“There are no small parts, only small actors.” So says the film and theater maxim most frequently attributed to Russian actor and director Constantin Stanislavski. But how small a contribution is enough for an actor or director to claim authorship over the whole of a film? And, if an actor or director cannot be considered an “author” of the whole, do they have any rights in the final product? The Second and Ninth circuits are poised to tackle these questions, with the specter of a possible circuit split and potential Supreme Court intervention looming on the horizon.

Garcia v. Google, Inc.

On November 12, 2014, the Ninth Circuit granted the request of Google and YouTube (with amicus support from other Internet titans such as Facebook and Twitter) to hold an en banc hearing to reconsider the Court’s decision in Garcia v. Google, Inc., case number 12-57302. Earlier this year, a divided three-judge panel of the Ninth Circuit touched off a firestorm of copyright uncertainty when it floated the possibility of finding multiple copyrightable interests embedded in a single fixed work, holding that “nothing in the Copyright Act suggests that a copyright interest in a creative contribution to a work simply disappears because the contributor doesn’t qualify as a joint author of the entire work.” Garcia v. Google, Inc., 743 F.3d 1258, 1263 (9th Cir. 2014). 

The facts in Garcia are simple, though thoroughly bizarre. The plaintiff accepted a small role in a film she believed to be entitled “Desert Warrior.” She filmed for three and a half days, but never executed a work for hire or any other contractual agreement with the filmmaker. When filming was completed, the footage was re-cut and re-dubbed to transform “Desert Warrior” into an anti-Islamic propaganda short. The short was then distributed via the Internet, which led to the plaintiff receiving death threats and becoming the subject of a fatwa issued by an Egyptian cleric.

Not having consented to this use of her performance and fearing for her safety, the plaintiff filed eight takedown notices with Google in an effort to have the footage removed from YouTube. To implicate the takedown provisions of the Digital Millennium Copyright Act (DCMA), the plaintiff asserted that the video violated her copyright in her performance. When Google did not respond to her takedown notices, she sought an injunction mandating removal of the film. After losing in the District Court, the plaintiff’s claims were surprisingly vindicated by the Ninth Circuit, and Google was ordered to take down the short film.

In ruling in the plaintiff’s favor, the Ninth Circuit found that an individual who makes an independently copyrightable contribution to a work can retain a copyright interest in that contribution even if the individual cannot be considered an “author” of the work as a whole. In Garcia, the plaintiff could not be considered a joint author of the film because she and the filmmaker did not intend to be joint authors as required by 17 U.S.C. § 201(a). Moreover, the plaintiff’s contribution to the film was decidedly minor as she did not write or direct its content. She also ultimately appeared on screen for a minimal amount of time. However, despite these hurdles, the Court ruled that “[a]n actor’s performance, when fixed, is copyrightable if it evinces some minimal degree of creativity,” therefore allowing the plaintiff to “assert a copyright interest only in the portion of [the film] that represents her individual creativity …”

In other words, the Court ruled that an independent copyright interest existed separate and apart from the copyright to the film – an “actor’s copyright” of sorts, the parameters of which the Court left undefined. The Ninth Circuit sitting en banc will now be called on to define those parameters, or kill the “actor’s copyright” in its infancy.

16 Casa Duse, LLC v. Merkin

Meanwhile, in the Second Circuit, the pendulum seemingly has swung in the opposite direction against the rights of individual film collaborators. On September 3, 2014, the Second Circuit heard oral argument in 16 Casa Duse, LLC v. Merkin, case number 12-3492. With its far less peculiar facts, Merkin has garnered far less attention than Garcia in the press. But the fundamental copyright dilemma is remarkably similar. 

In Merkin, the plaintiff bought the rights to a screenplay with the intention of producing a short film entitled “Heads Up.” The producers proceeded to hire a cast and crew, uniformly requiring an assignment of rights from all participants in the film-making process; that is, until it came to the film’s director. The plaintiff approached the defendant Merkin to direct the film, but hit repeated snags in negotiations of his contractual agreement. The sticking points centered on who would have final cut authority and whether the defendant could remove his name from the film if he was dissatisfied with its final form. Ultimately, no agreement was reached, but the defendant proceeded to direct the film in the absence of any work-for-hire or other contractual arrangement.

When it came time for the film’s release, the defendant asserted a copyright interest in his individual contributions to the film – the lighting, lens choices, camera angles, focal points, wardrobe, blocking, and so on – and attempted to block the dissemination of the film without his consent. Again, as in Garcia, the parties could not be considered joint authors under the Copyright Act because both sides expressly disclaimed any intent to be joint authors. Accordingly, the U.S. District Court for the Southern District of New York was forced to decide what to make of the director’s independently copyrightable contributions.

As the Court framed the conundrum, “The Second Circuit has not explicitly addressed the scenario where, absent a work-for-hire agreement, two parties each made more than a minimal contribution to a work and yet did not mutually intend to be co-authors.” 16 Casa Duse, LLC v. Merkin, USDC S.D.N.Y., September 30, 2013. However, unlike in Garcia, the Southern District took the opposite approach to a resolution, ruling that where “two or more parties each make independently copyrightable contributions to a work … [and] there is no joint authorship or assignment of copyright, the dominant author is the sole author.” (Emphasis added.)

The Court went on to hold that the plaintiff was the dominant author because it owned a greater proportion of the film’s individual contributions via the work-for-hire agreements executed by all the other artists involved in the production. As a result, the plaintiff was adjudged the sole author of the film, while the defendant, despite contributing individually copyrightable material, was “not an author at all.”

In effect, the defendant’s otherwise copyrightable artistic contributions were extinguished by a blunt calculus of whose contributions were most significant. The Second Circuit will now be called on to clarify the contours of this calculus, or else bring some form of “director’s copyright” back from the dead.


Some believe that the Ninth Circuit went too far in fashioning a nebulous “independent copyright interest” in Garcia. Under this formulation, who can issue a takedown notice under the DMCA? Every actor in a film? Every cameraman? Every artist on the set, including the boom microphone operator? Surely, this is too onerous a set of rights to police, placing significant burdens on Internet content providers in particular. 

On the other hand, the Southern District’s alternative formulation seems to fly in the face of Justice Holmes’s famous caution against judicial judgment of artistic merit in Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903). How does a jurist confidentially decide which artists have contributed “more” to a work so as to be deemed the work’s sole, dominant author without necessarily broaching the artistic merits of the work? No doubt the Copyright Clause’s promotion of the sciences and useful arts would be undermined if individual contributions were allowed to be cast aside too easily.

We will be watching the Second and Ninth circuits closely in the coming months to see how the respective panels resolve these competing concerns. If both courts affirm the rulings before them, a Supreme Court inquiry is not out of the question. In the meantime, our best advice for collaborators and would-be joint authors: As always, “Put everything in writing before you start!”