Prof. Jane C. Ginsburg, Columbia University School of Law
December 1, 2014

The Ninth Circuit recently agreed to hear Garcia v. Google (original opinion 2-27-14, amended 7-11-14)1 en banc, thus vacating a controversial decision by Judge Alex Kozinski recognizing a film actor’s copyright ownership of her performance in the film.  The facts of the case were extreme, as were the cries, were the decision to stand, of devastating consequences to the Internet and film industries (thus making bedfellows of these frequent antagonists).  After summarizing the facts and the holdings, I will consider the implications of a ruling that actors who perform in audiovisual works are the authors of their contributions, or are co-authors of the audiovisual work that incorporates their performances.

Facts: Plaintiff Cindy Lee Garcia responded to casting call for a “desert epic” titled “Desert Warrior.”  The actual film became the notorious anti-Islamic vehicle “The Innocence of Muslims.”  The producer, Mark Youssef, dubbed over Garcia’s performance (totaling five seconds in the final version of the film), making the character played by Garcia inquire whether Mohammed was a child molester.  For her unwitting participation, Garcia received death threats and sought without success to have the film removed from YouTube.  Since the takedown regime established by the Digital Millennium Copyright Act covers website postings that allegedly infringe the requester’s copyright, but not those that put the requester’s life at risk (to the uninitiated it might seem that Congress values copyright over life and limb), Garcia cast herself as the author and copyright owner of her performance in the film.  When Google nonetheless refused to remove the videos, Garcia sought injunctive relief, which the district court denied.  A divided panel of the Ninth Circuit reversed, holding that Garcia’s performance was independently copyrightable because it met minimum standards of creativity; that, in the absence of the requisite signed writing, her performance was not a work for hire; and that the scope of any implied license Garcia had granted Youssef by acting in his film was, if not wholly vitiated by his fraud, at least vastly exceeded.  Noting that “[i]t is not irrelevant that the harm Garcia complains of is death or serious bodily harm,” the court further held that Garcia had established irreparable harm sufficient to warrant issuance of an injunction.

Are audiovisual performers “authors” or “co-authors”?  The panel found that Garcia’s performance crossed the minimum threshold of originality to qualify as a work in its own right, of which she was the author and copyright owner. The nature of the authorship, the court stressed, is very limited, covering neither the script nor the cinematography, but only Garcia’s interpretation.  (An interpretation whose range narrows even further in light not only of its extremely brief duration, but also of the substitution of different words spoken by a different performer.)  In its amended opinion, the majority acknowledged that the district court on remand could determine that Garcia did not have a copyright interest.  The panel did not articulate the grounds for such a finding, but taking account of the performance’s duration and debt to underlying elements that Garcia did not author, the district court might well rule Garcia’s contribution de minimis.  Nonetheless, the panel decision stands for the proposition that audiovisual performances could be the subject matter of individual copyrights owned by the individual actor.

But separating an actor’s performance from the rest of the film seems an artificial exercise; perhaps it would make more sense to analyze authorship of the performance as a contribution to a joint work.  The Copyright Act’s definition of 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,” would seem to fit the bill.  Unfortunately, (dubious) caselaw in the Ninth Circuit reserves the joint author characterization to participants who “mastermind” and control the creation of the work.2  This standard effectively excludes all but the most contractually powerful actors (it also would seem to exclude all scriptwriters and directors who lack “final cut” control over the finished product3).  In another questionable gloss on the statute, caselaw in the Second Circuit requires the contributions of each putative co-author to be independently copyrightable.4  Judge Posner came closest to the mark when he explained that other circuits’ glosses served as proxies for intent jointly to create a work, and that where the requisite intent is shown, it should not matter whether each contribution could sustain its own copyright.5  Applying the Copyright Act as written, then, a performance is a contribution to an audiovisual work, and the actor is a joint author of the film that incorporates her performance (assuming her contribution is not de minimis).

But, one might rejoin, many people contribute to an audiovisual work; does it follow that every sound technician, hairdresser, “gaffer,” etc. is a co-author?  Two responses: First, as we will see, these participants, if employees of the film producers, will not be statutory “authors.”  Second, the nature of the contribution should come within the ambit of the subject matter the law has identified as embraced within copyright.  In the case of performances, the Copyright Act clearly brings audio performances within the scope of the copyright in a sound recording.  It defines sound recordings as “works that result from the fixation of a series of musical, spoken, or other sounds” (17 U.S.C. Sec. 101); as the accompanying House Report makes clear, the “sounds” are the performances of the musicians: “The copyrightable elements in a sound recording will usually … involve ‘authorship’ … on the part of the performers whose performance is captured….”6  If the performer of sounds produces the “copyrightable elements” comprised within a sound recording, it is hard to see why the performer of both sounds and physical gestures does not supply “copyrightable elements” in an audiovisual work.  Indeed, while the Copyright Office rejected Garcia’s attempt to register a copyright in her performance, the Office does not exclude audiovisual performances per se.  On the contrary, the current draft of its “Compendium of Copyright Office Practices” contains a chapter on “works of the performing arts,” and a subsection on “Elements of Motion Picture Authorship,” which includes “Performance.”  Subsection 808.4[D] defines “Performance”: “Performance refers to the acting, speaking, singing, or dancing in a motion picture.”7

In addition, the United States has signed (but not yet ratified) the Beijing Treaty on Audiovisual Performances (WIPO 2012), which obliges member states to recognize performers’ exclusive rights to fix their performances and to authorize the reproduction, distribution, and on-demand making available of their fixed performances (Arts. 6-10).  The treaty defines “performers” as “actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore” (Art. 2(a)).  A member state may “provide in its national law that once a performer has consented to fixation of his or her performance in an audiovisual fixation, the exclusive rights of authorization provided for in Articles 7 to 11 of this Treaty shall be owned or exercised by or transferred to the producer of such audiovisual fixation subject to any contract to the contrary between the performer and the producer of the audiovisual fixation as determined by the national law” (Art. 12(1)).  If the United States ratifies the Beijing Treaty, it will be necessary either to interpret the present Copyright Act to extend to the broadly defined class of “performers” the relevant exclusive rights (subject to transfer to the producer upon authorized fixation), or to enact equivalent copyright or neighboring rights protections.8

Not all audiovisual performers are “authors,” nor are all “owners”: The universe of performers who would have been affected by the panel decision is in fact very small.  As Judge Kozinski’s opinion observes, any actors who are the film producer’s employees (this group would include members of SAG/AFTRA, the screen actors’ guild/union) create “works made for hire,” whose statutory “author” and copyright owner is the producer.  In addition, the performer, whether the sole author of her performance, or a joint author of the audiovisual work, can contractually transfer her entire copyright interest; for the transfer to be effective, the copyright act requires a signed writing, 17 U.S.C. Sec. 204(a).  As a result, an actor who performs in most professionally produced films is likely to be divested of whatever copyright interest she might have had (the same result would apply were the United States to ratify the Beijing Treaty).

But producers of amateur films, including (especially?) those posted to YouTube and similar platforms, may not be the actors’ employers (indeed, the actors may not be professionals, either), and may be unaware of the need for written contracts.  Even then, Ninth Circuit caselaw holds that willing participation in the film may constitute an implied non-exclusive license to incorporate the contribution in the film.9  It is questionable, however, whether the producer’s implied license confers the right to authorize third parties, e.g., UGC platforms, to disseminate the film.10  The limitations of implied licenses illustrate why co-authorship of audiovisual works, rather than sole authorship of individual performances, better reconciles the interests of performers and producers, particularly in the universe of non-professionally produced audiovisual works that may populate UGC sites.  If the actor intends to merge his performance with the other contributions to the film (other performances, screenplay, dialogue, music, film direction, etc.), and he has not assigned his copyright interest in writing, then he is a tenant in common of the resulting joint work.  In the absence of a contract to the contrary, any co-author may exploit the work on a non-exclusive basis, e.g., by posting to UGC platforms, without needing to obtain the other co-authors’ permission, subject to a duty to account to the other co-authors.

As a result, if the film director or producer (assuming the latter has contributed minimal authorship) posts to YouTube on a non-exclusive basis, disgruntled actors have no basis to demand the removal of the posting because the take-down notice must include “A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law” 17 U.S.C. Sec. 512(c)(3)(A)(v).  If a co-author (potentially including the producer) originated the UGC posting, then the disclosure of the material will have been “authorized by [a] copyright owner,” and the would-be sender of the takedown notice would lack the requisite good-faith belief.  (Moreover, any of the disgruntled actors remain free for the same reason to post to other platforms.)  If the actors cannot prevent the posting, but have a claim to share in any advertising revenue the producer reaps, the next question is how that revenue should be divided.  One approach would be to allocate their shares evenly among the total number of contributors.  Alternatively, albeit more administratively burdensome, the division might reflect each participant’s proportional contribution.11  Producers can protect themselves by obtaining the requisite signed writings, preferably from the outset of their productions.

Thus, the class of actors that the Garcia panel decision ultimately embraces reduces to those whose agreement to participate (a fact that goes both to implied license and to intent to merge contributions into an inseparable whole) was obtained by fraud or otherwise vitiated.12  The same result would apply under the Beijing Treaty: A performer who agrees to the fixation of her performance in the audiovisual work may be deemed to have transferred her economic rights of exploitation, but the transfer turns on her consent to the initial fixation.  If the producer’s fraud cancels out that consent, then the performer retains her rights.13  Because the vitiation of consent goes to participation vel non, and not to artistic differences between performer and producer with regard to a contribution intentionally performed, the group of the unconsenting is not likely to be significant.  As a result, the Ninth Circuit en banc should forebear from overreaction against the panel’s narrow ruling, particularly lest a “corrective” that rejects any authorship status for audiovisual performers risk disabling the United States from ratifying the Beijing Treaty without substantive congressional intervention.  That outcome would disserve U.S. audiovisual performers both at home and abroad.