(CN) - Google must remove all copies of "Innocence of Muslims" from YouTube, the 9th Circuit ruled Wednesday, finding that an actress who was tricked into appearing in the anti-Islamic video may have a copyright interest in her performance.
Cindy Lee Garcia sued Google in 2012 after it refused to pull the 14-minute video in which her performance for a different movie was partially overdubbed to make her appear to ask if Muhammad was a "child molester." Garcia said the film's writer and producer, Mark Basseley Youssef aka Nakoula Basseley Nakoula aka Sam Bacile, paid her $500 to appear in what she thought was an adventure movie called "Desert Warrior."
While that film was never made, Youssef allegedly recycled and touched up Garcia's performance for use in "Innocence of Muslims," without informing her. Garcia said she received death threats after an Arabic version of the video went viral and led to violent protests and dozens of deaths in some 20 countries.
Google won the opening round in Los Angeles when U.S. District Judge Michael Fitzgerald refused to issue a temporary restraining order. Garcia had argued that the video infringed on the copyright she held to her performance for the "Desert Warrior" project and that she would face further threats and harm if Google failed to act, but the judge found, among other things, that her several-month delay in seeking the order belied her allegedly urgent need for protection.
A divided appellate panel reversed on Wednesday and ordered Google to take the video down. In doing so, the two-judge majority explored the "rarely litigated question" of whether an actor retains an interest in an "independently copyrightable" performance in a joint work.
"Google argues that Garcia didn't make a protectible contribution to the film because Youssef wrote the dialogue she spoke, managed all aspects of the production and later dubbed over a portion of her scene," Chief Judge Alex Kozinski wrote, before going on to quote Constantin Stanislavski's "An Actor Prepares."
"But an actor does far more than speak words on a page; he must 'live his part inwardly, and then ... give to his experience an external embodiment,'" the opinion states.
Garcia met such "minimum requirements" of the acting craft to make her performance "fixed" and therefore copyrightable, according to the ruling.
"We need not and do not decide whether every actor has a copyright in his performance within a movie," Kozinksi wrote for the Seattle-based panel. "It suffices for now to hold that, while the matter is fairly debatable, Garcia is likely to prevail."
Google fared no better with its argument that Garcia lacked a copyright interest in her performance because she had worked for hire and given Youssef an "implied license" to use her work.
While there was an implied license, Youssef had surely voided it by perpetrating a "fraud," the majority found.
"The license Garcia granted Youssef wasn't so broad as to cover the use of her performance in any project," Kozinski wrote. "Here, the problem isn't that 'Innocence of Muslims' is not an Arabian adventure movie: It's that the film isn't intended to entertain at all. The film differs so radically from anything Garcia could have imagined when she was cast that it can't possibly be authorized by any implied license she granted Youssef."
Google also failed to show that Garcia waited too long to seek a restraining order.
"There's no dispute that, here, Garcia took legal action as soon as the film received worldwide attention and she began receiving death threats - in other words, as soon as there was a 'need for speedy action,'" Kozinski wrote. "Because the need for immediate action didn't arise until she was threatened, Garcia wasn't dilatory in bringing the lawsuit."
Kozinski went on to characterize the case as "troubling," and said it was "disappointing, though perhaps not surprising, that Garcia needed to sue in order to protect herself and her rights."
Los Angeles Attorney M. Cris Armenta represented Garcia in the 9th Circuit. He said he was "delighted" that the judges recognized the threats faced by his client.
"Ordering YouTube and Google to take down the film was the right thing to do," Armenta said in a statement. "The propaganda film differs so radically from anything that Ms. Garcia could have imagined when the director told her that she was being cast in the innocent adventure film Desert Warrior that had she known the true nature of the project, she never would have agreed to participate."
Writing in dissent, Judge N. Randy Smith argued that the majority had used the wrong standard of scrutiny.
"Rather than asking to maintain the status quo pending litigation, Garcia demands Google immediately remove a film from YouTube," Smith wrote. "Therefore, her request must be subject to a higher degree of scrutiny because such relief is particularly disfavored under the law of this circuit'."
"Given this standard," Smith added, "the majority errs in requiring Google to pull the film from YouTube - at this stage of the litigation."
Google did not immediately respond to a request for comment.
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