Ninth Circuit Finds Individual Performance in Film May Be Copyrightable


Recently in Garcia v. Google, 743 F.3d 1258 (9th Cir. 2013), the Ninth Circuit Court of Appeals granted an actress’ request to remove a provocative film from YouTube, because the film, in which she appeared for five seconds, allegedly infringed on her copyright interest in her individual performance.  The Ninth Circuit’s decision may place media, entertainment and technology companies at risk of increased litigation brought by minor contributors to larger works regarding their individual contributions.  The emergence of such claims could change the landscape of copyright law, or at least create uncertainty.  Consequently, the applicability of the decision in Garcia is likely to be challenged and the Ninth Circuit’s opinion provides many avenues for doing so.

Garcia’s Plight
In Garcia, plaintiff Cindy Lee Garcia was cast in a low budget amateur film tentatively titled “Desert Warrior.”  Garcia’s part was minor, was based on four pages of the entire script and involved three and a half days of filming, for which she was paid $500.  The director, Mark Bessley Youssef, represented to Garcia that the “Desert Warrior” film would be a fictional “adventure” set in ancient times.  However, after filming Garcia, Youssef took Garcia’s scene, dubbed over her lines and put it into a different movie titled “Innocence of Muslims.”  In that movie, Garcia is portrayed as accusing the historical religious figure, Mohammed, of being a child molester.  “Innocence of Muslims” was uploaded to YouTube, and sparked outrage and protests, and generated worldwide news coverage.  An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the film.  Garcia began receiving death threats for which she was forced to take security precautions.

Garcia served a complaint against Youssef, YouTube and Google asserting claims for copyright infringement.  Garcia alleged that she owned a copyright in her “individual performance” and Youssef violated her “copyright” when he used her performance in “Innocence of Muslims” without her permission.  Garcia filed eight takedown notices under the Digital Millenium Copyright Act (17 U.S.C. § 512), asserting that the postings infringed her copyright in her acting performance, but Google refused to remove the video from YouTube.  Garcia also applied for a temporary restraining order seeking the removal of the film from YouTube. 

The District Court for the Central District of California treated Garcia’s application for a temporary restraining order as a motion for a preliminary injunction and denied the application, finding that Garcia had, inter alia, failed to establish that she was likely to prevail on her claim for copyright infringement because she had granted Youssef an implied license in her performance. 

Ninth Circuit Opinion
In a split decision, the Ninth Circuit reversed the District Court’s decision to deny Garcia’s preliminary injunction, finding that the District Court abused its discretion when it considered Garcia’s request for relief.  In granting or denying a preliminary injunction, the District Court should have considered four factors: Garcia’s likelihood of success on her copyright infringement claim, the likelihood that irreparable harm would occur if the film was not removed from YouTube, the balance of equities and the public’s interest in removing the film from circulation.  The District Court found against Garcia on the first two factors and failed to consider the last two factors.

The Ninth Circuit determined that Garcia did have a copyright interest in her “independent performance,” finding that Garcia created a fixed artistic contribution to the film “Innocence of Muslims.”  The court rejected Google’s argument that Garcia’s contribution was not protectable because Youssef wrote the dialogue, directed the scene and managed the production.  Instead, the court held that Garcia’s embodiment of the part, which included her “body language, facial expression, and reactions to other actors and elements of a scene,” created a fixed copyright interest.  The court limited Garcia’s copyright interest to her own contribution, and not the entire scene, or underlying script.  Notably, the Ninth Circuit left open the question of whether every actor has a copyright in his or her performance within a movie, holding only that Garcia was likely to prevail on her claim.

Google argued that Garcia should be subject to the “work for hire” doctrine, which would vest Garcia’s performance in Youssef as his employee.  The Ninth Circuit disagreed, noting that Youssef was not a regular filmmaker and only hired Garcia for a specific, limited role for a limited time and extended no health or employment benefits to her.  In the absence of a written agreement, Garcia did not qualify as a traditional employee.

Google’s argument that Garcia granted Youssef an implied license in her performance, which provided him with permission to use her performance in “Innocence of Muslims,” was also rejected by the Ninth Circuit.  The court found that Garcia did grant Youssef an implied license, but that Youssef exceeded the bounds of that license when he lied to Garcia about the type of movie he was filming, and inserted an edited version of Garcia’s performance in an unrelated and controversial film.  The court held that the film was not meant to entertain and was so radically different from what Garcia expected, that Youssef’s inclusion of Garcia’s performance in “Innocence of Muslims” was an unauthorized, infringing use.  As a result, the court held that Garcia was likely to prevail on her claim for copyright infringement.

With regard to establishing irreparable harm, the Ninth Circuit found that Garcia had adequately established ongoing, credible threats for which she had to take security precautions, including moving to a new home.  The Ninth Circuit also rejected the District Court’s reliance on the five-month delay between the posting of “Innocence of Muslims” on YouTube and Garcia’s filing for removal of the posting, finding that Garcia took legal action as soon as the film generated worldwide attention and she received death threats.  The court also found that Google’s inclusion of the film on YouTube led to the threats against Garcia, and the relief Garcia requested – removal of the film from YouTube – would diminish those threats.

Finally, the Ninth Circuit rejected Google’s argument that a preliminary injunction requiring Google to remove the film from YouTube would result in an unconstitutional prior restraint of speech, finding that the “First Amendment doesn’t protect copyright infringement.”

Limited Impact
The Garcia decision contains several components that could reduce its applicability outside of the unique factual situation in which it was rendered.  Arguably, Garcia’s influence on future cases could be limited because Garcia’s copyright infringement claim has not yet been adjudicated on the merits, but rather the court, at this preliminary injunction stage, has determined that Garcia is likely to prevail on the merits. 

Notably, the court’s opinion does not necessarily comport with established precedent in the Ninth Circuit.  The lengthy dissent in Garcia found as much when it determined that the majority failed to consider authorship, which is a fundamental requirement under the Copyright Act as set forth by the Ninth Circuit in Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000) (finding that plaintiff was not a co-author with Spike Lee of the film “Malcolm X” where plaintiff reviewed and revised script, and edited scenes, but lacked control over the creation of the work).  Specifically, the dissent found that the majority read the “authorship requirement out of the Copyright Act and the Constitution.”  Garcia’s potential conflict with Ninth Circuit precedent makes it ripe for further judicial review.

Importantly, the Ninth Circuit may have created a mechanism by which anyone who contributes to the creation of a work may seek to establish a copyright interest in his or her portion of that work.  As it stands, the decision could potentially be used by actors, writers and cameramen and women in movies to support an assertion of ownership over their contributions and potentially influence the direction of the work.  However, the reach of the decision could extend beyond filmmaking.  Songwriters, backup singers and producers in music; computer programmers and graphic artists working on the latest video game or mobile application; writers, photographers and editors of books and magazines, as well as others could find support in Garcia to assert a copyright interest in their contributions.  The Ninth Circuit in Garcia recognized this possibility, but determined that any fear that the many contributors to a film will assert individual copyright interests is unlikely to occur because the “vast majority of films are covered by contract, the work for hire doctrine or implied licenses.”

Finally, the Garcia decision could be used by others to chill the public’s exercise of its First Amendment rights on digital media such as YouTube and Pinterest.  The Ninth Circuit majority ordered the removal of the film, despite only finding that Garcia likely had a copyright interest in her performance.  The decision could set the stage for others without established copyrights in a work to control or limit the propagation of news, information or creative works through the courts.

Up in the Air
The decision in Garcia has been decried by copyright and First Amendment experts, and entertainment and media companies everywhere.  Today, Google has yet to fully comply with the court’s order granting Garcia’s injunction, and Garcia has moved the court to hold Google in contempt. Google has moved for an en banc rehearing of the decision.  Google’s motion is pending before the court. 

While the ultimate impact of Garcia has yet to be determined, media, entertainment and technology companies can still take steps to counter its potential impact.  As the court in Garcia suggests, companies can avoid many of the problems presented by the Garcia decision by entering into agreements and contracts that clearly lay out the copyright interests of the parties, the use authorized by the contributors, and any limitations on the use and transfer of those contributions.  Doing so will allow companies to establish the boundaries of their use of a contributor’s work, and allow contributors to fully understand the content creator’s intention with their works.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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