In a decision that is already being criticized as “horrific” and “judicial activism,” the Ninth Circuit created copyright protection for an acting performance in a short film for which the actress read from a script and was paid for her work.  This is the classic “bad facts make bad law” decision.  The first words of the opinion in Garcia v. Google, Inc., 12-57302, 2014 WL 747399 (9^th Cir. Feb. 26, 2014) say it all:

While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa. But that’s exactly what happened to Cindy Lee Garcia when she agreed to act in a film with the working title “Desert Warrior.”

Garcia was told that she had a minor part in the film which was set in ancient Arabia.  She was given four pages of script to read and paid $500 for three and a half days of filming.  “Desert Warrior” was not made; instead Garcia’s performance was inserted in an anti-Islamic film “Innocence of  Muslims,” and her words were dubbed over so that on the film she asked “Is your Mohammed a child molester?”

When the film aired in Egypt, a fatwa was issued against Garcia and Garcia began receiving death threats.  Garcia filed a number of takedown notices under the Digital Millennium Act, which Google rejected.  She then filed a lawsuit and requested a temporary restraining order based on her claim that the video infringed on her copyright in her performance.  The trial court denied preliminary relief on the basis that Garcia had delayed in filing the lawsuit, had failed to demonstrate that the requested relief would prevent any alleged harm, and that she was unlikely to succeed on the merits because she had granted the author of the videotape an implied license to use her performance.

The Ninth Circuit’s opinion by Judge Kozinski makes it apparent that the court wanted to provide relief, and found a way to do so.  The court emphasized the facts, including the fraudulent representation to Garcia that she would be acting in a film set in ancient Arabia when in fact her performance was used in an anti-Islamic video and that as a result Garcia received death threats.

In creating a copyright interest for Garcia, the court rebuffed each of Google’s defenses.  The “joint authorship” defense was discarded because even though Garcia was not a joint author, she could still make an “independently copyrightable contribution” to a joint work.  Judge Kozinski acknowledged there is not much law out there, and then held that just because the creative contribution did not rise to the level of joint venture it could still be sufficiently creative to be protectable.  The court finessed the fact that Garcia read lines penned by the individual defendant by awarding her an implied license because the defendant hired Garcia, gave her a script, and asked her to perform it.

The court similarly dispensed with Google’s defense that Garcia was an employee and her performance was a “work for hire.”  First, the court noted that it was difficult to categorize actors as conventional employees, citing the example of Garcia who was hired for a specific task, worked for only three days, and did not receive health or other traditional benefits.  The court stated this is the reason the moviemaking industry is specifically mentioned in the law that allows written transfers of a copyrightable creative contribution.  Garcia did not sign a written agreement, so the work for hire defense failed.

Finally, Judge Kozinski dispensed with the implied license defense.  After first acknowledging that Garcia granted the moviemaker an implied license, and that implied licenses are construed broadly, Judge Kozinski stated that the license is not unlimited.  Here, the license was exceeded because her performance was used in a film that was not intended to entertain, and thus “differs so radically from anything Garcia could have imagined when she was cast that it can’t possibly be authorized by any implied license.”

The dissent argued that Garcia’s performance was not a “work” as defined in Section 101 of the Copyright Act (while a motion picture is), she was not an author of the work, Garcia’s own complaint provided sufficient facts to determine that she was an employee, her performance fit within the work for hire doctrine, and she did not “fix” her performance by recording it herself.  The dissent is correct; the majority is wrong.

This decision has been broadly criticized, and for good reason.  The majority confirmed a copyright interest to a minor performer in a movie and granted an injunction against the movie pending trial.  If this opinion survives, every actress could tie up a film in litigation for years over her creative contribution to the film.  Pundits point out that this ruling will increase the temptation to evade the criteria set forth in Section 230 of the Communications Decency Act by claiming copyright infringement.  In short, this opinion could create chaos in not just the movie industry but many others.  Hopefully we can count on the entire Ninth Circuit or the Supreme Court to clean up the morass created by this opinion.  Stay tuned.