Prof. Randal C. Picker, University of Chicago Law School
June 5, 2015

On May 18, the U.S. Court of Appeals for the Ninth Circuit issued its eagerly awaited en banc opinion in Garcia v. Google.  More than a year ago, in a 2-to-1 decision, the Ninth Circuit had found that Garcia had a sufficient likelihood of winning her copyright claim to justify the issuance of an injunction requiring Google to remove the offending work from YouTube.  (My prior post on that opinion, Garcia v. Google: Stanislavski and Meisner Pay a Visit to Copyright, is here.)  The original Ninth Circuit opinion set off a firestorm in the copyright world.  The new en banc opinion overturns that result and restores order in the copyright world.

Or not.  A little background and then a little analysis.  Cindy Garcia was hired to act in a film that she was told was named Desert Warrior.  She was given a few pages of the script and those included her two lines in the movie: “Is George crazy?  Our daughter is but a child?”  Garcia didn’t see the rest of the script and was told to deliver her lines and “seem concerned.”  Garcia was paid $500 for that, and while she may have signed a contract in connection with the role, it plays no role in the case.

The original majority opinion took us into the world of acting and the question of whether an actor could have a copyright in her performance in the movie.  What does an actor add beyond what is already present in the script?  Most actors, unsurprisingly, would say quite a bit, and it was the possibility that that creation might be separately copyrightable if it otherwise met the standards of copyright that generated so much interest in the original majority opinion.

The facts in Garcia itself are noteworthy in this regard.  She only appeared in the film for five seconds, and much more importantly, she didn’t appear in the film that she thought that she was acting in.  Garcia’s performance was used in a quite different film called Innocence of Muslims.  The lines she delivered were not used in the film but instead her performance was included for five seconds with a separate line of dialogue dubbed over it.  The film generated enormous controversy and ultimately resulted in a fatwa being delivered against everyone connected with the film, hence why Garcia was looking for a tool to block distribution of the film.

The new en banc majority opinion raises a number of copyright questions.  Part of its analysis looks at the question of fixation.  Recall that the core of U.S. copyright law is that a copyright arises when an original work of authorship is fixed in a tangible medium of expression.  The work must be “fixed” or there is no copyright in it.  Performers who make up works on the spot – jazz players or comedy improvisers – don’t get a copyright in those works if they aren’t fixed.

In this case, putting to one side the question of copyrightability of acting performances, the en banc majority notes that “[h]owever one might characterize Garcia’s performance, she played no role in fixation.”  Which is to say, I assume, that Garcia didn’t operate the camera that recorded her performance.  The next step for the majority is that given that Garcia never agreed to appear in the film that was distributed, Garcia couldn’t claim that her work was fixed “’by or under [her] authority.’”  That language comes from the definition of “fixed” in the Copyright Act as being done “by or under the authority of the author.”

This is something of a quagmire.  Unlike a would-be poet with a pen and a piece of paper, making a film typically requires many hands working simultaneously.  The en banc majority pays a great deal of attention to this in its opinion when it talks about the fear of copyright splintering and the possibility of a “copyright of thousands.”  Of course, copyright law isn’t stupid – or at least not here – and it recognizes this problem and contemplates that all of that will be solved through the work-made-for-hire doctrine.  With proper contracts, these potential problems are side-stepped.

But that doesn’t seem to be what happened here, hence the need to sort through copyright fundamentals, so return to the question of fixation.  Garcia would certainly say – or certainly should say – that her performance was recorded with her permission.  She voluntarily stood in front of the camera and performed.  (How that fixation was used is a different question and really does raise a question of contract.  You see this with some frequency in stock photo situations, where a broad right of use of the photo results in some unhappy subjects of photos.)

Garcia’s performance and the copyright interests of, say, the director and the camera operator would all arise simultaneously and would seem most naturally situated as a “joint work” (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”).  I would treat the filmed segment of Garcia’s performance as just that, though that wouldn’t solve Garcia’s problem, since each of the authors of a joint work can use the work (there is a rule about accounting for profits, but not really the focus here).

Garcia disclaimed joint ownership of the entire film and that seems right on the facts given that she only participated in the creation of a brief film clip.  And to return to the language of fixation, the work associated with that clip would be fixed under Garcia’s authority (as well as that of the camera operator and, say, the director).  And that result would obtain even without contracts, or at least contracts satisfying the work-made-for-hire doctrine.  This instead is about the intentions of the authors creating the joint work.

And for me at least, that would be separate from questions about the creation of the rest of the film.  Judge Kozinski, who wrote the original majority opinion and now dissents from the en banc opinion, sees the en banc majority as creating a world in which Garcia’s performance, the instant it is filmed, somehow sits suspended in some pre-copyright state.  He says that can’t be right – and I think that he is right about that – but my suggestion of a joint work for the filmed segment solves that, I think.

The point of this is to not conflate the question of Garcia’s permission for recording her performance with the question of how the performance can be used.  The former goes to the fixation question, but the latter should not.  Garcia can be treated as a joint fixer (and author) for copyright purposes without also having the right to control how the work is used.  Indeed, that flows reasonably naturally from the joint work structure, for better or worse.

I have chipped off a little piece of Garcia and I am sure that others will come back to it, perhaps in later blog posts.  There is so much more here, about the role of the Copyright Office as an expert agency (but yet no citation in the opinion to Chevron) and of course the First Amendment issues – and be sure to read Judge Reinhardt’s opinion on those.

A really rich set of facts to examine some important copyright fundamentals.

Comments From Our Readers

E. Leonard Rubin:

Under Judge Kozinski’s theory (with which you seem to agree, at least in part), things may not "sit suspended in some pre-copyright state." But his opinion fails to cover ineligible works. Ms. Garcia’s appearance was admittedly for only five seconds, and under Sec. 101, fixation must be "for a period of more than transitory duration." Further ignored is the question of originality; if an actor is told to look quizzical and deliver a line written by someone else, while the actor’s quizzical look may be somewhat original with the actor, it must be general enough to be perceived by an audience as quizzical. Is there sufficient originality in the common expression to satisfy the originality requirement? What about the director’s contribution to the actor’s performance because of the "quizzical" instructions? And isn’t it a bit glib to suggest that in all filming situations, a producer will have a work-made-for-hire agreement signed, so this is not a real problem?

In rehearsals for a film or theatrical performance, it is common for an actor to say, "I’d like to change this line, because I don’t think my character would say it the way it was written." The playwright, often in attendance at rehearsals, sometimes will say, "You’re right; go ahead with the change." Judge Kozinski would probably say, "In any authorized fixation of that performance, that actor has a copyright in her contribution." Does that further the purpose of copyright? Is there really authorship? The basic structure of the character was created by the playwright; why should an actor have any sort of voice in, or be able to deal with her interest in the copyright of, that play?