“Prior restraints” — administrative and judicial orders that forbid future speech from taking place1 — are “the least tolerable infringement on First Amendment rights.”2 According to the Supreme Court, a preliminary injunction is a prior restraint if it censors speech before “an adequate determination” that the First Amendment doesn’t protect the speech.3 These kinds of injunctions are “presumptively unconstitutional.”4 But when it comes to preliminary injunctions in copyright suits — which also often censor speech5 — courts have ignored the Supreme Court’s First Amendment concerns almost entirely.6 Recently, in Garcia v. Google, Inc.,7 the Ninth Circuit, sitting en banc, dissolved a preliminary injunction in a copyright infringement suit, calling the injunction a “prior restraint.”8 By doing so, the court created a tension within the Ninth Circuit’s doctrine on prior restraint. Lower courts may now need to sort through difficult constitutional issues that Garcia left unanswered.
In July 2011, Cindy Lee Garcia answered a casting call for Desert Warrior, an action-adventure film set in ancient Arabia.9 Garcia was cast in a cameo role.10 Unbeknownst to her, the film’s writer-director, Mark Basseley Youssef, later used the footage he gathered to create an anti-Islam polemic titled Innocence of Muslims.11 The film depicted the Prophet Mohammed as a murderer and pedophile.12 Film producers dubbed over Garcia’s lines to make it appear as though she was asking, “Is your Mohammed a child molester?”13 In June 2012, Youssef uploaded a thirteen-minute-and-fifty-one-second trailer of Innocence of Muslims to YouTube.14 Garcia appeared in the trailer for five seconds.15 The clip “fomented outrage” across the Middle East, and was allegedly linked to the 2012 attack on the U.S. Consulate in Benghazi, Libya.16 An Egyptian cleric issued a fatwa, calling upon Muslims to kill everyone involved in the film.17 Garcia received numerous death threats.18 In response, Garcia sent Google five takedown notices under the Digital Millennium Copyright Act,19 claiming that YouTube’s hosting of the video infringed her copyright in her “audio-visual dramatic performance.”20 Google refused to take down the film.21
On September 26, 2012, Garcia filed suit against Google in the U.S. District Court for the Central District of California, alleging copyright infringement.22 Specifically, Garcia argued that her five-second performance in Innocence of Muslims was a copyrightable “work” under the Copyright Act of 1976,23 and Google was infringing on her copyright by broadcasting her performance without her permission.24 She later moved for a temporary restraining order on her copyright claim, which the district court treated as a motion for a preliminary injunction.25 The court denied her motion.26 It noted that under the Supreme Court’s decision in Winter v. Natural Resources Defense Council, Inc.,27 a plaintiff seeking a preliminary injunction must show: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm without an injunction; (3) that the balance of equities tips in her favor; and (4) that an injunction is in the public interest.28 The court held that Garcia couldn’t credibly claim that she’d suffer irreparable harm without immediate relief; after all, she had waited several months after the video was uploaded to YouTube to file suit.29 It also held that Garcia couldn’t demonstrate a likelihood of success on the merits.30 Even assuming Garcia had a copyright interest in her performance, the court found that she had implicitly granted Youssef a license to use her performance in his finished film.31
A divided three-judge panel of the Ninth Circuit reversed. Writing for the majority, then–Chief Judge Kozinski32 found that Garcia prevailed under all four Winter factors.33 First, Garcia was likely to succeed on the merits.34 An individual performance within a larger film can count as a copyrightable “work” if — as here — that performance evinces “some minimal degree of creativity.”35 Second, Garcia could demonstrate irreparable harm: the death threats she received were “real and immediate,” and taking down the film would stop those threats.36 Finally, both the balance of the equities and the public interest favored Garcia: Youssef lied to her about the true nature of the film and thus put her life at risk.37 Judge Kozinski also brushed off Google’s First Amendment concerns, stating simply that “the First Amendment doesn’t protect copyright infringement.”38 Consequently, the Ninth Circuit issued an order directing Google to remove all copies of Innocence of Muslims from YouTube.39
The Ninth Circuit granted en banc review and dissolved the injunction.40 Writing for the majority, Judge McKeown41 found that the law did not “clearly compel suppression” in this case, and that the district court did not abuse its discretion in denying Garcia’s motion.42 First, Garcia wasn’t likely to succeed on the merits.43 Neither Ninth Circuit precedent nor the Copyright Office — to whose expertise the court deferred — suggested that an actor’s performance in a film was a copyrightable work.44 Second, Garcia couldn’t demonstrate that she’d suffer “irreparable harm” without an injunction.45 A copyright plaintiff must show “harm to her legal interests as an author”;46 Garcia’s alleged harm, however, was “untethered from . . . copyright.”47
The court also found that the panel’s takedown order “gave short shrift to the First Amendment values at stake.”48 The court criticized the panel for “censor[ing]” a “politically significant film” based on a “dubious . . . theory of copyright.”49 While the intersection between the First Amendment and copyright is “much-debated,” the court highlighted the Supreme Court’s statement that copyright is not “categorically immune from challenges under the First Amendment.”50 Indeed, “[t]he panel’s takedown order of a film of substantial interest to the public [was] a classic prior restraint of speech,” and “Garcia [could not] overcome the . . . heavy presumption against such restraints with a thin copyright claim in a five-second performance.”51
Judge Kozinski dissented. He claimed that the majority “ma[de] a total mess of copyright law.”52 If an individual performance within a film isn’t a copyrightable work, “it isn’t copyrightable by anyone,” and only the final film itself is copyrightable.53 As a result, the majority had “cast[] doubt on the copyrightability of vast swaths of material created during production of a film.”54 Judge Kozinski also criticized the majority for finding that Garcia hadn’t made an “ample showing of irreparable harm”; after all, “[i]t’s her life that’s at stake.”55
The Ninth Circuit didn’t articulate a limiting principle in its prior restraint discussion; that is, it didn’t explain why any copyright preliminary injunction that forbids speech wouldn’t also be a prior restraint.56 Lower courts might therefore read Garcia as holding that all similar copyright preliminary injunctions are prior restraints, and bear heavy presumptions against their constitutionality. The Ninth Circuit was certainly free to adopt the prior restraint standard for copyright preliminary injunctions. Although giving these injunctions prior restraint scrutiny is far from well established, the Supreme Court hasn’t set a clear legal standard to use here.57 But by not applying its usual prior restraint test, and by not fleshing out the constitutional implications of its argument, the Ninth Circuit didn’t fully explain how to avoid “[giving] short shrift to the First Amendment.”58
The Supreme Court has outlined two different legal standards for preliminary injunctions. First, since the nineteenth century, courts have applied a four-factor test (with some variation from circuit to circuit).59 The Supreme Court incorporated these factors into a uniform four-part test in Winter,60 and the Ninth Circuit has recognized the Winter test as the proper standard for most preliminary injunctions.61 Second, when an injunction requires a court to censor speech before it conclusively determines that the speech isn’t protected, the Court has almost always applied the prior restraint doctrine.62 There’s a strong presumption that prior restraints are unconstitutional.63 To determine if a plaintiff can successfully rebut that presumption, the Ninth Circuit had previously synthesized the Supreme Court’s doctrine into a three-part test: “(1) the activity restrained poses either a clear and present danger or a serious and imminent threat to a protected competing interest; (2) the order is narrowly drawn; and (3) less restrictive alternatives are not available.”64
The Supreme Court has never clarified what standard to use for copyright preliminary injunctions.65 On the one hand, these injunctions can clearly censor speech: they restrict defendants from writing and communicating as they please.66 On the other hand, copyright is also a property interest — an interest that the Constitution allows Congress to grant as a way of fostering speech.67 As a result, the Supreme Court has “generally resisted” the idea that copyright is inconsistent with the First Amendment.68 Furthermore, the First Amendment can cut both ways in a copyright suit. When a defendant disseminates an author’s copyrighted work without the author’s permission, the defendant could be infringing on the author’s First Amendment right not to speak.69 Thus, while the First Amendment protects the ability to make one’s own speech, it “bears less heavily when speakers assert the right to make other people’s speeches.”70
Because copyright has a different “flavor” than other kinds of speech, courts have been extremely hesitant to characterize copyright preliminary injunctions as prior restraints.71 Indeed, the Ninth Circuit had previously rejected an argument that an intellectual property preliminary injunction constituted a prior restraint.72 Instead, the court has simply applied the four-factor Winter test and disregarded the First Amendment entirely.73 By calling a copyright preliminary injunction a prior restraint, then, Garcia represented a sea change in the Ninth Circuit’s jurisprudence.74
Going forward, this development may cause more heat than light. First, when analyzing whether Garcia could overcome the “heavy presumption” against a prior restraint, the Ninth Circuit didn’t mention the three-part test that it had derived from Supreme Court precedent. Instead, it considered two factors: the political significance of Innocence of Muslims and Garcia’s “dubious” likelihood of success on the merits.75 Before Garcia, however, the strength of the plaintiff’s claim and the public’s interest in the work had little relevance. Instead, the plaintiff needed to show “a clear and present danger or a serious and imminent threat to a protected competing interest,” that “the order is narrowly drawn,” and that “less restrictive alternatives are not available.”76 While Garcia likely couldn’t have met this high standard either, the court left similarly situated litigants with little guidance about how a court might evaluate their claims.
More importantly, Garcia raises serious constitutional questions. First, the court implied that Garcia’s burden to get an injunction was heavier because Innocence of Muslims was “a film at the center of an international uproar.”77 If lower courts take this statement to heart in cases involving copyright claims that aren’t “dubious,” authors with legitimate copyright grievances will find it harder to get preliminary injunctions when the public is clamoring to view their works. According to the Supreme Court, however, it is “fundamentally at odds with the scheme of copyright to accord lesser rights in those works that are of greatest importance to the public,”78 because doing so would “depriv[e] copyright owners of their right in the property precisely when they encounter those users who could afford to pay for it.”79
Moreover, applying prior restraint scrutiny to copyright preliminary injunctions could end up curtailing copyright plaintiffs’ First Amendment rights. As noted above, copyright is different from other kinds of speech: both the plaintiff and the defendant in a copyright suit can have First Amendment interests.80 Thus, applying First Amendment scrutiny to copyright preliminary injunctions presents courts with a very serious dilemma.81 If the court grants the injunction and the plaintiff doesn’t end up having a valid copyright claim, the court has failed to protect the defendant’s right to speak. But if the court doesn’t grant the injunction and the plaintiff does end up having a valid copyright claim, the court may have failed to protect the plaintiff’s right not to speak. And as both the Ninth Circuit and Supreme Court have recognized, “the loss of First Amendment freedoms, for even minimal periods of time, unquestionably constitutes irreparable injury.”82
There is an important reason that courts have not applied First Amendment scrutiny to copyright preliminary injunctions. Copyright “does not seem to fit the paradigmatic suppression of free speech,” since it “suppresses some speech in order to encourage the speech of others.”83 Indeed, before Garcia, the Ninth Circuit kept copyright preliminary injunctions and the First Amendment scrupulously separate.84 The Ninth Circuit certainly had the right to change course and consider copyright preliminary injunctions that restrict speech to be prior restraints. But because Garcia didn’t explain how to properly apply the prior restraint doctrine and balance the competing interests of plaintiffs and defendants in copyright suits, the Ninth Circuit has left lower courts on their own to sort through these difficult issues.