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Could Garcia v. Google Establish a Copyright Interest in an Actor’s Performance?

There may be a limit to the saying, “There’s no such thing as bad publicity.” Cindy Lee Garcia believed she was acting in a low-budget film entitled “Desert Warrior,” which was written and produced by Mark Basseley Youssef. To her surprise, her performance was dubbed over and used in an anti-Islamic film entitled “Innocence of Muslims” that was posted on YouTube and resulted in her receiving death threats. Garcia attempted to remove the film from YouTube by filing take-down notices under the Digital Millennium Copyright Act. When Google refused to respond to her notices, Garcia filed a copyright infringement action and a motion for a temporary restraining order in a U.S. District Court in California. The district court denied Garcia’s motion for a temporary restraining order, in part because she failed to demonstrate that she was likely to succeed in her copyright infringement suit. Garcia appealed the decision to the Ninth Circuit.

To prove that she was likely to succeed in her copyright infringement suit, Garcia had to prove that her acting was an original work of authorship fixed in a tangible medium of expression and thus, an independent, protected interest under the Copyright Act. Once established, she must also prove that Youssef did not own any such interest due to her performance being a “work-for-hire” and did not have an implied license to use her performance. Relying upon acting manuals and treatises, the majority of the Ninth Circuit held that an actor’s creativity expressed through his voice, image, body language, facial expression and reaction to other actors, when fixed, is copyrightable. The court further reasoned that without a written agreement stating that an actor’s performance in a small role is a work-for-hire, an actor does not qualify as a traditional employee and thus, retains rights to his performance. The court went on to explain that although an actor grants the copyright owner of the film a broad implied license upon agreeing to act in the film, that implied license is not broad enough to include a use of an actor’s performance that is radically different from anything the actor could have imagined when he was cast in the film.

Therefore, on February 26, the majority of the Ninth Circuit signed a controversial opinion holding that Garcia was likely to succeed in her copyright infringement suit. Judge Smith wrote a dissenting opinion to the contrary stating that (a) acting is a procedure or process by which an original work is performed, which the Copyright Act specifically states is not a “work;” (b) Garcia was not the author of the work because she had no creative control over the script or her performance; and (c) acting out a script is akin to singing lyrics to a song, which precedent establishes is not “fixed.” The dissent went on to argue that even if an acting performance were capable of being protected under the Copyright Act, Garcia was an employee and her performance was a work for hire because Youssef managed all aspects of the production. On March 6, 2014, the Copyright Office essentially agreed with Judge Smith’s dissent when it issued a letter rejecting Garcia’s copyright application, explaining that the U.S. Copyright Office “views dramatic performances in motion pictures to be only part of the integrated work— the motion picture.” Since then, Google filed a petition for rehearing and ten amicus briefs have been filed in this case. The court’s decision could have a dramatic effect on filmmakers and actors and make the use of written work-for-hire agreements even more essential.

This article was written by Adam Litwin, managing member of Litwin Law Group, PLLC, a Plano-based law firm, focusing on entertainment, business and estates, with attorneys licensed in both Texas and Florida.  It was published in Issue No. 9 of the TESLAW E-Newsletter, May 15, 2014 distributed by the Entertainment and Sports Law Section of the State Bar of Texas.