The Debate About Actors' Ownership of Film Roles

The two-judge majority was motivated in part by the extraordinary circumstances of the suit: The actress had been duped into performing in the film Innocence of Muslims and a fatwa was issued by an Egyptian cleric calling for the killing of everyone involved in it. This is the same film that sparked protests and violence when broadcast on Egyptian television and was cited by the Obama administration as the catalyst for a 2012 attack on the U.S. consulate in Benghazi, Libya. In reaching its decision, the appeals court rejected Google's argument that the public interest would be harmed not only by damage to Google's First Amendment rights but also by removing public access to a film that figured so prominently in public debate.

Case Background

The actress who brought the action, Cindy Lee Garcia, had answered a casting call for a low-budget amateur film with the working title Desert Warrior. The producer told her it was an adventure film set in ancient Arabia. She saw four pages of the script in which her minor character appeared, worked three-and-a-half days, and was paid $500. But when she saw her performance after it was uploaded to YouTube, it was in an “anti-Islamic film” titled Innocence of Muslims and her dialogue had been partially dubbed over to make it appear she was asking, “Is your Mohammed a child molester?” After the film aired on Egyptian television, the fatwa was issued, and Garcia began receiving death threats, which the opinion characterized as “continuing” and “credible.”

She sent Google, which owns YouTube, a takedown notice demanding that the film be removed pursuant to the procedures of the Digital Millennium Copyright Act (DMCA), which are available only to owners of rights under copyright. Google resisted and was not moved by her subsequent “explanations,” so she applied for a temporary restraining order against Google and the film's producers, seeking removal of the film on the basis that its posting infringed her independent copyright interest in her performance.

The two-judge majority opinion identified three hurdles for Garcia to overcome to show a likelihood of success on the merits: 1) that she has a likely independent interest in her performance; 2) that the producer did not own her contribution as a work for hire; and 3) that the producer did not have an implied license to use her performance. (Likelihood of success on the merits is a prerequisite for a preliminary injunction along with irreparable harm and a balancing favoring the plaintiff of both the equities and the public interest, which the majority's decision held to be satisfied by the threat of physical harm or death.)

Ninth Circuit Finds'Independent'Copyright Interest

In a step-by-step analysis, the Ninth Circuit court reached the conclusion that Garcia had an independent copyright interest. First, without reference to work-for-hire agreements, the court observed that a film is “typically conceived of” as a joint work consisting of a number of contributions by different authors. (If the film were a joint work, then its individual owners would be able to exploit it). But the definition of a joint work in the Copyright Act requires that the work be prepared “with the intention that the [authors'] contributions be merged into inseparable or interdependent parts of a unitary whole.” Because Garcia disclaimed any such intent, and there was no evidence that the producer intended to create a joint work, the appeals court held she was not a joint author.

However, the appeals court next held that Garcia possessed a copyright interest in her performance because two tests were satisfied. First, her “artistic contribution [was] fixed” ' it being the case that copyright protection subsists only in “original works of authorship” that are “fixed in any tangible medium.” (See, 17 U.S.C. '102(a)). In a footnote, the appeals court observed that it was not addressing whether “the author of a dramatic performance must personally fix his work in a tangible medium” because neither party raised it; should the parties raise it, the question will be left for the lower court to consider on remand.

The second test to establish Garcia's independent copyright was whether her performance in the film was “sufficiently creative to be protectible.” Because only a “minimal degree of creativity” is required for this purpose, “'no matter how crude, humble or obvious' it might be,” Garcia's performance surmounted this low bar even though her voice had been dubbed over. As the “creator of copyrightable artistic expression,” Garcia qualified as the author of her performance.

The panel's majority decision also noted that Garcia's performance was based on a copyrighted script that the producer claimed to have written and therefore a derivative work that would infringe the script if not authorized. But the producer “implicitly granted her a license to perform his screenplay,” which enabled Garcia to claim copyright in the portion of Innocence of Muslims that “represents her individual creativity” ' not in the script or the entire scene. The Ninth Circuit expressly did not decide that “every actor has a copyright in his performance within a movie” but it “suffice[d] for now ' that, while the matter is fairly debatable, Garcia is likely to prevail.”

(This assessment differs from that of the Copyright Office, which rejected Garcia's attempt to register her copyright in her performance. As the Copyright Office stated in a letter: “[A]n actor or actress in a motion picture is either a joint author in the entire work or, as most often is the case, is not an author at all by virtue of a work made for hire agreement.” Exceptions are made when “distinct works ' are later adapted or incorporated into a motion picture” or a “separate portion of a motion picture is commissioned, such as a special effects scene” that is “independently authored, fixed, and sufficiently creative” to be considered a discrete work. (Letter from Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practices, U.S. Copyright Office, to Garcia's counsel, M. Cris Armenta, March 6, 2014.) Neither exception applied to Garcia.)

The Copyright Act lays out two distinct paths for a copyrightable work to become a work made for hire. The work either can be “prepared by an employee within the scope of his or her employment” ' the means by which the copyrightable work product of “traditional employees” becomes the property of their employers ' or it can be prepared by an independent contractor if “specially ordered or commissioned,” and agreed to be a work for hire in a writing signed by employer and contractor, and it falls into one of nine specified categories that include “part of a motion picture or other audiovisual work.” Quoting a prior decision, the majority referred to the second path as a “simple, straightforward way of obtaining ownership of the copyright in a creative contribution” that the Copyright Act expressly provided to the movie industry.

The Ninth Circuit majority held that Garcia's performance was not a work for hire. The first path to work for hire status was blocked because there is no “conventional employment relationship” when an actor plays a small role, works for three days and receives no health or other traditional employment benefits. (The majority rejected the dissent's contrary view based on the producer's control of “both the manner and means of making the film, including the scenes featuring Garcia” and the producer's engagement in the business of film-making. It cited a lack of evidence that the producer directed the film or controlled the manner in which any part of it was shot. He claimed only to have written the screenplay. Further, there was no evidence that he was in the “regular business” of making films. The dissent's points of disagreement with the majority were principally that Garcia did not clearly have a copyright interest in her acting performance because it was not a work; her performance was “too personal to be fixed”; and she was not an author, having had no creative control over the script or her performance and having relied on the “script, equipment, and direction” of the producer.)

The second path to work-for-hire status was blocked because the producer failed to obtain a written agreement; the agreement produced by Google that purportedly contained Garcia's signature was declared a forgery by a handwriting expert. In the majority's view, Garcia's showing of a likely independent copyright interest in her performance had survived.

As for whether or not Garcia licensed the use of her performance to the producer, the Ninth Circuit's majority agreed with Google that she had granted the producer an implied non-exclusive license to use her performance in a film, but not the film in which it appeared. Even though such implied licenses must be “construed very broadly” ' to prevent actors from leveraging their individual contributions into “de facto authorial control over the film” ' the license Garcia granted “wasn't so broad as to cover the use of her performance in any project” (emphasis original). Having lied to Garcia in order to secure her participation, the producer perpetrated a fraud. Not only was Innocence of Muslims something other than an Arabian adventure movie, it differed radically from “anything Garcia could have imagined when she was cast.” It wasn't even “intended to entertain at all.”

Analysis

The court majority observed that given “the numerous creative contributions that make up a film,” any analysis of rights that might attach to them “can quickly become entangled in an impenetrable thicket of copyright”; but that analysis and ensuing thicket are both rarities according to the majority's decision because “copyright interests in the vast majority of films are covered by contract, the work for hire doctrine or implied licenses.”

That characterization is certainly true for studio films and most likely true for other films for which legal advice is obtained. (There now will be enhanced motivation to retain those work-for-hire agreements long term in an accessible place.)

But given the current ease with which anyone can produce an audiovisual work and post it to the Internet for worldwide consumption, there will be many producers of very low-budget works who don't focus on the need to obtain work-for-hire agreements from all contributors. Under the Garcia decision, the contributors to those films who are familiar with the (actual) script and willingly offer their services, will likely be held to have granted non-exclusive implied licenses. Still, a case-by-case determination of whether an implied license was made ' depending as it will on issues such as who said what to whom and when ' will be neither simple nor convenient. Moreover, non-exclusivity conjures up yet another thicket: To what degree can a contributor who grants an implied license dissect a scene and extract his or her own portion for alternative non-exclusive exploitation?

On top of that is the question of joint authorship in the absence of a work-for-hire agreement. Although an individual who makes a valuable and copyrightable contribution might not automatically become a joint author, some might. (See, Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), which rejected the claim of a contributor to joint authorship of a work; the case is discussed both in the Garcia majority opinion and dissent.) That joint authors each are entitled to exploit a work non-exclusively (subject to certain conditions) would at least complicate (and possibly, eliminate) any arrangement with a distributor or other exhibitor looking for exclusive rights.

There is also the matter of termination of grants under the Copyright Act; if a copyrightable contribution to a work is transferred by license, the grant can be terminated by its author 35 years later. Works for hire are immune from termination under the Copyright Act.

Google, as YouTube's owner, and other hosts of consumer-generated video content, might encounter a distinct set of problems. Amateur videos posted to YouTube often will feature onscreen “performers” who did not intend to find themselves on YouTube. Without a copyright interest, they would have no simple means of demanding a takedown, like that afforded copyright owners by the DMCA. The Garcia decision effectively hands that tool both to the copyright-owning actor and the actor with no legitimate copyright interest. Content hosts, who have no realistic means of assessing whether or not a particular actor has an independent copyright interest, likely will err on the actor's side.

The Garcia fact pattern could have come from a Hollywood script: An actress accepts a role, the essence of the film is not what she anticipated, her words are overdubbed, her signature is forged, a fatwa is issued and she fears for her life. Ordinarily, a decision resulting from so singular a fact pattern would apply narrowly. This one, if not modified in further proceedings, could have broad implications.

Michael I. Rudell and Neil J. Rosini are partners in the New York City-based Franklin, Weinrib, Rudell & Vassallo.

The April issue of Entertainment Law & Finance reported on a ruling by the U.S. Court of Appeals for the Ninth Circuit involving the Internet video Innocence of Muslims. That article discussed the court's “secret” takedown order and the court's view on copyright ownership of acting roles in movies. The article that follows provides further analysis of the copyright ownership issue in the case.

Producers of television and film projects know that entering into work-for-hire agreements with all of the creative contributors to their projects ' including writers, directors, and actors ' is a legal necessity. Through those agreements, copyright ownership of the finished product is placed unambiguously in the hands of the production company or other “employer,” which can then exclusively reproduce, perform, distribute and otherwise exploit the work in its discretion and allow others to do so. Although some of those contributors may share in earned revenues or profits under contractual arrangements, as employees for hire they won't share in joint ownership or control, either with respect to their individual contributions or the project as a whole.

The alternative ' failing to obtain work-for-hire agreements ' invites chaos but the extent of it is rarely explored. The U.S. Court of Appeals for the Ninth Circuit recently pondered the consequences of that omission when an actress who appeared in a film claimed to own not a joint copyright in the finished work (the unhappy scenario that most readily comes to mind from a producer's perspective) but the copyright in that actress's own performance. Garcia v. Google Inc., 12-57302. The Ninth Circuit agreed with the actress and reversed the district court's denial of a preliminary injunction barring performance of the film on YouTube, which had made the film available for viewing.

The two-judge majority was motivated in part by the extraordinary circumstances of the suit: The actress had been duped into performing in the film Innocence of Muslims and a fatwa was issued by an Egyptian cleric calling for the killing of everyone involved in it. This is the same film that sparked protests and violence when broadcast on Egyptian television and was cited by the Obama administration as the catalyst for a 2012 attack on the U.S. consulate in Benghazi, Libya. In reaching its decision, the appeals court rejected Google's argument that the public interest would be harmed not only by damage to Google's First Amendment rights but also by removing public access to a film that figured so prominently in public debate.

Case Background

The actress who brought the action, Cindy Lee Garcia, had answered a casting call for a low-budget amateur film with the working title Desert Warrior. The producer told her it was an adventure film set in ancient Arabia. She saw four pages of the script in which her minor character appeared, worked three-and-a-half days, and was paid $500. But when she saw her performance after it was uploaded to YouTube, it was in an “anti-Islamic film” titled Innocence of Muslims and her dialogue had been partially dubbed over to make it appear she was asking, “Is your Mohammed a child molester?” After the film aired on Egyptian television, the fatwa was issued, and Garcia began receiving death threats, which the opinion characterized as “continuing” and “credible.”

She sent Google, which owns YouTube, a takedown notice demanding that the film be removed pursuant to the procedures of the Digital Millennium Copyright Act (DMCA), which are available only to owners of rights under copyright. Google resisted and was not moved by her subsequent “explanations,” so she applied for a temporary restraining order against Google and the film's producers, seeking removal of the film on the basis that its posting infringed her independent copyright interest in her performance.

The two-judge majority opinion identified three hurdles for Garcia to overcome to show a likelihood of success on the merits: 1) that she has a likely independent interest in her performance; 2) that the producer did not own her contribution as a work for hire; and 3) that the producer did not have an implied license to use her performance. (Likelihood of success on the merits is a prerequisite for a preliminary injunction along with irreparable harm and a balancing favoring the plaintiff of both the equities and the public interest, which the majority's decision held to be satisfied by the threat of physical harm or death.)

Ninth Circuit Finds'Independent'Copyright Interest

In a step-by-step analysis, the Ninth Circuit court reached the conclusion that Garcia had an independent copyright interest. First, without reference to work-for-hire agreements, the court observed that a film is “typically conceived of” as a joint work consisting of a number of contributions by different authors. (If the film were a joint work, then its individual owners would be able to exploit it). But the definition of a joint work in the Copyright Act requires that the work be prepared “with the intention that the [authors'] contributions be merged into inseparable or interdependent parts of a unitary whole.” Because Garcia disclaimed any such intent, and there was no evidence that the producer intended to create a joint work, the appeals court held she was not a joint author.

However, the appeals court next held that Garcia possessed a copyright interest in her performance because two tests were satisfied. First, her “artistic contribution [was] fixed” ' it being the case that copyright protection subsists only in “original works of authorship” that are “fixed in any tangible medium.” (See, 17 U.S.C. '102(a)). In a footnote, the appeals court observed that it was not addressing whether “the author of a dramatic performance must personally fix his work in a tangible medium” because neither party raised it; should the parties raise it, the question will be left for the lower court to consider on remand.

The second test to establish Garcia's independent copyright was whether her performance in the film was “sufficiently creative to be protectible.” Because only a “minimal degree of creativity” is required for this purpose, “'no matter how crude, humble or obvious' it might be,” Garcia's performance surmounted this low bar even though her voice had been dubbed over. As the “creator of copyrightable artistic expression,” Garcia qualified as the author of her performance.

The panel's majority decision also noted that Garcia's performance was based on a copyrighted script that the producer claimed to have written and therefore a derivative work that would infringe the script if not authorized. But the producer “implicitly granted her a license to perform his screenplay,” which enabled Garcia to claim copyright in the portion of Innocence of Muslims that “represents her individual creativity” ' not in the script or the entire scene. The Ninth Circuit expressly did not decide that “every actor has a copyright in his performance within a movie” but it “suffice[d] for now ' that, while the matter is fairly debatable, Garcia is likely to prevail.”

(This assessment differs from that of the Copyright Office, which rejected Garcia's attempt to register her copyright in her performance. As the Copyright Office stated in a letter: “[A]n actor or actress in a motion picture is either a joint author in the entire work or, as most often is the case, is not an author at all by virtue of a work made for hire agreement.” Exceptions are made when “distinct works ' are later adapted or incorporated into a motion picture” or a “separate portion of a motion picture is commissioned, such as a special effects scene” that is “independently authored, fixed, and sufficiently creative” to be considered a discrete work. (Letter from Robert J. Kasunic, Associate Register of Copyrights and Director of Registration Policy and Practices, U.S. Copyright Office, to Garcia's counsel, M. Cris Armenta, March 6, 2014.) Neither exception applied to Garcia.)

The Copyright Act lays out two distinct paths for a copyrightable work to become a work made for hire. The work either can be “prepared by an employee within the scope of his or her employment” ' the means by which the copyrightable work product of “traditional employees” becomes the property of their employers ' or it can be prepared by an independent contractor if “specially ordered or commissioned,” and agreed to be a work for hire in a writing signed by employer and contractor, and it falls into one of nine specified categories that include “part of a motion picture or other audiovisual work.” Quoting a prior decision, the majority referred to the second path as a “simple, straightforward way of obtaining ownership of the copyright in a creative contribution” that the Copyright Act expressly provided to the movie industry.

The Ninth Circuit majority held that Garcia's performance was not a work for hire. The first path to work for hire status was blocked because there is no “conventional employment relationship” when an actor plays a small role, works for three days and receives no health or other traditional employment benefits. (The majority rejected the dissent's contrary view based on the producer's control of “both the manner and means of making the film, including the scenes featuring Garcia” and the producer's engagement in the business of film-making. It cited a lack of evidence that the producer directed the film or controlled the manner in which any part of it was shot. He claimed only to have written the screenplay. Further, there was no evidence that he was in the “regular business” of making films. The dissent's points of disagreement with the majority were principally that Garcia did not clearly have a copyright interest in her acting performance because it was not a work; her performance was “too personal to be fixed”; and she was not an author, having had no creative control over the script or her performance and having relied on the “script, equipment, and direction” of the producer.)

The second path to work-for-hire status was blocked because the producer failed to obtain a written agreement; the agreement produced by Google that purportedly contained Garcia's signature was declared a forgery by a handwriting expert. In the majority's view, Garcia's showing of a likely independent copyright interest in her performance had survived.

As for whether or not Garcia licensed the use of her performance to the producer, the Ninth Circuit's majority agreed with Google that she had granted the producer an implied non-exclusive license to use her performance in a film, but not the film in which it appeared. Even though such implied licenses must be “construed very broadly” ' to prevent actors from leveraging their individual contributions into “de facto authorial control over the film” ' the license Garcia granted “wasn't so broad as to cover the use of her performance in any project” (emphasis original). Having lied to Garcia in order to secure her participation, the producer perpetrated a fraud. Not only was Innocence of Muslims something other than an Arabian adventure movie, it differed radically from “anything Garcia could have imagined when she was cast.” It wasn't even “intended to entertain at all.”

Analysis

The court majority observed that given “the numerous creative contributions that make up a film,” any analysis of rights that might attach to them “can quickly become entangled in an impenetrable thicket of copyright”; but that analysis and ensuing thicket are both rarities according to the majority's decision because “copyright interests in the vast majority of films are covered by contract, the work for hire doctrine or implied licenses.”

That characterization is certainly true for studio films and most likely true for other films for which legal advice is obtained. (There now will be enhanced motivation to retain those work-for-hire agreements long term in an accessible place.)

But given the current ease with which anyone can produce an audiovisual work and post it to the Internet for worldwide consumption, there will be many producers of very low-budget works who don't focus on the need to obtain work-for-hire agreements from all contributors. Under the Garcia decision, the contributors to those films who are familiar with the (actual) script and willingly offer their services, will likely be held to have granted non-exclusive implied licenses. Still, a case-by-case determination of whether an implied license was made ' depending as it will on issues such as who said what to whom and when ' will be neither simple nor convenient. Moreover, non-exclusivity conjures up yet another thicket: To what degree can a contributor who grants an implied license dissect a scene and extract his or her own portion for alternative non-exclusive exploitation?

On top of that is the question of joint authorship in the absence of a work-for-hire agreement. Although an individual who makes a valuable and copyrightable contribution might not automatically become a joint author, some might. (See, Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000), which rejected the claim of a contributor to joint authorship of a work; the case is discussed both in the Garcia majority opinion and dissent.) That joint authors each are entitled to exploit a work non-exclusively (subject to certain conditions) would at least complicate (and possibly, eliminate) any arrangement with a distributor or other exhibitor looking for exclusive rights.

There is also the matter of termination of grants under the Copyright Act; if a copyrightable contribution to a work is transferred by license, the grant can be terminated by its author 35 years later. Works for hire are immune from termination under the Copyright Act.

Google, as YouTube's owner, and other hosts of consumer-generated video content, might encounter a distinct set of problems. Amateur videos posted to YouTube often will feature onscreen “performers” who did not intend to find themselves on YouTube. Without a copyright interest, they would have no simple means of demanding a takedown, like that afforded copyright owners by the DMCA. The Garcia decision effectively hands that tool both to the copyright-owning actor and the actor with no legitimate copyright interest. Content hosts, who have no realistic means of assessing whether or not a particular actor has an independent copyright interest, likely will err on the actor's side.

The Garcia fact pattern could have come from a Hollywood script: An actress accepts a role, the essence of the film is not what she anticipated, her words are overdubbed, her signature is forged, a fatwa is issued and she fears for her life. Ordinarily, a decision resulting from so singular a fact pattern would apply narrowly. This one, if not modified in further proceedings, could have broad implications.

Michael I. Rudell and Neil J. Rosini are partners in the New York City-based Franklin, Weinrib, Rudell & Vassallo.