United States: Ninth Circuit Holds Actor In Minor Role Owns Independent Copyright In Performance Embodied In Motion Picture: Garcia v. Google

Last Updated: March 4 2014
Article by Ross J. Charap and Paul M. Fakler

In a case of first impression, the Ninth Circuit has issued a remarkable decision in which the majority holds that an individual actor's performance of a minor role in a motion picture is independently copyrightable and is not part of a work of joint authorship as embodied in the motion picture, and therefore the performance or distribution of the motion picture without the actor's permission infringes the actor's copyright.

This case involved the now-infamous Innocence of Muslims film, which offended a large segment of the Islamic community and led to riots and protests overseas. According to the facts as set forth in the decision, the Plaintiff, Cindy Lee Garcia, was hired by an amateur filmmaker to play a minor role in what he described as an action film titled Desert Warrior. She was only given the four pages of the script in which her character appeared, and worked three and a half days on the set. That footage was eventually used in an anti-Islamic film titled Innocence of Muslims, in which at least some of Ms. Garcia's lines were dubbed over so that she appeared to ask whether Mohammed was a child molester. When the film was aired on Egyptian television and uploaded onto YouTube, protests ensued and fatwas were issued, including one calling for the death of Ms. Garcia.

You may well ask what this has to do with copyright law. The answer lies in the Digital Millennium Copyright Act (DMCA). After she began receiving death threats, Ms. Garcia began sending DMCA takedown notices to Google, asking that YouTube remove all clips of the movie on the ground that she owned the exclusive copyright in her performance and the clips on YouTube were uploaded without her consent. After YouTube refused her takedown requests, Ms. Garcia filed suit against Google and YouTube, seeking injunctive relief. In a brief, three-page decision, the District Court denied the request for a preliminary injunction (converted from a temporary restraining order) on the grounds that she was not likely to succeed on her copyright infringement claims, and that she had not demonstrated irreparable harm.

In a split decision, the Ninth Circuit reversed the District Court and issued an immediate injunction, requiring YouTube to take down all clips of the film and take reasonable measures to prevent future uploads. The majority, led by Judge Kozinski, first held that Ms. Garcia was likely to succeed on her copyright infringement claims. In doing so, the Court ruled that even in her minor role, Ms. Garcia likely owned an independent copyright in her acting performance as embodied in the film. This appears to be the first appellate case (if not the first case in any court) directly recognizing such a copyright. Having recognized the copyright, the majority then held that Ms. Garcia's performance was (1) not part of a work of joint authorship; (2) not a work for hire; and (3) not otherwise licensed, implicitly or explicitly, to the film's producer. These holdings, in turn, led to the conclusion that any copying, display, performance, or distribution of the part of the film containing her performance without Ms. Garcia's permission (including the use on YouTube) infringed her copyright.

The question of whether an actor's performance as embodied in a film is copyrightable is an interesting one and, to this point, has been unsettled and rarely litigated. The license and work for hire issues are more straightforward, but presented unusually in this case. In most professionally-produced films, the actors sign releases that typically include assignment/work-for-hire language. In this case, the defendants introduced evidence of a signed agreement and the plaintiff introduced evidence that the signature was forged. The Ninth Circuit, less than helpfully, did not state whether the agreement had any work for hire language in it, nor did the District Court even mention the agreement in its decision. In any event, the majority held that even if there had been a license or other agreement in place, it would have been void due to the producer/director's fraudulent inducement, i.e., lying to Ms. Garcia about the fundamental nature of the film.

Perhaps the most troubling part of both the majority and the dissent is the lack of in-depth analysis of the joint authorship issue, and in particular the relationship between that issue and the question of copyrightability. Both the majority and the dissent (and the District Court for that matter) take joint authorship off the table without any real analysis, based solely upon Ms. Garcia's claim that she, subjectively, did not intend to create a joint work. That claim does not seem credible, however. Assuming she made any original contribution to her performance, and further assuming that such contribution comprised copyrightable authorship, it defies logic and common sense to believe that she did not intend that for the performance to be merged into a joint work. The only reason for her performance was for it to be merged into the overall motion picture. Indeed, the fact that motion pictures typically embody merged copyrightable contributions from a number of authors is the very reason that motion pictures are expressly listed as one of the limited types of works that may be works made for hire even when created by non-employees.

The dissent seems to be on an interesting track when it analogizes the actor's performance in a film to that of a musical artist's performance embodied in a sound recording. The dissent then goes askew, however, by claiming that the musical artist's performance is not copyrightable. This is plainly wrong. It is well established that a sound recording is a joint work of authorship comprising the performance of (at least the featured) recording artists and the creative decisions made by the producers/engineers/mixers who impact the sound of the recording. These fundamental principles are even referenced in the legislative history of the Copyright Act, in connection with the addition of the sound recording copyright. Thus, it seems clear that if Ms. Garcia's performance was copyrightable, the Court should not have discarded the possibility of joint authorship so quickly based solely upon the plaintiff's implausible claim that she did not intend for her performance to be merged into the motion picture. It is important to note that a joint author (unless otherwise contractually prohibited) has the right to exploit and non-exclusively license the entire work without the permission of other joint authors and such licensed uses are not infringing. If a joint author could get around this principle merely by later disclaiming the subjective intent to create a joint work, it would throw this area of copyright law into chaos. Of course, the issue of joint authorship is complex and sometimes murky. Certainly, not everyone who contributes content to an aggregate work is a joint author. But neither should anyone who later disclaims the status be automatically deemed the owner of an independent copyright, without further analysis.

The Ninth Circuit's decision underscores the complex copyright issues involved in the production of motion pictures, and the need for carefully drafted agreements to minimize unintended consequences.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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