Amicus Curiae Filings in Ninth Circuit En Banc Rehearing of "Innocence of Muslims" Case

The amicus curiae briefs are piling up in connection with the Ninth Circuit's decision to rehear en banc Garcia v. Google, the case involving an actress's claim of a copyright interest in her performance in the film "Innocence of Muslims."

The Ninth Circuit set today as the deadline for filing amicus curiae briefs and so far briefs have been filed by:  Netflix, Inc.; The Computer & Communications Industry Association; Public Citizen; Internet Law Professors; a collection of entities including the Electronic Frontier Foundation and the ACLU; a group of professors including David Nimmer; a collection of entities including Adobe Systems, Facebook, and Twitter; Floor64 and the Organization for Transformative Works; a group of Professors of Intellectual Property Law; and a collection of entities and individuals including the International Documentary Association.

The Ninth Circuit has scheduled en banc oral argument for December 15, 2014, at 3:30 p.m.

You can read about related proceedings in the Ninth Circuit here, here, and here.

The case cite is Garcia v. Google, Inc., Appeal No. 12-57302 (9th Cir.).

Ninth Circuit Orders Rehearing En Banc in Garcia v. Google "Innocence of Muslims" Case

It took awhile but today the Ninth Circuit ordered rehearing en banc of Garcia v. Google, the case involving an actress's claim of a copyright interest in her performance in the film "Innocence of Muslims" and her request for a preliminary injunction requiring Google to take down the film.

Currently, en banc argument in the appeal is scheduled for the week of December 15, 2014.

You can read about earlier proceedings in the Ninth Circuit here and here.

The case cite is Garcia v. Google, Inc., Appeal No. 12-57302 (9th Cir.).

Michael Jordan Defeats Supermarket's First Amendment Defense in Dispute Over Congratulatory Ad

In September 2009, Michael Jordan was inducted into the Naismith Memorial Basketball Hall of Fame, at which time Sports Illustrated produced a special commemorative issue of Sports Illustrated Presents devoted exclusively to his legendary career.  Jewel Food Stores--the operator of 175 supermarkets in and around Chicago--was offered and accepted free advertising space in the special issue in exchange for agreeing to stock the magazine.

Jewel's full-page ad appeared on the inside back cover of the issue and included a photo of a pair of basketball shoes bearing Jordan's number 23, with text appearing above congratulating Jordan on his accomplishments and incorporating Jewel's slogan, followed by Jewel's logo in large type (the Seventh Circuit's opinion includes a picture of the ad).

Jordan sued Jewel for, among other claims, violations of the Illinois Right of Publicity Act and the Lanham Act, all based on the allegation that Jewel had misappropriated his identity for its commercial benefit.  He sought $5 million in damages plus punitive and treble damages.

Both parties moved for summary judgment:  Jewel claimed that the ad was noncommercial speech protected by the First Amendment; Jordan claimed the ad was a commercial use of his identity.  The district court concluded that Jewel's ad was fully protected noncommercial speech and therefore entered judgment for Jewel on all of Jordan's claims.

Although it characterized the district court's decision as "thoughtful," the Seventh Circuit nonetheless held that the court had erred in concluding that Jewel's ad constituted fully protected noncommercial speech and therefore reversed on that basis.

Before reaching the substance of the appeal, the Seventh Circuit discussed one issue of law that the parties' agreement allowed the court to avoid resolving.  The parties apparently agreed with the proposition that the First Amendment precluded application of the laws upon which Jordan's claims were based to any noncommercial speech as defined in the constitutional sense, thereby providing a complete constitutional defense.  But the law on that issue is "considerably more complex," the Seventh Circuit commented, and it was "far from clear that Jordan's trademark and right-of-publicity claims fail without further ado" even if Jewel's ad constituted noncommercial speech.  Nonetheless, because the parties had agreed otherwise, that issue was left for another day.

Moving on to the central issue, the Seventh Circuit discussed the varying definitions or descriptions of "commercial speech," including "speech that proposes a commercial transaction."  But "commercial speech" is not limited to speech that falls within that narrow definition; rather, speech can still be characterized as "commercial" if it contains both commercial and noncommercial elements.  In such instances, the court identified three non-exclusive considerations:  whether "(1) the speech is an advertisement; (2) the speech refers to a specific product; and (3) the speaker has an economic motivation for the speech."

Applying these considerations to Jewel's ad, the Seventh Circuit rejected Jewel's argument that the ad wasn't commercial speech because it didn't propose any commercial transaction.  Rather, the text of the ad must be considered in its context as well as the context of modern commercial advertising:

We know from common experience that commercial advertising occupies diverse media, draws on a limitless array of imaginative techniques, and is often supported by sophisticated marketing research.  It is highly creative, sometimes abstract, and frequently relies on subtle cues. . . .  An advertisement is no less "commercial" because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service. . . .  Very often the commercial message is general and implicit rather than specific and explicit.

Such was true with Jewel's ad, the Seventh Circuit concluded, because it sought both to congratulate Jordan and promote Jewel's supermarkets.  The latter purpose was demonstrated by the prominent use of Jewel's logo in the center of the ad in type larger than any other on the page, and the explicit incorporation of Jewel's slogan ("just around the corner") into the text of the congratulatory message:

In short, the ad's commercial nature is readily apparent.  It may be generic and implicit, but it is nonetheless clear.  The ad is a form of image advertising aimed at promoting goodwill for the [Jewel] brand by exploiting public affection for Jordan at an auspicious moment in his career.

Finally, the Seventh Circuit clarified the "inextricably intertwined" doctrine:

Properly understood, . . . the . . . doctrine applies only when it is legally or practically impossible for the speaker to separate out the commercial and noncommercial elements of his speech.  In that situation the package as a whole gets the benefit of the higher standard of scrutiny applicable to noncommercial speech.  But simply combining commercial and noncommercial elements in a single presentation does not transform the whole into noncommercial speech.

So clarified, the doctrine did not apply to Jewel's ad and Jewel's constitutional defense to Jordan's claims was defeated.

The case cite is Jordan v. Jewel Food Stores, Inc., Appeal No. 12-1992 (7th Cir. Feb. 19, 2014).

Ninth Circuit Orders Google To Remove "Innocence of Muslims" Film Based on Copyright Claim of Actress

This opinion from the Ninth Circuit has created quite a stir and for good reasons, some of which are touched upon below.

Cindy Lee Garcia was cast in a minor role for a film with the working title "Desert Warrior," which she was told was an adventure film set in ancient Arabia.  She received the four pages of the script in which her character appeared and was paid approximately $500 for three and a half days of filming.

But instead of being part of an Arabian adventure film, Garcia's scene (partially dubbed over) was used in the anti-Islamic film "Innocence of Muslims," which was posted on YouTube.  As a result of her role in the film, Garcia received death threats.  She took security precautions and filed multiple unsuccessful takedown notices under the Digital Millenium Copyright Act trying to get the video removed from YouTube.

Garcia filed a suit against Google and others (her amended complaint can be found here) and sought a temporary restraining order seeking removal of the film, claiming that posting the video infringed her alleged copyright in her performance in her scene.

The district court, treating Garcia's application as one for a preliminary injunction, denied it, concluding in part that she had delayed in seeking an injunction and that she was unlikely to succeed on the merits of her copyright claim because she gave the film's writer and producer an implied license to use her performance in the film.  The district court's short decision can be found here.

In an opinion written by Chief Judge Kozinski, to which Circuit Judge Smith dissented, the Ninth Circuit reversed the district court, remanding for that court to enter a preliminary injunction.  In the interim, the Ninth Circuit also issued a temporary injunction requiring Google to take down all copies of the film "from YouTube and any other platforms within its control and to take all reasonable steps to prevent further uploads."

In reversing the district court's denial of the preliminary injunction, the Ninth Circuit's majority opinion discussed two issues of particular interest:  Garcia's claim of a copyright interest in her performance in the film (apparently consisting of a single scene) and the nature of the alleged irreparable harm that would result if the injunction based on her copyright claim wasn't granted.

As to the first issue, the Ninth Circuit concluded that the film wasn't a joint work of which Garcia was a joint author under the Copyright Act.  But that didn't end the analysis because "a copyright interest in a creative contribution to a work [doesn't] simply disappear[] because the contributor doesn't qualify as a joint author of the entire work."  Instead, as the majority opinion saw it, because Garcia's "artistic contribution" (i.e., her acting performance in the scene) was fixed, "the key question remains whether it's sufficiently creative to be protectible."

The Ninth Circuit concluded that Garcia's performance was sufficiently creative, rejecting Google's argument that she didn't make a protectible contribution to the film because the writer/producer wrote the dialogue, managed the production, and dubbed over a portion of her scene.  The majority opinion characterized an actor's performance as "far more than speak[ing] words on a page," describing it as an "external embodiment" including "body language, facial expression and reactions to other actors and elements of a scene."

Relying on a Supreme Court opinion involving the copyrightability of telephone book white page listings, Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the Ninth Circuit--giving remarkably short shrift to a seemingly more complex question--concluded that Garcia's acting performance possessed the "minimal degree of creativity" necessary to be independently copyrightable.

 After reaching this potentially broad conclusion--albeit only for purposes of deciding the propriety of preliminary injunctive relief in this case--the majority opinion attempted to limit it, concluding that Garcia granted the film's writer/producer a broad implied license to use her performance in the film.  But despite emphasizing that such an implied license should be "construed very broadly," the use in this case exceeded the scope of the license by using it in the controversial "Innocence of Muslims" film when Garcia believed she would be appearing in an Arabian adventure film.

The second particularly interesting issue involved the requirement that Garcia demonstrate that irreparable harm would result if an injunction didn't issue.  And more specifically, because the requested injunctive relief was based on her copyright infringement claim, she had to show that the harm alleged "is causally related to the infringement of her copyright."

The harm Garcia alleged, however, were the death threats she received, and presumably would continue to receive, which the majority opinion concluded was sufficient to justify a preliminary injunction on her copyright infringement claim:

[The film's writer/producer'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.

But while death threats certainly are a type of harm and even ignoring any issues as to causation, the Ninth Circuit never addresses the question whether it is the type of harm that was intended to be addressed by copyright law, or whether copyright law is the appropriate vehicle to address such harm.

Moreover, the majority opinion gives no meaningful attention to Google's First Amendment prior restraint argument, simply stating that the "First Amendment doesn't protect copyright infringement."  In so doing, the opinion does not address the issue whether, by issuing an injunction requiring Google to take down the film and thereby stifling speech (even offensive, troubling speech), the injunction is contrary to the public interest.

The dissenting opinion--emphasizing that an abuse of discretion standard of review applied to the district court's decision--focuses largely on the majority opinion's conclusion that Garcia's acting performance was independently copyrightable, arguing that she did 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."

The dissenting opinion also takes issue with the majority opinion's analysis of the irreparable harm issue and notes the "public's interest in a robust First Amendment," an interest implicated by the injunction forcing Google to take down the film.

Whether one agrees or not with the dissenting opinion's reasoning on any or all of these issues, the opinion is well worth reading if only because it offers a more nuanced discussion of what would seem to be much more complex issues than is apparent from the majority opinion.

The case cite is Garcia v. Google, Inc., Appeal No. 12-57302 (9th Cir. Feb. 26, 2014).

California Court Concludes that First Amendment Provides Complete Defense to Publicity Rights Claim of Former Criminal Against Rapper

Plaintiff Ricky D. Ross is a former criminal who spent time in prison in connection with charges relating to cocaine trafficking.  He apparently gained some celebrity status as a result of "the enormous scale of his cocaine-dealing operations" and also received widespread coverage in the 1990s for a peripheral role in the Iran-Contra scandal.

Defendant William Leonard Roberts II is a former correctional officer turned apparently famous rapper who goes by the name "Rick Ross."  Although Roberts apparently referenced Ross's life story early in his career, Roberts denied that his performing name was based on plaintiff.  Roberts released his first commercial single in about 2005 and his lyrics often include references to running large-scale cocaine operations.

After a federal district court in California dismissed his federal claims and declined to exercise supplemental jurisdiction over his state law claims, Ross sued Roberts and other defendants in California state court alleging various state law claims all based on the allegation that Roberts had misappropriated Ross's name and identity to further Roberts's music career.

On defendants' motion for summary judgment, the trial court accepted defendants' statute of limitations argument, dismissing all of Ross's claims.  The appellate court affirmed that decision but on a different ground.

Specifically, although the issue was not argued in the trial court, the appellate court concluded that the First Amendment provided a complete defense to all of Ross's claims.

The court applied the "transformative test" adopted by the California Supreme Court to resolve conflicts between rights of publicity and rights of free speech and expression under the First Amendment.  As its name implies, the transformative test focuses on determining whether a work is transformative and specifically

looks at whether the celebrity likeness is one of the raw materials from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.  We ask, in other words, whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness.

If the case presents a close question, the court also may make a subsidiary inquiry that asks "whether the marketability and economic value of the challenged work derive primarily from the fame of the celebrity."

The appellate court did not, however, find the facts of this case to present a close question, characterizing Roberts's First Amendment defense as "quite obvious."

We recognize that Roberts's work--his music and persona as a rap musician--relies to some extent on plaintiff's name and persona.  Roberts chose to use the name "Rick Ross."  He raps about trafficking in cocaine and brags about his wealth.  These were "raw materials" from which Roberts's music career was synthesized.  But these are not the "very sum and substance" of Roberts's work. . . .

    Roberts created a celebrity identity, using the name Rick Ross, of a cocaine kingpin turned rapper.  He was not simply an imposter seeking to profit solely off the name and reputation of Rick Ross.  Rather, he made music out of fictional tales of dealing drugs and other exploits--some of which related to plaintiff.  Using the name and certain details of an infamous criminal's life as basic elements, he created original artistic works.

The "subsidiary inquiry" of the transformative test only cemented the validity of the First Amendment defense for the appellate court, which concluded that it "defie[d] credibility to suggest that Roberts gained success primarily from appropriation of plaintiff's name and identity, instead of from the music and professional persona that he (and the other defendants) created."

The appellate court thus affirmed the trial court's grant of summary judgment in favor of the defendants.

The case cite is Ross v. Roberts, Appeal No. B242531 (Cal. Ct. App. Dec. 23, 2013).

Garlic and the First Amendment

In July 2000, George Villegas and several other plaintiffs, all of whom are members of the Top Hatters Motorcycle Club, attempted to attend the Gilroy Garlic Festival wearing vests that included an image of a skull with wings and a top hat with "Top Hatters" written above the hat and "Hollister" written below.  Pursuant to an unwritten dress code of the Gilroy Garlic Festival Association, a private non-profit corporation, prohibiting "gang colors or other demonstrative insignia, including motorcycle club insignia, an on-duty Gilroy police officer was asked by the festival's chair of security (an off-duty Gilroy police officer) to remove the Top Hatters from the festival.

The Top Hatters then sued the City of Gilroy, the Gilroy Garlic Festival Association and the individual police officer under Section 1983 for violation of their civil rights.  The District Court granted summary judgment in favor of the City and the Festival Association, concluding that wearing the Top Hatters vests was neither expressive conduct nor expressive association protected under the First Amendment and that the Festival Association was not a state actor.  A three-judge panel of the Ninth Circuit affirmed, concluding that wearing the Top Hatters vests was subject to expressive conduct analysis but found no First Amendment violation.  The panel did not reach the state action issue.

The Ninth Circuit then ordered the case to be heard en banc. 

This time around, the Ninth Circuit again affirmed the grant of summary judgment but did so on the ground that the Festival Association was not a state actor and that "[b]ecause there is no constitutional violation, there can be no municipal liability."  Unfortunately, the Ninth Circuit did not reach the question of whether wearing the Top Hatters vests and insignia constituted expressive conduct (and the three-judge panel's decision addressing that issue was withdrawn and designated non-precedential and non-citable).

You can find the Ninth Circuit's opinion, including two dissents, here.

Teacher's Blog Entries Do Not Meet "Public Concern" Test

In May 2007, Tara Richerson was transferred to a new position with the Kitsap County School District that included responsibilities with a new instructional coaching model where she would work with teachers to enhance their professional development.  The coach's role was to be a mentor and develop a "trusting" and "confidential" relationship with the classroom teachers.

Ms. Richerson also maintained a blog in which she recounted her observations as an employee of the school district.  In one entry, she commented as follows on the person hired to replace her when she was assigned to her new position:
Save us White Boy!
I met with the new me today: the person who will take my summer work and make it a full-time year-round position.  I was on the interview committee for this job and this guy was my third choice . . . and a reluctant one at that.  I truly hope that I have to eat my words about this guy. . . . But after spending time with this guy today, I think Boss Lady 2.0 made the wrong call in hiring him. . . He comes across as a smug know-it-all creep.  And that's probably the nicest way I can describe him. ... He has a reputation of cra**ing on secretaries and not being able to finish tasks on his own. ... And he's white.  And male.  I know he can't help that, but I think the District would have done well to recruit someone who has other connections to the community. ... Mighty White Boy looks like he's going to crash and burn.
When the school district learned of the blog entry, Ms. Richerson was verbally reprimanded for violating the confidentiality required of a member of an employee interview team and a confirming letter was placed in her personnel file.

At some point, the school district also received a complaint from a district teacher and lead union negotiator about another entry on Ms. Richerson's blog, which the teacher construed as a personal attack on her.  The entry apparently included the statement, "What I wouldn't give to draw a little Hitler mustache on the chief negotiator."  The school district then advised Ms. Richerson that she was being involuntarily reassigned from her new position to that of a classroom teacher.

Ms. Richerson then brought suit in the Western District of Washington claiming that the school district had violated her civil rights by reassigning her in retaliation for the exercise of her First Amendment free speech rights.

On cross-motions for summary judgment, the District Court disagreed, concluding that Ms. Richerson's speech did not meet the "public concern" test and was therefore not protected.  The District Court noted that the government has a "freer hand" in regulating the speech of its employees and concluded that the proposed mentoring relationship between Ms. Richerson and other teachers envisioned in her new position would have faced "severe difficulties" had she not been reassigned following her blog entries.  In concluding that Ms. Richerson's speech on her blog did not meet the public concern test, the District Court also noted that "it was racist, sexist, and bordered on vulgar" and characterized her behavior, in part, as "salacious" and "mean spirited."

You can read the District Court's full opinion here and the complaint and answer here and here.

Dismissal of Suit Challenging Removal of College Newspaper Advisor Affirmed

Despite the presence of a number of amici curiae including the Student Press Law Center, The American Society of Newspaper Editors, The Associated Collegiate Press and The Society of Professional Journalists, the Tenth Circuit affirmed the dismissal of a suit brought by student editors of the Kansas State Collegian over the removal of the student newspaper's faculty advisor.

In Lane v. Simon, the Collegian became involved in a controversy when student groups and faculty at Kansas State University claimed that the newspaper contained inadequate diversity and minority news coverage.  Although the student editors attempted to address the concerns in two public forums, the criticism continued, including a protest march and rally that called for the removal of the newspaper's faculty advisor.

Not long thereafter, the chairman of the board of the not-for-profit corporation that published the paper and the director of the School of Journalism and Mass Communications at KSU wrote a letter to the dean of the College of Arts and Sciences recommending that the newspaper advisor not be reappointed.  According to the letter, the recommendation was based not on the controversy over the newspaper's diversity news coverage but rather as the result of a "content analysis" conducted by the chairman in which he compared the Collegian with six other college newspapers.  The chairman did not believe the Collegian fared well in this "content analysis," concluding that the paper's "news reporting and writing are demonstrably weaker than news coverage in peer college newspapers," despite the paper's receipt of a number of national awards over the years.  Although the newspaper advisor did not make final content decisions for the paper, the chairman concluded that the advisor, rather than the student staff, was to blame for the "sub par scope and quality of news coverage."

Following this recommendation, the dean informed the newspaper advisor that he was being removed from his position as advisor and being assigned additional teaching duties although his salary would remain the same.  The newspaper advisor and two editors of the Collegian (but not the not-for-profit corporation that published the paper) then sued the chairman and dean in federal district court seeking a declaratory judgment that the defendants' actions violated the First and Fourteenth Amendments as well as Kansas state law, and requesting an order enjoining defendants from removing the advisor or otherwise interfering with the governance of the corporation that published the student newspaper.

The defendants successfully moved to dismiss the suit on several grounds, however, including that the constitutional claims failed because the defendants purportedly based their decision to remove the advisor based on the quality of the newspaper rather than its content and that the advisor lacked standing and had not alleged a violation of a federal right because his right to freedom of the press was not affected as he exercised no control over the content of the paper.  You can read the District Court's opinion here.

Unfortunately, the Tenth Circuit did not address these conclusions by the District Court because it concluded that the case was moot as the newspaper advisor did not appeal the dismissal and the two student editors had since graduated and no longer worked on the Collegian.

First Amendment Protects Posting of Arrest Recording

The case of Jean v. Massachusetts State Police, No. 06-1775 (1st Cir.) is one of those cases that leaves you wanting to know more about what was really going on between the people involved.

In that case, Mary Jean, described as a local political activist in Worcester, Massachusetts, had a website containing information critical of the former county district attorney.  In 2005, she was contacted by Paul Pechonis, whom she had never met, who told her that eight armed state police troopers had arrested him in his home on a misdemeanor charge.  The arrest had been audio and videotaped by a motion-activated "nanny-cam" and he provided a copy of that recording to Jean who then posted the recording on her website along with an editorial critical of the former county district attorney's performance in office.

The State Police ultimately discovered the recording on the website.  They wrote a letter to Jean telling her that her actions violated state law and were subject to prosecution as a felony, and that if she did not "cease and desist" within 48 hours from posting the recording, the police would refer the matter to the district attorney for investigation and possible prosecution.  The State Police later clarified their position by a second letter to Jean, stating that she would not be in violation of the law if she removed the audio portion of the recording from the website.

Jean apparently did not remove the recording from her website and instead filed a complaint in federal district court seeking a temporary restraining order and injunctive relief precluding the government officials from threatening her with prosecution or enforcing the relevant state law against her based on her right to free speech under the First Amendment.  The District Court granted Jean both a TRO and a preliminary injunction finding that, based on the Supreme Court case of Bartnicki v. Vopper, 532 U.S. 514 (2001), Jean had demonstrated a likelihood of success on her First Amendment claim because she had played no part in the allegedly unlawful recording of the video, she had obtained the recording lawfully, and the video related to a matter of public concern.  The First Circuit agreed with the District Court, ultimately finding that, because Jean's publication of the recording on the website was entitled to the same First Amendment protection as that involved in Bartnicki, she had demonstrated a likelihood of success on the merits and therefore affirmed the grant of a preliminary injunction.