Garcia v Nakoula, Google, YouTube and 200 Others: Is an actor an author?

Kats like to get to the legal issues behind the news

The notorious video 'Innocence of Muslims' has raised controversial issues such as the incitement of racial and religious hatred, internet censorship and privacy -- but its dark shadow has also been cast over the substantive rules relating to copyright for performances in the United States: specifically, is an actor's audio-visual dramatic performance a work of authorship fixed in a tangible medium of expression and therefore capable of copyright protection? On the contention that it is, actor Cindy Lee Garcia has claimed infringement of her rights by the alleged producer of the film Nakoula (aka Nakoula Basseley Nakoula/Mark Basseley Yousseff/Mark Basseley/Sam Bacile/Abenob Nakoula Bassely/Sam Bassil), Google, YouTube and some 200 individuals who have re-posted the film or assisted in its production without her authorisation. The complaint can be read in full here.

Garcia is seeking damages and injunctive relief for copyright infringement under US copyright law on the grounds of direct and indirect infringement (17 U.S.C., section 101 et seq). The crux of the claim is that she owns copyright in her dramatic performance as it was fixed in tangible form when it was filmed and she did not assign her rights to the film makers. As such, over-dubbing of her original performance by the producers without her consent and subsequent distribution of the film facilitated by YouTube and its parent Google (despite being issued with five Digital Millennium Copyright Act 'takedown notices') are alleged to constitute infringement of her rights. She claims that although she signed a contract, currently illusive, ensuring she would receive IMDB credit for her performance that contract was not a work for hire agreement and no transfer of rights took place. Further, even if such a contract exists (it is claimed that the onus is on Nakoula to produce and submit the contract as evidence), it is invalid on the grounds that it was procured by fraud, deception and misrepresentations. As part of the claim, she has filed an application for federal copyright registration for the rights in her dramatic performance, currently pending. Although copyright invests in the holder as soon as the copyright is created and not upon registration, as most IPKat readers know, this move is hoped to support her claim.

Establishing that an actor is a co-author is as easy
  as being a supersonic diver, isn't it Felix?              

What is perhaps most curious about the complaint is the actor's reliance on a right of authorship which has very shaky legal foundations in copyright law. To qualify for copyright protection in her performance Garcia will need to show that she is an author of the work (17 U.S.C. section 201(a)). Professor Jay Dougherty suggests that as copyright subsists in the performances of an orchestra (Waring v WDAS Broadcasting Station Inc., 194 A. 631 (Pa. 1937)) and works of choreography and pantomime (17 U.S.C. section 102(4)), then by analogy 'an actor's original movements, postures, gestures, and other physical expression may constitute authorship' ('Not a Spike Lee Joint? Issues in the Authorship of Motion Pictures Under U.S. Copyright Law', 49 UCLA Law Review 225 (2001) at p. 304. Abstract available from SSRN here). However, the basic principle of originality necessarily applies:

'A performer's work would not be considered original, and thus would not be copyrightable, to the extent that the actor's material is described in the screenplay, is originated by the director, is dictated by necessity, consists of standard, stock movements, or is copied from other performances'. 

As such, Professor Dougherty proposes that the legal test is that for an actor to be considered an author the performance must have 'original expressive aspects'.

Assuming Garcia clears this first hurdle, it will then be necessary for her to show joint authorship as films are collaborative endeavours. As Professor Edward Lee, writing for the Huffington Post, notes:

'the standard for joint authorship of a film in the United States is biased against actors being able to claim copyright in the scenes they perform. More likely the copyright goes to the movie studio or the one producing or directing the film. Here, Ninth Circuit precedent in Aalmuhammed v Lee, 202 F.3d 1227, 1233 (9th Cir. 2000) creates a high standard of (i) the exercise of control over the work and (ii) intent of participants to be considered joint authors that Garcia may not be able to meet'. 

What work of hire agreement?

In the absence of a work for hire agreement performers who qualify as authors might on the face of it be viewed as co-authors of a joint work, however, under the strictly interpreted 'joint work requirements...an actor might not satisfy the intent-to-share authorship requirement and almost always will fail to satisfy the control test' (Dougherty).

The chances of success do not appear good for Garcia's claim. An actor may be an author but not a co-author of a film. Neither can the Beijing Treaty on Audiovisual Performances, concluded in June this year and considered by the IPKat here, bring 'audiovisual performers into the fold of the international copyright framework in a comprehensive way, for the first time', seeing as it is yet to be ratified and come into force.

Back to Professor Lee, who queries why Garcia has taken this legal garden path rather than advanced an argument based on the principle of publicity:

'California state law recognizes a right of publicity claim based on proof of the following elements: "(1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury." (Stewart v Rolling Stone LLC, 181 Cal. App. 4th 664, 679 (Ct. App. 2010)). The basic idea is that someone else has taken your identity without consent and misappropriated it for the person's own advantage...Although Garcia didn't raise this claim in her federal complaint (not sure if it was raised in the state complaint, either), Garcia's plight appears to be exactly what right of publicity is supposed to address. It enables people to control the commercial use of their identities in order to protect the economic value they have built up in their names and reputations. If Garcia can prove that Nakoula obtained her participation in the video through fraud, then she would be entitled to a rescission of her agreement with Nakoula, making it void. Likewise, if Nakoula went beyond the terms of what Garcia agreed to in being a part of the video, Nakoula would lack the necessary consent to use Garcia's identity beyond the terms of her consent'.

Whether performers' rights fall under the head of copyright appears to be hazy across jurisdictions. Although UK law provides for performers' rights as well as moral rights in audiovisual works, whether such rights are correctly characterised as copyright remains disputed. What do the IPKat readers think?