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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.