After Judge Sydney Thomas advised the parties in Garcia v. Google that a judge of the Ninth Circuit has requested a vote of the full court on Google’s request to stay the recent panel decision finding a likelihood that Cindy Garcia had a separately copyrightable performance in “Innocence of Muslims,” the parties briefed the stay issue this week. Google’s merits brief on the petition for rehearing of the substantive decision is due by April 3, 2014, and any interested amicus curiae may file a brief within ten days thereafter.
Most notable in the stay briefs, which otherwise advance the arguments that one would expect for or against a stay, is the revelation that Cindy Garcia applied to the U.S. Copyright Office to register the performance that she sued to protect—although it is not clear from the correspondence if the application predated her lawsuit, as it typically should. The correspondence concerning her application underscores the issues in play.
Google filed a copy of a December 18, 2012 letter from the Copyright Office to Garcia’s attorney, in which the Copyright Office addresses an application apparently submitted by Garcia. As Laura Lee Fisher, Chief of the Performing Arts Division of the Copyright Office stated (emphasis added):
For copyright registration purposes, a motion picture is a single integrated work. . . . Assuming Ms. Garcia’s contribution was limited to her acting performance, we cannot register her performance apart from the motion picture. Nor does it seem likely that she is entitled to register a claim in the motion picture as a whole in her name.
Garcia’s attorney responded on March 13, 2013, noting the pendency of the appeal before the Ninth Circuit. The Copyright Office was not impressed: Robert J. Kasunic responded on March 6, 2014 and noted that Garcia had failed actually to answer the Copyright Office’s question, and that the Copyright Act vests exclusive authority over registration in the Copyright Office.
The reader will note that Kasunic’s letter postdates the February 26, 2014 Ninth Circuit opinion. It is not clear from the March 6, 2014 letter itself whether the Copyright Office had the recent decision in hand, but Kasunic states well just why the Ninth Circuit’s opinion is so off-base as a matter of both law and practice. The letter notes that (emphasis added):
The U.S. Copyright Office’s longstanding practices do not allow a copyright claim by an individual actor or actress in his or her performance contained within a motion picture. The rationale behind this position is clear: an actor or actress in a motion picture is either a joint author in the entire work or, as is most often the case, is not an author by virtue of a work made for hire agreement.
The letter cites the legislative history of 17 U.S.C. § 201 for this point. It continues:
An actor’s or actress’ performance is either joint authorship or is a contribution under a work made for hire agreement. There is no question that Ms. Garcia’s performance was not a stand-alone motion picture that was subsequently adapted into another motion picture. Rather, it was part of the creation of “Desert Warrior”, subsequently renamed “Innocence of Muslims”.
This observation addresses the keystone of Garcia’s argument: that because she was deceived about the ultimate use of the footage, her performance is distinct from the end product. From here, the March 6, 2014 letter addresses conclusively the flaws in Garcia’s position. No one believes that Garcia was a volunteer: she was hired to act, and that acting was filmed. Under both practice and the law, that was a work made for hire by agreement, regardless of whether she signed anything. A work made for hire agreement does not have to be in writing, and even the recent Ninth Circuit decision rejected the idea that Garcia was a joint author (particularly since, as she argued, she disagrees with the final product, making it hard to argue that she was behind it).
A final point is in order about copyright registration. The Copyright Office does have exclusive authority over the registration of copyrights, but it does not control what is a copyrightable work. That is to say, registration of a copyright does not mean that a defendant accused of infringement cannot argue that the work was not, in fact, copyrightable, nor does a denial of registration mean a work is not copyrightable. Rather, registration is primarily of interest in infringement actions like Garcia’s: unless a work is registered a prevailing party typically cannot recover her attorneys’ fees if she wins a judgment for infringement. It also denies to Garcia, in the meantime, the statutory presumption of infringement (the copying of a registered copyright is presumed to be infringement, though the defendant can overcome that presumption). Since she has won, for the moment, that is probably not of much concern, but if the full Ninth Circuit reverses the three-judge panel and sends it back for litigation, the two in combination would probably be the end of her case.