Prof. Rodney A. Smolla, University of Georgia Law School
June 30, 2015

In a recent IP Viewpoints post my colleague Professor Randal Picker discussed the recent Ninth Circuit en banc opinion in Garcia v. Google.1  At the end of Professor Picker’s excellent essay he notes that he had chipped away at a part of Garcia, and expected other posts to perhaps take on other elements of the case.

In the spirit of that invitation I offer a few thoughts on an issue raised at the end of the majority en banc opinion, the question of injunctive relief and prior restraint doctrine in copyright law.

First, a quick review.  The case was brought by Cindy Lee Garcia.  As the court described it, Garcia “was bamboozled when a movie producer transformed her five-second acting performance into part of a blasphemous video proclamation against the Prophet Mohammed.”2  The producer uploaded a trailer of the film, “Innocence of Muslims,” to YouTube.  Garcia claimed that millions watched the trailer online, that news reports claimed the film had been a source of violence in the Middle East, and that as a result Garcia received death threats.3  Garcia claimed copyright protection in her brief performance.  She sought a preliminary injunction requiring Google to remove the film from all of its platforms, including YouTube.  A Ninth Circuit panel decision entered a mandatory injunction requiring Google to remove the film.  The Ninth Circuit, sitting en banc, reversed the panel, in an opinion by Judge McKeown.  As the court summarized its decision:

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.4

Professor Picker focused largely on the fundamental copyright issues in this fascinating case, examining issues of authorship, originality, and fixation in the context of the many different creative participants involved in the making of a film.  He notes that copyright law is not stupid, and offers highly sensible solutions based on default doctrines such as “work-for-hire” and “joint work” principles, as well as the relative ease with which contract law may alter arrangements, to sort through many of the problems posed by Garcia.

For my part, I think it is worth taking note of the intriguing First Amendment issues discussed by the majority at the end of its opinion.

The panel’s original takedown order, the court reasoned, “gave short shrift to the First Amendment values at stake.”5  The takedown injunction, the court held, was a blatant exercise in censorship:

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.6

It was error, the court held, to assume that just because the injunction arose in the context of copyright enforcement, it was immunized from First Amendment constraints.  “Although the intersection between copyright and the First Amendment is much-debated,” 7 the Supreme Court teaches that copyright is not “‘categorically immune from challenges under the First Amendment.’”8  This was not a garden-variety copyright infringement case, the court held, but rather a classic prior restraint of speech.9 Noting that prior restraints pose the most serious and the least tolerable infringement on First Amendment rights, the court held that this could not “overcome the historical and heavy presumption against such restraints with a thin copyright claim in a five-second performance.”10

These invocations of First Amendment principles by the en banc majority in Garcia contrast sharply with the treatment of the First Amendment in the original 2-to-1 panel opinion written by Chief Judge Kozinski.11  That analysis was presented in all of two sentences: “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.”12

Judge Kozinski’s original panel opinion represents one strain of orthodoxy regarding injunctive relief in copyright law, which is essentially that the question of whether a copyright plaintiff is granted an injunction is determined entirely by the internal law of copyright, as supplemented by the law of remedies – the body of equitable principles that govern the grant or denial of injunctions, with no independent place for the First Amendment.  The reasoning is relatively simple and mechanical.  Once copyright infringement is shown, the expression at issue by definition is stripped of First Amendment protection.  This by definition means that an injunction prohibiting further or ongoing infringement (such as an injunction ordering a film clip taken down from YouTube) cannot be an unconstitutional “prior restraint” because the expression itself is not protected by the First Amendment.  This is bolstered by the fact that Congress itself has authorized injunctive relief among the remedies provided in the Copyright Act.  Preliminary and permanent injunctions, of course, are still equitable remedies, and so a plaintiff must meet the burdens imposed by rules of equity.  In the case of preliminary injunctions, for example, this includes proof of likelihood of success on the merits, demonstration of irreparable harm, weighing of the balance of hardships, and the public interest.  Judge Kozinski’s formulation, however, appears to recognize no additional role for the First Amendment, including the First Amendment’s heavy presumption against prior restraints.

Judge Smith’s dissenting opinion in the original Ninth Circuit panel decision, as well as Judge McKeown’s opinion for the en banc majority, treated the First Amendment and prior restraint doctrine as an additional factor weighing against injunctive relief, over and above the internal law of copyright or principles of equity.

Judge Smith seemed to accept the view that if Google had clearly infringed Garcia’s copyright infringement, then “the First Amendment could not shelter it.”13  But because the panel majority appeared to rest its judgment on the lesser possibility that Google may have violated Garcia’s copyright, it followed that First Amendment protection was not automatically forfeited, and prior restraint considerations became activated.  Judge Smith explained: “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….  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.” 14

Note that although Judge Smith cited First Amendment principles, he treated those principles as part of the public interest factor to be weighted in granting equitable relief.

Judge McKeown’s en banc majority opinion pressed this one critical step further, treating the First Amendment’s heavy presumption against prior restraint as a free-standing force exerting pressure against the grant of an injunction over and above what copyright and equitable principles would supply on their own.  Note again her statement that Garcia could not “overcome the historical and heavy presumption against such restraints with a thin copyright claim in a five-second performance.”15

This is an issue inviting greater reflection and investigation, but my preliminary thoughts are with Judge McKeown.  To say that First Amendment prior restraint principles do not apply whenever the expression at issue is an infringement of copyright, let alone a mere alleged infringement of copyright, is to conflate the question of whether the speech is ultimately protected by the First Amendment with the question of whether the remedy, if the speech is not protected, should be a “subsequent punishment” or a “prior restraint.”  Expression alleged to violate copyright, or even finally adjudicated to violate copyright, is not invisible to the First Amendment.  It is useful to compare, for example, the classic rules governing remedies in defamation law, in which even speech found to be defamatory is normally deemed by common law principles, equitable maxims, and First Amendment doctrine to be ineligible for injunctive relief.  There have been inroads on this traditional rule, but the mainstream view, a view informed and influenced by First Amendment prior restraint law, is that equity will not enjoin a libel.

There are cases, I am sure, in which the First Amendment ought not bar even preliminary injunctive relief protecting the interests of copyright owners.  But I am persuaded by Judge McKeown’s position that the First Amendment needs to be part of the conversation.