Can an actor really "own" a performance? Cindy Lee Garcia refiles her case against the filmmakers and YouTube and adds YouTube's users.
Just when the controversy over Innocence of Muslims could hardly get more interesting, it has. The film already has set off riots in the Middle East and North Africa, free speech debates around the world and, after actress Cindy Lee Garcia sued the creators of the film and YouTube, a controversy over the rights of movie producers.
Garcia was unsuccessful last week in getting a California state court judge to order YouTube to take down the controversial film, but that hasn't ended things. Garcia refiled her case in federal court Wednesday, asserting even more claims that she did the first time around, her lawyer says.
On top of fraud, unfair business practices and libel -- among other causes of action -- she's now asserting copyright claims.
In doing so, Garcia aims to make some history. She wants to prove that actors are entitled to a piece of the copyright when "authoring" their performances on film. Further, she continues to fight YouTube, this time asserting that the video-sharing giant cannot lean on the safe harbor provision of the Digital Millennium Copyright Act because it failed to expeditiously remove the video at the behest of a copyright owner -- namely, her.
And if all that isn't sufficiently compelling, Garcia also is suing the hundreds of individuals who have reposted the video on YouTube.
Actors don't usually bring this kind of lawsuit because performers in Hollywood almost always sign release forms before working. These agreements grant many rights to the producers, hold them harmless from various claims such as libel and typically bar an actor from seeking injunctive relief to stop the distribution and exhibition of a film.
But Cris Armenta, the attorney for Garcia, tells The Hollywood Reporter that her client never signed a release form.
"It was a slipshod production," says Armenta. "She didn't assign copyright. We spoke to six [of the film's] actors and their reps, and nobody has come up with something like that. The only thing [Garcia] signed was that she would receive IMDb credits."
Armenta adds that if any waiver is produced, she's prepared to argue that it isn't valid because it was procured by fraud.
To prevail in her coming case, Garcia is going to need to demonstrate why an acting performance is copyrightable.
On Tuesday, before filing the new lawsuit, Garcia's attorney made an interesting move. Armenta registered her performance at the U.S. Copyright Office, noting in the registration that the performance was not a work-made-for-hire.
Nevertheless, she's got huge obstacles ahead. To be eligible for copyright, Garcia's work has to be "fixed in a tangible medium." The film might count, but over the years, courts and legal observers have disagreed about whether the "author" is the person who creates expression or is rather the person who literally fixes the expression in a tangible medium. Usually, written copyright assignments make this issue moot.
There isn't a tremendous amount of case law on the subject, but asked to identify a case that could support her legal theory, Armenta cites Fleet v. CBS Inc.
In that dispute, which a California appeals court addressed in 1996, Stephan Fleet, an actor, sued the distributor of Legend of the White Horse for violation of his publicity rights. The defendant challenged whether Fleet's claims were pre-empted by federal copyright law. The appellate court didn't directly decide that actors could copyright their performances, but in handing a loss to Fleet, the appellate judges pointed the way to such a claim.
"To determine whether appellants' claim is pre-empted," the appellate judges wrote, "the creative aspects of the motion picture as a whole must be separated from the creative aspects of the underlying subject matter (the actors' performances in the film) to determine whether the underlying subject matter is itself copyrightable."
Ultimately, the judges seemed to suggest that the underlying subject matter like actors' performances are works of authorship fixed in a tangible medium of expression. Thus, the case was dismissed because whatever publicity rights Fleet enjoyed were pre-empted by copyrights assigned away.
That's not the end of the story, of course. This was only a state appellate decision that is unlikely to hold much weight in a federal courtroom.
Over the years, there's been skepticism about the claim that actors might be entitled to copyright over their performances. For instance, in a law review paper 10 years ago, Loyola Law School professor Jay Dougherty wrote, "There is little case law or statutory authority as to the position of performers as authors of an audiovisual work under U.S. law."
As for one decision he did find, Aalmuhammed v. Lee, which was decided in 2000 by the 9th Circuit Court of Appeals and had to do with authorship of the Spike Lee film Malcolm X, not much hope was offered to actors. Here's one passage from this decision: "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. A creative contribution does not suffice to establish authorship of the movie."
Garcia likely will have a challenging road ahead, but if it's true that she never signed a waiver, never assigned a copyright and never signed a casting contract that deemed her performance to be a work-for-hire, she could get past the initial roadblocks.
If she is able to assert a valid copyright, it would put YouTube and parent company Google in a sticky situation. For the past few years, in defending a lawsuit brought by Viacom, Google has been trumpeting the DMCA safe harbor defense. The company believes that it is the copyright owner's responsibility to inform it of infringing works before any action is taken to remove such works.
But what happens when a copyright holder does send YouTube a copyright notice?
Most often, YouTube will obey. The company is quite careful in that regard. For example, four years ago, the presidential campaign of John McCain practically begged YouTube to consider "fair use" when determining whether objections from media organizations necessitated a takedown of viral campaign advertisements. YouTube responded to the pleas by saying that it couldn't play favorites. Instead, YouTube has preferred a system of notices and counter-notices to settle whether a video needs to be removed.
"As a practical matter, we sent them five takedown notices," says Armenta. "Never once did they ask the other parties to dispute our copyright authority. Since they didn't avail themselves of safe harbor, they are on the hook for copyright infringement."
This might also include all of those who have reposted the Innocence of Muslims video. In the lawsuit, hundreds of "John Does" are submitted as violating Garcia's copyright. A judge is going to have to decide rather quickly whether the actress' claims stand a chance because Armenta likely is going to be pressing for subpoenas to identify those individuals.