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.
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?
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.
In February 2015, our colleague and friend, partner Mark Fischer, passed away. We have made his blog posts available in honor of both his nuanced and wide-ranging knowledge of intellectual property, new media and entertainment law and of his entertaining style. Please read our tribute to Mark in the firm’s Alumni Spotlight publication and his obituary in the Boston Globe.