Prof. Randal C. Picker,
University of Chicago Law School
March 11, 2014

On Feb. 26, 2014, the Ninth Circuit released its opinion in Garcia v. Google and the copyright law professor community went ballistic.  I measure that by the volume of tweets that I saw in my twitter feed and then by the traffic on the law professor listservs – remember those? – devoted to the issue.  The case raises many interesting issues and it is something of a moving target as, on Feb. 28, the original panel of judges that heard the case modified its initial order in the case but also refused to suspend – stay – the operation of that order.  And on March 6, another Ninth Circuit judge asked the entire Ninth Circuit to reconsider the Feb. 28 refusal to grant the stay.  Briefs on that question are due on March 12.

Garcia is likely to be the subject of many blog posts and law review articles, but for this post, I want to try to hive off one key issue regarding what it means to have a copyrighted work and how we deal with possible fragmentation of works.  That will take us to some basic copyright questions.  How do we count authors for copyright?  How do we count works?  When do we have one work?  Two works?  Does the relationship between those works matter?  And do we have some things that are non-works, meaning that they don’t rise to the status of a work under the Copyright Act?  I will start with the core building blocks of the Copyright Act and then turn to Garcia.

Two individuals sit down at a computer and contemplate the blank screen before them.  Word by word, they create a text, perhaps a poem, perhaps an academic article or blog post.  They have almost certainly created a copyrighted work, that is, as Section 102(a) of the U.S. copyright statute puts it, an “original work[] of authorship fixed in any tangible medium of expression.”  Not only does this create a copyrighted work, but this is almost certainly a “joint work,” that is, “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.”  A unitary whole, meaning a single work.  Joint authorship status has a number of important consequences.  The duration of the copyright is keyed to the death of the last surviving author (Section 302(b)) and each of the authors to a joint work is a co-owner of a copyright in the work (Section 201(a)).

Contrast that drafting process with another one with two people, a blank screen and a computer.  In this version, one person sits at the keyboard and types words as dictated by the second person.  Again, we have a single work created and two people at the computer screen, but this will almost certainly not be a joint work.  The person dictating presumably doesn’t intend for the typist – or, to use the fancy word we use in copyright, the amanuensis – to be an author of the work.  And the courts have controlled the boundaries of the joint-work idea aggressively by focusing on the intent of one author to be the sole creator of the work.  Thomson v. Larson on the authorship of Rent is a prominent example of this phenomenon.

Now switch to a situation where we have more than one work.  The statute clearly contemplates two important classes of cases, namely those for collective works and for derivative works.  I will focus on the latter given their relevance to Garcia.  A “derivative work” is “a work based upon one or more preexisting works” and then the statute offers a list of examples “such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation.”  The statute then offers a more general formulation: “or any other form in which a work may be recast, transformed, or adapted.”  And then one more sentence: “A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work.’”

Before considering all of that, consider the consequences of derivative-work status.  Under Section 106(2), the copyright owner has the exclusive right to “prepare deviate works based upon the copyrighted work.”  Absent fair use or some other exclusion from copyright protection, the copyright owner controls the making of derivative works of her work.  But derivative works are themselves separately copyrightable (Section 103(a)), assuming that they meet the standards of Section 102(b), and the extension of the copyright in the derivative work “extends only to the material contributed by the author of such work” and arises independently of the copyright in the preexisting material.”

The joint-work and derivative-work notions offer some interesting contrasts.  In the joint-work case, we have a single “unitary whole” (as the statute puts it) where we have, say, two owners each with full authority to use the work.  In contrast, the derivative-work case contemplates a natural fragmentation.  We have two separate works – the original work and then the second, derivative work – but the rights in those two works are frequently held by separate authors (e.g., different authors for the Harry Potter books and the Harry Potter movies).  We rely on contracts to make those two works fit together intelligently.

We are ready for Garcia, but the facts are a little murky.  Cindy Lee Garcia was hired to work on a film.  An actor hired to work on a film may see only a small part of the script and that appears to be what happened here.  The majority opinion states that Garcia saw only four pages of the script – the pages attached to her complaint – and was paid $500 for a few days of filming.  She thought she was working on a film entitled “Desert Warrior” but instead her role appeared in a film uploaded to YouTube entitled “Innocence of Muslims.”  The court describes that movie as an anti-Islamic film and certainly the reaction of the Muslim community to the film matches that description.  Garcia received death threats based on the film and subsequently sought to have it removed from YouTube.

Copyright remedies contemplate limiting distribution of works; that is a powerful regime that puts in play cherished values of the sort captured in the First Amendment.  A big topic, but not today.  Garcia didn’t assert that she was a joint author of the film, as she didn’t want to be more attached to the film – just the opposite.  And joint authorship status wouldn’t have solved her problem anyhow, since one of the co-owners should have sufficient rights to post the film on YouTube.  Instead, Garcia argued that she held a copyright in a separate work that was embedded in the posted video and it was the infringement of that work that made appropriate a takedown of the video under Section 512.

This takes us back to the derivative-works idea.  As the majority opinion suggests, Garcia wants to argue that she created a separately copyrightable work based on the script, a work that would be a derivative work of the original script.  She was presumably given a license to do that, so her work didn’t infringe the script itself, but the purported failure of contracting and licensing on the other side meant that the producers of the YouTube video couldn’t use her work without her permission.

That gets us to the nub of the case, at least on this issue.  If Garcia had permission to create a derivative work of the script and the producers didn’t have the right to use her derivative work in the film, the producers have a problem.  The remedy for that is a different discussion but the problem at that point would be clear.

But what exactly is the derivative work that Garcia supposedly created?  After all, she was given a four-page script and she acted her role in that script.  For its analysis, the majority opinion draws upon the sacred texts of the acting world, Stanislavski’s An Actor Prepares and Meisner and Longwell, Sanford Meisner on Acting.  Neither had made it into a federal opinion before, but here they represent the notion that actors do much that goes beyond the bare text of a work.

I’ll assume that notion to be true in general and I haven’t seen Garcia’s work here.  But inventive acting choices aren’t the same thing as creating a work, and we know that some fraction of additions to works fall into the non-work category.  The majority opinion refers to the idea that “an actor’s performance, when fixed, is copyrightable,” but performance as such isn’t a copyright category.  While copyright owners are given exclusive control over the right to perform their works publicly (see Section 106(4)), the work is the thing being performed and the performance itself, as such, isn’t a work.

Of course, that isn’t to say that a work couldn’t be created spontaneously and fixed on video or that such a work couldn’t be created as a derivative work of a preexisting work.  The whole category of improvisation matches this idea of spontaneously created works but the fact that an improv performance is recorded – and therefore perhaps fixed for copyright purposes – doesn’t mean that there is a copyrightable work.  The recent case involving Hank Azaria and the disputed ownership over a fictional baseball announcer character is a good example of this (of two such characters in the case, one was found to be sufficiently fleshed out to be copyrightable while the second was not).

It is important to understand what Garcia does and doesn’t do.  The work-made-for-hire doctrine is an essential building block for the movie industry.  The copyright statute provides a structure in which Hollywood can operate, though presumably it needs to do so subject to the usual rules regarding fraud in contracting.  As applied to movies, the work-made-for-hire doctrine is designed to avoid the fragmentation of rights that might otherwise arise regarding a film, where any one person who did something in the making of the movie that gave rise to a separate work might be able to hold out and block the distribution of that movie.  And, even if the work-made-for-hire rules haven’t been implemented perfectly in a particular case, the usually generous rules regarding express or implied licenses to use copyrighted works will again make possible the distribution of the movie.

Garcia is unusual given the purported failure to follow work-made-for-hire rules and the allegation of fraud that in turn undercut the scope of the license given by Garcia to use her copyrighted work.  And Garcia is even more unusual in finding that, as the majority put it, Garcia was “likely to prevail” on her assertion that she had a claim of copyright on her performance within a movie.  Actors clearly can make choices beyond a script and those could give rise to copyrightable works, but it is difficult to tell from the face of the majority opinion in the Ninth Circuit precisely what those choices were for Garcia here.  There is just no real sense of detail in the opinion to give the reader a sense of those choices and how they created a separate work.