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Eric Goldman’s Comments on My Post of Last Week Regarding Actress’s Right to Sue for Copyright Infringement

My post of last week regarding the actress in “Innocence of Muslims” suing for copyright infringement generated the following email exchange between me and Eric Goldman, Professor, Santa Clara University School of Law and Director, High Tech Law Institute (http://blog.ericgoldman.org; email: egoldman@gmail.com):

ERIC: I think you breezed over the fixation requirement. Yes, there is a fixation *by someone*, but the requirement is that the fixation be “by or under the authority of the author,” i.e., by the actor. I don’t even see that as a colorable argument. Do you? Eric.

JONATHAN: I thought about that, and about addressing it as an issue, but then concluded (in my own mind) that the fixation was at the request of the actress — she’s consenting to the fixation of her performance by the director/camera man, etc. Maybe the more interesting issue from that POV is what happens when the director/editor has the right to select shots/angles/cut entire scenes and performances. If the artist has given up the right to create the derivative work (because the completed film would, in some ways, be a derivative of the performance), then is that implicit consent that the actress does not own the copyright, or merely a non-exclusive license to create a derivative work?

ERIC: I don’t see how acquiescing to being recorded = embodiment “by or under the authority of the author.”

JONATHAN:  So, by your comment, I think we skip over whether the performance rises to the level of a protectable expression. That is, if we’re talking about fixation as the hang up, then I think we’ve tacitly agreed that the performance, if fixed, is entitled to protection. (If not, I think we get into Horgan v. Macmillan, Inc. 789 F.2d 158 (2nd Cir. 1986 (involving Balanchine’s Nutcracker), and Martha Graham [380 F.3d 624, 632] again.)

As to fixation, I think both of those cases establish that a choreographed work may be fixed by being filmed, video taped or though the use of some written notation system. (See 789 F.2d at 160, n.3 and 380 F.3d at 632 and n. 13.)

So if we agree that fixation can occur, then we’re just down to whether that fixation/embodiment is “by or under the authority of the author.” I think that’s answered largely by a question of fact. Having spent many years on film and TV sets, it’s hard for me to see an argument, made by an actor, that he/she did not consent to the fixation of his/her work. In a professional setting, the actor is being paid for that performance and typically has an expectation of receiving a copy of the finished work (so they’re expecting, desiring, and anticipating fixation, if only to add to their own portfolio). Moreover, the actor hears “action!” and “cut!,” and is there while the camera is set, etc., so he/she usually knows when the camera’s running and he/she is being recorded. They also know when they blow a scene and say — “can we try that again?” or when the director says “let’s try that again,” or the cameraman says” boom in the shot” or the sound guy says “I missed that, I need to start again.” So factually, I think it would be very difficult for an actor to argue that the his/her was not fixed with his/her knowledge.

Consider a situation whether the person on film doesn’t know of the filming: hidden camera or a bootleg recording at a live performance. The law is pretty clear that someone who has been surreptitiously filmed does not consent to the work having been fixed, and thus may sue the person who fixes such an audio/video recording because it was created without the consent of the performer (as in Kiss Catalog, 350 F. Supp 2d at 827-29, and 17 USC 1101). If an unauthorized fixation can give rise to the anti-bootlegging statute, the converse of this must be a permissive/knowing/authorized fixation.

If permissive and knowing amounts to authorized, the performer must also be said to have acquiesced to the recording (factually, it would illogical to conclude otherwise). If so, then acquiescing = embodiment “by or under the authority of the author.”

Your turn.

ERIC: We agree on so much except who benefits from the fixation. Yes, the actor consents to being recorded, but consent alone can’t be enough to say the recording is done “by or under the authority of the author.” Otherwise, wouldn’t the happy couple own the photos from their wedding? Wouldn’t a band own the bootlegs if they consented to having them created? That makes no sense. The actor is not “fixing,” so the “by the author” piece doesn’t apply. The actor has to rest on the recording being “under their authority.” I don’t think consent = authority; I believe it has to be a much more rigorous relationship, like an agency relationship. I’d have to research the legislative history to see what examples they give. Eric.

JONATHAN: Newlyweds have no copyright b/c they weren’t “performing” and under the holding in Burrow-Giles Litho Co. v. Sarony, 111 U.S. 53 (1884) (photographer, not subject, owned copyright based on posing of the subject, selection and arrangement of costume, accessories, etc., use of light and shade and evoking desired expression from subject); Ets-Hikin v. Skyy Spirits, Inc., 225 F. 3d 1068, 1076-77 (9th Cir.. 2000) (same basic holding).

As to band owning bootleg, band would own musical comp; if band consented to recording, e.g. for live album, band owns sound recording absent agreement to the contrary (just like here). If sufficient creativity in that recording (not likely if it is a bootleg), and agreement, then maybe a joint work if that was the intent. Absent that intent and originality evident in the recording itself, I think band owns CR even in sound recording.

Also, one last note, here, the only agreement with the actress was that she’d get credit on IMDB. That suggests to me that she wanted the film (in the formation she thought it take) to be publicized/distributed for her benefit as an actress (an addition credit, or whatever). That would further support my position that she consented/acquiesced to the fixation by the director.

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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