Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

Actress Claims Copyright Protection In Her Performance; Can You Do That?

A debate is brewing over the film, “Innocence of Muslims.”

Slow down, I’m not talking about the debate over it’s merit, artistic qualities, or even the really important First Amendment issues it presents.

I’m talking copyright. Specifically, whether an actor/actress has a right to assert a copyright interest in his/her performance when that performance is fixed in a tangible medium such as video or film.

That’s the position taken by Cindy Lee Garcia, an actress who appears in “Innocence of Muslims,” the film that has caused rioting, mayhem and murder in the Middle East and beyond.

Garcia is understandably upset about the effects the film has had, and what it has done to her personally. Actors are accustomed to critical reviews, and even to statements like “you her career is over!” But according to a complaint Garcia filed in the California Superior Court, she has received death threats, is “no longer permitted to see her grandchildren” because her family fears for their safety, and was “fired from her job as a direct result of the Film. . . .”

Understandably Garcia wants the film yanked from YouTube.

So she contacted YouTube and asked that they remove it based on her privacy concerns. YouTube declined that request.

As a result, Garcia sued YouTube (along with the film’s director, Nakoula Basseley Nakoula) in state court alleging – among other things — invasion of privacy, violation of California’s right of publicity statute, and intentional infliction of emotional distress.

She also moved for a temporary restraining order, which the court denied two days later.

Five days after that, Garcia dismissed the case, and has now refiled in federal court, this time including in her complaint a claim for copyright infringement.

Back to Garcia’s claim for copyright protection in her performance. Garcia argues that she owns the copyright right interest in her work, even though that work is part of Nakoula’s film. She’s even applied for a copyright registration in her performance (a prerequisite to bringing a copyright infringement action).

If this works, it’s a brilliant move. Why?

Because the Digital Millennium Copyright Act (“DMCA”) gives the copyright owner the right to demand that an internet service provider, such as YouTube, remove that work from its site. See 17 U.S.C. Section 512(c). (It also may give YouTube a way out, if it wants one: Section 512(c) shields an ISP from liability where it acts expeditiously upon receipt of a DMCA-compliant notice to remove or disable access to the material provided it either does not have the right and ability to control the infringing activity, or – if it does – does not receive a financial benefit directly attributable to the infringing activity.)

Which brings us back to: does an actor or actress have a copyright interest in his or her recorded performance? While there is scant law on this issue, I think the answer is yes.

In Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (2d Dist. 1996), the California Court of Appeals held that actors who sought damages and an injunction against the distribution of a film in which they appeared because they had not been paid for their performances, could not assert a claim for right of publicity. Rather, the Court said, that claim was preempted by the Copyright Act, and the actors would have to assert a claim for copyright infringement or breach of contract.

In reaching this decision, Court held that that the “individual performances in the film White Dragon were copyrightable. Since [the actors’ right of publicity claim] seeks only to prevent CBS from reproducing and distributing their performances in the film, their claims must be preempted by federal copyright law.” Id. at 1919.

While Fleet is a state court case, and thus not binding on the federal court’s ruling on this issue, it is notable that federal courts have dipped a toe into this issue as well. For example, in Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010), the Court similarly held that an actor’s right of publicity claim in his recorded performances was preempted by copyright law. A district court in the Western District of Washington came to the same conclusion. In Aronson v. Dog Eat Dog Films, Inc., 2010 738 F.Supp.2d 1104 (2010), the court found federal copyright preemption of a right of publicity claim based on use in a documentary of plaintiff’s video.

Moreover, the position that Garcia’s performance is entitled to protection is supported by the Copyright Act itself. The Act clearly protects dramatic works, pantomimes and choreographic works. See 17 U.S.C. Section 102 (a)(3), (4); see also Ahn v. Midway Manufacturing Co., 965 F. Supp. 1134, 1138 (N.D. Ill. 1997) (digitized movements of martial arts experts and dancer as characters in video games held to constitute choreographic works); Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (choreography protected as a species of dramatic composition).

And fundamentally, “Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression. . . .” 17 U.S.C. Section 102 (a); and see Kiss Catalog v. Passport Int’l Prods, 350 F. Supp. 2d 823 (performers may sue one who fixes the sounds or images of a live musical performance without the consent of the performer, or one who later transmits or distributes the unauthorized fixation of the performance).

So if Garcia’s performance was captured on film, it was fixed, and if Garcia was the “author” of that performance, it would seem to fall within the basic scope of copyright protection. If it does, why can’t she claim copyright protection over it?

One argument might be that she wasn’t the author of her performance, but rather, the director was. (And, beyond this, the Court might also find a policy reason for denying her claim.) These issues were addressed in Aalmuhammed v. Lee, 202 F. 3d 1227 (9th Cir. 2000), albeit not arising out of facts identical to those at issue in Garcia’s claim.

In Aalmuhammed v. Lee, director Spike Lee hired Jefri Aalmuhammed to ensure the accuracy of scenes depicting Malcolm X’s trip to Mecca in 1964. Aalmuhammed coached Denzel Washington, and even scripted some scenes in the film. A couple of years after the film’s release, Aalmuhammed asserted a copyright ownership interest in the film, and sued Lee and the studio that released the film.

The 9th Circuit analyzed Aalmuhammed’s claim for joint copyright ownership, noting that a “joint work” is one that has been prepared by “two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole” under Section 101 of the Copyright Act.

In interpreting the statute, the Court considered who constitutes an “author.” It said ”Who, in the absence of contract, can be considered an author of a movie? The word is traditionally used to mean the originator or the person who causes something to come into being . . . . For a movie, that might be the producer who raises the money [or] the editor [or, under the] “auteur” theory . . . it might be the director, at least if the director is able to impose his artistic judgments on the film.”

The Court observed that “Everyone from the producer and director to casting director, costumer, hairstylist and ‘best boy’ gets listed in the movie credits because all of their creative contributions really do matter. It is striking in Malcolm X how much the person who controlled the hue of the lighting contributed, yet no one would use the word ‘author’ to denote that individual’s relationship to the movie.”

Thus, the Court concluded, “A creative contribution does not suffice to establish authorship of the movie.”

Ultimately, the Aalmuhammed court ruled that while Aalmuhammed made “extremely helpful recommendations,” Spike Lee was not obligated to use them, and thus plaintiff lacked the control over the work that would suggest any co-authorship.

In addition, the Court said, even Spike Lee, the director, had performed his tasks as a “work for hire,” so no one could reasonably have intended that Aalmuhammed had greater rights to the copyright in the work than Spike Lee (who, as a result of his work for hire agreement with the studio, had none).

Finally, the Court made a significant policy point that may effect Garcia here.

It said “[t]he broader construction that Aalmuhammed proposes would extend joint authorship to many “overreaching contributors,” . . . and deny sole authors “exclusive authorship status simply because another person render[ed] some form of assistance.”[ Citations omitted.] Claim jumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were doing, if creative copyrightable contribution were all that authorship required.” 202 F. 3d at 1236.

Now in light of all this, you may be wondering why, if Garcia has any hope of prevailing, all actors and actresses don’t make a claim for the copyright in their performances.

Actors typically don’t bring this kind of lawsuit because they almost always enter into “work for hire agreements,” as Spike Lee did with respect to his directing services in Malcolm X, or otherwise release such claims before commencing work on a project. Apparently Garcia never executed any such release.

By the way, it’s important to note that Garcia states in her complaint that she also had no idea the film would become the “Innocence of Muslims.” She states she “responded to a casting call posted on Backstage for a film titled ‘Desert Warrior,’ which was represented to be an ‘historical Arabian Desert adventure film,” and that she would not have voluntarily preformed in a hateful production.

I hope she gets to see her grandkids sometime soon.

Jonathan Pink received his MFA from UCLA’s School of Film and Television (1988), and was an award winning screenwriter before becoming a nationally-recognized, intellectual property and business lawyer. He currently leads Bryan Cave LLP’s Internet and New Media Team, where his practice focuses on intellectual property and commercial litigation, including arts and entertainment related matters. He is resident in the firm’s Santa Monica and Irvine offices, and can be reached at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

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