UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

CINDY LEE GARCIA, Plaintiff-Appellant,

v.

GOOGLE, INC., a Delaware Corporation; YOUTUBE, LLC, a California limited liability company, 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.

OPINION

No. 12-57302 D.C. No. 2:12-cv-08315-MWF-VBK

Appeal from the United States District Court for the Central District of California

Michael W. Fitzgerald, District Judge, Presiding 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 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 succeed and that she had made an ample showing of irreparable harm.

COUNSEL

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,  PublicKnowledge, 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, LLPBeverly 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

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.

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 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 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 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.”

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 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

1. 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.

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’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[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 fact 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.

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 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), 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, 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]¹ 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.

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 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]

 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 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 sheseeks 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 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” tocontrol 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 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 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 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 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 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 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 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 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.

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.

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 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)).[15] 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.

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. 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 A u d i o v i s u a l   P e r f o r m a n c e s   T r e a t y   ( 2 0 1 2 ) , 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

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 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.[16] 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  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.

* This summary constitutes no part of the opinion of the court.  It has been prepared by court staff for the convenience of the reader.

[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.”

[2] See YouTube.com Press Statistics, https://www.youtube.com/yt/ press/statistics.html (last visited May 13, 2015).

[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.

[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.

[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.

[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.

[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.

[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).

[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).

[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).

[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 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).

[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).

[15] 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.

[16] 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.

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

CINDY LEE GARCIA,  Plaintiff-Appellant,

v.

GOOGLE, INC., a Delaware

Corporation; YOUTUBE, LLC, a

California limited liability company,

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.

No. 12-57302 D.C. No. 2:12-cv-08315- MWF-VBK

ORDER AND AMENDED OPINION

Appeal from the United States District Court for the Central District of California

Michael W. Fitzgerald, District Judge, Presiding

Argued and Submitted

June 26, 2013—Seattle, Washington

Filed February 26, 2014

Amended July 11, 2014

Before: Alex Kozinski, Chief Judge, Ronald M. Gould and N. Randy Smith, Circuit Judges.

Opinion by Chief Judge Kozinski; Dissent by Judge N.R. Smith

SUMMARY*

Copyright / Preliminary Injunction

The panel filed (1) an order amending a previous opinion and dissent and stating that a petition for rehearing en banc remained pending, (2) an amended opinion, and (3) an amended dissent in an appeal from the district court’s denial in a copyright case of a preliminary injunction requiring the removal from YouTube.com of an anti-Islamic film that used a performance that the plaintiff made for a different film.

Reversing the district court’s denial of the preliminary injunction, the panel concluded that the plaintiff established a likelihood of success on the merits of her claim of infringement of her performance within the film because she proved (1) that she likely had a protectible interest in the performance and (2) that the filmmaker did not own an interest as a work for hire and exceeded any implied license to use the plaintiff’s performance.

The panel held that the plaintiff established the likelihood that irreparable harm would result if an injunction did not issue because she was subject to death threats and took action as soon as she began receiving the threats. The plaintiff also established sufficient causal connection between the infringement of her copyright and the harm she alleged.

The panel also held that the balance of the equities and the public interest weighed in favor of injunctive relief.

Dissenting, Judge N.R. Smith wrote that the facts and law did not clearly favor issuing a mandatory preliminary injunction to the plaintiff. He wrote that the plaintiff did not establish a likelihood that she had a copyrightable interest in her acting performance, nor did she clearly show that the performance was not a work made for hire. In addition, the district court did not abuse its discretion in its ruling on irreparable harm, and the balance of the equities and the public interest did not favor the issuance of a preliminary injunction.

COUNSEL

Cris Armenta (argued), The Armenta Law Firm APC, Los Angeles, California and Credence Sol, Chauvigng, France, for Plaintiff-Appellant.

Timothy L. Alger (argued) and Sunita Bali, Perkins Coie LLP, Palo Alto, California, for Defendants-Appellees.

ORDER

The opinion and dissent filed February 26, 2014, and reported at 743 F.3d 1258, are amended to conform to the attached Amended Opinion and Amended Dissent, 12-57302. No further petitions for rehearing will be entertained. The petition for rehearing en banc remains pending.

OPINION

KOZINSKI, Chief Judge:

While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa. But that’s exactly what happened to Cindy Lee Garcia when she agreed to act in a film with the working title “Desert Warrior.”

The film’s writer and producer, Mark Basseley Youssef—who also goes by the names Nakoula Basseley Nakoula and Sam Bacile—cast Garcia in a minor role. Garcia was given the four pages of the script in which her character appeared and paid approximately $500 for three and a half days of filming. “Desert Warrior” never materialized. Instead, Garcia’s scene was used in an anti-Islamic film titled “Innocence of Muslims.” Garcia first saw “Innocence of Muslims” after it was uploaded to YouTube.com and she discovered that her brief performance had been partially dubbed over so that she appeared to be asking, “Is your Mohammed a child molester?”

These, of course, are fighting words to many faithful Muslims and, after the film aired on Egyptian television, there were protests that generated worldwide news coverage. An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the film, and Garcia soon began receiving death threats. She responded by taking a number of security precautions and asking that Google remove the video from YouTube.

In all, Garcia filed eight takedown notices under the Digital Millennium Copyright Act. See generally 17 U.S.C. § 512. When Google resisted, she supplied substantive explanations as to why the film should be taken down. Google still refused to act, so Garcia applied for a temporary restraining order seeking removal of the film from YouTube, claiming that the posting of the video infringed her copyright in her performance.[1] The district court treated the application as a motion for a preliminary injunction, and denied it because Garcia had delayed in bringing the action, had failed to demonstrate “that the requested preliminary relief would prevent any alleged harm” and was unlikely to succeed on the merits because she’d granted Youssef an implied license to use her performance in the film.

I. Discussion

While we review the denial of a preliminary injunction for abuse of discretion, Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011), the “legal premises underlying a preliminary injunction” are reviewed de novo. A&M Records, Inc. v. Napster, Inc., 284 F.3d 1091, 1096 (9th Cir. 2002). In granting or denying a preliminary injunction, the district court must consider four factors: a plaintiff’s likely success on the merits, the likelihood that irreparable harm will result if an injunction doesn’t issue, the balance of equities and the public interest. Winter v. Natural Res. Def. Council, 555 U.S. 7, 20 (2008). The district court found against Garcia on the first two factors and didn’t consider the last two.[2]

A. Likelihood of Success on the Merits

Garcia doesn’t claim a copyright interest in “Innocence of Muslims” itself; far from it. Instead, she claims that her performance within the film is independently copyrightable and that she retained an interest in that copyright. To succeed on this claim, Garcia must prove not only that she likely has an independent interest in her performance but that Youssef doesn’t own any such interest as a work for hire and that he doesn’t have an implied license to use her performance.

1. An Independent Copyright Interest

A film is typically conceived of as “a joint work consisting of a number of contributions by different ‘authors.’” 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 6.05 at 6–14 (1990). Garcia argues that she never intended her performance to be part of a joint work, and under our precedent she doesn’t qualify as a joint author. See Aalmuhammed v. Lee, 202 F.3d 1227, 1231–36 (9th Cir. 2000). The dissent claims that “Garcia’s interest in her acting performance may best be analyzed as a joint work with Youssef.” Dissent 25 n.3. But work is joint only if the authors involved in its creation intend that it be so. See 17 U.S.C. § 101. Garcia expressly disclaims such intent and there is no evidence that Youssef intended to create a joint work. We thus have no basis for finding a joint intent on this record.

But just because Garcia isn’t a joint author of “Innocence of Muslims” doesn’t mean she doesn’t have a copyright interest in her own performance within the film. Whether an individual who makes an independently copyrightable contribution to a joint work can retain a copyright interest in that contribution is a rarely litigated question. See Thomson v. Larson, 147 F.3d 195, 206 (2d Cir. 1998) (dismissing similar argument on procedural grounds); see also David Nimmer, Address, Copyright in the Dead Sea Scrolls: Authorship and Originality, 38 Hous. L. Rev. 1, 186–87 & n.942 (2001). Nothing 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 of the entire work. 17 U.S.C. § 102(a) (“Copyright protection subsists . . . in original works of authorship fixed in any tangible medium . . . .”). Where, as here, the artistic contribution is fixed, the key question remains whether it’s sufficiently creative to be protectible.[3]

Google argues that Garcia didn’t make a protectible contribution to the film because Youssef wrote the dialogue she spoke, managed all aspects of the production and later dubbed over a portion of her scene. But an actor does far more than speak words on a page; he must “live his part inwardly, and then . . . give to his experience an external embodiment.” Constantin Stanislavski, An Actor Prepares 15, 219 (Elizabeth Reynolds Hapgood trans., 1936). That embodiment includes body language, facial expression and reactions to other actors and elements of a scene. Id. at 218–19. Otherwise, “every shmuck . . . is an actor because everyone . . . knows how to read.” Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987).

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.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (quoting 1 Nimmer on Copyright § 1.08[C][1]). That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all. Cf. 17 U.S.C. § 102(a)(4) (noting “pantomimes and choreographic works” are eligible for copyright protection). It’s clear that Garcia’s performance meets these minimum requirements.

Aalmuhammed isn’t to the contrary because it does not, as the dissent would have it, “articulate[] general principles of authorship.” Dissent 27. Aalmuhammed only discusses what is required for a contributor to a work to assert joint ownership over the entire work: “We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution.” 202 F.3d at 1232.

Aalmuhammed plainly contemplates that an individual can make a “copyrightable contribution” and yet not become a joint author of the whole work. Id. For example, the author of a single poem does not necessarily become a co-author of the anthology in which the poem is published. It makes sense to impose heightened requirements on those who would leverage their individual contribution into ownership of a greater whole, but those requirements don’t apply to the copyrightability of all creative works, for which only a “minimal creative spark [is] required by the Copyright Act and the Constitution.” Feist Publ’ns, 499 U.S. at 363.[4]

Nor does Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), speak to the problem before us. First, of course, Midler isn’t a copyright case at all—it’s a right of publicity case that happens to discuss copyright in the context of preemption, not infringement. Second, Midler discusses the copyrightability of a performer’s voice—not her performance. See 849 F.2d at 462. A performer’s voice is analogous to her image, which we’ve said “is not a work of authorship” under the Copyright Act. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1004 (9th Cir. 2001). But that doesn’t answer the question of whether the artist’s creativity, expressed through her voice or image, is protected by copyright. Just because someone’s voice—its particular timbre and quality—can’t be copyrighted, doesn’t mean that a performance made using that voice can never be protected. In fact, many vocal performances are copyrighted. See, e.g., Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1141 (9th Cir. 2006).

Recognizing that Garcia may have a copyright interest in her performance isn’t the end of the inquiry. A screenplay is itself a copyrightable creative work and a film is a derivative work of the screenplay on which it is based. See Gilliam v. Am. Broad. Cos., 538 F.2d 14, 20 (2d Cir. 1976); see also 17 U.S.C. § 101; 2 Nimmer on Copyright § 2.10[A] n.8. Where, as here, an actor’s performance is based on a script, the performance is likewise derivative of the script, such that the actor might be considered to have infringed the screenwriter’s copyright. And an infringing derivative work isn’t entitled to copyright protection. See 17 U.S.C. § 103(a); see also U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1016 (9th Cir. 2012).

Of course, by hiring Garcia, giving her the script and turning a camera on her, Youssef implicitly granted her a license to perform his screenplay. See Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558–59 (9th Cir. 1990). This doesn’t mean that Garcia owns a copyright interest in the entire scene: She can claim copyright in her own contribution but not in “preexisting material” such as the words or actions spelled out in the underlying script. 17 U.S.C. § 103(b); see also U.S. Auto Parts Network, Inc., 692 F.3d at 1016. Garcia may assert a copyright interest only in the portion of “Innocence of Muslims” that represents her individual creativity, but even if her contribution is relatively minor, it isn’t de minimis. See Feist, 499 U.S. at 359, 363. We need not and do not decide whether every actor has a copyright in his performance within a movie. It suffices for now to hold that, while the matter is fairly debatable, Garcia is likely to prevail based on the record and arguments before us.

Nothing we say today precludes the district court from concluding that Garcia doesn’t have a copyrightable interest, or that Google prevails on any of its defenses. We note, for example, that after we first issued our opinion, the United States Copyright Office sent Garcia a letter denying her request to register a copyright in her performance. Because this is not an appeal of the denial of registration, the Copyright Office’s refusal to register doesn’t “preclude[] a determination” that Garcia’s performance “is indeed copyrightable.” OddzOn Prods., Inc. v. Oman, 924 F.2d 346, 347 (D.C. Cir. 1991). But the district court may still defer to the Copyright Office’s reasoning, to the extent it is persuasive. See Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446, 448–49 (9th Cir. 2014).

After we first published our opinion, amici raised other issues, such as the applicability of the fair use doctrine, see 17 U.S.C. § 107, and section 230 of the Communications Decency Act, see 47 U.S.C. § 230. Because these defenses were not raised by the parties, we do not address them. The district court is free to consider them if Google properly raises them.

As the above discussion makes clear, any analysis of the rights that might attach to the numerous creative contributions that make up a film can quickly become entangled in an impenetrable thicket of copyright. But it rarely comes to that because copyright interests in the vast majority of films are covered by contract, the work for hire doctrine or implied licenses. See 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, 238, 317–18, 327–33 (2001). Here, Google argues that Garcia’s performance was a work made for hire or, alternatively, that she granted Youssef an implied license to use her performance in “Innocence of Muslims.”

2. Work For Hire

Under the work for hire doctrine, the rights to Garcia’s performance vested in Youssef if Garcia was Youssef’s employee and acted in her employment capacity or was an independent contractor who transferred her interests in writing. See 17 U.S.C. §§ 101, 201(b); see also Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 751 (1989).

The “term ‘employee’” refers “to a hired party in a conventional employment relationship,” and the question of employment is analyzed under traditional principles of agency. Reid, 490 U.S. at 743, 751. Garcia’s case is a good example of why it is difficult to categorize an actor, particularly one in a small role, as a conventional employee. Youssef hired Garcia for a specific task, she only worked for three days and she claims she received no health or other traditional employment benefits. See id. at 751–52. As we’ve recognized, this difficulty is why 17 U.S.C. § 101 “specifically addresses the movie . . . industr[y], affording

moviemakers a simple, straightforward way of obtaining ownership of the copyright in a creative contribution— namely, a written agreement.” Effects Assocs., 908 F.2d at 558. Youssef didn’t obtain a written agreement,[5] and Garcia simply doesn’t qualify as a traditional employee on this record.

The dissent believes Garcia was an employee primarily because “Youssef controll[ed] both the manner and means of making the film, including the scenes featuring Garcia” and Youssef “was engaged in the business of film making at the time.” Dissent 34. But there’s no evidence in the record that Youssef directed the film or that he controlled the manner in which any part of the film—much less Garcia’s scene—was shot. In fact, Youssef has claimed only that he wrote the screenplay.

There’s nothing in the record to suggest that Youssef was in the “regular business” of making films. Reid, 490 U.S. at 752. He’d held many jobs, but there’s no indication he ever worked in the film industry. And there’s no evidence he had any union contracts, relationships with prop houses or other film suppliers, leases of studio space or distribution agreements. The dissent would hold that Youssef was in the “regular business” of filmmaking simply because he made “Innocence of Muslims.” But if shooting a single amateur film amounts to the regular business of filmmaking, every schmuck with a videocamera becomes a movie mogul.

3. Implied License

A non-exclusive license may be implied from conduct and arises where a plaintiff “create[s] a work at defendant’s request and hand[s] it over, intending that defendant copy and distribute it.” Effects Assocs., 908 F.2d at 558. We’ve found an implied license where the plaintiff’s contribution to a film or other work would otherwise be worthless or of “minimal value.” Id. at 559; see also Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984). That is the case here. Garcia auditioned for a role in a particular film, was paid for her performance and had every reason to believe Youssef would eventually release the film. Without an implied license, the performance for which she was paid would be unusable. Therefore, we agree with Google that Garcia granted Youssef an implied license.

Any such license must be construed broadly. If the scope of an implied license was exceeded merely because a film didn’t meet the ex ante expectation of an actor, that license would be virtually meaningless. See Foad Consulting Grp., Inc. v. Azzalino, 270 F.3d 821, 837–38 (9th Cir. 2001) (Kozinski, J., concurring). A narrow, easily exceeded license could allow an actor to force the film’s author to re-edit the film—in violation of the author’s exclusive right to prepare derivative works. See 17 U.S.C. § 106(2). Or the actor could prevent the film’s author from exercising his exclusive right to show the work to the public. See 17 U.S.C. § 106(4). In other words, unless these types of implied licenses are construed very broadly, actors could leverage their individual contributions into de facto authorial control over the film.[6]

Nevertheless, even a broad implied license isn’t unlimited. See Oddo, 743 F.2d at 634. Garcia was told she’d be acting in an adventure film set in ancient Arabia. Were she now to complain that the film has a different title, that its historical depictions are inaccurate, that her scene is poorly edited or that the quality of the film isn’t as she’d imagined, she wouldn’t have a viable claim that her implied license had been exceeded. But the license Garcia granted Youssef wasn’t so broad as to cover the use of her performance in any project. Here, the problem isn’t that “Innocence of Muslims” is not an Arabian adventure movie: It’s that the film isn’t intended to entertain at all. The film differs so radically from anything Garcia could have imagined when she was cast that it can’t possibly be authorized by any implied license she granted Youssef.

A clear sign that Youssef exceeded the bounds of any license is that he lied to Garcia in order to secure her participation, and she agreed to perform in reliance on that lie. Youssef’s fraud alone is likely enough to void any agreement he had with Garcia. See 26 Samuel Williston & Richard A. Lord, A Treatise on the Law of Contracts § 69:4 (4th ed. 2003). But even if it’s not, it’s clear evidence that his inclusion of her performance in “Innocence of Muslims” exceeded the scope of the implied license and was, therefore, an unauthorized, infringing use.

The situation in which a filmmaker uses a performance in a way that exceeds the bounds of the broad implied license granted by an actor will be extraordinarily rare. But this is such a case. Because it is, Garcia has demonstrated that she’s likely to succeed on the merits of her claim. Winter, 555 U.S. at 20.

B. Irreparable Harm

Garcia argues that she suffers irreparable harm both because of the ongoing infringement of her copyright and because that infringement subjects her to continuing, credible death threats. Irreparable harm isn’t presumed in copyright cases. Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 980–81 (9th Cir. 2011). Therefore, Garcia must show that the damage to her reputation and threats against her life constitute irreparable harm.

The district court found that Garcia failed to make this required showing, primarily because she didn’t bring suit until several months after “Innocence of Muslims” was uploaded to YouTube. It’s true that a “long delay before seeking a preliminary injunction implies a lack of urgency and irreparable harm.” Oakland Tribune, Inc. v. Chronicle Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985). But this is so because a preliminary injunction is based “‘upon the theory that there is an urgent need for speedy action’” and by “‘sleeping on its rights a plaintiff demonstrates [a] lack of’” urgency. Lydo Enters., Inc. v. City of Las Vegas, 745 F.2d 1211, 1213 (9th Cir. 1984) (quoting Gillette Co. v. Ed Pinaud, Inc., 178 F. Supp. 618, 622 (S.D.N.Y. 1959)).

There’s no dispute that, here, Garcia took legal action as soon as the film received worldwide attention and she began receiving death threats—in other words, as soon as there was a “need for speedy action.” Id. Because the need for immediate action didn’t arise until she was threatened, Garcia wasn’t dilatory in bringing the lawsuit.

The harm Garcia complains of is real and immediate. See City of L.A. v. Lyons, 461 U.S. 95, 111 (1983). She has provided unrefuted evidence that the threats against her are ongoing and serious, she has already been forced to take significant security precautions when traveling and she moved to a new home and relocated her business as a safety measure. Although past injuries aren’t sufficient to establish irreparable harm for purposes of an injunction, id. at 103, Garcia has amply demonstrated that, absent an injunction, she’ll continue to suffer concrete harms—whether in the form of ongoing security requirements or actual harm to her person.

Beyond establishing that she faces an imminent harm, Garcia must show a “sufficient causal connection” between that harm and the conduct she seeks to enjoin such that the injunction would effectively curb the risk of injury. Perfect 10, 653 F.3d at 981–82. Despite her understandable focus on the threats against her life, Garcia has brought a copyright action. Therefore, she needs to show that the harm she alleges is causally related to the infringement of her copyright.

She’s made such a showing. Youssef’s unauthorized inclusion of her performance in “Innocence of Muslims” undisputedly led to the threats against Garcia. Google argues that any harm arises solely out of Garcia’s participation in “Innocence of Muslims” and not out of YouTube’s continued hosting of the film. But Garcia has shown that removing the film from YouTube will help disassociate her from the film’s anti-Islamic message and that such disassociation will keep her from suffering future threats and physical harm. Although Google asserts that the film is so widespread that removing it from YouTube will have no effect, it has provided no evidence to support this point.[7] Taking down the film from YouTube will remove it from a prominent online platform—the platform on which it was first displayed—and will curb the harms of which Garcia complains.

It is not irrelevant that the harm Garcia complains of is death or serious bodily harm, which the dissent fails to mention. Death is an “irremediable and unfathomable” harm, Ford v. Wainwright, 477 U.S. 399, 411 (1986), and bodily injury is not far behind. To the extent the irreparable harm inquiry is at all a close question, we think it best to err on the side of life.

C. Balance of the Equities and The Public Interest

Youssef lied to Garcia about the project in which she was participating.  Her performance was used in a way that she found abhorrent and her appearance in the film subjected her to threats of physical harm and even death. Despite these harms, and despite Garcia’s viable copyright claim, Google refused to remove the film from YouTube. It’s hard to see how Google can defend its refusal on equitable grounds and, indeed, it doesn’t really try. Instead, it argues that an injunction would be inequitable because of the overwhelming public interest in the continued hosting of “Innocence of Muslims” on YouTube.

The problem with Google’s position is that it rests entirely on the assertion that Garcia’s proposed injunction is an unconstitutional prior restraint of speech. But the First Amendment doesn’t protect copyright infringement. Cf. Eldred v. Ashcroft, 537 U.S. 186, 219–220 (2003). “First Amendment protections are ‘embodied in the Copyright Act’s distinction between copyrightable expression and uncopyrightable facts and ideas,’ and in the ‘latitude for scholarship and comment’ safeguarded by the fair use defense.” Golan v. Holder, 132 S. Ct. 873, 890 (2012) (quoting Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985)). Google hasn’t raised fair use as a defense in this appeal, see page 11 supra, so we do not consider it in determining its likelihood of success. This does not, of course, preclude Google from raising the point in the district court, provided it properly preserved the defense in its pleadings.

Because Garcia has demonstrated a likelihood of success on her claim that “Innocence of Muslims” infringes her copyright, Google’s argument fails. The balance of equities therefore clearly favors Garcia and, to the extent the public interest is implicated at all, it, too, tips in Garcia’s direction.

* * *

This is a troubling case. Garcia was duped into providing an artistic performance that was used in a way she never could have foreseen. Her unwitting and unwilling inclusion in “Innocence of Muslims” led to serious threats against her life. It’s disappointing, though perhaps not surprising, that Garcia needed to sue in order to protect herself and her rights.

But she has sued and, more than that, she’s shown that she is likely to succeed on her copyright claim, that she faces irreparable harm absent an injunction and that the balance of equities and the public interest favor her position. The district court abused its discretion in finding otherwise.

REVERSED AND REMANDED[8]

N.R. SMITH, Circuit Judge, dissenting

Because 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. As a result, I must dissent.

I. Standard of Review

The majority opinion omits applying the requisite standard of review that is especially pertinent to Garcia’s requested relief. Mandatory preliminary injunctions, similar to the one issued today, are “particularly disfavored.” Stanley v. Univ. of S. Cal., 13 F.3d 1313, 1320 (9th Cir. 1994).

Different from the usual “prohibitory injunction,” a “mandatory injunction goes well beyond simply maintaining the status quo pendente lite.” Id. (internal quotation marks omitted). As an example, requiring a university to reappoint a faculty member whose contract had expired constitutes a mandatory injunction. Id.; see also, e.g., Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 879 (9th Cir. 2009) (“[T]he affirmative step of recalling [a] product” is also a mandatory injunction.). In the instant dispute, Garcia requests relief through a mandatory injunction. Rather than asking to maintain the status quo pending litigation, Garcia demands Google immediately remove a film from YouTube. Therefore, her request must be “subject to a higher degree of scrutiny because such relief is particularly disfavored under the law of this circuit.”Stanley, 13 F.3d at 1320. This higher degree of scrutiny requires courts to be “extremely cautious” and “deny such relief unless the facts and law clearly favor the moving party.” Id. at 1319–20 (internal quotation marks omitted, emphasis added). Indeed, mandatory injunctions “are not issued in doubtful cases.” Anderson v. United States, 612 F.2d 1112, 1115 (9th Cir. 1979) (internal quotation marks omitted).

This standard’s importance must be appreciated in conjunction with the general standard with which this court reviews a district court’s decision to deny preliminary injunctive relief: “abuse of discretion.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). As a result, the majority may only reverse if it were illogical or implausible, United States v. Hinkson, 585 F.3d 1247, 1263–64 (9th Cir. 2009), for the district court to conclude that the law and facts did not clearly favor Garcia, Stanley, 13 F.3d at 1320.[9]¹

Given this standard, the majority errs in requiring Google to pull the film from YouTube—at this stage of the litigation. The district court did not abuse its discretion in concluding that the law and facts did not clearly favor Garcia. Instead, the majority makes new law in this circuit in order to reach the result it seeks. We have never held that an actress’s performance could be copyrightable. Indeed, “[t]here is little case law or statutory authority as to the position of performers as authors of an audiovisual work under U.S. law.” 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, 300 (2001).

II. Application of the Winter Factors

“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).

A. Garcia’s Likely Success on the Merits of Her Copyright Claim

The district court concluded that it was unclear whether Garcia had a copyright interest in her acting performance. The district court’s discretionary conclusion hardly appears illogical or implausible.

1. Copyright Interest

A protected interest under the Copyright Act must be an “original work[] of authorship fixed in any tangible medium of expression. . . .” 17 U.S.C. § 102(a). Garcia does not clearly have a copyright interest in her acting performance, because (1) her acting performance is not a work, (2) she is not an author, and (3) her acting performance is too personal to be fixed.[10]

a. Work

To be protected, Garcia’s acting performance must be a “work.” Id. Congress has listed examples of copyrightable works, like architectural works, motion pictures, literary works, and pictorial or sculptural works. Id. The nature of these works is significantly different from an actress’s

individual performance in a film, casting doubt on the conclusion that the latter can constitute a work. See Microsoft Corp. v. C.I.R., 311 F.3d 1178, 1184–85 (9th Cir. 2002) (“The doctrine of noscitur a sociis counsels that words should be understood by the company they keep.”).

Section 101 of the Act is also instructive, because it differentiates a work from the performance of it. It defines “perform a ‘work’” to mean “to recite, render, play, dance or act it.” 17 U.S.C. § 101 (emphasis added). Given this provision, it is difficult to understand how Congress intended to extend copyright protection to this acting performance. While Congress distinguishes the performance from the work itself, the majority blurs this line. Its position contemplates something very different from amalgamating independently copyrightable interests into a derivative work. See id. at § 103(b).

Consistent with section 101, section 102(b) outlines that which is not given copyright protection. It states: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Id. at § 102(b). An acting performance resembles the “procedure” or “process” by which “an original work” is performed. Id. Therefore, “[i]n no case does copyright protection” extend to an acting performance, “regardless of the form in which it is described, illustrated, or embodied in” the original work. Id.

In sum, a motion picture is a work. Id. at § 102(a). A segment independently produced and then incorporated into a motion picture is also a work. See, e.g., Effects Assocs., Inc. Cohen, 908 F.2d 555, 556 (9th Cir. 1990). However, the Copyright Act does not clearly place an acting performance within its sphere of copyrightable works. As a result, the law and facts do not clearly favor finding a copyrightable interest in Garcia’s acting performance.

b. Authorship

Like the work requirement, the Copyright Act also premises copyright protection on authorship. 17 U.S.C. § 102(a). Authorship is also a constitutional copyright requirement. See U.S. Const. Art. I, § 8, cl. 8; Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 56 (1884).

Aalmuhammed v. Lee is the most relevant case in this circuit on the question of authorship. 202 F.3d 1227 (9th Cir. 2000). Though the Aalmuhammed court discussed authorship in the context of joint authors of a film (which Garcia does not claim to be), it articulated general principles of authorship that assist in analyzing Garcia’s interest in her acting performance.[11]

The Aalmuhammed court explained that “[t]he word [author] is traditionally used to mean the originator or the person who causes something to come into being.” Id. at 1232. In other words, the author is the “person with creative control.” Id. Thus, “an author ‘superintends’ the work by exercising control.” Id. at 1234 (quoting Burrow-Giles, 111 U.S. at 61) (alteration omitted). Another framing by the court defined an author as “‘he to whom anything owes its origin.’” Id. at 1233 (quoting Burrow-Giles, 111 U.S. at 58). An author might also be “‘the inventive or master mind’ who ‘creates, or gives effect to the idea.’” Id. at 1234 (quoting Burrow-Giles, 111 U.S. at 61). Indeed, authorship “requires more than a minimal creative or original contribution to the work.” Id. at 1233 (citing Burrow-Giles, 111 U.S. at 58) (emphasis added).[12] These principles comport with the “general rule,” that “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.” Commty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989).

In concluding that Aalmuhammed was not a joint author of the film, Malcolm X, the court found that he (1) “did not at any time have superintendence of the work,” (2) “was not the person ‘who . . . actually formed the picture by putting the persons in position, and arranging the place,” (3) could not “benefit” the work “in the slightest unless [the director] chose to accept [his recommendations],” and (4) made “valuable contributions to the movie,” but that alone was “not enough for co-authorship of a joint work.” Aalmuhammed, 202 F.3d at 1235.

Garcia’s contribution is less significant than Aalmuhammed’s. She conceded in her complaint and affidavit that she had no creative control over the script or her performance. Youssef provided the script, the equipment, and the direction. As a result, Garcia was not the originator of ideas or concepts. She simply acted out others’ ideas or script. Her brief appearance in the film, even if a valuable contribution to the film, does not make her an author. Indeed, it is difficult to understand how she can be considered an “inventive or master mind” of her performance under these facts.

The majority dismisses Aalmuhammed as inapposite, instead bolstering its conclusion with reference to acting manuals and treatises. See maj. op. at 8–9. In so doing, it goes too far in attempting to distinguish Aalmuhammed. First, the Aalmuhammed court articulated general principles of authorship that it pulled from the Supreme Court case, Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). See, e.g., Aalmuhammed, 202 F.3d at 1233 (“Burrow-Giles is still good law. . . .”). Burrow-Giles has nothing to do with joint works; instead, the Court interpreted “author” as featured in Article I, Section 8, Clause 8 of the U.S. Constitution. See 111 U.S. at 56. Second, the majority’s one quotation from Aalmuhammed, maj. op. at 9, is taken out of context. The very next line in that opinion makes clear that copyright protection is premised on authorship, whether the work is joint or otherwise:

We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution. We recognize that a contributor of an expression may be deemed to be the “author” of that expression for purposes of determining whether it is independently copyrightable.

Aalmuhammed, 202 F.3d at 1232. Finally, Section 102(a) of the Copyright Act and Article I, Section 8, Clause 8 of the U.S. Constitution both premise copyright protection on authorship. Therefore, not only does the majority decline to apply the most relevant precedent in this circuit on the question before it, it also reads the authorship requirement out of the Copyright Act and the Constitution.[13]

Even the commentators agree that Aalmuhammed not only applies to Garcia’s claim, but also forecloses her realization of a copyrightable interest in her acting performance. See, e.g., Dougherty, Not a Spike Lee Joint?, 49 UCLA L. Rev. at 306 (“Under the judicially enhanced joint work requirements,” an actress’s performance would be “physically inseparable from other cinematic contributions.” (citing Aalmuhammed, 202 F.3d at 1232)); Lee, Entertainment and Intellectual Property Law § 12:7 (2013) (“Under [Aalmuhammed], . . . individual contributors will rarely qualify as joint authors”).

The majority lauds an actress’s creative role in a film, maj. op. at 8, but the practical impact of its decision must not be ignored. Garcia’s role in the film is minimal. Yet the majority concludes that she somehow created a work Congress intended to protect under the Copyright Act. Considering the number of contributors who inject the same or a greater amount of creativity into a film, the majority’s omission of any inquiry into authorship indeed creates “an impenetrable thicket of copyright.” Maj. op. at 12. Meanwhile, though Aalmuhammed’s interpretation of the Copyright Act has been debated in academic circles, “it adopts a standard that promotes clarity in the motion picture industry.” Lee, Entertainment and Intellectual Property Law § 12:7.

Because Garcia does not  qualify as an author under Aalmuhammed, the law and facts do not clearly favor protecting her acting performance under the Copyright Act.

c. Fixation

Lastly, the subject matter protected by the Copyright Act must also be “fixed in [a] tangible medium of expression. . . .” 17 U.S.C. § 102(a). Copyright preemption cases are instructive on the question of fixation.

For preemption purposes, the courts generally agree that “the scope of the subject matter of copyright law is broader than the protection it affords.” Montz v. Pilgrim Films & Television, Inc., 649 F.3d 975, 979 (9th Cir. 2011) (en banc); see U.S. ex rel Berge v. Bd. of Trs. of Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997). In other words, the subject matter underlying a state law claim preempted by the Copyright Act may nevertheless not be protected by the Copyright Act. By implication, subject matter supporting a non-preempted state law claim is definitely not protected by the Copyright Act. A number of cases from this circuit discuss subject matter akin to an acting performance and prove useful on the question of fixation.[14]

In Midler v. Ford Motor Co., Bette Midler sued Ford for misappropriating her voice in a commercial. 849 F.2d 460, 462 (9th Cir. 1988). Although Ford properly had a license from the song’s copyright holder, it paid someone to imitate Midler in singing the song Midler made famous. Id. Although ultimately holding for Ford, the court rejected its argument that Midler’s claim was preempted by copyright law. “A voice is not copyrightable. The sounds are not ‘fixed.’ What is put forward . . . here is more personal than any work of authorship.” Id.; see also Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970).

In Laws v. Sony Music Entertainment, we distinguished Midler from its facts in holding that the plaintiff’s claim was preempted by the Copyright Act, because “Sony was not imitating ‘Very Special’ as [the plaintiff] might have sung it. Rather, it used a portion of ‘Very Special’ as sung by [the plaintiff].” 448 F.3d 1134, 1141 (9th Cir. 2006). Where Sony had a license to the entire song, its use of a portion of it under that license could not be attacked outside the copyright laws. Id.

Jules Jordan Video, Inc. v. 144942 Canada, Inc., 617 F.3d 1146 (9th Cir. 2010), is like Laws. Defendants in Jules Jordan copied (without authorization) pornographic DVDs produced and copyrighted by Jules Jordan Video, then reproduced, counterfeited, and sold their copies to third parties. Id. at 1153. Because Jules Jordan held a copyright in the original DVDs, this court found that the Copyright Act preempted its state law right of publicity claim against Defendants.

The subject matter in Jules Jordan and Laws concerned entire copyrighted works—video and music recordings. Differently, Midler involved the imitation of a singer’s voice. Combined, these cases show that, just as the singing of a song is not copyrightable, while the entire song recording is copyrightable, the acting in a movie is not copyrightable, while the movie recording is copyrightable.[15]

A musical recording involves many moving parts, including the tune, lyrics, instrumental musicians, vocalists, and a production team that edits and prepares the final song. While the ultimate product is copyrightable, Ninth Circuit precedent dictates that a vocalist’s singing of the song is not copyrightable. See Midler, 849 F.2d at 462. An acting performance depends upon similar moving parts: a script, multiple actors’ and actresses’ performances, guidance from directors and staff, and editing and other production preparation. The movie is ultimately copyrightable. See 17 U.S.C. § 102(a). But one actress’s individual acting performance in the movie, like a vocalist singing a song, “is more personal than any work of authorship.” Midler, 849 F.2d at 462. As a result, it is not fixed. See id.

Just as “an actor does far more than speak words on a page,” maj. op. at 8, so too does a vocalist. Indeed, one might say that otherwise, “every schmuck” is a vocalist, “because everyone . . . knows how to read.” Id. (quoting Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987)) (quotation marks omitted). An actress like Garcia makes a creative contribution to a film much like a vocalist’s addition to a musical recording. Garcia did not write the script; she followed it. Garcia did not add words or thoughts to the film. She lent her voice to the words and her body to the scene. Her creativity came in the form of facial expression, body movement, and voice. Similarly, a singer’s voice is her personal mobilization of words and musical notes to a fluid sound. Inflection, intonation, pronunciation, and pitch are the vocalist’s creative contributions. Yet, this circuit has determined that such, though perhaps creative, is too personal to be fixed. See Midler, 849 F.2d at 462.

Under this line of cases, an actress’s performance in a film is more like the personal act of singing a song than the complete copyrighted works in Laws and Jules Jordan. As a result, it does not seem copyrightable. Thus, the law and facts do not clearly support Garcia’s claim that her acting performance is protected under the Copyright Act.

Considering work, authorship, and fixation, Garcia has not demonstrated how the facts and law clearly favor her claim of a copyrightable interest in her acting performance.[16]

2. Work for Hire Doctrine

Even if the majority were correct in finding a copyrightable interest in Garcia’s acting performance, preliminary injunctive relief would be unwarranted. The district court did not address the application of the work for hire doctrine. Yet, the law and facts do not clearly show that Garcia was not working for hire.

“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title. . . .” 17 U.S.C. § 201(b). “A ‘work made for hire’ is a work prepared by an employee within the scope of his or her employment. . . .” Id. at § 101. Therefore, “[i]n determining whether a hired party is an employee under the general common law of agency, we consider the hiring party’s right to control the manner and means by which the product is accomplished.” Reid, 490 U.S. at 751.

Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.

Id. at 751–52 (internal citations omitted). Though “[n]o one of these factors is determinative,” id. at 752, the hiring party’s control “is the central inquiry here.” JustMed, Inc. v. Byce, 600 F.3d 1118, 1125 (9th Cir. 2010).

The work for hire doctrine “is important in the analysis of motion picture authorship because in the United States most contributions to a motion picture are created as works made for hire.” Dougherty, Not a Spike Lee Joint?, 49 UCLA L. Rev. at 238. Here, Garcia conceded in her complaint and affidavit that Youssef “managed all aspects of production,” controlling both the manner and means of making the film, including the scenes featuring Garcia. Further, this “central” factor is not the only one supporting a work for hire finding here. The bulk of the other factors also suggest that Garcia is an employee. Youssef provided the instrumentalities and tools, dictated the filming location, decided when and how long Garcia worked, and was engaged in the business of film making at the time. Additionally, Garcia did not hire or pay assistants. Contrary to the majority’s conclusion, maj. op. at 12–14, the facts and law do not clearly favor finding that Garcia was not working for hire.[17]

In Reid, the Court decided a sculptor was not an employee, even though Community for Creative Non-Violence “directed enough of Reid’s work to ensure that he produced a sculpture that met their specifications.” Reid, 490 U.S. at 752. However, “all the other circumstances weigh[ed] heavily against finding an employment relationship.” Id. This case differs considerably from Reid. The central factor of control and many other factors “weigh heavily” for finding an employment relationship.

In sum, the majority gives zero deference to the district court’s position on the likelihood for success factor. To justify its opinion, the majority must show the district court abused its discretion in determining the law and facts did not clearly show Garcia was likely to succeed on the merits. This, the majority has failed to do.

B. Irreparable Harm

The district court decided that because “[t]he Film was posted for public viewing on YouTube” five months prior to Garcia bringing suit, she “has not demonstrated that the requested preliminary relief would prevent any alleged harm.” The majority has failed to demonstrate how the district court abused its discretion in so holding.

Indeed, the district court’s application of the law to the facts of this case here was not an abuse of discretion. A “[p]laintiff’s long delay before seeking a preliminary injunction implies a lack of urgency and irreparable harm.” Oakland Tribune, Inc. v. Chronicle Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985). The district court gave significant weight to Garcia’s delay in filing suit, even given Garcia’s explanation for her delay. See maj. op. at 16–17. This is not illogical or implausible. Were Garcia really trying to protect her purported copyright interest in her acting performance, one would expect her to have brought this action immediately after learning of the alleged infringing behavior. Considering “[t]he relevant harm is the harm that . . . occurs to the parties’ legal interests,” Garcia has failed to explain her delay in terms of harm to her alleged copyright interest. See Salinger v. Colting, 607 F.3d 68, 81 & n.9 (2d Cir. 2010) (“[T]he justification of the copyright law is the protection of the commercial interest of the artist/author. It is not to coddle artistic vanity or to protect secrecy, but to stimulate creation by protecting its rewards.” (internal quotation marks omitted)).

Further, by Garcia’s own admission, the film has been widely discussed and disseminated; Garcia admits in her affidavit that she “went public and advised the world through media that [she] did not condone the film.” Thus, while Garcia has provided undisputed evidence of past threats and injuries, she has failed to link her allegations of future harm to potential future viewings of the film on YouTube. See Perfect 10 v. Google, Inc., 653 F.3d 976, 982 (9th Cir. 2011); Ctr. for Food Safety v. Vilsack, 636 F.3d 1166, 1173 (9th Cir. 2011).

Therefore, it is not illogical or implausible to conclude that the law and facts do not clearly demonstrate how Garcia will suffer continued irreparable harm caused by the presence of the film on YouTube. See Small v. Operative Plasterers’ and Cement Masons’ Int’l Ass’n Local 200, 611 F.3d 483, 494 (9th Cir. 2010).

Rather than focusing on the logic or plausibility of the district court’s decision, the majority substitutes its own explanation of why Garcia’s delay should not be held against her. Maj. op. at 16–18. However, the weight attached by the district court to certain facts when measuring irreparable harm is not for this court to second guess. See Earth Island Inst. v. Carlton, 626 F.3d 462, 475 (9th Cir. 2010).

C. Balancing the Equities

When considering the propriety of preliminary injunction relief, “a stronger showing of one element may offset a weaker showing of another.” Alliance for the Wild Rockies, 632 F.3d at 1131. The district court applied this concept in concluding preliminary injunctive relief was unwarranted without considering the balance of the equities or the public interest.

However, the balance of the equities does not clearly favor Garcia. A court must “balance the interests of all parties and weigh the damage to each.” Stormans, Inc. v. Selecky, 586 F.3d 1109, 1138 (9th Cir. 2009).

Google argues that the balance of the equities does not clearly favor Garcia, because “[a] court order requiring removal from YouTube of the Film or any portion thereof would impose a substantial burden on free expression, without preventing any future harm to Appellant.” Garcia is only faced with potential infringement of her potential copyright interest pending a final disposition of this lawsuit. Further, she is not completely without fault in these circumstances. If she valued her acting performance to the extent she now claims, why didn’t she protect her performance by contract? The facts evidence that she acted for three days and was paid $500 dollars. Balancing the harm faced by both Garcia and Google, the law and facts do not clearly favor Garcia.

In its basis concerning the balance of the equities, the majority discusses Youssef’s reproachable conduct. Maj. op. at 18–19. However, Youssef is not a party to this appeal, and Google was not a party to any of Youssef’s actions.

Therefore, the balance of the equities does not clearly favor Garcia.

D. Public Interest

“In exercising their sound discretion, courts of equity should pay particular regard for the public consequences in employing the extraordinary remedy of injunction.” Johnson v. Couturier, 572 F.3d 1067, 1082 (9th Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24(2008)) (emphasis added). In fact, “‘the court may in the public interest withhold relief until a final determination of the rights of the parties, though the postponement may be burdensome to the plaintiff.’” Stormans, 586 F.3d at 1139 (quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312–313 (1982)).

The public’s interest in a robust First Amendment cannot be questioned. See Sammartano v. First Judicial Dist. Court, 303 F.3d 959, 974 (9th Cir. 2002). Opposite this vital public interest is Garcia’s allegation of copyright infringement. Properly enforcing the Copyright Act is also an important public interest. See Small v. Avanti Health Sys., LLC, 661 F.3d 1180, 1197 (9th Cir. 2011). Indeed, if Google were actually infringing Garcia’s copyright, the First Amendment could not shelter it. See Eldred v. Ashcroft, 537 U.S. 186, 219–20 (2003).

But the case at bar does not present copyright infringement per se. Instead (in an unprecedented opinion), the majority concludes that Garcia may have a copyright interest in her acting performance. Maj. op. at 10. As a result, Google’s contention, that issuing a preliminary injunction on these facts may constitute a prior restraint of speech under the First Amendment, identifies an important public interest.

Thus, the law and facts do not clearly demonstrate how granting a preliminary injunction in Garcia’s favor would serve the public interest.

III. Conclusion

The Stanley standard counseling extreme caution when considering granting a mandatory preliminary injunction is premised on principles of judicial restraint. Instead, the majority abandons restraint to procure an end (ordering the film be taken down) by unsuitable means (the Copyright Act).

* This summary constitutes no part of the opinion of the court.  It has been prepared by court staff for the convenience of the reader.

[1] Although Garcia’s suit also named the film’s producers, only Google, which owns YouTube, answered the complaint.

[2] The dissent suggests that we must defer to the district court’s statement that “the nature of [Garcia’s] copyright interest is not clear.” But we defer to a lower court’s decision, not its equivocation.

It’s worth noting what the district court’s three-page order doesn’t do: It doesn’t decide whether Garcia has a copyright interest in her performance, whether her performance is a “work,” whether Garcia is the “author” of her performance or whether her performance is a work for hire. Nor does it address the balance of the equities or the public interest, despite the fact that a district court must “weigh in its analysis the public interest implicated by [an] injunction, as Winter now requires.” Stormans, Inc. v. Selecky, 586 F.3d 1109, 1138 (9th Cir. 2009).

[3] Neither party raised the issue of whether the author of a dramatic performance must personally fix his work in a tangible medium. Because the question is not properly before us, we do not decide it. The parties are free to raise it in the district court on remand.

[4] Our decision today does not “read[] the authorship requirement out of the Copyright Act and the Constitution.” Dissent 28. An author “in a constitutional sense” is one “‘to whom anything owes its origin; originator; maker.’” Feist Publ’ns, 499 U.S. at 346 (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)). In other words, the creator of copyrightable artistic expression is an author. Which is why, for example, Sinéad O’Connor can claim a copyright in her performance of “Nothing Compares 2 U” even though the song was written by Prince.

[5] Neither party claims that Garcia signed a work for hire agreement. In the district court, Google produced an agreement, purportedly signed by Garcia, that transferred all of her rights in her performance to the film’s producers. Garcia responded by submitting the declaration of a handwriting expert opining that Garcia’s signature had been forged. The district court didn’t address the agreement or its authenticity.

[6] Construing such implied licenses narrowly would also undermine our joint authorship jurisprudence. Most actors don’t qualify as joint authors. See Aalmuhammed, 202 F.3d at 1232–33. Yet, if any actor who doesn’t like the final version of a movie could keep it from being released, he’d have more control over the film than a joint author. See 1 Nimmer on Copyright § 6.10[A][1][a], at 6–36 (“[A] joint owner may exploit the work himself, without obtaining the consent of the other joint owners.”).

[7] Contrary to the dissent’s suggestion, Garcia’s declaration doesn’t establish that the film has been “widely discussed and disseminated.” Dissent 36. It states only that Garcia reached out to the media to let the world know that she “d[id] not condone the film.” We reject the dissent’s uncharitable argument that Garcia should be penalized for attempting to protect her life and reputation by distancing herself from “Innocence of Muslims.” We also reject Google’s preposterous argument that any harm to Garcia is traceable to her filing of this lawsuit. Any publicity generated by Garcia’s lawsuit is a necessary product of her attempt to protect herself and her legal rights after Google refused to do so.

[8] Concurrent with this opinion, we have issued an order directing 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 temporary injunction shall remain in place until the district court is able to enter a preliminary injunction consistent with our opinion.

[9] As this is the relevant standard of review, the district court’s application of it is hardly “equivocation.” See maj. op. at 6 n.2. Furthermore, the amended portions of the majority opinion only confirm that the law and facts do not clearly favor Garcia: “Nothing we say today precludes the district court from concluding that Garcia doesn’t have a copyrightable interest, or that Google prevails on any of its defenses.” Maj. op. at 11. Where the law and facts must clearly favor Garcia in order for her to prevail, the majority’s equivocation cements its error.

[10] The majority relies solely on a showing of originality to conclude Garcia has a copyrightable interest in her acting performance, maj. op. at 8 (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)), but the Constitution and the Copyright Act require much more.

[11] Furthermore, Garcia’s interest in her acting performance may best be analyzed as a joint work with Youssef, considering she relied on Youssef’s script, equipment, and direction. See 17 U.S.C. § 101 (“A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”).

[12] The majority opinion cannot coexist with this statement. See maj. op. at 8.

[13] The majority’s sole reliance on Feist Publications to conclude that an acting performance is copyrightable, maj. op. at 8–9, gives insufficient weight to the constitutional and statutory authorship requirement. In Feist Publications, the specific question was not of authorship but of originality. See 499 U.S. at 347.

[14] The majority opinion dismisses the line of copyright preemption precedent. Maj. op. at 9 (“Midler isn’t a copyright case at all—it’s a right of publicity case that happens to discuss copyright in the context of preemption.”). However, these cases feature the same judges interpreting the same Copyright Act, whether the question is one of copyright infringement or copyright preemption. Thus, the majority’s distinction is without difference; it fails to overcome the fact that subject matter underlying a non-preempted state law claim, like that in Midler, is clearly without the Copyright Act’s protection. See Montz, 649 F.3d at 979.

[15] This is not the case where an independently authored clip is used in a film, as in Effects Assocs., 908 F.2d at 557–58. Rather, this analogy assumes facts similar to the instant case: an actress acting out a script she did not write under the direction of someone else who provides all of the instruments, tools, and leadership.

[16] The majority’s amended opinion also attempts to hedge its conclusion that Garcia has a copyright interest in her acting performance by avoiding counter arguments it failed to address, because they were not raised by the parties. Maj. op. at 11, 19. Yet, the majority could consider these arguments sua sponte “under exceptional circumstances, where substantial public interests are involved, or where to not do so would be unduly harsh to one or both of the parties.” United States v. Hoyt, 888 F.2d 1257, 1258 (9th Cir. 1989). The majority’s failure to even engage this inquiry, instead quickly dismissing arguments against its view, confirms its error.

[17] While the majority may dispute which person was actually directing the film, it cannot overcome Garcia’s own admissions in her complaint that substantiate these facts; she was not in control.

UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

CINDY LEE GARCIA,
Plaintiff-Appellant,

v.

GOOGLE, INC., a Delaware
Corporation; YOUTUBE, LLC, a
California limited liability company,
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.

No. 12-57302 D.C. No. 2:12-cv-08315-MWF-VBK

OPINION

Appeal from the United States District Court for the Central District of California
Michael W. Fitzgerald, District Judge, Presiding
Case: 12-57302 02/26/2014 ID: 8992888 DktEntry: 39-1 Page: 1 of 37
2 GARCIA V. GOOGLE, INC.
Argued and Submitted
June 26, 2013—Seattle, Washington
Filed February 26, 2014
Before: Alex Kozinski, Chief Judge, Ronald M. Gould
and N. Randy Smith, Circuit Judges.

Opinion by Chief Judge Kozinski; Dissent by Judge N.R. Smith

SUMMARY*

Copyright / Preliminary Injunction

The panel reversed the district court’s denial in a copyright case of a preliminary injunction requiring the removal from YouTube.com of an anti-Islamic film that used a performance that the plaintiff made for a different film. The panel concluded that the plaintiff established a likelihood of success on the merits of her claim of infringement of her performance within the film because she proved that she likely had an independent interest in the performance and that the filmmaker did not own an interest as a work for hire and exceeded any implied license to use the plaintiff’s performance.

* This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader.

The panel held that the plaintiff established the likelihood that irreparable harm would result if an injunction did not issue because she was subject to death threats and took action as soon as she began receiving the threats. The plaintiff also established sufficient causal connection between the infringement of her copyright and the harm she alleged. The panel also held that the balance of the equities and the public interest weighed in favor of injunctive relief.

Dissenting, Judge N.R. Smith wrote that the facts and law did not clearly favor issuing a mandatory preliminary injunction to the plaintiff. He wrote that the plaintiff did not establish a likelihood that she had a copyrightable interest in her acting performance, nor did she clearly show that the performance was not a work made for hire. In addition, the district court did not abuse its discretion in its ruling on irreparable harm, and the balance of the equities and the public interest did not favor the issuance of a preliminary injunction.

COUNSEL
M. Cris Armenta (argued), The Armenta Law Firm APC, Los Angeles, California and Credence Sol, Chauvigng, France, for Plaintiff-Appellant. Timothy L. Alger (argued) and Sunita Bali, Perkins Coie LLP, Palo Alto, California, for Defendants Appellees. 

OPINION

KOZINSKI, Chief Judge:

While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa. But that’s exactly what happened to Cindy Lee Garcia when she agreed to act in a film with the working title “Desert Warrior.” 

The film’s writer and producer, Mark Basseley Youssef—who also goes by the names Nakoula Basseley Nakoula and Sam Bacile—cast Garcia in a minor role. Garcia was given the four pages of the script in which her character appeared and paid approximately $500 for three and a half days of filming. “Desert Warrior” never materialized. Instead, Garcia’s scene was used in an anti-Islamic film titled “Innocence of Muslims.” Garcia first saw “Innocence of Muslims” after it was uploaded to YouTube.com and she discovered that her brief performance had been partially dubbed over so that she appeared to be asking, “Is your Mohammed a child molester?” 

These, of course, are fighting words to many faithful Muslims and, after the film aired on Egyptian television, there were protests that generated worldwide news coverage. An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the film, and Garcia soon began receiving death threats. She responded by taking a number of security precautions and asking that Google remove the video from YouTube. 

In all, Garcia filed eight takedown notices under the Digital Millenium Copyright Act. See generally 17 U.S.C. When Google resisted, she supplied substantive explanations as to why the film should be taken down. Google still refused to act, so Garcia applied for a temporary restraining order seeking removal of the film from YouTube, claiming that the posting of the video infringed her copyright in her performance. (ft 1. Although Garcia’s suit also named the film’s producers, only Google,
which owns YouTube, answered the complaint.) The district court treated the application as a motion for a preliminary injunction, and denied it because Garcia had delayed in bringing the action, had failed to demonstrate “that the requested preliminary relief would prevent any alleged harm” and was unlikely to succeed on the merits because she’d granted Youssef an implied license to use her performance in the film.

I. Discussion

While we review the denial of a preliminary injunction for abuse of discretion, Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011), the “legal premises underlying a preliminary injunction” are reviewed de novo. A&M Records, Inc. v. Napster, Inc., 284 F.3d 1091, 1096 (9th Cir. 2002). In granting or denying a preliminary injunction, the district court must consider four factors: a plaintiff’s likely success on the merits, the likelihood that irreparable harm will result if an injunction doesn’t issue, the balance of equities and the public interest. Winter v. Natural Res. Def. Council, 555 U.S. 7, 20 (2008). The district court found against Garcia on the first two factors and didn’t consider the last two. [ft 2. The dissent suggests that we must defer to the district court’s statement that “the nature of [Garcia’s] copyright interest is not clear.” But we defer to a lower court’s decision, not its equivocation. It’s worth noting what the district court’s three-page order doesn’t do: It doesn’t decide whether Garcia has a copyright interest in her performance, whether her performance is a “work,” whether Garcia is the “author” of her performance or whether her performance is a work for hire. Nor does it address the balance of the equities or the public interest, despite the fact that a district court must “weigh in its analysis the public interest implicated by [an] injunction, as Winter nowrequires.” Stormans, Inc. v. Selecky, 586 F.3d 1109, 1138 (9th Cir. 2009).]

A. Likelihood of Success on the Merits

Garcia doesn’t claim a copyright interest in “Innocence of Muslims” itself; far from it. Instead, she claims that her performance within the film is independently copyrightable and that she retained an interest in that copyright. To succeed on this claim, Garcia must prove not only that she likely has an independent interest in her performance but that Youssef doesn’t own any such interest as a work for hire and that he doesn’t have an implied license to use her performance.

1. An Independent Copyright Interest

A film is typically conceived of as “a joint work consisting of a number of contributions by different ‘authors.’” 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 6.05 at 6–14 (1990). Garcia argues that she never intended her performance to be part of a joint work, and under our precedent she doesn’t qualify as a joint author. See Aalmuhammed v. Lee, 202 F.3d 1227, 1231–36 (9th Cir. 2000). But just because Garcia isn’t a joint author of “Innocence of Muslims” doesn’t mean she doesn’t have a copyright interest in her own performance within the film. [ft 3. Although the dissent claims that “Garcia’s interest in her acting performance may best be analyzed as a joint work with Youssef,” Dissent 23 n.3, it doesn’t explain why. A work is joint only if the authors involved in its creation intend that it be so. See 17 U.S.C. § 101. Garcia
expressly disclaims such intent and there is no evidence in the record that Youssef intended to create a joint work.]

Whether an individual who makes an independently copyrightable contribution to a joint work can retain a copyright interest in that contribution is a rarely litigated question. See Thomson v. Larson, 147 F.3d 195, 206 (2d Cir. 1998) (dismissing similar argument on procedural grounds); see also David Nimmer, Address, Copyright in the Dead Sea Scrolls: Authorship and Originality, 38 Hous. L. Rev. 1, 186–87 & n.942 (2001). But nothing 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 of the entire work. 17 U.S.C. § 102(a) (“Copyright protection subsists . . . in original works of authorship fixed in any tangible medium . . . .”). Where, as here, the artistic contribution is fixed, the key question remains whether it’s sufficiently creative to be protectible. [ft 4. Neither party raised the issue of whether the author of a dramatic performance must personally fix his work in a tangible medium. Because the question is not properly before us, we do not decide it. The parties are
free to raise it in the district court on remand.] 

Google argues that Garcia didn’t make a protectible contribution to the film because Youssef wrote the dialogue she spoke, managed all aspects of the production and later dubbed over a portion of her scene. But an actor does far more than speak words on a page; he must “live his part inwardly, and then . . . give to his experience an external embodiment.” Constantin Stanislavski, An Actor Prepares 15, 219 (Elizabeth Reynolds Hapgood trans., 1936). That embodiment includes body language, facial expression and reactions to other actors and elements of a scene. Id. at 218–19. Otherwise, “every shmuck . . . is an actor because everyone . . . knows how to read.” Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987).

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.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (quoting 1 Nimmer on Copyright § 1.08[C][1]). That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all. Cf. 17 U.S.C. § 102(a)(4) (noting “pantomimes and choreographic works” are eligible for copyright protection). It’s clear that Garcia’s performance meets these minimum requirements.

Aalmuhammed isn’t to the contrary because it does not, as the dissent would have it, “articulate[] general principles of
authorship.” Dissent 25. Aalmuhammed only discusses what is required for a contributor to a work to assert joint
ownership over the entire work: “We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution.” 202 F.3d at 1232. Aalmuhammed plainly contemplates that an individual can make a “copyrightable contribution” and yet not become a joint author of the whole work. Id. For example, the author  of a single poem does not necessarily become a co-author of the anthology in which the poem is published. It makes sense to impose heightened requirements on those who would leverage their individual contribution into ownership of a greater whole, but those requirements don’t apply to the copyrightability of all creative works, for which only a “minimal creative spark [is] required by the Copyright Act and the Constitution.” Feist Publ’ns, 499 U.S. at 363. [ft 5. Our decision today does not “read[] the authorship requirement out of the Copyright Act and the Constitution.” Dissent 26. An author “in a constitutional sense” is one “‘to whom anything owes its origin; originator; maker.’” Feist Publ’ns, 499U.S. at 346 (quotingBurrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)). In other words, the creator of copyrightable artistic expression is an author. Which is why, for example, Sinéad O’Connor can claim a copyright in her performance of “Nothing Compares 2 U” even though the song was written by Prince.]

Nor does Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988), speak to the problem before us. First, of course, Midler isn’t a copyright case at all—it’s a right of publicity case that happens to discuss copyright in the context of preemption, not infringement. Second, Midler discusses the copyrightabilityof a performer’s voice—not her performance. See 849 F.2d at 462. A performer’s voice is analogous to her image, which we’ve said “is not a work of authorship” under the Copyright Act. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1004 (9th Cir. 2001). But that doesn’t answer the question of whether the artist’s creativity, expressed through her voice or image, is protected by copyright. Just because someone’s voice—its particular timber and quality—can’t be copyrighted, doesn’t mean that a performance made using that voice can never be protected. In fact, many vocal performances are copyrighted. See, e.g., Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1141 (9th Cir. 2006).

Recognizing that Garcia may have a copyright interest in her performance isn’t the end of the inquiry. A screenplay is
itself a copyrightable creative work and a film is a derivative work of the screenplay on which it is based. See Gilliam v. Am. Broad. Cos., 538 F.2d 14, 20 (2d Cir. 1976); see also 17 U.S.C. § 101; 2 Nimmer on Copyright § 2.10[A] n.8. Where, as here, an actor’s performance is based on a script, the performance is likewise derivative of the script, such that the actor might be considered to have infringed the screenwriter’s copyright. And an infringing derivative work isn’t entitled to copyright protection. See 17 U.S.C. § 103(a); see also U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1016 (9th Cir. 2012).

Of course, by hiring Garcia, giving her the script and turning a camera on her, Youssef implicitly granted her a license to perform his screenplay. See Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558–59 (9th Cir. 1990). This doesn’t mean that Garcia owns a copyright interest in the entire scene: She can claim copyright in her own contribution but not in “preexisting material” such as the words or actions spelled out in the underlying script. 17 U.S.C. § 103(b); see also U.S. Auto Parts Network, Inc., 692 F.3d at 1016. Garcia may assert a copyright interest only in the portion of “Innocence of Muslims” that represents her individual creativity, but even if her contribution is relatively minor, it isn’t de minimis. See Feist, 499 U.S. at 359, 363. We need not and do not decide whether every actor has a copyright in his performance within a movie. It suffices for now to hold that, while the matter is fairly debatable, Garcia is likely to prevail.

As the above discussion makes clear, any analysis of the rights that might attach to the numerous creative contributions that make up a film can quickly become entangled in an impenetrable thicket of copyright. But it rarely comes to that because copyright interests in the vast majority of films are covered by contract, the work for hire doctrine or implied licenses. See 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, 238, 317–18, 327–33 (2001). Here, Google argues that Garcia’s performance was a work made for hire or, alternatively, that she granted Youssef an implied license to use her performance in “Innocence of Muslims.”

2. Work For Hire

Under the work for hire doctrine, the rights to Garcia’s performance vested in Youssef if Garcia was Youssef’s employee and acted in her employment capacity or was an independent contractor who transferred her interests in writing. See 17 U.S.C. §§ 101, 201(b); see also Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 751 (1989). 

The “term ‘employee’” refers “to a hired party in a conventional employment relationship,” and the question of employment is analyzed under traditional principles of agency. Reid, 490 U.S. at 743, 751. Garcia’s case is a good example of why it is difficult to categorize an actor, particularly one in a small role, as a conventional employee. Youssef hired Garcia for a specific task, she only worked for three days and she claims she received no health or other traditional employment benefits. See id. at 751–52. As we’ve recognized, this difficulty is why 17 U.S.C. § 101 “specifically addresses the movie . . . industr[y], affording moviemakers a simple, straightforward way of obtaining ownership of the copyright in a creative contribution—namely, a written agreement.” Effects Assocs., 908 F.2d at 558. Youssef didn’t obtain a written agreement, [ft 6. Neither party claims that Garcia signed a work for hire agreement. In the district court, Google produced an agreement, purportedly signed by Garcia, that transferred all of her rights in her performance to the film’s producers. Garcia responded by submitting the declaration of a handwriting expert opining that Garcia’s signature had been forged. The district court didn’t address the agreement or its authenticity.] and Garcia simply doesn’t qualify as a traditional employee on this record.

The dissent believes Garcia was an employee primarily because “Youssef controll[ed] both the manner and means of making the film, including the scenes featuring Garcia” and Youssef “was engaged in the business of film making at the time.” Dissent 32. But there’s no evidence in the record that Youssef directed the film or that he controlled the manner in which any part of the film—much less Garcia’s scene—was shot. In fact, Youssef has claimed only that he wrote the screenplay. There’s nothing in the record to suggest that Youssef was in the “regular business” of making films. Reid, 490 U.S. at 752. He’d held many jobs, but there’s no indication he ever worked in the film industry. And there’s no evidence he had any union contracts, relationships with prop houses or other film suppliers, leases of studio space or distribution agreements. The dissent would hold that Youssef was in the “regular business” of filmmaking simply because he made “Innocence of Muslims.” But if shooting a single amateur film amounts to the regular business of filmmaking, every schmuck with a videocamera becomes a movie mogul.

3. Implied License

A non-exclusive license maybe implied from conduct and arises where a plaintiff “create[s] a work at defendant’s request and hand[s] it over, intending that defendant copy and distribute it.” Effects Assocs., 908 F.2d at 558. We’ve found an implied license where the plaintiff’s contribution to a film or other work would otherwise be worthless or of “minimal
value.” Id. at 559; see also Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984). That is the case here. Garcia auditioned for a role in a particular film, was paid for her performance and had every reason to believe Youssef would eventually release
the film. Without an implied license, the performance for which she was paid would be unusable. Therefore, we agree with Google that Garcia granted Youssef an implied license.

Any such license must be construed broadly. If the scope of an implied license was exceeded merely because a film didn’t meet the ex ante expectation of an actor, that license would be virutally meaningless. See Foad Consulting Grp., Inc. v. Azzalino, 270 F.3d 821, 837–38 (9th Cir. 2001) (Kozinski, J., concurring). A narrow, easily exceeded license could allow an actor to force the film’s author to re-edit the film—in violation of the author’s exclusive right to prepare derivative works. See 17 U.S.C. § 106(2). Or the actor could prevent the film’s author from exercising his exclusive right to show the work to the public. See 17 U.S.C. § 106(4). In other words, unless these types of implied licenses are construed very broadly, actors could leverage their individual contributions into de facto authorial control over the film. [ft 7. Construing such implied licenses narrowly would also undermine our joint authorship jurisprudence. Most actors don’t qualify as joint authors. See Aalmuhammed, 202 F.3d at 1232–33. Yet, if any actor who doesn’t like the final version of a movie could keep it from being released, he’d have more control over the film than a joint author. See 1 Nimmer on Copyright § 6.10[A][1][a], at 6–36 (“[A] joint owner may exploit the work himself, without obtaining the consent of the other joint owners.”).

Nevertheless, even a broad implied license isn’t unlimited. See Oddo, 743 F.2d at 634. Garcia was told she’d be acting in an adventure film set in ancient Arabia. Were she now to complain that the film has a different title, that its historical depictions are inaccurate, that her scene is poorly edited or that the quality of the film isn’t as she’d imagined, she wouldn’t have a viable claim that her implied license had been exceeded. But the license Garcia granted Youssef wasn’t so broad as to cover the use of her performance in any project. Here, the problem isn’t that “Innocence of Muslims” is not an Arabian adventure movie: It’s that the film isn’t intended to entertain at all. The film differs so radically from anything Garcia could have imagined when she was cast that it can’t possibly be authorized by any implied license she granted Youssef.

A clear sign that Youssef exceeded the bounds of any license is that he lied to Garcia in order to secure her participation, and she agreed to perform in reliance on that lie. Youssef’s fraud alone is likely enough to void any agreement he had with Garcia. See 26 Samuel Williston & Richard A. Lord, A Treatise on the Law of Contracts § 69:4 (4th ed. 2003). But even if it’s not, it’s clear evidence that his inclusion of her performance in “Innocence of Muslims” exceeded the scope of the implied license and was, therefore, an unauthorized, infringing use.

The situation in which a filmmaker uses a performance in a way that exceeds the bounds of the broad implied license granted by an actor will be extraordinarily rare. But this is such a case. Because it is, Garcia has demonstrated that she’s likely to succeed on the merits of her claim. Winter, 555 U.S. at 20.

B. Irreparable Harm

Garcia argues that she suffers irreparable harm both because of the ongoing infringement of her copyright and because that infringement subjects her to continuing, credible death threats. Irreparable harm isn’t presumed in copyright cases. Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 980–81 (9th Cir. 2011). Therefore, Garcia must show that the damage to her reputation and threats against her life constitute irreparable harm.

The district court found that Garcia failed to make this required showing, primarily because she didn’t bring suit until several months after “Innocence of Muslims” was uploaded to YouTube. It’s true that a “long delay before seeking a preliminary injunction implies a lack of urgency and irreparable harm.” Oakland Tribune, Inc. v. Chronicle Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985). But this is so because a preliminary injunction is based “‘upon the theory that there is an urgent need for speedy action’” and by “‘sleeping on its rights a plaintiff demonstrates [a] lack of’” urgency. Lydo Enters., Inc. v. City of Las Vegas, 745 F.2d 1211, 1213 (9th Cir. 1984) (quoting Gillette Co. v. Ed Pinaud, Inc., 178 F. Supp. 618, 622 (S.D.N.Y. 1959)).

There’s no dispute that, here, Garcia took legal action as soon as the film received worldwide attention and she began receiving death threats—in other words, as soon as there was a “need for speedy action.” Id. Because the need for immediate action didn’t arise until she was threatened, Garcia wasn’t dilatory in bringing the lawsuit.

The harm Garcia complains of is real and immediate. See City of L.A. v. Lyons, 461 U.S. 95, 111 (1983). She has provided unrefuted evidence that the threats against her are ongoing and serious, she has already been forced to take significant security precautions when traveling and she moved to a new home and relocated her business as a safety measure. Although past injuries aren’t sufficient to establish irreparable harm for purposes of an injunction, id. at 103, Garcia has amply demonstrated that, absent an injunction, she’ll continue to suffer concrete harms—whether in the form of ongoing security requirements or actual harm to her person.

Beyond establishing that she faces an imminent harm, Garcia must show a “sufficient causal connection” between that harm and the conduct she seeks to enjoin such that the injunction would effectively curb the risk of injury. Perfect 10, 653 F.3d at 981–82. Despite her understandable focus on the threats against her life, Garcia has brought a copyright action. Therefore, she needs to show that the harm she alleges is causally related to the infringement of her copyright.

She’s made such a showing. Youssef’s unauthorized inclusion of her performance in “Innocence of Muslims” undisputedly led to the threats against Garcia. Google argues that any harm arises solely out of Garcia’s participation in “Innocence of Muslims” and not out of YouTube’s continued hosting of the film. But Garcia has shown that removing the film from YouTube will help disassociate her from the film’s anti-Islamic message and that such disassociation will keep her from suffering future threats and physical harm.

Although Google asserts that the film is so widespread that removing it from YouTube will have no effect, it has provided no evidence to support this point. [ft 8. Contrary to the dissent’s suggestion, Garcia’s affidavit doesn’t establish that the film has been “widely discussed and disseminated.” Dissent 34. It states only that Garcia reached out to the media to let the world know that she “d[id] not condone the film.” We reject the dissent’s uncharitable argument that Garcia should be penalized for attempting to protect her life and reputation by distancing herself from “Innocence of Muslims.” We also reject Google’s preposterous argument that any harm to Garcia is traceable to her filing of this lawsuit. Any publicity generated by Garcia’s lawsuit is a necessary product of her attempt to protect herself and her legal rights after Google refused to do so.] Taking down the film from YouTube will remove it from a prominent online platform—the platform on which it was first displayed—and will curb the harms of which Garcia complains.

It is not irrelevant that the harm Garcia complains of is death or serious bodily harm, which the dissent fails to mention. Death is an “irremediable and unfathomable” harm, Ford v. Wainwright, 477 U.S. 399, 411 (1986), and bodily injury is not far behind. To the extent the irreparable harm inquiry is at all a close question, we think it best to err on the side of life.

C. Balance of the Equities and The Public Interest

Youssef lied to Garcia about the project in which she was participating. Her performance was used in a way that she found abhorrent and her appearance in the film subjected her to threats of physical harm and even death. Despite these harms, and despite Garcia’s viable copyright claim, Google refused to remove the film from YouTube. It’s hard to see how Google can defend its refusal on equitable grounds and, indeed, it doesn’t really try. Instead, it argues that an injunction would be inequitable because of the overwhelming public interest in the continued hosting of “Innocence of Muslims” on YouTube.

The problem with Google’s position is that it rests entirely on the assertion that Garcia’s proposed injunction is an unconstitutional prior restraint of speech. But the First Amendment doesn’t protect copyright infringement. Cf. Eldred v. Ashcroft, 537 U.S. 186, 219–220 (2003). Because Garcia has demonstrated a likelihood of success on her claim that “Innocence of Muslims” infringes her copyright, Google’s argument fails. The balance of equities therefore clearly favors Garcia and, to the extent the public interest is implicated at all, it, too, tips in Garcia’s direction.

* * *

This is a troubling case. Garcia was duped into providing an artistic performance that was used in a way she never could have foreseen. Her unwitting and unwilling inclusion in “Innocence of Muslims” led to serious threats against her life. It’s disappointing, though perhaps not surprising, that Garcia needed to sue in order to protect herself and her rights. But she has sued and, more than that, she’s shown that she is likely to succeed on her copyright claim, that she faces irreparable harm absent an injunction and that the balance of equities and the public interest favor her position. The district court abused its discretion in finding otherwise.

REVERSED AND REMANDED [ft 9. Concurrent with this opinion, we have issued an order directing 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 temporary injunction shall remain in place until the district court is able to enter a preliminary injunction consistent with our opinion.

N.R. SMITH, Circuit Judge, dissenting

Because 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. As a result, I must dissent.

I. Standard of Review

The majority opinion omits applying the requisite standard of review that is especially pertinent to Garcia’s requested relief. Mandatory preliminary injunctions, similar to the one issued today, are “particularly disfavored.” Stanley v. Univ. of S. Cal., 13 F.3d 1313, 1320 (9th Cir. 1994).

Different from the usual “prohibitory injunction,” a “mandatory injunction goes well beyond simply maintaining the status quo pendente lite.” Id. (internal quotation marks omitted). As an example, requiring a university to reappoint a faculty member whose contract had expired constitutes a mandatory injunction. Id.; see also, e.g., Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH &Co., 571 F.3d 873, 879 (9th Cir. 2009) (“[T]he affirmative step of recalling [a] product” is also a mandatory injunction.). In the instant dispute, Garcia requests relief through a mandatory injunction. Rather than asking to maintain the status quo pending litigation, Garcia demands Google immediately remove a film from YouTube. Therefore, her request must be “subject to a higher degree of scrutiny because such relief is particularly disfavored under the law of this circuit.” Stanley, 13 F.3d at 1320. This higher degree of scrutiny requires courts to be “extremely cautious” and “deny such relief unless the facts and law clearly favor the moving party.” Id. at 1319–20 (internal quotation marks omitted, emphasis
added). Indeed, mandatory injunctions “are not issued in doubtful cases.” Anderson v. United States, 612 F.2d 1112,
1115 (9th Cir. 1979) (internal quotation marks omitted).

This standard’s importance must be appreciated in conjunction with the general standard with which this court reviews a district court’s decision to deny preliminary injunctive relief: “abuse of discretion.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). As a result, the majority may only reverse if it were illogical or implausible, United States v. Hinkson, 585 F.3d 1247, 1263–64 (9th Cir. 2009), for the district court to conclude that the law and facts did not clearly favor Garcia, Stanley, 13 F.3d at 1320. [ft 1. Given this is the relevant standard of review, the district court’s application of it is hardly “equivocation.” See maj. op. at 6 n.2.]

Given this standard, the majority errs in requiring Google to pull the film from YouTube—at this stage of the litigation.

The district court did not abuse its discretion in concluding that the law and facts did not clearly favor Garcia. Instead, the majority makes new law in this circuit in order to reach the result it seeks. We have never held that an actress’s performance could be copyrightable. Indeed, “[t]here is little case law or statutory authority as to the position of performers as authors of an audiovisual work under U.S. law.” 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, 300 (2001).

II. Application of the Winter Factors

A. Garcia’s Likely Success on the Merits of Her Copyright Claim

The district court concluded that it was unclear whether Garcia had a copyright interest in her acting performance. The district court’s discretionary conclusion hardly appears illogical or implausible.

1. Copyright Interest

A protected interest under the Copyright Act must be an “original work[] of authorship fixed in any tangible medium of expression. . . .” 17 U.S.C. § 102(a). Garcia does not clearly have a copyright interest in her acting performance, because (1) her acting performance is not a work, (2) she is not an author, and (3) her acting performance is too personal to be fixed. [ft 2. The majority relies solely on a showing of originality to conclude Garcia has a copyrightable interest in her acting performance, maj. op. at 8 (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991)), but the Constitution and the Copyright Act require much more.]

a. Work

To be protected, Garcia’s acting performance must be a “work.” Id. Congress has listed examples of copyrightable works, like architectural works, motion pictures, literary works, and pictorial or sculptural works. Id. The nature of these works is significantly different from an actress’s individual performance in a film, casting doubt on the conclusion that the latter can constitute a work. See Microsoft Corp. v. C.I.R., 311 F.3d 1178, 1184–85 (9th Cir. 2002) (“The doctrine of noscitur a sociis counsels that words should be understood by the company they keep.”).

Section 101 of the Act is also instructive, because it differentiates a work from the performance of it. It defines “perform a ‘work’” to mean “to recite, render, play, dance or act it.” 17 U.S.C. § 101 (emphasis added). Given this provision, it is difficult to understand how Congress intended to extend copyright protection to this acting performance. While Congress distinguishes the performance from the work itself, the majority blurs this line. Its position contemplates something very different from amalgamating independently copyrightable interests into a derivative work. See id. at § 103(b).

Consistent with section 101, section 102(b) outlines that which is not given copyright protection. It states: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Id. at § 102(b). An acting performance resembles the “procedure” or “process” by which “an original work” is performed. Id. Therefore, “[i]n no case does copyright protection” extend to an acting performance, “regardless of the form in which it is described, illustrated, or embodied in” the original work. Id.

In sum, a motion picture is a work. Id. at § 102(a). A segment independently produced and then incorporated into a motion picture is also a work. See, e.g., Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 556 (9th Cir. 1990). However, the Copyright Act does not clearly place an acting performance within its sphere of copyrightable works. As a result, the law and facts do not clearly favor finding a copyrightable interest in Garcia’s acting performance.

b. Authorship

Like the work requirement, the Copyright Act also premises copyright protection on authorship. 17 U.S.C. § 102(a). Authorship is also a constitutional copyright requirement. See U.S. Const. Art. I, § 8, cl. 8; Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 56 (1884). Aalmuhammed v. Lee is the most relevant case in this circuit on the question of authorship. 202 F.3d 1227 (9th Cir. 2000). Though the Aalmuhammed court discussed authorship in thecontext of joint authors of a film (which Garcia does not claim to be), it articulated general principles of authorship that assist in analyzing Garcia’s interest in her acting performance. [ft 3. Furthermore, Garcia’s interest in her acting performance may best be analyzed as a joint work with Youssef, considering she relied on Youssef’sscript, equipment, and direction. See 17 U.S.C. § 101 (“A ‘joint work’ is a work prepared by two or more authors with the intention thattheir contributions be merged into inseparable or interdependent parts of a unitary whole.”)]

The Aalmuhammed court explained that “[t]he word [author] is traditionally used to mean the originator or the person who causes something to come into being.” Id. at 1232. In other words, the author is the “person with creative control.” Id. Thus, “an author ‘superintends’ the work by exercising control.” Id. at 1234 (quoting Burrow-Giles, 111 U.S. at 61) (alteration omitted). Another framing by the court defined an author as “‘he to whom anything owes its origin.’” Id. at 1233 (quoting Burrow-Giles, 111 U.S. at 58). An author might also be “‘the inventive or master mind’ who ‘creates, or gives effect to the idea.’” Id. at 1234 (quoting Burrow-Giles, 111 U.S. at 61). Indeed, authorship “requires more than a minimal creative or original contribution to the work.” Id. at 1233 (citing Burrow-Giles, 111 U.S. at 58) (emphasis added). [ft 4. The majority opinion cannot coexist with this statement. See maj. op. at 8.] These principles comport with the “general rule,” that “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.” Commty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989).

In concluding that Aalmuhammed was not a joint author of the film, Malcolm X, the court found that he (1) “did not at any time have superintendence of the work,” (2) “was not the person ‘who . . . actually formed the picture by putting the persons in position, and arranging the place,” (3) could not “benefit” the work “in the slightest unless [the director] chose to accept [his recommendations],” and (4) made “valuable contributions to the movie,” but that alone was “not enough for co-authorship of a joint work.” Aalmuhammed, 202 F.3d at 1235.

Garcia’s contribution is less significant than Aalmuhammed’s. She conceded in her complaint and affidavit that she had no creative control over the script or her performance. Youssef provided the script, the equipment, and the direction. As a result, Garcia was not the originator of ideas or concepts. She simply acted out others’ ideas or script. Her brief appearance in the film, even if a valuable contribution to the film, does not make her an author. Indeed, it is difficult to understand how she can be considered an “inventive or master mind” of her performance under these facts.

The majority dismisses Aalmuhammed as inapposite, instead bolstering its conclusion with reference to acting manuals and treatises. See maj. op. at 8–9. In so doing, it goes too far in attempting to distinguish Aalmuhammed. First, the Aalmuhammed court articulated general principles of authorship that it pulled from the Supreme Court case, Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). See, e.g., Aalmuhammed, 202 F.3d at 1233 (“BurrowGiles is still good law. . . .”). Burrow-Giles has nothing to do with joint works; instead, the Court interpreted “author” as featured in Article I, Section 8, Clause 8 of the U.S. Constitution. See 111 U.S. at 56. Second, the majority’s one quotation from Aalmuhammed, maj. op. at 8, is taken out of context. The very next line in that opinion makes clear that copyright protection is premised on authorship, whether the work is joint or otherwise:

We hold that authorship is required under the statutory definition of a joint work, and that authorship is not the same thing as making a valuable and copyrightable contribution. We recognize that a contributor of an expression may be deemed to be the “author” of that expression for purposes of determining whether it is independently copyrightable.

Aalmuhammed, 202 F.3d at 1232. Finally, Section 102(a) of the Copyright Act and Article I, Section 8, Clause 8 of the U.S. Constitution both premise copyright protection on authorship. Therefore, not only does the majority decline to
apply the most relevant precedent in this circuit on the question before it, it also reads the authorship requirement out of the Copyright Act and the Constitution. [ft 5. The majority’s sole reliance on Feist Publications to conclude that an acting performance is copyrightable, maj. op. at 8–9, gives insufficient weight to the constitutional and statutory authorship requirement. In Feist Publications, the specific question was not of authorship but of originality. See 499 U.S. at 347.]

Even the commentators agree that Aalmuhammed not only applies to Garcia’s claim, but also forecloses her realization of a copyrightable interest in her acting performance. See, e.g., Dougherty, Not a Spike Lee Joint?, 49 UCLA L. Rev. at 306 (“Under the judicially enhanced joint work requirements,” an actress’s performance would be “physically inseparable from other cinematic contributions.” (citing Aalmuhammed, 202 F.3d at 1232)); Lee, Entertainment and Intellectual Property Law § 12:7 (2013) (“Under [Aalmuhammed], . . . individual contributors will rarely qualify as joint authors”).

The majority lauds an actress’s creative role in a film, maj. op. at 8, but the practical impact of its decision must not be ignored. Garcia’s role in the film is minimal. Yet the majority concludes that she somehow created a work Congress intended to protect under the Copyright Act. Considering the number of contributors who inject the same or a greater amount of creativity into a film, the majority’s omission of any inquiry into authorship indeed creates “an impenetrable thicket of copyright.” Maj. op. at 11. Meanwhile, though Aalmuhammed’s interpretation of the Copyright Act has been debated in academic circles, “it adopts a standard that promotes clarity in the motion picture industry.” Lee, Entertainment and Intellectual Property Law § 12:7.

Because Garcia does not qualify as an author under Aalmuhammed, the law and facts do not clearly favor protecting her acting performance under the Copyright Act.

c. Fixation

Lastly, the subject matter protected by the Copyright Act must also be “fixed in [a] tangible medium of expression. . . .” 17 U.S.C. § 102(a). Copyright preemption cases are instructive on the question of fixation.

For preemption purposes, the courts generally agree that “the scope of the subject matter of copyright law is broader
than the protection it affords.” Montz v. Pilgrim Films & Television, Inc., 649 F.3d 975, 979 (9th Cir. 2011) (en banc); see U.S. ex rel Berge v. Bd. of Trs. of Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997). In other words, the subject matter underlying a state law claim preempted by the Copyright Act may nevertheless not be protected by the Copyright Act. By implication, subject matter supporting a non-preempted state law claim is definitely not protected by the Copyright Act. A
number of cases from this circuit discuss subject matter akin to an acting performance and prove useful on the question of fixation. [ft 6. The majority opinion dismisses the line of copyright preemption precedent. Maj. op. at 9 (“Midler isn’t a copyright case at all—it’s a right of publicity case that happens to discuss copyright in the context of preemption.”). However, these cases feature the same judges interpreting the same Copyright Act, whether the question is one of copyright infringement or copyright preemption. Thus, the majority’s distinction is without difference; it fails to overcome the fact that subject matter underlying a non-preempted state law claim, like that in Midler, is clearly without the Copyright Act’s protection. See Montz, 649 F.3d at 979.]

In Midler v. Ford Motor Co., Bette Midler sued Ford for misappropriating her voice in a commercial. 849 F.2d 460, 462 (9th Cir. 1988). Although Ford properly had a license from the song’s copyright holder, it paid someone to imitate Midler in singing the song Midler made famous. Id. Although ultimately holding for Ford, the court rejected its argument that Midler’s claim was preempted by copyright law. “A voice is not copyrightable. The sounds are not ‘fixed.’ What is put forward . . . here is more personal than any work of authorship.” Id.; see also Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir. 1970).

In Laws v. Sony Music Entertainment, we distinguished Midler from its facts in holding that the plaintiff’s claim was preempted by the Copyright Act, because “Sony was not imitating ‘Very Special’ as [the plaintiff] might have sung it. Rather, it used a portion of ‘Very Special’ as sung by [the plaintiff].” 448 F.3d 1134, 1141 (9th Cir. 2006). Where Sony had a license to the entire song, its use of a portion of it under that license could not be attacked outside the copyright laws. Id.

Jules Jordan Video, Inc. v. 144942 Canada, Inc., 617 F.3d 1146 (9th Cir. 2010), is like Laws. Defendants in Jules Jordan copied (without authorization) pornographic DVDs produced and copyrighted by Jules Jordan Video, then reproduced, counterfeited, and sold their copies to third parties. Id. at 1153. Because Jules Jordan held a copyright in the original DVDs, this court found that the Copyright Act preempted its state law right of publicity claim against Defendants.

The subject matter in Jules Jordan and Laws concerned entire copyrighted works—video and music recordings. Differently, Midlerinvolved the imitation of a singer’s voice. Combined, these cases show that, just as the singing of a song is not copyrightable, while the entire song recording is copyrightable, the acting in a movie is not copyrightable, while the movie recording is copyrightable. [ft 7. This is not the case where an independently authored clip is used in a film, as in Effects Assocs., 908 F.2d at 557–58. Rather, this analogy assumes facts similar to the instance case: an actress acting out a script she did not write under the direction of someone else who provides all of the instruments, tools, and leadership.]

A musical recording involves many moving parts, including the tune, lyrics, instrumental musicians, vocalists, and a production team that edits and prepares the final song. While the ultimate product is copyrightable, Ninth Circuit precedent dictates that a vocalist’s singing of the song is not copyrightable. See Midler, 849 F.2d at 462. An acting performance depends upon similar moving parts: a script, multiple actors’ and actresses’ performances, guidance from directors and staff, and editing and other production preparation. The movie is ultimately copyrightable. See 17 U.S.C. § 102(a). But one actress’s individual acting performance in the movie, like a vocalist singing a song, “is more personal than any work of authorship.” Midler, 849 F.2d at 462. As a result, it is not fixed. See id.

Just as “an actor does far more than speak words on a page,” maj. op. at 8, so too does a vocalist. Indeed, one might
say that otherwise, “every schmuck” is a vocalist, “because everyone . . . knows how to read.” Id. at 8 (quoting Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987)) (quotation marks omitted). An actress like Garcia makes a creative contribution to a film much like a vocalist’s addition to a musical recording. Garcia did not write the script; she followed it. Garcia did not add words or thoughts to the film. She lent her voice to the words and her body to the scene. Her creativity came in the form of facial expression, body movement, and voice. Similarly, a singer’s voice is her personal mobilization of words and musical notes to a fluid sound. Inflection, intonation, pronunciation, and pitch are the vocalist’s creative contributions. Yet, this circuit has determined that such, though perhaps creative, is too personal to be fixed. See Midler, 849 F.2d at 462.

Under this line of cases, an actress’s performance in a film is more like the personal act of singing a song than the complete copyrighted works in Laws and Jules Jordan. As a result, it does not seem copyrightable. Thus, the law and facts do not clearly support Garcia’s claim that her acting performance is protected under the Copyright Act.

Considering work, authorship, and fixation, Garcia has not demonstrated how the facts and law clearly favor her
claim of a copyrightable interest in her acting performance.

2. Work for Hire Doctrine

Even if the majority were correct in finding a copyrightable interest in Garcia’s acting performance, preliminary injunctive relief would be unwarranted. The district court did not address the application of the work for hire doctrine. Yet, the law and facts do not clearly show that Garcia was not working for hire.

“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title. . . .” 17 U.S.C. § 201(b). “A ‘work made for hire’ is a work prepared by an employee within the scope of his or her employment. . . .” Id. at § 101. Therefore, “[i]n determining whether a hired party is an employee under the general common law of agency, we consider the hiring party’s right to control the manner and means by which the product is accomplished.” Reid, 490 U.S. at 751.

Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.

Id. at 751–52 (internal citations omitted). Though “[n]o one of these factors is determinative,” id. at 752, the hiring party’s
control “is the central inquiry here.” JustMed, Inc. v. Byce, 600 F.3d 1118, 1125 (9th Cir. 2010).

The work for hire doctrine “is important in the analysis of motion picture authorship because in the United States most contributions to a motion picture are created as works made for hire.” Dougherty, Not a Spike Lee Joint?, 49 UCLA L. Rev. at 238. Here, Garcia conceded in her complaint and affidavit that Youssef “managed all aspects of production,” controlling both the manner and means of making the film, including the scenes featuring Garcia. Further, this “central” factor is not the only one supporting a work for hire finding here. The bulk of the other factors also suggest that Garcia is an employee. Youssef provided the instrumentalities and tools, dictated the filming location, decided when and how long Garcia worked, and was engaged in the business of film making at the time. Additionally, Garcia did not hire or pay assistants. Contrary to the majority’s conclusion, maj. op. at 11–13, the facts and law do not clearly favor finding that Garcia was not working for hire. [ft 8. While the majority may dispute which person was actually directing
the film, it cannot overcome Garcia’s own admissions in her complaint that substantiate these facts; she was not in control.]

In Reid, the Court decided a sculptor was not an employee, even though Community for Creative Non-Violence “directed enough of Reid’s work to ensure that he produced a sculpture that met their specifications.” Reid, 490 U.S. at 752. However, “all the other circumstances weigh[ed] heavily against finding an employment relationship.” Id. This case differs considerably from Reid. The central factor of control and many other factors “weigh heavily” for finding an employment relationship.

In sum, the majority gives zero deference to the district court’s position on the likelihood for success factor. To justify its opinion, the majority must show the district court abused its discretion in determining the law and facts did not clearly show Garcia was likely to succeed on the merits. This, the majority has failed to do.

B. Irreparable Harm

The district court decided that because “[t]he Film was posted for public viewing on YouTube” five months prior to Garcia bringing suit, she “has not demonstrated that the requested preliminary relief would prevent any alleged harm.” The majority has failed to demonstrate how the district court abused its discretion in so holding. 

Indeed, the district court’s application of the law to the facts of this case here was not an abuse of discretion. A “[p]laintiff’s long delay before seeking a preliminary injunction implies a lack of urgency and irreparable harm.” Oakland Tribune, Inc. v. Chronicle Publ’g Co., 762 F.2d 1374, 1377 (9th Cir. 1985). The district court gave significant weight to Garcia’s delay in filing suit, even given Garcia’s explanation for her delay. See maj. op. at 15–16. This is not illogical or implausible. Were Garcia really trying to protect her purported copyright interest in her acting performance, one would expect her to have brought this action immediately after learning of the alleged infringing behavior. Considering “[t]he relevant harm is the harm that . . . occurs to the parties’ legal interests,” Garcia has failed to explain her delay in terms of harm to her alleged copyright interest. See Salinger v. Colting, 607 F.3d 68, 81 & n.9 (2d Cir. 2010) (“[T]he justification of the copyright law is the protection of the commercial interest of the artist/author. It is not to coddle artistic vanity or to protect secrecy, but to stimulate creation by protecting its rewards.” (internal quotation marks omitted)).

Further, by Garcia’s own admission, the film has been widely discussed and disseminated; Garcia admits in her affidavit that she “went public and advised the world through media that [she] did not condone the film.” Thus, while Garcia has provided undisputed evidence of past threats and injuries, she has failed to link her allegations of future harm to potential future viewings of the film on YouTube. See Perfect 10 v. Google, Inc., 653 F.3d 976, 982 (9th Cir. 2011); Ctr. for Food Safety v. Vilsack, 636 F.3d 1166, 1173 (9th Cir. 2011).

Therefore, it is not illogical or implausible to conclude that the law and facts do not clearly demonstrate how Garcia will suffer continued irreparable harm caused by the presence of the film on YouTube. See Small v. Operative Plasterers’ and Cement Masons’ Int’l Ass’n Local 200, 611 F.3d 483, 494 (9th Cir. 2010).

Rather than focusing on the logic or plausibility of the district court’s decision, the majority substitutes its own explanation of why Garcia’s delay should not be held against her. Maj. op. at 15–17. However, the weight attached by the district court to certain facts when measuring irreparable harm is not for this court to second guess. See Earth Island Inst. v. Carlton, 626 F.3d 462, 475 (9th Cir. 2010).

C. Balancing the Equities

When considering the propriety of preliminary injunction relief, “a stronger showing of one element may offset a weaker showing of another.” Alliance for the Wild Rockies, 632 F.3d at 1131. The district court applied this concept in concluding preliminary injunctive relief was unwarranted without considering the balance of the equities or the public interest.

However, the balance of the equities does not clearly favor Garcia. A court must “balance the interests of all parties and weigh the damage to each.” Stormans, Inc. v. Selecky, 586 F.3d 1109, 1138 (9th Cir. 2009). 

Google argues that the balance of the equities does not clearly favor Garcia, because “[a] court order requiring removal from YouTube of the Film or any portion thereof would impose a substantial burden on free expression, without preventing any future harm to Appellant.” Garcia is only faced with potential infringement of her potential copyright interest pending a final disposition of this lawsuit. Further, she is not completely without fault in these circumstances. If she valued her acting performance to the extent she now claims, why didn’t she protect her performance by contract? The facts evidence that she acted for three days and was paid $500 dollars. Balancing the harm faced by both Garcia and Google, the law and facts do not clearly favor Garcia.

In its basis concerning the balance of the equities, the majority discusses Youssef’s reproachable conduct. Maj. op. at 17–18. However, Youssef is not a party to this appeal, and Google was not a party to any of Youssef’s actions. Therefore, the balance of the equities does not clearly favor Garcia.

D. Public Interest

“In exercising their sound discretion, courts of equity should pay particular regard for the public consequences in employing the extraordinary remedy of injunction.” Johnson v. Couturier, 572 F.3d 1067, 1082 (9th Cir. 2009) (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24(2008)) (emphasis added). In fact, “‘the court may in the public interest withhold relief until a final determination of the rights of the parties, though the postponement may be burdensome to the plaintiff.’” Stormans, 586 F.3d at 1139 (quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312–313 (1982)).

The public’s interest in a robust First Amendment cannot be questioned. See Sammartano v. First Judicial Dist. Court, 303 F.3d 959, 974 (9th Cir. 2002). Opposite this vital public interest is Garcia’s allegation of copyright infringement. Properly enforcing the Copyright Act is also an important public interest. See Small v. Avanti Health Sys., LLC, 661 F.3d 1180, 1197 (9th Cir. 2011). Indeed, if Google were actually infringing Garcia’s copyright, the First Amendment could not shelter it. See Eldred v. Ashcroft, 537 U.S. 186, 219–20 (2003).

But the case at bar does not present copyright infringement per se. Instead (in an unprecedented opinion), the majority concludes that Garcia may have a copyright interest in her acting performance. Maj. op. at 10. As a result, Google’s contention, that issuing a preliminary injunction on these facts may constitute a prior restraint of speech under the First Amendment, identifies an important public interest. Thus, the law and facts do not clearly demonstrate how granting a preliminary injunction in Garcia’s favor would serve the public interest.

III. Conclusion

The Stanley standard counseling extreme caution when considering granting a mandatory preliminary injunction is premised on principles of judicial restraint. Instead, the majority abandons restraint to procure an end (ordering the film be taken down) byunsuitable means (the Copyright Act).