United States: Whose Motion Picture Is It Anyway -- Does The Actress Own The Motion Picture?

It was the casting call that would make her name known, but it didn't bring the kind of fame for which she was hoping.  In July 2011, Cindy Lee Garcia landed a minor role in a motion picture that was to be called "Desert Warrior." She received four pages of the script, performed her role, and was paid $500 for three days of acting. Little did she know, this brief performance would make her the center of an uproar in the Islamic world.

When she accepted the role, Garcia believed she would be playing a concerned mother in an "historical Arabian Desert adventure film." As it turned out, "Desert Warrior" was not realized as a full-length feature motion picture. Instead Garcia's performance appeared in "Innocence of Muslims," a 14-minute  film depicting Mohammad in a generally unfavorable light. The producer redubbed her original lines with anti-Islamic content. Garcia learned about the real production about a year after the filming, when she began getting calls from reporters. She heard President Obama say that the film had contributed to the deaths of Americans due to violence in Benghazi, Libya.

Garcia lost her day job, was bombarded with death threats, and felt unsafe traveling. So she turned to copyright law to try to limit distribution of the film. She filed  eight Digital Millennium Copyright Act ("DMCA") takedown notices with Google, which owns YouTube. Google refused to remove the video, so Garcia filed for a temporary restraining order ("TRO"). Her claim? Copyright infringement. The district court denied the request for the TRO, ruling that Garcia was not likely to prevail in her copyright claim because she had granted the producer an implied license to use her performance in the film.

The Ninth Circuit Court of Appeals reversed, in a fascinating and important decision on February 26, 2014. The Circuit Court  ordered Google to "take down all copies of 'Innocence of Muslims' from YouTube and any other platforms within its control and to take all reasonable steps to prevent further uploads."

To reach this result, the court made an apparently unprecedented finding: that the actress had an independent copyright interest in the section of the motion picture representing her fleeting creative contribution. Chief Judge Kozinski determined that (1) Garcia was not a joint author of the whole film; (2) Garcia made a severable creative contribution that gave her copyrights over her performance; (3) Garcia did not transfer her copyrights under the work for hire doctrine; and (4) Garcia granted the producer an implied license to use her performance in an adventure film, and the producer's ultimate use of her performance in "Innocence of Muslims" exceeded the license. Let's take a closer look at the case.

Joint Authorship

Typically, copyright law treats a motion picture as a "joint work" because of the many contributors involved in its production.  Federal law defines a "joint work" as "a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." This notion of multiple authors working together creatively on an inseparable product does not readily fit Garcia's role. This fact is one reason that work-made-for-hire can be so appropriate in the motion picture industry because, if properly documented, the employer is the "author" and owns the entire motion picture outright. Judge Kozinski wrote, "Garcia argue[d] that she never intended her performance to be part of a joint work, and under our precedent she doesn't qualify as a joint author." Garcia did, of course, intend for her performance to be part of some jointly-made work (i.e., the original motion picture), but not this particular work (i.e., the short film).

Copyright Interest in Her Isolated Performance

Perhaps the most remarkable aspect of this case is the novel finding that an actress can have a severable, separate copyright interest in her motion picture performance. Although not an author of "Innocence of Muslims," the court found that Garcia had some residual rights over her creative contribution as "fixed" in the film. Perhaps she could have been more properly considered a joint author of the whole, with non-exclusive rights in the entire film – but under that theory she presumably could not have stopped distribution of the film because only an exclusive owner has that power over a copyrighted work like a motion picture. Because acting goes beyond merely reading a script written by someone else, the court reasoned, Garcia possessed the requisite "minimal creative spark" to assert a copyright in what she added to the pre-existing material.

This logic has created a stir among moviemakers.  Do extras own their split-second appearances in the background? Is that enough of a spark?  What about the countless other ways people contribute artistically, ways that are eventually "fixed" in a motion picture and can often be isolated to specific segments of a motion picture?

The Dissent

In a dissenting opinion, Judge Randy Smith submitted that it was not clear that Garcia would likely succeed on her copyright claim because (i) Garcia's performance was not a work, (ii) Garcia was not an author of the clip, and (iii) Garcia's performance was not fixed. To the first point, he posited that acting resembles the "procedure" or "process" by which an original work is performed.  Then he pointed out the majority failed to analyze whether Garcia was an author. He concluded that Garcia could not be an author because she was neither the "person with creative control" nor the "originator of ideas or concepts." This interpretation could, perhaps be plausible here where Garcia's contribution was minimal, however it is not entirely satisfying. Can an actor or actress really never be the primary creator of a performance, even if given broad latitude to interpret or improvise? 

The Practical Takeaway

If you're in the business of producing motion pictures, TV shows, or other collaborative works, it's always been a very good idea to have all employees and contractors sign a written agreement containing explicit "work made for hire" language (or copyright assignments where appropriate). This case will likely heighten industry requirements that all creative participants in a motion picture sign work-for-hire agreements. In other words, having a work-for-hire provision used to be very good advice. Post-Garcia this language may well be necessary to safeguard a producer's rights. Just as the famous Bee Gees copyright infringement case over "How Deep is Your Love?" changed the music business by restricting the acceptance of unsolicited music demos, Garcia will undoubtedly impact motion picture industry practice.

(Note that under California Labor Code section 3351.5(c), there are special labor and employment issues relating to using work-for-hire arrangements, but that is a separate discussion from the Garcia copyright issues.)

What to think about the Garcia case?

Remember the circumstances of this case are idiosyncratic: fraud, a non-commercial purpose, hate speech, death threats, and international violence.  The holding might be limited, but I believe the ramifications are deeper.  The majority's opinion  seems to elevate performance into a significant right. The dissent seems to blur the nuances of joint works and co-authorship. Both the majority and the dissent are susceptible to further scrutiny. Google has asked the court to hear the case again "en banc," which would be before eleven judges instead of three. Throughout the suit, Garcia has had a pending application to register her performance with the Copyright Office. On March 6, 2014, the Office officially rejected her application and stated that "the longstanding practices do not allow a copyright claim by an individual actor or actress." The judges have yet to vote whether the court will rehear the injunction.  Some lawyers  are fond of saying that "hard cases make bad law." I'm not sure the case was initially all that hard. So here, at least, difficult facts have made uncertain law. Undoubtedly there will be more to the story in this case or in cases yet to come.

Mark A. Fischer is a partner at Duane Morris LLP. His law practice is focused on solving problems and making deals for innovative companies, institutions and individuals. Mr. Fischer's clients are typically in the creative industries such as new media, social networking, music, interactive entertainment, information technology, software, television, publishing and toys. He has particular experience in U.S. and international copyright, entertainment, licensing, celebrity representation, copyright litigation, arbitration, open source, privacy and trademarks. He has a growing client base in the biotechnology and medical industries.

This article is for general information and does not include full legal analysis of the matters presented. It should not be construed or relied upon as legal advice or legal opinion on any specific facts or circumstances. The description of the results of any specific case or transaction contained herein does not mean or suggest that similar results can or could be obtained in any other matter. Each legal matter should be considered to be unique and subject to varying results. The invitation to contact the authors or attorneys in our firm is not a solicitation to provide professional services and should not be construed as a statement as to any availability to perform legal services in any jurisdiction in which such attorney is not permitted to practice.

Duane Morris LLP, a full-service law firm with more than 700 attorneys in 24 offices in the United States and internationally, offers innovative solutions to the legal and business challenges presented by today's evolving global markets. Duane Morris LLP, a full-service law firm with more than 700 attorneys in 24 offices in the United States and internationally, offers innovative solutions to the legal and business challenges presented by today's evolving global markets. The Duane Morris Institute provides training workshops for HR professionals, in-house counsel, benefits administrators and senior managers.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions