The 9th Circuit Court opinion in Garcia v. Google begins as follows:
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.”
The ﬁlm’s writer and producer, Mark Basseley Youssef—who also goes by the names Nakoula Basseley Nakoula and Sam Bacile—cast Garcia in a minor role. Garcia was given the four pages of the script in which her character appeared and paid approximately $500 for three and a half days of ﬁlming. “Desert Warrior” never materialized. Instead, Garcia’s scene was used in an anti-Islamic ﬁlm titled “Innocence of Muslims.” Garcia first saw “Innocence of Muslims” after it was uploaded to YouTube.com and she discovered that her brief performance had been partially dubbed over so that she appeared to be asking, “Is your Mohammed a child molester?”
These, of course, are ﬁghting words to many faithful Muslims and, after the ﬁlm aired on Egyptian television, there were protests that generated worldwide news coverage. An Egyptian cleric issued a fatwa, calling for the killing of everyone involved with the ﬁlm, and Garcia soon began receiving death threats. She responded by taking a number of security precautions and asking that Google remove the video from YouTube.
Most copyright case opinions don’t begin in such a compelling manner. Passive Guy could provide numerous examples, but you’ll have to trust him on that contention for now.
PG includes the full opinion below, but will summarize some of the major points here. For copyright nuances, read the opinion.
Ms. Garcia’s contention was that her performance in the film was a copyrightable work and that she never granted the producer any rights to her performance, particularly the right to make a derivative work in which she appeared to be speaking different words.
Mr. Nakoula was guilty of a number of errors of judgement with respect to this film, one of which was not following the standard Hollywood practice of having everybody sign a work made for hire agreement.
Under copyright law, a work made for hire means that the creator of a book, song, movie or acting performance has transferred all of his/her/its interest to whatever copyrightable work he/she/it creates under the agreement to the producer. Under a proper work made for hire agreement, Mr. Nakoula would have owned all of Ms. Garcia’s copyright to her performance. Since he owned the copyright, he would be permitted to make derivative works, like putting new words into her character’s mouth.
As an illustration of the layers of copyright involved in this decision, let’s start with a simple example that was mentioned in the case opinion.
1. The artist known as Prince writes a song called Nothing Compares 2 U.
2. The singer known as Sinéad O’Connor performs the song with a proper performance rights license from Prince for the song music and lyrics.
Prince owns the copyright to the music and lyrics of the song. You need a license from him to do anything with the music and lyrics. Sinéad owns a copyright to her performance of the song. You need a license from her to do anything with that performance.
Even though Prince is the author of the song, he can’t do anything with an audio or video recording of Sinéad performing the song without Sinéad’s consent.
For copyright purposes, there are several levels of derivative works in the Garcia case, each of which is copyrightable:
1. The copyright to the screenplay is owned by the screenplay’s author (unless they signed a work made for hire agreement).
2. The film made from the screenplay is a separate derivative work of the screenplay and the film’s creator owns the copyright to the film. The filmmaker needs rights to the screenplay to do anything with the film, but the author of the screenplay does not own the film because the film is a separate creative work.
3. The court held that Ms. Garcia’s acting performance, while derivative of the screenplay and incorporated in the larger film, was a separate work as well and she owned the copyright to her performance (absent a work made for hire agreement). Like the filmmaker, Ms. Garcia was the author of her performance. She would need rights to the film (and, through the film, the screenplay) to do anything with her performance, but she owned the copyright to her performance.
Because she owns a copyright in part of a video YouTube is streaming, she has the right to pursue a DMCA take-down enforcement action against YouTube for her copyrighted performance in the film. If the filmmaker didn’t have rights to her performance, neither does YouTube.
This is a long prologue to a few thoughts that are more directly related to authors and the kinds of contracts they’re asked to sign.
1. As a general proposition, authors should not sign work made for hire agreements. In doing so, they are transferring all their interest in their books written under such agreements, including their copyright, to someone else. Advertising copyrighters, screenwriters hired by a producer, etc., should expect to sign work made for hire agreements, but fiction authors (and, most of the time, non-fiction authors as well) should not.
Instead, the author gives a license under his/her copyright for others to do things with the author’s book – put it up for sale online in ebook form, publish it, translate it, turn it into a movie, etc.
2. Generally speaking, PG doesn’t like publishing contracts by which an author gives up all rights to his/her books to a publisher. Draw the line at licensing the publisher to publish ebooks, printed books and, perhaps, audiobooks.
Unless the publisher owns a movie studio, the author should keep film, TV, etc., rights. The only way the publisher will monetize those rights is to license a producer or studio to use them. The author can do exactly the same thing her/himself with no need to give a big chunk of film revenues to a publisher.
3. PG has been seeing some publishing contracts that include a grant of rights to publicly perform the author’s work in addition to the right to print, publish and sell hardcovers, paperbacks and ebooks.
The idea behind the publicly perform language is that licensing and distributing ebook files for people to read on digital devices is pretty much the same thing as licensing and distributing video files for people to watch on digital devices.
Motion picture studios earn most of their money by licensing others to publicly perform their movies, whether the license is to a movie theater for paying customers to watch sitting in a big dark place or to Netflix for subscribers to watch in a small dark place.
PG’s problem with the publicly perform language is that it can cause big problems for authors who retain movie, TV, etc., rights. The author can license the studio to create a screenplay and movie from his/her book, but, with the broad language in the publishing agreement, the author can’t license the studio to publicly perform the movie because the publisher holds that right.
Producers and studios aren’t interested in only giving private performances of their films to friends and family at home.
Such public performance language can constitute a back-door rights-grab.
Here’s the full opinion: