Ninth Circuit Gives “Short Shrift” to First Amendment in Garcia v. Google

The Ninth Circuit, sitting en banc, released its long-awaited opinion in Garcia v. Google this past Monday. I assume readers are familiar with the facts, but the gist is that Garcia claimed copyright ownership over her five-second performance within a fourteen-minute trailer for a film. The filmmaker uploaded the trailer to YouTube, and Garcia sent Google several DMCA takedown notices to have it removed. When those notices were ignored, Garcia sued Google and sought a preliminary injunction. The district court denied that relief, but a panel of the Ninth Circuit reversed and issued a temporary injunction. The en banc court has now dissolved the panel’s injunction and affirmed the district court below.

In an earlier post, I looked at Google’s claim that an injunction against it would constitute a prior restraint violative of the First Amendment. The Ninth Circuit panel, in an opinion by then-Chief Judge Alex Kozinski, brushed aside Google’s prior restraint argument with a single paragraph. That analysis was quite simple: Since the context was Google’s public performance of somebody else’s copyrighted work, and since Google had not argued that its performance was excused by the fair use doctrine or the idea/expression dichotomy, it could not be a prior restraint. The prior restraint doctrine is only concerned with suppressing speech that may turn out to be protected. Without either of the two First Amendment-based defenses in play, it was a simple matter for the panel to determine that its injunction would not suppress protected speech.

In Monday’s opinion, the en banc court takes issue with the panel’s injunction: “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.” I don’t think this criticism is fair. The prior restraint argument was a nonstarter since Google hadn’t raised any First Amendment defenses. What’s more, after complaining of the panel’s curt analysis, the en banc court then proceeds to give its own “short shrift” to the First Amendment:

Although the intersection between copyright and the First Amendment is much-debated, [n.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, 113 S.Ct. 2766, 125 L.Ed.2d 441 (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.

[n.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).]

The cite to Eldred is curious. There, the Supreme Court did indeed say that copyright laws are not “categorically immune” to First Amendment challenges. However, the context was a substantive challenge to the CTEA, not a procedural challenge like here with Google’s prior restraint argument. The issue in Eldred was whether the CTEA should be analyzed under heightened First Amendment scrutiny. The Court held that, since the CTEA and the First Amendment were balanced at the definitional level through the fair use doctrine and the idea/expression dichotomy, there was no need to apply heightened scrutiny. Mere rational basis scrutiny would suffice. Importantly, the level of scrutiny applicable to such a substantive challenge tells us nothing about whether an injunction is a prior restraint.

The en banc court pays lip service to the First Amendment by declaring the trailer to be of “substantial interest to the public,” and it claims that the panel’s injunction is “a classic prior restraint of speech.” This makes little sense, however, given the context of Garcia’s copyright claim. Of course, the trailer itself is protected speech, but that First Amendment protection isn’t the same for the copyright owner as it is for Google. Google can’t violate the copyright owner’s public performance right simply because the public finds the trailer interesting. The First Amendment only protects Google’s use of the copyrighted trailer if that use is excused by the fair use doctrine or the idea/expression dichotomy, but Google never argued either defense.

As noted in the law review article by Professors Mark Lemley and Eugene Volokh, cited by the en banc court in the footnote quoted above, “preliminary injunctions are granted pretty much as a matter of course” in copyright cases. The reason such injunctions aren’t prior restraints is because, at least in run-of-the-mill cases of nontransformative copying, there is no risk that the speech will turn out to be protected by the First Amendment. Professors Lemley and Volokh explain why this is so:

The danger of preliminary injunctions is that they may temporarily suppress speech that ultimately proves to be protected. If a judge can, at the time of the preliminary injunction hearing, make a reliable finding that the speech is constitutionally unprotected, rather than just that it might be unprotected, then there should be no problem with issuing the preliminary injunction.

This could happen whenever the defendant has made identical or nearly identical copies of the plaintiff’s works, and there is no claim of fair use but only some other copyright defense (such as that defendant has a supposedly valid license, or that plaintiff’s copyright wasn’t properly renewed, or something along those lines). Most cases alleging outright piracy, as well as most claims that the defendant has exceeded the boundaries of its license, would fall within this category.

In this situation, the defendant’s conduct is not constitutionally protected speech, even if the defendant ultimately proves that it’s not a copyright infringement.

Google is able to publicly perform copyrighted works because copyright owners grant it licenses when the works are uploaded to the YouTube platform. While the works themselves are protected by the First Amendment, Google’s public performance of those works is protected only by the licenses it is granted. It needs those licenses because the First Amendment doesn’t otherwise protect its performance of the copyrighted works. It’s a simple matter for a court to “make a reliable finding that the speech is constitutionally unprotected,” especially where, as here, Google never argued that either of the First Amendment-based defenses applies to its performance.

The en banc court’s invocation of the prior restraint doctrine thus misses this point. Garcia’s claim was anything but run-of-the-mill, but there was never any doubt that Google’s public performance of the trailer was not protected by the First Amendment. It may have been protected by the license granted by the filmmaker when he uploaded the trailer, but then it’s the license that protects Google’s performance, not the First Amendment. By ignoring the context of Garcia’s copyright claim, and by ignoring the fact that Google’s use could only be protected by a license, the en banc court itself gives “short shrift” to the First Amendment. Assuming Garcia is not the copyright owner, the case should simply be thrown out for lack of standing. There’s no need to wax poetic on the prior restraint doctrine when Google’s performance of the trailer isn’t protected by the First Amendment in the first place.

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© 2015 Devlin Hartline. Licensed under the Law Theories Public License 1.0.

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