The Ownership of Copyrightable Contributions in the Wake of Garcia v. Google and 16 Casa Duse v. Merkin The Second and Ninth Circuits have both recently held that an actor or a director may not, in the normal course, own a copyright to their individual contributions to an integrated work of authorship like a film. This panel will explore whether these decisions were correct, and the real-world impact they will have on the motion picture industry, and on contributions to integrated works. Moderator: Justin Hughes Hon. William Byrne Professor of Law, Loyola Law School Panelists: Eleanor Lackman Partner, Cowan, DeBaets, Abrahams & Sheppard LLP F. Jay Dougherty Professor of Law, Director of Entertainment & Media Law Institute and Concentration Program, Loyola Law School Christopher Newman Associate Professor of Law, George Mason University School of Law Danielle Van Lier Senior Counsel, Intellectual Property and Contracts, SAG-AFTRA TABLE OF CONTENTS Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015)………………………………………...…..1 16 Casa Duse, LLC v. Merkin, 791 F.3d 247 (2d Cir. 2015)…………………………………….22 F. Jay Dougherty, Not a Spike Lee Joint? Issues in the Authorship of Motion Pictures Under U.S. Copyright Law, 49 UCLA L. Rev. 225 (2001)…………………………………......41 GARCIA v. GOOGLE, INC. 733 Cite as 786 F.3d 733 (9th Cir. 2015) changing the content and context of ongo- ing global discourse. The constitutional Cindy Lee GARCIA, Plaintiff– violation is not cured by restoring access Appellant, to the video well over a year later, long v. after the time when it was most relevant to GOOGLE, INC., a Delaware Corpora- the debate and of greatest interest to the tion; YouTube, LLC, a California lim- public. ited liability company, Defendants– Appellees, III. and ‘‘The vitality of civil and political institu- Nakoula Basseley Nakoula, an individu- tions in our society depends on free discus- al, aka Sam Bacile; Mark Basseley sionTTTT The right to speak freely and to Youssef; Abanob Basseley Nakoula; promote diversity of ideas and programs is Matthew Nekola; Ahmed Hamdy; TTT one of the chief distinctions that sets Amal Nada; Daniel K. Caresman; us apart from totalitarian regimes.’’ Ter- Kritbag Difrat; Sobhi Bushra; Robert miniello, 337 U.S. at 4, 69 S.Ct. 894. Inno- Bacily; Nicola Bacily; Thomas J. Ta- cence of Muslims may indeed be offensive, nas; Erwin Salameh; Yousseff M. but we do not accept political terrorism or Basseley; Malid Ahlawi, Defendants. even judicial censorship as the answer. No. 12–57302. By ordering the removal of the filmmak- er’s version of Innocence of Muslims for United States Court of Appeals, well over a year, we inappropriately cast Ninth Circuit. aside the very tradition of robust dialogue Argued and Submitted En that separates us from those who would Banc Dec. 15, 2014. wish harm upon persons whose speech Filed May 18, 2015. they find offensive. It is no answer to these basic concepts that the gag order Background: Actress who received death was eventually vacated. threats due to her performance for unre- leased film that was modified and incorpo- For the foregoing reasons, I respectfully rated into anti-Islamic video uploaded to dissent from our decision not to immedi- video-hosting website sued website, web- ately rehear this case en banc on an emer- site’s owner, and film’s producers, alleging gency basis. that posting of video infringed her copy- right in her performance. Actress applied for temporary restraining order. Treating application as motion for preliminary in- junction, the United States District Court , for the Central District of California, Mi- chael W. Fitzgerald, J., denied motion. Ac- tress appealed. The Court of Appeals, Ko- zinski, Chief Judge, 766 F.3d 929, reversed and remanded. Holdings: On rehearing en banc, the Court of Appeals, McKeown, Circuit Judge, held that: 1 734 786 FEDERAL REPORTER, 3d SERIES (1) actress was not likely to succeed on 6. Injunction O1012 her claim that her performance in film A district court should deny a request was a copyrightable ‘‘work,’’ and for mandatory injunction unless the facts (2) actress could not establish irreparable and law clearly favor the moving party. harm. 7. Injunction O1012 Affirmed. Mandatory injunctions should not is- sue in doubtful cases. Watford, Circuit Judge, filed opinion con- curring in the judgment. 8. Copyrights and Intellectual Property O85 Kozinski, Circuit Judge, filed dissenting Actress was not likely to prove her opinion. five-second performance in film was a ‘‘work,’’ nor would she likely meet the copyright requirements of authorship and 1. Federal Courts O3616(2) fixation, as required to warrant prelimi- A district court order denying a mo- nary injunction requiring owner of video- tion for a preliminary injunction is re- hosting website to remove from website viewed for abuse of discretion. anti-Islamic video into which her perform- ance recorded for different film was incor- 2. Injunction O1092 porated; actress’s contribution to film was A plaintiff seeking a preliminary in- limited to her acting performance, which junction must show that: (1) she is likely was insufficient to establish her authorship to succeed on the merits, (2) she is likely of film, film could not be splintered into to suffer irreparable harm in the absence many copyrightable ‘‘works,’’ and actress of preliminary relief, (3) the balance of herself was not responsible for fixing her equities tips in her favor, and (4) an injunc- performance in a tangible medium. 17 tion is in the public interest. U.S.C.A. §§ 101, 102(a). 3. Injunction O1096 9. Copyrights and Intellectual Property O85 Because it is a threshold inquiry in Threats to actress’s life and emotional determining entitlement to preliminary in- turmoil actress endured as result of unau- junction, when a plaintiff has failed to thorized incorporation of her performance show the likelihood of success on the mer- in one film into anti-Islamic video were its, Court of Appeals need not consider the untethered from, and incompatible with, remaining preliminary injunction elements. copyright and copyright’s function as the 4. Injunction O1080 engine of expression, and thus actress could not establish irreparable harm re- Preliminary injunction is treated as a quired to support preliminary injunction mandatory injunction if the relief sought requiring owner of video-hosting website orders a responsible party to take action. to remove video from its website due to 5. Injunction O1012 alleged copyright violation. A mandatory injunction goes well be- 10. Copyrights and Intellectual Property yond simply maintaining the status quo O1 pendente lite and is particularly disfa- Protection of privacy is not a function vored. of copyright law; to the contrary, copyright 2 GARCIA v. GOOGLE, INC. 735 Cite as 786 F.3d 733 (9th Cir. 2015) law offers a limited monopoly to encourage D.C.; Art Neill and Teri Karobonik, New ultimate public access to the creative work Media Rights, San Diego, CA; Erik Stall- of the author. man, Center for Democracy & Technology, Washington, D.C.; and Jonathan Band, 11. Copyrights and Intellectual Property Jonathan Band PLLC of Washington, O87(1) D.C., for Amici Curiae Electronic Frontier Authors cannot seek emotional dis- Foundation, American Civil Liberties Un- tress damages under the Copyright Act, ion, Public Knowledge, Center for Democ- because such damages are unrelated to the racy and Technology, New Media Rights, value and marketability of their works. 17 American Library Association, Association U.S.C.A. § 101. of College and Research Libraries, and Association of Research Libraries. Catherine R. Gellis, Sausalito, CA, for Amici Curiae Floor 64, Inc., and Organiza- M. Cris Armenta, The Armenta Law tion for Transformative Works. Firm ACP, Los Angeles, CA; Credence Sol, La Garenne, Chauvigng, France; and Christopher S. Reeder, Robins, Kaplan, Jason Armstrong, Bozeman, MT, for Plain- Miller & Ciresi LLP, Los Angeles, CA; tiff–Appellant. David Leichtman and Michael A. Kolcun, Neal Kumar Katyal, Christopher T. Robins, Kaplan, Miller & Ciresi LLP, New Handman, Dominic F. Perella, and Sean York, N.Y.; and Kathryn Wagner, Stacy Marotta, Hogan Lovells U.S. LLP, Wash- Lefkowitz, and Kristine Hsu, New York, ington, D.C.; and Timothy Alger and Suni- N.Y., for Amicus Curiae Volunteer Law- ta Bali, Perkins Coie LLP, Palo Alto, CA, yers for the Arts, Inc. for Defendants–Appellees Google, Inc. and Andrew P. Bridges, David L. Hayes, YouTube LLC. Kathryn J. Fritz, and Todd R. Gregorian, Michael H. Page and Joseph C. Gratz, Fenwick & West LLP, San Francisco, CA, Durie Tangrie LLP, San Francisco, CA, for Amici Curiae Adobe Systems, Inc., Au- for Amicus Curiae Netflix, Inc. tomattic, Inc., Facebook, Inc., Gawker Me- dia, LLC, IAC/Interactive Corp., Kickstar- Christopher Jon Sprigman, New York ter, Inc., Pinterest, Inc., Tumblr, Inc., and University School of Law, New York, Twitter, Inc. N.Y.; Christopher Newman, George Ma- son University School of Law, Arlington, Venkat Balasubramani, Focal PLLC, VA; and Jennifer S. Grannick, Stanford Seattle, WA; Eric Goldman, Santa Clara Law School, Stanford, CA, for Amici Curi- University School of Law, Santa Clara, ae Professors of Intellectual Property. CA, for Amici Curiae Internet Law Profes- Matt Schruers, Washington, D.C., for sors. Amicus Curiae Computer & Communica- Gary L. Bostwick, Bostwick Law, Los tions Industry Association. Angeles, CA; Jack I. Lerner, UCI Intell. Corynne McSherry and Vera Ranieri, Prop., Arts & Tech. Clinic, Irvine, CA; Electronic Frontier Foundation, San Fran- Michael C. Donaldson, Donaldson v Callif, cisco, CA; Lee Rowland and Brian Hauss, LLP, Beverly Hills, CA; Lincoln D. Band- American Civil Liberties Union, New low, Lanthrop & Gage LLP, Los Angeles, York, N.Y.; Sherwin Siy and John Berg- CA; and Rom Bar–Nissim, Los Angeles, mayer, Public Knowledge, Washington, CA, for Amici Curiae International Docu- 3 736 786 FEDERAL REPORTER, 3d SERIES mentary Association, Film Independent, Justin Hughes, Loyola Law School, Los Fredrik Gertten and Morgan Spurlock.