A recent federal appeals court ruling has underscored, once again, why it is so important for content producers to properly acquire intellectual property rights from persons providing creative contributions to their content. In Garcia vs. Google Inc., No. 12-57308, an actress successfully obtained a court order forcing the takedown of a motion picture from YouTube even though she did not own the film’s copyright and was only briefly depicted in the work.
Cindy Lee Garcia was hired to perform a minor role in a scene shot for an adventure film that was not the work published on YouTube. The project, entitled “Desert Warrior,” was never completed. But the scene Garcia shot for the movie was used instead in an anti-Islamic film titled “Innocence of Muslims.” In the film her brief performance for Desert Warrior had been altered by the producers to include partially dubbed over dialog in which she appears to be asking, “Is your Mohammed a child molester?” Stating the obvious in his opinion, 9th U.S. Circuit Court of Appeals Judge Alex Kozinski wrote, “these, of course, are fighting words to many faithful Muslims.”
A simple model release is often woefully inadequate to provide producers with the kinds of rights and permissions that are required to enable the producer to fully exploit the content in which the performer appears.
After the film aired on Egyptian television and the work was uploaded to YouTube, there were, of course, protests by throngs of outraged Muslims and, of course, a fatwa was soon issued by an Egyptian cleric calling for the killing of everyone involved with the film. So, rather than their making a killing with the film, the producers found themselves at risk of, well, the reverse, so to speak. And even though Garcia appeared in the ill-fated flick for less than five minutes, she too soon began receiving death threats.
Out of concern for her safety, the actress asked Google, the owner of YouTube, to remove the video from its site. Her efforts, which included the filing of eight takedown notices, were all met with Google’s repeated refusal to remove the video. Google justified its position claiming that Garcia had no copyrights in the video and as such, had no rights under the Digital Millennium Copyright Act to compel Google to take down the video.
Garcia next filed an action in federal court to force Google to remove the video. In her lawsuit Garcia claimed that she has an independent copyright in the recording of her performance, and that since she had not assigned that copyright to the producers of the video, the unauthorized performance of the recording of her performance on YouTube was an infringement of her independent copyright. The trial did not agree with Garcia and refused to issue an order to remove the video from the site. But the 9th Circuit, a court that is one step below the U.S. Supreme Court, reversed the lower court’s ruling and held that Garcia “demonstrated a likelihood of success on her claim that “Innocence of Muslims” infringes her copyright.”
To reach its conclusion, the court determined that under U.S. copyright law Garcia’s performance did indeed result in Garcia’s ownership of an independent copyright in the work. Specifically the court stated that “[a]n actor’s performance ... is copyrightable if it evinces some minimal degree of creativity no matter how crude, humble or obvious it might be.... That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all.... It’s clear that Garcia’s performance meets these minimum requirements.”
Google has petitioned for an en banc rehearing of the decision, which will mean that the ruling will be reviewed by all the judges comprising the 9th Circuit Court. This might result in a reversal of the ruling. But should the decision be affirmed, it could have profound implications for motion picture producers that have not taken appropriate measures to acquire from performers the copyrights that might result from their performances. The reasoning underlying the court’s decision could, for example, if taken to its logical conclusion, conceivably provide a great number of other performers, who similarly own independent copyrights in works, with the ability to prevent the distribution of such works.
Unfortunately, many content producers do not acquire copyrights from performers. Many simply have the performer sign a “model release” that provides the performer’s permission to photograph the performer or record the performer’s performance without providing any means for the producer to acquire intellectual property rights, such as copyrights, that might result from the performance rendered by the actor or actress. A simple model release is often woefully inadequate to provide producers with the kinds of rights and permissions that are required to enable the producer to fully exploit the content in which the performer appears.
In the wake of the court’s important ruling in Garcia vs. Google Inc., it is now more important than ever for content producers to be sure that they acquire from all persons providing creative contributions pertaining to the production of a motion picture, or other creative work, all the intellectual property rights that are necessary to fully exploit the work as desired. The following is a very basic list of permissions, rights and waivers that should, to the maximum extent permitted by law, be irrevocably acquired from all persons providing acting or modeling services:
- The authorization and permission to photograph, videograph and otherwise record the performer and his or her voice, bodily sounds, and other characteristics;
- All intellectual property rights in the subject work, and all intellectual property rights otherwise resulting from the services provided by the actor or model;
- The unlimited rights to use throughout the Universe, by any means now known or developed in the future, any and all works and derivative works directly or indirectly resulting from the services provided by the actor or model;
- The right, at the owner’s election, not to use any of the works created in which the performer is depicted;
- An assignment, or waiver of enforcement of, the actor or model’s “moral rights” (e.g., rights entitling a party to proper crediting or attribution for the creative contribution, and rights regarding the preservation of the integrity of the work);
- The right to freely use the person’s name, likeness, voice, and mannerisms in association with the content produced, as well as the right to use the subject work and the person’s name, likeness, voice and mannerisms in association with the marketing and sale of other products and services;
- All future-created rights pertaining to the subject work and/or the services provided; and
- The right to freely license and assign any and all of the rights granted.
The rights and permissions listed above are not all of those that might be necessary or desirable to obtain. Content producers should, of course, always consult with a competent intellectual property attorney to determine what rights should be acquired.
Content producers should also promptly register copyrights that they acquire. In the U.S., timely copyright registration of a work provides some very special copyright enforcement benefits to copyright owners. For example, copyright registration prior to infringement can provide a copyright owner with the right to seek statutory damages and attorney’s fees in copyright infringement cases. These are powerful remedies that are often necessary for cost-effective enforcement of copyrights.
Properly drafted rights acquisition documents will also usually have a number of other important provisions, such as a requirement for the rights provider to execute other documents that might be reasonably required for the rights recipient to copyright the subject work or otherwise perfect its ownership of rights.
Finally, if copyrights are acquired by assignment, it is also very important for producers to record the assignment of copyrights with the Copyright Office to address the possibility of a subsequent conflicting transfer. A recordation of a copyright assignment with the Copyright Office is different from, and in addition to, the filing of a copyright registration pertaining to a subject work.
The reason why one should record a copyright assignment with the Copyright Office is similar to the reason why one should always record a transfer of real property.
Specifically, recordation is undertaken to reduce the possibility that a third party obtains a superior claim to the property resulting from a subsequent conflicting transfer of the property. A similar provision governing the priority of conflicting copyright transfers is provided in Section 205(d) of the Copyright Act. Section 205(d) states:
(d) Priority Between Conflicting Transfers. As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the U.S. or within two months after its execution outside the U.S., or at any time before recordation in such manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.
(Also see https://www.copyright.gov/circs/circ12.pdf).
The ruling in Garcia vs. Google Inc. has been met with a hailstorm of criticism by many motion picture companies and their attorneys, and the decision may yet be reversed after an en banc rehearing by all of the 9th Circuit judges.
But regardless of the outcome in the case, I believe that persons, such as actors and other performers that provide a bona fide creative contribution to the creation of a work, such as a motion picture, can indeed be authors of their creative contribution, and as such, may be entitled to obtain an independent copyright, in and to, their creative contribution.
Because of this, the rights acquisition documents I draft for my content production clients include an assignment of all intellectual property rights resulting from acting or modeling services provided.
If you are a content producer, I urge you to take steps as soon as possible to ensure that your company is acquiring all the copyrights and other rights resulting from acting and/or modeling performances.
This article is not a comprehensive discussion about all the various rights acquisition documents a content producer should use or may encounter. This article is also not intended to be, nor should it be considered to be, legal advice. If you have a legal question or other matter related to the any of the topics discussed in this article, I invite you to contact our office at the number below or seek the counsel of another qualified and experienced attorney familiar with the legal matters discussed in this article.
Gregory A. Piccionelli is an entertainment and Internet attorney and free speech advocate. He can be reached at (818) 201-3955 or greg@piccionellisarno.com.
