Why Garcia Matters: The Unraveling Of An Uneasy Bargain

It’s been a few days since Hon. Alex Kozinski, Chief Judge of the Ninth Circuit (Federal) Court of Appeals, issued his decision in Garcia v. Google et al, relating to whether or not an actress whose image and actions were used in an anti-Islam film polemic could insist that YouTube (owned by Google) take down the film. Hon. Kozinski decided that she could, finding, in an unusual procedural position (review of a denial of a motion for a preliminary injunction) that she likely has a cognizable copyright interest in her performance. The significance of her having a colorable copyright interest is that Google/YouTube is arguably liable for copyright infringement if it ignores her request to remove the infringing material. This exposure arises under the Digital Millenium Copyright Act, which provides a “safe-harbor” for companies hosting infringing materials, provided that they acted to remove the materials after notice. This is generally referred to as the DMCA takedown procedure.

So, to summarize, Google did not remove the video after her take-down requests (8 of them, in fact) because Google did not believe that she, as an actor in the film, had a protectible copyright interest. Hon. Kozinski found she did have such an interest. Thus, then, ergo, the film should be removed from Google’s service.

Many estimable scholars have written in the succeeding days about how wrong-headed this decision is, strictly on copyright grounds. I tend to agree. True, there is a mystifying (to me, at least) discussion about express and implied licenses which looks to be little more than a mechanism for allowing the Court to make the case that Ms. Garcia was taken advantage of, lied to, and is otherwise not at fault. I’ll leave that to scholars.

Under the facts set out by both the majority and minority decisions, Ms. Garcia has suffered a wrong. She was paid $500 for a part in a film that was never released. Instead her footage was repurposed into the objectionable work, and words she never spoke were overdubbed onto her performance. Because the film is ill-liked by certain interests, her participation resulted in death threats and other attacks that none of us sign up for.

What, then, was the wrong?

That’s the slippery problem here. Google harbored no demonstrable ill-will toward her: it was simply the platform by which the film was displayed. Ms. Garcia was duped by the people who filmed her and they carried out the ruse. She sued them. According to the 9th Circuit Opinion, they never answered. They have gone to ground. In common parlance, they are judgment proof, or at least aren’t willing to answer to Ms. Garcia in court. see footnote 1: ” Although Garcia’s suit also named the film’s producers, only Google,which owns YouTube, answered the complaint.”

Google answered. Google is unlikely to be legally responsible for bad things that happened to Ms. Garcia, because of section 230 of the Communications Decency Act which  says that “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider” (47 U.S.C. § 230). (emphasis supplied).

In other words, and to paint the strokes very broadly, Google can’t be responsible to Ms. Garcia for simply hosting the film on YouTube under theories of tort which she might have available for the doubtless personal anguish she has suffered. For example, she might have claims of misappropriation of her likeness, false light, libel (a stretch) or some other theory that would get at how she has suffered at the hands of the producers and filmmakers who put her in this position.

But not Google, thanks to section 230.

As the Electronic Frontier Foundation states:

 In other words, online intermediaries that host or republish speech are protected against a range of laws that might otherwise be used to hold them legally responsible for what others say and do. The protected intermediaries include not only regular Internet Service Providers (ISPs), but also a range of “interactive computer service providers,” including basically any online service that publishes third-party content. Though there are important exceptions for certain criminal and intellectual property-based claims, CDA 230 creates a broad protection that has allowed innovation and free speech online to flourish.

Can’t argue with that either… Section 230 has provided a means for all manner of hosted material, including some pretty heinous stuff (no, I refuse to link it) to be distributed without the hosts (YouTube, Twitter,  you name it) having legal exposure.

Except. Now look back at the EFF commentary above: “there are important exceptions for certain criminal and intellectual property-based claims”

Boom. Enter Hon. Kozinski, and Garcia’s counsel. It was necessary to carve out an identifiable copyright interest that Garcia could assert, so that Google would not enjoy the protections of Section 230.

Most would say that section 230 allowed the Modern Internet to grow, expand, and flourish. Back in the Internet Stone Age, there were cases litigated against Prodigy (look it up), Compuserve, and other hosts, and their flexibility in offering services was likely hindered by uncertainty of when and under what circumstances they could get tagged for allowing someone else to use their service to post, let’s say, libelous material. The story (allegedly) goes that the guy on whom Jonah Hill’s character was based in “Wolf of Wall Street” was incensed at a posting on Prodigy and sued Prodigy for libel in a third party post. Stratton Oakmont, Inc. et al. v. Prodigy Services Company, et al. 1995 N.Y. Misc. Lexis 229, (N.Y. Sup. Ct. Nassau Co., 1995) motion for renewal denied 1995 WL 805178 (Dec. 11, 1995).That was the environment before Section 230.

So, between section 230, and the DMCA copyright safe harbor, it seems there was an uneasy bargain struck (see the title of this post) to say, essentially, that people enabling internet services would not be responsible for “soft” injuries to persona, bad feelings, hurt feelings, harm to reputation, the kind of things that tort law covers. On the other hand, economic injuries, like copyright infringement, were fair game–but only if the DMCA safe harbor rules were ignored.

But, Hon. Kozinski has thrown a wrench into the works. Ms. Garcia’s harm is real, but is it economic? It is now, so long as Garcia stands. For years, the on-line world operated by the bargain struck above, but now a personal interest not to be duped or mis-presented has been characterized as an economic/copyright interest (“Garcia may assert a copyright interest only in the portion of “Innocence of Muslims” that represents her individual creativity“).

That’s what the fuss is about.

Transformative Use Won’t Be Reviewed by the US Supreme Court

The Supreme Court has declined to accept review of a case from a photographer, Patrick Cariou who said that painter Richard Prince violated his copyrights with paintings and collages based on the photographer’s published works.

The November 12 decision not to accept certiorari on Tuesday refused to hear an appeal from a decision of the US Court of Appeals for the Second Circuit. Cariou, the plaintiff,  said Prince used pictures that were taken by Cariou for his book “Yes, Rasta.”

Cariou took the pictures during six years he lived with Rastafarians in Jamaica. Prince altered and incorporated several of the photographs in a series of paintings and collages titled “Canal Zone,” exhibited in 2007 and 2008.

But the federal courts said Prince transformed most of the pictures enough so that Prince’s art could be considered a “fair use” of Cariou’s work. The Supreme Court refused to reconsider that decision.

The Second Circuit said that the standard for determining fair use depended on whether an observer would find the new use transformative of the original. It said that Prince’s manipulations of Cariou’s photographs met that test in the majority of the paintings because they presented a “crude” aesthetic that was different from Cariou’s “serene” work.

It also said that Prince’s paintings did not need to comment on Cariou’s in order to be transformative. Prince had previously testified that he did not intend to comment on the photographs, and that testimony played a large part in the district court’s decision, which had ruled in favor of Cariou.

Some have criticized The Second Circuit’s decision has been criticized by many lawyers who assert that it does not provide them with clear guidance in copyright questions. These criticisms fall into the trap often seen in fair use cases where there is a perceived need to quantify what can and cannot be appropriated before deciding whether an infringement has occurred. Cariou’s lawyer had asked the Supreme Court to review the appellate court’s standard, which he characterzed as an “I know it when I see it” approach that is “necessarily subjective, arbitrary and unworkable”

The 2nd Circuit opinion is a thoughtful approach to fair use and transformation, and it makes sense for the Supreme Court to let it stand.  Little to be gained from a High Court review.

 

More On Trademarkia

An earlier post alluded to the puff piece in the ABA Journal extolling alleged service known as Trademarkia. On the heels of that, one sees that it’s employees “(farm animals” according to one) are not very happy. http://www.glassdoor.com/Reviews/LegalForce-RAPC-Worldwide-Reviews-E266835.htm

Just, Desserts

@ThinkingIP is where I publish observations, one of which, yesterday, was that I had been “followed” by Trademarkia, the commodity trademark service. It is the nadir of my Twitter activity, to date. Then, today, unaccountably, the ABA Journal published a puff piece about Trademarkia.

 

Fortunately, comments are enabled:

here are the first 9:

Comments

1.John
Sep 24, 2013 12:40 PM CDT

He did it by sending out questionable advertising and updates via email and print to trademark lawyers AND their clients once a trademark is applied for.  This can cause confusion among the clients and is frankly annoying to the attorneys.  But hey, $8.5 million dollar book of business—what a legal rebel!  Lol.

2.Mike
Sep 25, 2013 3:23 PM CDT

I wonder how his employees feel about working for him? Are they happy?

3.Mike
Sep 25, 2013 3:25 PM CDT

Also, does he only have attorneys file his trademarks or does he use non-attorneys as well? Only reason I ask is that other companies have gotten in trouble with this so you always have to wonder.

4.TMthis
Sep 27, 2013 6:57 AM CDT

I agree with John, this guy has sent unsolicited emails and other junk mail to clients-including myself- and likely other trademark filers) that incentivize through confusion. If that’s how one builds a $8.5 million book of business, then I guess nobody cares.

5.Nate
Sep 27, 2013 7:56 AM CDT

Yeah the advertising is misleading and super questionable.  I stopped listing client’s email addresses on trademark apps just to avoid them calling me up every week confused by these emails.

6.Patrick Blake
Sep 27, 2013 8:38 AM CDT

We have had several clients come to us after using Trademarkia and the results has uniformly been substandard.  Similar to the poster above, I question whether intellectual property attorneys are handling the filings, which is a nice way to pump up profits if you don’t care about things being done correctly.  Also, the Trademarkia “employee” I spoke with most recently failed to file a Statement of Use for (now my) client.  When he contacted my client with a hefty bill to correct his error, I was forced to get involved to point out his mistake.  In the interest of full disclosure, a manager became involved in the case and the SOU was filed with no additional cost to my client, but I would steer clear of this service if possible.

7.Trademarks in Florida
Sep 27, 2013 8:58 AM CDT

I too have inherited several clients and needed to clean up the messes made by this firm. If an application does not go through on first examination, the fees the clients end up paying are usually more than my flat fee. I don’t even try to have a web presence because my flat fee is way more than their initial fee and I don’t feel that I should have to field all the calls from people asking me why I’m so expensive when I am actually appropriately priced. These people are never going to hire me anyway if they are looking for an attorney on the web.

I have also had to cancel a mark that they filed for a non-existent person! They do not even confirm the identity of their clients.

I actually believe that the success of this firm is a by product of the In re Bose decision. There is no reason to double check anything anymore since the standard for fraud is not met if you are blissfully ignorant of the facts. Don’t ask, don’t tell lives on at the PTO.

I could continue.

8.TM in Westchester
Sep 27, 2013 9:23 AM CDT

Every client I work with becomes a subject of Trademarkia’s relentless poaching efforts.

9.Paul
Sep 27, 2013 11:55 AM CDT

It is hard to argue with an $8.5 million book of business, but the sad truth is that clients get what they pay for.  I have been asked to pick up the pieces from their shop at least 5 times, and in each case the problems were preventable—and the solutions cost the clients far more than if they had used someone else in the first place.  In one case his firm filed trademark applications for identical marks for very similar services, and when the Examining Attorney objected to one application they tried to negotiate a co-existence deal with both of their clients.  My client was then told that she had to get new counsel—for a matter that they never should have taken in the first place (and they refused to refund her fees paid to them.)

Gnarly Problem Produces Peculiar Solutions

The scourge of Patent Trolls is much-discussed, and ill-understood. Not a day goes by when one or more solutions to the problem is not offered. Yet, suits by Non-Practicing Entities, the polite word for people who sue for a living, remains steady. Some say it’s an inefficient use of limited Court resources. Others say it’s just people cleverly making the U.S. Patent enforcement system work for them. The truth lies somewhere in the middle. Then again, a troll was sued this week for RICO violations, on the basis of allegedly frivolous claims filed in a number of Districts.

But, courts have taken notice, and I have personally seen it in my practice, even within the last few months.

Now, we learn of a Federal Judge in the Northern District of California, who has taken matters into his own hands. Apparently the (now) unfortunate troll, er, NPE, tried to gin up a sham office in East Texas, to try to get venue there. That failed, and when the case ended up in N.D. Cal, a judge there decided to drill a bit deeper.

In his order leading up to trial later this month of the patent infringement claims brought by non-practicing entity (“NPE” or “patent troll”) Network Protection Services, LLC (“NPS”), Judge Alsup suggested he’d allow the jury to hear evidence of how:

NPS manufactured venue in Texas via a sham. [NPS founders] Ramde and Lam rented a windlowless file-cabinet room with no employees in Texas and held it out as an ongoing business concern to the Texas judge. They also held out [alleged employee] Cuke as its ‘director of business development’ but this too was a sham, a contrivance to manufacture venue in the Eastern District of Texas.

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