Garcia v. Google: The Recognition of an Independent Copyright in Actors’ Performances and Its Impact on the Film Industry
In an interesting opinion issued by the Judge Kozinski of the 9th Circuit on Feb. 26th, the court issued a preliminary injunction forcing YouTube to remove a video posting and opened the door for actors to assert an independent copyright interest in their performances.
The video in question was titled “Innocence of Muslims.” The 13 minute film was posted on YouTube and later aired on Egyptian television. It was not well-received by the Muslim community and an Egyptian cleric even issued a fatwa, demanding the killing of everyone involved in the film.
Cindy Lee Garcia, an actress, made a 5 second appearance in the film. When she agreed to perform, Garcia was under the belief that the film would have an entirely different subject matter. She was told the working title was “Desert Warrior.” She was hired by Mark Basseley Youssef, the writer and producer, and paid around $500 for 3.5 days of filming.
In the released version of the film, Garcia’s voice was dubbed over and it appears as if she is saying “Is your Mohammed a child molester?” Based on this appearance, she began receiving a number of death threats. She was forced to implement various security measures, including moving to a new home and relocating her business.
Garcia filed 8 takedown notices under the Digital Millennium Copyright Act, all of which were refused by Google, the owner of YouTube. (DMCA takedown notices must be issued by the copyright holder of a work.) Garcia then filed for a temporary restraining order, which the district court treated as a motion for a preliminary injunction. The injunction was rejected by the district court which believed that she had unnecessarily delayed in bringing the action (she filed her complaint 5 months after the film was originally posted but immediately after beginning to receive death threats) and failed to demonstrate that the requested relief would prevent the alleged harm. It also stated that she had granted Youssef an implied license to use her performance and would therefore, be unlikely to succeed on the merits.
The 9th Circuit reversed the district court’s ruling and considered whether Garcia had an independent copyright interest in her performance, whether the performance was a work made for hire and whether an implied license existed.
In determining if an independent copyright interest existed, the court analyzed several factors. Was this a work of joint authorship? If so, any of the joint authors would have the right to use and exploit the work without the approval of the other joint authors and Garcia’s complaint would fail. She argued, and the court agreed, that she did not intend for her performance to be a work of joint authorship. Intent is a requirement, so the court stated this was clearly not a work of joint authorship.
Next, it contemplated whether or not there could be a protectable copyright interest in just her performance. The fixation requirement had been met, so she needed only to show that her performance contained a minimal degree of creativity in order to be protectable. Google argued that the dialog was written by the director who also managed all aspects of production and chose to dub over her voice, so the performance belonged to the director and not the actor. But, the court described acting as an “embodiment [that] includes body language, facial expressions and reactions to other actors and elements of the scene” and found that Garcia had met the threshold for creativity and protectability. (They judges are careful to point out that they “need not and do not decide whether every actor has a copyright in his performance within a movie,” but felt that Garcia was likely to prevail under the circumstances.)
If the performance was deemed to be a work made for hire, all rights in Garcia’s performance would vest in the director. Works made for hire are completed by an employee acting with the scope of his/her employment or an independent contractor that has transferred its interests in writing. Several factors were analyzed, but the court felt the evidence weighed in favor of Garcia and a finding that this performance was not a work made for hire. She was hired for only this specific part with no proof of a potentially ongoing relationship. She did not receive health or employment benefits. There was no written agreement. Youssef was not in the “regular business of making films.” And Garcia only worked for 3.5 days.
Finally, the court discussed whether or not an implied license existed between the parties which would give all copyright rights to the director, and not the actor. The court pointed out that in most actor/director relationships a non-exclusive implied license exists when a work is created at the director’s request and handed over with the actor knowing that the director intends to copy and distribute it. Under the circumstances of this case, the court recognizes that an implied license is present because Garcia auditioned, got paid for her performance and could reasonably foresee that the film would be released. However, it focused on how Youssef exceeded this license by leading her to believe that she was involved in one project and drastically changing it to another. It explains that this is a very rare circumstance, but Youssef’s actions were fraudulent and sufficient to void any agreement that was present between the parties.
Google is clearly unhappy with the outcome in this case and threatens continued action. The typical takedown message that appears on YouTube videos that have been subject to DMCA claims has been altered. It reads: “This video is no longer available due to a copyright claim by an actress over her 5-second appearance in the video. A U.S. court has ordered Google to remove the video. We strongly disagree with this copyright ruling and will fight it. Sorry about that.”
Critics are disapproving of this decision and feel that it will most likely be problematic. Is this a limited holding or one that will be broadly construed by actors to negatively affect the process of film distribution? Will certain sectors of the industry be potentially more affected than others, e.g. adult films or other areas where actor’s remorse is common? What implications will this have on the freedom of speech?
For more information:
- Digital Millennium Copyright Act, 17 U.S.C. §512