Protect Your Brand Or Else

By John Moore, Henn, Etzel and Moore
A semi-monthly feature, exclusive to NCRA News, from NCRA general counsel and board member John Moore, concerning recent legal decisions relating in some manner to Zero Waste.

Attendees at RU19 witnessed the passion of Gary Liss in protecting the “Zero Waste” brand from corruption. Many NCRA members brand their own businesses and programs – i.e., Giagiantic Ideas Studio, Rethink Waste, SF Environment, Urban Ore… Protecting one’s brand protects the purity of the vision as well as the economic benefits. Failing to protect one’s brand, at least in one case, can lead to millions of people calling for your murder.

The saga of Cindy Lee Garcia was stated succinctly in a recent case from the Ninth Circuit Court of Appeals:
“While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa. But that’s exactly what happened to Cindy Lee Garcia when she agreed to act in a film with the working title “Desert Warrior”.

The film’s writer and producer, Mark Basseley Youssef – who also goes by the names Nakoula Basseley Nakoula and Sam Bacile – cast Garcia in a minor role. Garcia was given the four pages of the script in which her character appeared and paid approximately $500 for three and a half days of filming. “Desert Warrior” never materialized. Instead, Garcia’s scene was used in an anti-Islamic film titled “Innocence of Muslims.”

Garcia first saw “Innocence of Muslims” after it was uploaded to and she discovered that her brief performance had been partially dubbed over so that she appeared to be asking, “Is your Mohammed a child molester?” These, of course, are fighting words to many faithful Muslims and, after the film aired on Egyptian television, there were protests that generated worldwide news coverage. An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the film, and Garcia soon began receiving death threats. She responded by taking a number of security precautions and asking that Google remove the video from YouTube.”

That Ms. Garcia faced death threats because of the use of her likeness in a manner to which she did not consent, mattered not to YouTube, or its parent, Google. Nor did it matter to the US District Court judge in Los Angeles, who denied her motion for a preliminary injunction to require YouTube to remove the video. That judge ruled that Garcia “had delayed in bringing the action, had failed to demonstrate ‘that the requested preliminary relief would prevent any alleged harm’ and was unlikely to succeed on the merits because she’d granted Youssef an implied license to use her performance in the film.”

Nor, of course, is there any way to get the genie of a video back in the bottle once it is posted on the internet.

Garcia was now at the mercy of legal time. She filed her lawsuit on September 26, 2012. Her request for an injunction was denied November 30, 2012. She appealed to the Ninth Circuit on December 21, 2012. The Ninth Circuit’s order requiring YouTube to remove the video was filed February 28, 2014. For over 18 months Garcia has lived under fatwa. As of this writing, the video is still available on YouTube.

Ultimately Garcia prevailed in the Ninth Circuit by the slimmest of margins; only 2 of the 3 judges on the panel agreed that she needed protection – and those 2 are among the most politically conservative on the Court.

The 2-1 split on the Court reveals diverging views on the interpretation of copyright law and the procedure for obtaining preliminary injunctions. One could argue that the majority fashioned a “result-oriented” decision that is light on respecting past precedent. But one can’t argue that Ms. Garcia might have improved her legal position with firmer bargaining with the film producer before she allowed her likeness- her brand so to speak – to be used.

A brand may be a name, or a stylized name such as a logo. A name or brand used across state lines may be eligible for trademark protection. A name or brand used only in California may be eligible for a California trademark.

Original works of authorship in a tangible medium of expression, such as books, pictures, music, and computer code, may be eligible for copyright protection. Protection is given to both published and unpublished works, although registration with the US Copyright Office is a pre-condition to suing someone for infringing the copyright. Joint efforts to create works of authorship creates ownership rights in all of the contributors. Contracts are useful to clarify the ownership rights in a joint effort or a derivative work where one original work is used in a later, different one.

In Othello, when Iago says, “I am not what I am” he is concealing his true nature and plan, with fatal consequences. When Cindy Lee Garcia’s producer concealed his true intentions to use her likeness, it potentially had fatal consequences. Failing to protect one’s brand may have consequences fatal to the economic benefits and vision of the brand. Like Desdemona and Ms. Garcia, the brand is worth protecting.