An Impenetrable Thicket of Copyright

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The Ninth Circuit’s Garcia v. Google, Inc. case is the latest newsworthy event triggered by “Innocence of Muslims,” the infamous low-budget movie whose release led to protests around the world and the deadly attack on the U.S. Embassy in Benghazi, Libya in September 2012. The decision could have serious implications for copyright law, particularly with respect to filmmaking.

The plaintiff was Cindy Lee Garcia, an actress who appeared in the film. She was paid $500 to read four pages of script for what she thought was an adventure film titled “Desert Warrior.” “Desert Warrior” never materialized. The film was instead re-titled, and Garcia’s scene was chopped down to five seconds and overdubbed so that she appeared to be asking, “Is your Mohammed a child molester?” An Egyptian cleric issued a fatwa calling for the death of everyone involved in the film, and Garcia received threats. She sought to have the video removed from YouTube and sent Google eight takedown notices – Google, like most online service providers, allows a person claiming copyright infringement to request removal of any infringing material pursuant to the Digital Millennium Copyright Act. When Google resisted Garcia’s infringement claim, she sued for a temporary restraining order requiring removal of the film.

Commentators thought Garcia’s copyright claim was ridiculous – calling it “legal stupidity” – and the district court denied preliminary relief. But a three-judge panel of the Ninth Circuit reversed, finding that the copyright claim was likely to succeed. Google requested an emergency stay, which was denied, and an en banc panel is already set to rehear that issue. A number of fascinating issues are teed up for review if (i.e., when) Google seeks review of the decision itself:

1. When do individual contributors to a work retain an independent copyright interest?

The majority held that Garcia’s performance was protectable expression, and therefore covered by the Copyright Act. It didn’t matter that she was reading a script handed to her by the producer, or that someone had later edited and overdubbed her performance. The remaining non-verbal portions of her performance still involved creative elements. The dissent argued that the majority had overlooked several key issues. A motion picture is clearly a “work” under 17 U.S.C. section 102, but does an acting performance within a motion picture independently qualify? Did Garcia exercise sufficient control over her performance to be an “author” under section 102 and Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)?

The most fascinating copyrightability question might be whether Garcia’s performance meets the “fixation” requirement. Under section 102, copyright protection only extends to works that are “fixed” in a “tangible medium of expression.” The dissent argued pursuant to Midler v. Ford Motor. Co., 849 F.2d 460 (9th Cir 1988), that a movie is copyrightable but that an acting performance within a movie, standing on its own, is not. The majority distinguished Midler, but stated it was not deciding whether Garcia had to “personally” fix her performance in a tangible medium of expression because the issue had not been raised on appeal. The dissent clearly thought the fixation requirement was on the table, so it will be interesting to see how a reviewing court addresses the issue.

If the ruling stands, its effect could be huge. Can every individual contributor to a work claim a copyright interest in their own individual contribution? Every actor in a motion picture? Every developer working on a software program? Both sides agreed that recognizing copyright protection for each individual contribution results in an “impenetrable thicket of copyright.” Raising the question…

2. What about the works made for hire doctrine?

Parties usually prevent claims by individual contributors by making contributors assign their rights by contract, or by relying on the work-for-hire doctrine. The work-for-hire doctrine provides that copyright in works authored by employees in their capacity as employees vests in their employer. 17 U.S.C. §§ 101, 201(b). Courts apply a multi-factored balancing test based on traditional agency principles when determining who is an “employee” for purposes of the work-for-hire doctrine. The critical factor is whether the hiring party retains the right to control how the work is created. Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730 (1989).

The Garcia opinion is a perfect illustration of how unpredictable the work-for-hire doctrine can be in practice. The majority held Garcia’s performance was not a work-for-hire because there was no written agreement, because she was hired for a small role and received no benefits, and because the producer was simply an amateur and therefore not in the “regular business” of making films. The majority also suggested it was unclear whether the producer controlled the manner in which Garcia’s seen was presented. The dissent argued that the producer did control Garcia’s scene (if he didn’t edit and overdub the scene, then who did?), that he dictated the filming location and Garcia’s work schedule, and that he provided the necessary tools and instrumentalities for her work to be completed.

What will happen if this issue comes up for rehearing? It’s unclear. The immediate takeaway is that work-for-hire status is never certain – so always, always get a written agreement.

3. What’s the scope of an implied license?

Parties sometimes get around their failure to get written agreements or establish work-for-hire status based on an implied license theory. A non-exclusive license to use a work may be implied when an individual creates a work at a party’s request and hands it over with the intention that the party copy and distribute it. Effects Assocs, Inc. v. Cohen, 908 F.2d 444 (9th Cir. 1990). Accordingly, Google argued that Garcia knew the film producer intended to shoot and distribute a film, and that by performing before the camera, she had impliedly authorized the film producer to use her performance in his film.

The court agreed there was an implied license, but held that the film was still an unauthorized, infringing use because it exceeded the license’s scope. The scope of an implied license is broad – an actor shouldn’t be able to block a film that doesn’t meet his prior expectations, the court emphasized – but not unlimited. Here, the final product was “radically” different from anything Garcia might have expected, and the producer’s “fraud” was enough to void any agreement he and Garcia had entered into. (Notably, the dissent did not challenge this part of the court’s holding.)

The First Amendment doesn’t excuse copyright infringement, but there is obviously a strong tension between the interest in free expression and the court’s holding regarding the scope of the implied license. How different is “radically” different? And what if the circumstances don’t permit an inference of an implied license at all – will that put greater pressure on the fair use defense? Many questions remain unanswered.

4. How much should it matter that a plaintiff seeks a mandatory injunction?

Appellate lawyers will note that the dissent is framed around an observation regarding the applicable standard of review. Garcia wasn’t seeking to preserve the status quo pending litigation. Instead, she demanded that Google take the affirmative step of removing the video, which was akin to a mandatory injunction. The dissent noted that mandatory injunctions are especially disfavored and are subject to a even higher degree of scrutiny than other requests for preliminary relief, pursuant to Stanley v. Univ. of S. Cal., 13 F.3d 1313 (9th Cir. 1994). The majority did not address Stanley. However, the court on rehearing or an en banc panel might take the opportunity to elaborate on how to decide requests for mandatory injunctions.

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