In a case that may have far-reaching implications for the movie industry, the United States Court of Appeals for the Ninth Circuit found that an actress had established a likelihood of success in her claim of copyright infringement, on the basis she had an independent interest in a film by virtue of her performance in it, without signing any document granting rights to the producer.
Cindy Lee Garcia had agreed to perform a minor role in an independent film with the working title “Desert Warrior.” She thought she was playing a character in an Arabian adventure story and worked for three days and received $500 dollars for her performance. However, Garcia’s scene was never used in the film she thought she was appearing in. Instead a five-second clip was used in a controversial anti-Islamic 13-minute video trailer titled the “Innocence of Muslims.” Her performance was partially dubbed so that her character appeared to be asking, “Is your Mohammed a child molester?”
Not surprisingly this film caused outrage in the Muslim world, with protests and violence injuring hundreds and killing more than 50 persons. One Egyptian cleric issued a fatwa, calling for the killing of all those involved with the movie, and Garcia received numerous death threats. She was forced to take extensive security precautions when traveling and relocated her home and business as a precaution. This is the film that sparked international media attention when the Obama administration mentioned it as possible cause for the 2012 attack on the U.S. Consulate in Benghazi, Libya.
The case is precedent setting because it acknowledges that an actor can have a separate copyright interest in a film they are hired to perform in. Under this rationale, if a producer has not secured the rights to their actors’ performances, a single actor could conceivably halt distribution of a blockbuster film causing enormous losses to its owners.
Producers generally secure rights to their actor’s performance either on the basis of 1) the actor being an employee working within the scope of their employment; 2) with a written work for hire agreement; or 3) by having the actor sign an assignment of their rights. However, considering the exigencies of production, it is not unusual for the production to fail to sign up a few actors. The repercussions for failing to have signed legally binding agreements with every actor may be more profound than previously thought.
In this case, the actress contacted Google and attempted to have the film removed from YouTube. Google refused, because they did not think that she had any ownership interest in the film. After filing eight takedown notices under the Digital Millennium Copyright Act to no avail, she brought suit. The trial court denied her request for an injunction to remove the film from YouTube. While she did not claim copyright ownership in the entire film, she did assert that her performance within the film was independently copyrightable and that she retained an interest in that copyright. That, she argued, should be enough to force Google to take down the film from the Internet.
Her performance was based on a script given her, so her creative contributions were only her body language, facial expression and reactions to other actors in the scene. Judge Kozinski, writing for the majority, found that “An actor’s performance, when fixed, is copyrightable if it evinces “some minimal degree of creativity . . . ‘no matter how crude, humble or obvious’ it might be.” He explained, “That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all.”
The court reasoned that an actor’s performance that’s part of a larger film, may itself constitute an independently copyrightable “work.” Admittedly, the actress did not write or have any ownership in the script or other scenes in the movie. The court noted that “Where, as here, an actor’s performance is based on a script, the performance is likewise derivative of the script, such that the actor might be considered to have infringed the screenwriter’s copyright. And an infringing derivative work isn’t entitled to copyright protection.” The court then reasoned that because the producers gave her the script they implicitly granted her a license to perform the screenplay. So while Garcia did not have any claim on the underlying script, and her contributions were minimal, they were likely sufficient for her to prevail and secure an injunction stopping distribution of the movie.
The case is also extraordinary for what it says about the status of actors as employees. It is generally thought within the industry that cast members should be characterized as employees of the production company. This is certainly the position that the IRS takes when it comes to penalizing producers who attempt to hire cast as independent contractors. California has cracked down on employers who mischaracterize employees. As of January 1, 2012, a new California law creates large penalties for employers who misclassify their workers as independent contractors. Labor Code Section 3357 creates a rebuttable presumption that a worker is an employee.
The key issue in determining whether a person is an employee or an independent contractor is the extent the employer controls the work of the employee. Actors have very little control over when, where and how they perform their roles. That is why the industry almost always pays them as employees. However, the Ninth Circuit found that because the actress was hired for a specific task, worked only three days and received no health or other traditional employment benefits, she was not an employee. This is contrary to other cases, which have found that actors should be classified as employees rather than independent contractors.[i] Furthermore, if actors are not employees, then they may not be covered by worker’s compensation insurance and the producer can be liable for their workplace injuries.
While a producer can secure ownership of a performance with a work for hire contract, Garcia did not sign one, and she claims a purported agreement signed by her is a forgery. The court dismissed the argument that Garcia granted the producer an implied license to use her performance by performing in the film. Since Garcia was told she’d be acting in an adventure film set in ancient Arabia and that was not the case, the court concluded that the scope of any implied license was exceeded. “The film differs so radically from anything Garcia could have imagined when she was cast that it can’t possibly be authorized by any implied license she granted…” according to Judge Kozinski. In other words, because the producer misled Garcia as to the nature of the film, any consent was void. Under this rationale, producers who mislead cast members about a film could find themselves without any rights to their performance. Many day players and extras are never given the entire script to review when hired.
This single decision is remarkable by changing a number of basic principles on which the movie industry operates. It provides the basis for an actor to claim copyright ownership in his or her performance in a film that they did not write, direct or produce. It creates doubt as to whether cast members working for just a few days should be classified as employees rather than independent contractors. And it raises the specter that if a film is significantly changed by its producers, or if they don’t make full disclosure to an actor, they could end up without consent to use their footage absent a signed agreement. Moreover, while professionals in the movie industry make a concerted effort to secure signed releases from cast and crew, that is not the case with amateur filmmakers who upload millions of homemade videos onto the internet. This decision could provide the basis for anyone appearing in such a movie to demand that YouTube remove it if they don’t approve of their performance.
Judge N.R. Smith criticized the majority decision in his dissent pointing out “We have never held that an actress’s performance could be copyrightable.” The author of a work is the person who exercises creative control over the creation of a work and fixes it in a fixed tangible medium of expression. Garcia “was not the originator of ideas or concepts. She simply acted out others’ ideas or script. Her brief appearance in the film, even if a valuable contribution to the film, does not make her an author,“ he wrote. And Garcia did not record her performance into a tangible medium of expression, one of the criteria for copyright protection.
This is not the first case where a minor contributor to a film claimed copyright ownership in it. In Aalmuhammed v. Lee[ii], a consultant for the movie “Malcom X” brought suit against Spike Lee and his production company, claiming to be a joint author. The consultant maintained that he reviewed and made revisions to the script, which were included in the film. The Ninth Circuit in a 2000 decision said, “[m]ost of the revisions . . . were to ensure the religious and historical accuracy and authenticity of scenes depicting Malcolm X’s religious conversion and pilgrimage to Mecca.” Although the consultant claimed he had directed Denzel Washington and other actors, created two new scenes, supplied his own voice for voice-overs and edited parts of the movie, the court concluded that in order for a joint work to exist, each author must make an independently copyrightable contribution. And while this consultant provided valuable input for the film, the court held that was not copyrightable.
The Supreme Court as far back as 1884[iii] held that a photographer who took a picture of Oscar Wilde was its author for copyright purposes. The person who controls the creation of a work is deemed its author, not the subject who poses for a picture. In another case a person who closely supervised the filming of a movie was deemed the author of the movie, not the person who actually photographed it. The author had created storyboards for a film documenting the underwater wreck of the Titanic, identified specific camera angles and shooting sequences, and directed the underwater filming from a ship on the surface. [iv] So the person who exercises creative control over a work has been considered its author, not those employed to fulfill his vision.
Although Google has taken down the film, it has filed an emergency motion to stay the decision pending a rehearing before a larger panel at the 9th Circuit Court of Appeals. Google argues that “Under the panel’s rule, minor players in everything from Hollywood films to home videos can wrest control of those works from their creators, and service providers like YouTube will lack the ability to determine who has a valid copyright claim.”
This is that rare decision which unites Internet companies, movie studios and First Amendment advocates in opposition to a court ruling. While the producer’s abuse of the plaintiff is outrageous, this decision will likely have unintended consequences.
About Mark Litwak: Mark Litwak is a veteran entertainment attorney and producer’s rep based in Beverly Hills, California. He is the author of six books including: Dealmaking in the Film and Television Industry, Contracts for the Film and Television Industry, and Risky Business: Financing and Distributing Independent Film. He is an adjunct professor at USC Gould School of Law, and the creator of the Entertainment Law Resources with lots of free information for filmmakers (www.marklitwak.com).
 Citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (quoting 1 Nimmer on Copyright § 1.08[C]).
[i] See, e.g. Durae v. Industrial Acc. Commission (1962) 206 Cal.App.2d 691 (stuntman was an employee); Johnson v. Berkofsky-Barret Productions, Inc., 211 Cal.App;3d at 1067 (actor was an employee).
[ii] Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000).
[iii] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 61 (1884).
[iv] Lindsay V. R.M.S. Titanic, ET A, 1999, Copr.L.Dec. P 27, 96752 U.S.P.Q.2d 1609