In March 2014, this column analyzed a decision by a Ninth Circuit panel in Garcia v. Google, Inc., in which the Court held that an actress, who believed she was appearing in a minor role in an Arabian adventure movie, could maintain a copyright infringement claim against the producers when they used the footage instead in an anti-Islamic film that resulted in her receiving death threats. As the prior column surmised, it appeared that “bad” (although entirely sympathetic) facts were making “bad” law.
This week, the Ninth Circuit ruled that it would rehear the matter en banc and ordered that its previous decision “not be cited as precedent by or to any court of the Ninth Circuit.” It remains to be seen whether the entire Ninth Circuit will take a different position this time (and hold that the lower court properly denied the injunctive relief) or take the opportunity to emphasize just how limited the scope of its prior ruling was intended to reach.
Below is the original column analyzing the Ninth Ciruit’s original ruling in this case.
A Bit Part, A Fatwa and Copyright Infringement
Most law students learn early in law school the old maxim: “Bad facts make bad law.” A recent Ninth Circuit case, Garcia v. Google, Inc., seems certain to test this proposition with its incredibly sympathetic facts.
Ms. Garcia, an aspiring actress, was paid approximately $500 to appear in a minor role that she believed to be an Arabian adventure movie titled, “Desert Warrier.” Instead, a clip of her performance was used in an anti-Islamic film titled, “Innocence of Muslims,” which was posted to YouTube. (Google is the owner of YouTube.) Not only was her performance included in this movie, but her lines had been “dubbed over” so that the line audiences heard her say was “Is your Mohammed a child molester?” The film and this line provoked anger worldwide and an Egyptian cleric issued a fatwa calling for the killing of everyone involved with the film. Shortly thereafter, Ms. Garcia began receiving death threats.
In addition to taking security precautions, Ms. Garcia filed a number of “take down notices” under the DMCA seeking to have YouTube remove Innocence of Muslims from its website. When Google refused, Garcia filed a copyright infringement action and sought a preliminary injunction ordering Google to take the film down from YouTube. The court denied Garcia’s request.
Garcia appealed this ruling to the Ninth Circuit. In a 2-1 decision authored by Chief Judge Alex Kozinsky, the Ninth Circuit reversed the lower court and held that an injunction should have been entered.
The bulk of the Ninth Circuit’s decision (as well as the dissent) focuses on the first factor that must be established for injunctive relief, the likelihood of success on the merits. Although Ms. Garcia was not seeking to claim that she had a copyright interest in the film, she argued that she had a copyrightable interest in her performance within the film. The Ninth Circuit recognized that “[t]o succeed on this claim, Garcia must prove not only that she likely has an independent interest in her performance but that [the film’s producer] doesn’t own any such interest as a work for hire and that he doesn’t have an implied license to use her performance.” The Court first turned to whether Garcia had an independent copyright interest in her performance.
The Court recognized that a film “is typically conceived of as `a joint work consisting of a number of contributions by difference `authors’’.” While Garcia did not qualify as a “joint author” under Ninth Circuit precedent, that did not mean “she doesn’t have a copyright interest in her own performance within the film.” In reaching this issue, the Ninth Circuit admitted that this “is a rarely litigated question”.
The Court claimed that the Copyright Act does not necessarily prevent a contributor from obtaining a copyright interest in a creative contribution to a work and therefore, “the key question remains whether it’s efficiently creative to be protectable.” Although Google argued that the film’s producer wrote the lines that Garcia spoke, managed all aspects of the production and later dubbed over a portion of her scene, the Court concluded that the actor does “far more than speak words on a page.” The actor provides “body language, facial expression and reactions to other actors and elements of a scene.” The Ninth Circuit observed sharply “otherwise `every schmuck … is an actor because everyone … knows how to read’.” The Court continued that an actor’s performance may be copyrightable “if it invents `some minimal degree of creativity … know matter how crude, humble or obvious’ it might be.” The Court cited the performances of a silent actor like Buster Keaton to make this point. The Court concluded without elaboration: “[I]t’s clear that Garcia’s performance meets these minimum requirements.”
The Court continued by distinguishing the copyrightable interest that Garcia had in her performance from the copyrightable interest the producer had in the film. The Court noted that the producer “implicitly granted” Garcia a license by hiring her to perform his screen play. While that did not give her a copyright in Innocence of Muslims, Garcia could assert a copyright interest “in the portion of `Innocence of Muslims’ that represents her individual creativity,” which the Court again found without elaboration that this was not de minimis. Seeming to recognize the slippery slope upon which it embarked, the Court states: “We need not and do not decide whether every actor has a copyright in his performance within a movie. It suffices for now to hold that while the matter is fairly debatable, Garcia is likely to prevail.”
Having found that Garcia had a copyrightable interest in her performance, the Court had to turn away Google’s defenses that Garcia made a “work for hire” or granted the producer an implied license to use her performance in Innocence of Muslims. First, the Court recognized that “under the work for hire doctrine, the rights to Garcia’s performance vested in [the producer] if Garcia was [his] employee and acted in her employment capacity or was an independent contractor who transferred her interest in writing.” It was undisputed that there was no signed writing by plaintiff that constituted a work for hire agreement (although there was apparently a document with her forged signature).
As to whether Garcia was an employee, the Court found that this was “a good example of why it is difficult to categorize an actor, particularly one in a small role as a conventional employee.” The Court noted that the producer hired her only for a specific task, she worked for only a couple of days and other than a payment of approximately $500, did not receive any of the benefits that would normally be paid to an employee. Thus, the Court found that Garcia’s performance was not a work for hire and that she could state an infringement claim.
Next, the Court turned to whether Garcia had granted the producer an “implied license” to use her performance in Innocence of Muslims. The Court noted that it had previously found an implied license even though “plaintiff’s contribution to a film or other work would otherwise be worthless or of `minimum value’.” The Court noted that Garcia had auditioned for the role, was paid for her performance and believed that the director would eventually release the film and thus had obviously granted the director an implied license of some sort. The Court noted that because an implied license is to be construed broadly, the fact that “a film didn’t meet the ex ante expectation of an actor” does not render it meaningless. The Court ruled, however, that an implied license is not unlimited.
The Court found it significant that plaintiff was lied to as to the type of film her performance was to be used in. Specifically, the Court reasoned that “Innocence of Muslims” was not an Arabian adventure movie as had been represented to Garcia, but rather, “that the film isn’t intended to entertain at all.” Because the Court concluded that the producer committed fraud on Garcia, it concluded that Garcia did not give the director/producer an implied license to use her performance in Innocence of Muslim. Once again, recognizing the apparent slippery slope of this position, the Court cautioned: “The situation in which a filmmaker uses a performance in a way that exceeds the bounds of the broad implied license granted by an actor will be extraordinarily rare.”
The Court continued by considering the other injunction factors and found that the district court had erred in not granting Garcia a preliminary injunction. The Court ordered Google to remove Innocence of Muslims from YouTube.com.
The Dissent in Garcia began by noting the broad deference to be given to a trial court in determining whether or not to grant injunctive relief. The Dissent found that it was not error for the district court to conclude at this preliminary stage that it was unclear whether the law granted Garcia a copyrightable interest in her performance. He concluded that under the Copyright Act, while “a motion picture is a work,” the Act “does not clearly place an acting performance within its sphere of copyrightable works.” He also reasoned that Garcia could not be considered the “author” of the work since she admitted “she had no creative control over the script or her performance.” In essence, the Dissent concluded that she “was not the originator of ideas or concepts” but had “simply acted out other’s ideas or script.”
The Dissent also found that there was no error in the finding that plaintiff made a work for hire, which doctrine “is important in the analysis of motion picture authorship because in the United States most contributions to a motion picture are created as works made for hire.” The Dissent found it significant that the producer provided the instrumentalities and tools, was in charge of the filming location, decided when and how long plaintiff would work, and was engaged in the business of film making. Thus, it was not a stretch to conclude that plaintiff was an employee for purposes of the film. The Dissent concluded that “the majority gave zero deference to the district court’s position on the likelihood for successor factor.”
It is clear that the plaintiff in Garcia v. Google was placed in a very sympathetic position given the apparent fraud that had been perpetrated on her and the death threats she received. The majority went to great lengths to make clear that this case was “extraordinary” to justify its decision that the lower court had abused its discretion in denying injunctive relief. It remains to be seen whether other actors (or other performers such as musicians in a band) may seek to assert some kind of copyrightable interest in their “performance” or whether the Ninth Circuit will have to revisit Garcia to ensure that its finding is limited to those most extraordinary circumstances.