[co-author: Priya Srinivasan]
Copyright law generates plenty of discussion these days, but few copyright decisions have been as controversial as the Ninth Circuit's recent opinion in Garcia v. Google.1 The court's ruling – that a film actor owns an independent interest in her performance – has drawn widespread criticism from scholars, copyright lawyers, and industry representatives. Both Hollywood and Silicon Valley are watching the case closely for potential fallout.
This article discusses how the Ninth Circuit panel reached its decision and why the issue is important for both owners and users of copyrighted works. The panel got it wrong, in our view. This article analyzes the flaws in the court's reasoning and what lies ahead in the case.
In July 2011, Cindy Lee Garcia auditioned for and was cast in a film with the working title Desert Warrior. The film's writer and producer, Mark Basseley Youssef, told Garcia that the movie would be an adventure story set in the Arabian Desert two thousand years ago and that Garcia would play the mother of a young woman who had been promised in marriage to the movie's protagonist. After shooting and post-production, Youssef used the Desert Warrior footage to create a different film, which he titled Innocence of Muslims and posted on YouTube.
Garcia first saw Innocence of Muslims in July 2012 and, to her shock, discovered the film was anti-Islamic and that her performance had been partially dubbed over and distorted to make her character appear to insult Mohammed. Then, in September 2012, Youssef dubbed the film into Arabic and posted it on YouTube, sparking a firestorm of unrest around the world.
The Panel Decision: An Actor Owns an Independent Interest in Her Performance
Garcia sued Youssef and YouTube, alleging infringement of her dramatic performance in Desert Warrior. The district court denied Garcia's motion for a preliminary injunction, finding that Garcia was not likely to succeed on the merits of her copyright claim.2
A divided panel of the Ninth Circuit reversed and ordered YouTube to take down all copies of Innocence of Muslims.3 Clearly troubled that Garcia had been duped, the panel ruled that Garcia was likely to prove she owned an independent copyright interest in her performance.4 Even though Youssef wrote Garcia's Desert Warrior dialogue, managed all aspects of the production, and later dubbed over a portion of her scene, Garcia's performance of the script, including her body language, facial expression, and reactions to other actors and elements in the scene satisfied the originality requirement for copyright protection.5
The panel also held that Garcia exclusively owned her performance as she did not transfer her interest in writing to Youssef and her performance was not a "work made for hire."6 While Garcia gave Youssef an implied license to use her performance, he exceeded the bounds of that license by dubbing over her performance and incorporating it into Innocence of Muslims.7
Implications for Copyright Creators and Users
The panel gave the unfortunate Garcia the injunctive relief she sought. So is the decision all that bad? As a matter of copyright law, yes – if you, your company, or your clients create, distribute, or host copyrighted content. That is because the panel's pronouncement applies any time more than one person contributed to the creation of a copyrighted work.
Virtually every movie is the product of numerous contributions. Under the court's reasoning, any actor in a film – a star, a supporting actor, an extra who appears for a fleeting moment – potentially owns an independent interest in his or her performance. This is not limited to large-production movies. Amateur filmmakers, even individuals who shoot and upload short video clips on their smartphones, face claims for copying their subjects' "performances."
The effects are not limited to the film industry. Record companies rely on background singers, musicians, and sound editors to produce songs. Photographers rely on models, make-up artists, and stylists when they shoot images. The panel put no outer limit on what contributions are covered. Indeed, Garcia appeared for only five seconds in Innocence of Muslims. Any contribution suffices, as long as it meets the low standard for copyright protection. As a result, movie studios, record companies, and other copyright creators and owners could face many new claims from individuals for their contributions.
Potential liability extends down the distribution chain. Television networks, satellite and cable system operators, radio stations, and online services all play a role in the distribution of content to the public that implicates exclusive rights under the Copyright Act. For internet companies that host content uploaded by users, the repercussions are just as serious. Processing takedown notices from alleged copyright owners is already a daunting challenge; the panel's decision would let many more new claimants request takedown of their performances.
The panel suggested that there is no real problem because copyright interests in the "vast majority" of films are covered by contract, work for hire, or implied license doctrines.8 While many copyright producers obtain releases in the ordinary course, many more – including amateur filmmakers – do not. Even those who obtained written releases would face challenges to the terms contained in the agreements, as releases often concern a contributor's right of publicity, not copyright interest. And frequently, records simply cannot be found because of the passage of time.9
Legal Errors in the Panel's Decision
The panel made three key errors in reaching its result.
First, it erroneously found that Garcia was an "author" under the Copyright Act.
The Copyright Act protects "original works of authorship," and copyright ownership vests initially in the author or authors of a work.10 The statute, however, does not define what an "author" is. That Congress left to the courts. In the Ninth Circuit, a leading case on authorship in films is Aalmuhammed v. Lee.11 There, the plaintiff Jefri Aalmuhammed asked the court to declare that he was a co-author (and thus, co-owner) of the film Malcolm X. Aalmuhammed submitted evidence that he assisted Spike Lee in making the film – allegedly reviewing the shooting script and suggesting extensive script revisions, some of which were included in the released version.12 Accepting as true Aalmuhammed's allegations that he made an independently copyrightable contribution to Malcolm X, the court nevertheless ruled he was not an "author" for purposes of the copyright law.13 Authorship requires something more than just making a copyrighted contribution. It requires that the person "superintended the whole work" – namely, that he or she acted as the "master mind" of the work by exercising control over its creation.14 Aalmuhammed, who was a consultant, did not have superintendence of the film. Warner Brothers and Spike Lee did.15
The same analysis applies to Garcia. There is no evidence that she superintended or exercised any control over the making of the Desert Warrior footage. Her acting contributions did not make her an author.
Second, Garcia's performance is not a "work." She claims to own the copyright in her freestanding performance that became part of the film. But a motion picture is not divisible into separate and discrete fragments, each of which has its own copyright. It is the entire film that is protected by copyright. The U.S. Copyright Office confirmed this by refusing to register the copyright in Garcia's performance.16
Third, the panel compounded its errors by undertaking the wrong joint authorship analysis.
A "joint work" is a work prepared by two or more authors with the intention that their contributions be merged into inseparable and interdependent parts of a unitary whole.17 The question of whether Garcia and Youssef created a joint work is key, because a joint work is treated as a tenancy in common – meaning that each author owns an undivided share of the entire work with the full right to use and license rights in the work without the other joint author's permission. A joint author cannot infringe the rights of his co-author.18 If Garcia and Youssef are co-authors, then she has no claim against him (or the other defendants) for Youssef's posting of Innocence of Muslims online.
The Ninth Circuit panel focused on the question of whether Garcia and Youssef jointly authored Innocence of Muslims, finding they did not.19 That much seems clear. Joint authorship requires both parties to intend their contributions to be merged into a whole work, and it is hard to argue that Garcia, who was duped, ever intended to create Innocence of Muslims.
The panel, however, examined the wrong work. The Desert Warrior footage that Youssef shot is a copyrighted work in its own right, and Garcia and Youssef intended their contributions to be merged into a unitary whole in that footage. This much Garcia apparently admits.20 Even if one accepts the panel's flawed conclusion that Garcia is an author, Youssef, as co-owner of the Desert Warrior footage, was free to incorporate any part of it – including the scene in which Garcia appeared – into a derivative work like Innocence of Muslims and post that derivative work online.
On March 14, the court denied a request to rehear en banc the panel's decision to deny a stay of its prior order for YouTube to take down the Innocence of Muslims video. Separately, the appellees petitioned the court to rehear en banc the substantive copyright issues in the case. Garcia's response to the petition is due on April 3.
The panel's decision on Garcia's independent copyright interest is a prime candidate for en banc rehearing and reversal. The opinion conflicts with the Ninth Circuit's prior Aalmuhammed precedent on copyright authorship. And the court will be hard-pressed to look the other way given the implications for Hollywood and Silicon Valley, the premier industries in the Circuit.
Regardless of how the case turns out, the panel has done something quite remarkable. At a time when stakeholders find themselves at odds on a number of copyright policy debates, the panel created an issue on which large segments of the copyright owner and user communities can agree.
1 - Garcia v. Google, Inc., No. 12-57302 (9th Cir. Feb. 26, 2014).
2 - Garcia v. Nakoula, CV 12-08315-MWF (VBKx) (C.D. Cal. Nov. 30, 2012).
3 - The panel subsequently modified its order to require YouTube to take down only versions of Innocence of Muslims that contained Garcia's performance.
4 - Garcia v. Google, slip. op. at 6-8, 18.
5 - Id. at 7-8.
6 - Id. at 11-13.
7 - Id. at 13-15.
8 - Id. at 11.
9 - See Google Inc. and YouTube, LLC's Brief in Response to Suggestion of Rehearing, Mar. 12, 2014, at 36-37.
10 - 17 U.S.C. §§ 102(a), 201(a).
11 - 202 F.3d 1227 (9th Cir. 2000).
12 - Id. at 1229-31.
13 - Id. at 1232.
14 - Id. at 1232-34 (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61 (1884)).
15 - Id. at 1235.
16 - The Copyright Office refused to register Garcia's copyright after the panel issued its February 26, 2014 decision. See Letter from Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practices, U.S. Copyright Office, to M. Cris Armenta, Mar. 6, 2014.
17 - 17 U.S.C. § 101.
18 - A joint author owes the duty to account to his or her co-author a share of the profits earned from use or licensing of the work. Oddo v. Reis, 743 F.2d 630, 633 (9th Cir. 1984).
19 - Garcia v. Google, slip. op. at 6-7 & n.3.
20 - "[T]he district court failed to acknowledge that the performance Ms. Garcia delivered was for the 'adventure' story 'Desert Warrior,' not the propaganda Film [sic] 'Innocence of Muslims.'" Brief of Appellant Cindy Lee Garcia, Jan. 18, 2013, at 28. On the question of joint authorship, "Appellant never had a meeting of the minds with Defendant Yousseff, other than perhaps pertaining to 'Desert Warrior.'" Id. at 35 (emphasis added).