’s fundamental complaint appears to be that ‘Innocence of Muslims’ is still on the Internet. But Google and YouTube do not operate the Internet.” On March 31, the court denied Garcia’s motion in a one sentence order.

Hopefully the Ninth Circuit will grant Google’s petition for rehearing later this month. While this case has been amusing to watch, bad facts make for bad law.