26 February 2014

Bring Me the Film of Cindy Garcia

In a critically important — and certain to be appealed further — opinion today, a split panel of the Ninth Circuit decided that a lot of business assumptions made about the Copyright Act are, in fact, not supported by the text of the Act. And that has huge implications for all creative people, especially authors. In a more-nerdish context, it also inadvertently discloses the danger of relying upon a single commentary as a definitive explanation of a complex area of law.

It's perhaps best to let Chief Judge Kozinski explain the context:

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.

Garcia v. Google, Inc., No. [20]12–57302 (9th Cir. 26 Feb 2014) (PDF), slip op. at 4 (typography corrected... and, as we'll see later, it does make a difference in understanding).

Chief Judge Kozinski and Judge Gould voted that Judge Fitzgerald of the US District Court should have issued the preliminary injunction Garcia requested (or at least a very similar one), forcing YouTube to take down the video. Judge N. Randy Smith dissented, holding that Judge Fitzgerald had been correct. The opinion and dissent lead to several specific doctrinal issues and one overriding issue concerning the value of authority.

First, copyright persists in elements of larger copyrighted works. The majority and dissenting opinions really could not disagree more on this, at least as to this/these particular film(s).1 The key point is best understood by contrasting the statements of what is at issue.

A film is typically conceived of as “a joint work consisting of a number of contributions by different ‘authors.’” Garcia argues that she never intended her performance to be part of a joint work, and under our precedent she doesn’t qualify as a joint author. But just because Garcia isn’t a joint author of Innocence of Muslims doesn’t mean she doesn’t have a copyright interest in her own performance within the film.

(majority, slip op. at 6–7, citations and footnote omitted, typography corrected) versus

In sum, a motion picture is a work. A segment independently produced and then incorporated into a motion picture is also a work. However, the Copyright Act does not clearly place an acting performance within its sphere of copyrightable works. As a result, the law and facts do not clearly favor finding a copyrightable interest in Garcia’s acting performance.

(dissent, slip op. at 23, citations omitted). I think the majority reaches the correct conclusion here, but for different reasons. These segments begin to show the tunnel vision of both opinion-writers regarding the value of authority, because — for the second time in a matter of just a few months — the abject failure to even mention the Seventh Circuit's work on precisely this issue calls the quality of reasoning by everyone involved into question (and I'm not excluding counsel). Individual components of multimedia work for which one party is not entirely responsible still create copyrightable interests.

The contents of a comic book are typically the joint work of four artists — the writer, the penciler who creates the art work (McFarlane), the inker (also McFarlane, in the case of Spawn No. 9, but it would often be a different person from the penciler) who makes a black and white plate of the art work, and the colorist who colors it. The finished product is copyrightable, yet one can imagine cases in which none of the separate contributions of the four collaborating artists would be. The writer might have contributed merely a stock character (not copyrightable, as we're about to see) that achieved the distinctiveness required for copyrightability only by the combined contributions of the penciler, the inker, and the colorist, with each contributing too little to have by his contribution alone carried the stock character over the line into copyright land.

Gaiman v. McFarlane, 360 F.3d 644, 659 (7th Cir. 2004) (holding that the writer's work on a character created a copyright and authorship interest in that character). Judge Posner's reasoning is directly on point as to creation of a character through the non-script, non-director contributions of an actor... which are directly acknowledged in Garcia, at least by the majority opinion (slip op. at 8–11), even if the Ninth Circuit once again utterly fails to acknowledge any circuit's opinions other than its own and, rather grudgingly, the Second, on copyright matters.

Second, work for hire must satisfy the statutory definition. The majority opinion has by far the better of the argument here, clearly distinguishing between the two types of work for hire. First, it dismisses the employment-relationship branch (slip op. at 11–13), rightly rejecting the notion that "every schmuck with a videocamera [is] a movie mogul."2 Second, it notes that there was no work-for-hire agreement (id. at 12 n.6), meaning that the specifically-commissioned-work branch does not apply by its own terms. And that's important to authors and other creative workers, because it implies that all of the elements of patronage-by-the-work must be explicitly fulfilled or that theory fails: Not just the written-agreement requirement, but the advance-special-commission requirement... and the restriction of the work produced to certain kinds of works.3 Particularly in light of the actual holding in Garcia, this calls into question (among many, many questionable publishing-industry practices based upon pre-1976 Act judge-made law in the Second Circuit) the treatment of film/TV novelizations as works for hire, because a book-length work of fiction is not even close to being within one of the nine acceptable categories for patronage-of-the-work treatment.

Although neither the majority nor dissenting opinions actually reach a subissue here, I think it important to note that the facts of Garcia allow one to infer an equitable objection to applying either prong of the work-for-hire doctrine: Hire (whether as an employee or for a specific work) under false pretenses. The record as described in these opinions is not clear enough to make a real determination whether Basseley Youssef developed the intent to alter the substance (as opposed to mere tonality) of Garcia's performance before, during, or after the shoot. If the work-for-hire doctrine is meaningful, under the most-favorable-to-the-patron circumstances it must have been not later than during the shoot, and probably before then; under the common law of employment, the purpose of employment is intertwined with the fact of employment, and a special order or commission indicates prior intent. By analogy, consider an actor who is told that she will be shooting a short scene in a piece of fiction in which she will hold hands fleetingly with another adult female actor... only to discover that the scene was intended all along for use in an anti-gay-marriage political ad. There must be some correlation between the commission/special order and the substance of the end use, or the doctrine falls even farther apart than it already does under its own weight.

Third, traditional factors for granting/denying an injunction are independent of, but nonetheless informed by, copyright status. In this instance, as Chief Judge Kozinski notes, Garcia is objecting because the particular way her performance was altered creates a real risk of harm to her; the copyright/authorship issues really relate to standing to object (I think this opinion would have been better structured to make that explicit). The dissent, I'm afraid, becomes much too reliant upon its own copyright analysis and overinforms its analysis of the harm, balance of equities, and public interest aspects of this matter; in other words, the dissent is a bit too close to circular for my comfort. Admittedly, this is a difficult set of circumstances, and the standard of review (abuse of discretion by the lower court) is extremely high... but the particular facts (at least in this record and at this stage of the proceedings) in Garcia are egregious enough that the proper dominance of irreparable harm does — barely — support finding that Judge Fitzgerald abused his discretion by not issuing an injunction requiring takedown during the pendency of further proceedings.

Last for now — as I've more than hinted above — courts, and litigants, need to avoid overreliance on "seasoned" authority in the face of distinct contexts. The principle error engaged in here is overreliance on various Nimmers, without considering that both the elder and the younger Nimmer are so thoroughly invested in the viewpoint of studio-based film producers that they all too often shade their clients' commercial interests into immutable fact (and not merely doctrine). In particular, the actual discussion in § 6.05 of the 1990 edition of the Nimmer on Copyright treatise is, diplomatically, insensitive to the realities of multi-person creative activities in low-financial-stakes, nonhierarchical, noncontractual relationships — and, as Chief Judge Kozinski noted, there was no contract at issue in Garcia (or at least not one satisfying other aspects of the Copyright Act). This is compounded by ignoring other work from flyover territory that at least illuminates (if not necessarily determines) the outcome here, and is entirely consistent with Chief Judge Kozinski's majority opinion. For this I blame counsel. It has been my sad experience that IP counsel based in New York will give grudging acknowledgement to the Ninth Circuit, but rely almost entirely upon the Second, even for matters that are in New York by happenstance... and correspondingly so for IP counsel based in California. Put another way, the legal culture just doesn't look outside its own geographic boundaries except when forced to by an acknowledged competitor, and even then only to the largest and least-ignorable competitors. That tunnel vision disserves everyone involved, specifically including the clients, the public at large, and the courts of which the counsel are officers.4

It's quite disturbing to me that — in a case and dispute that inherently involves defining the creative process at least as much as the creative product — neither opinion acknowledges that, at their respective cores, the lines of precedent and authority that they rely upon ignore process in favor of static product. If there is one thing that is certain about Youtube videos, it is that they are not static. I think that Chief Judge Kozinski narrowly reached the "right" result, for something less than the right reason(s)... and that looking at the right reason(s) would have been better for everyone. That said, though, it's not the judges' responsibility to raise theories for the first time in their opinions — that responsibility belongs to counsel. It disappoints me that the foreign-affiliated counsel for one side did not do more (or at least did not do so clearly enough to influence the final rationale), and this is certainly one time that explicit reference to foreign law would be appropriate because the initial cause of action relates to a foreign-origin fatwa. That rather disturbingly feeds back into Judge Smith's rightful concern about the First Amendment as expressed at the end of his dissent (slip op. at 36–37).

* * *

Garcia is an excellent example of the ugliness of the real world getting in the way of clean doctrine. I mainly wish that the explanation of doctrine had been a little more tied to the facts... and a lot more accepting that not all wisdom about the doctrine comes from a certain narrow set of sources.

A side issue that this dispute implicates concerns the shape of the final product, and how that shape feeds back into the roles, rights, and interests of the parties who participated in creating it (regardless of whether they are finally adjudged coauthors). Specifically, had Innocence of Muslims been released as a discrete part of a separate whole, parallel to a single episode from Ken Burns' The Civil War or a single episode of Buffy the Vampire Slayer, I might well have shaded more toward Judge Smith's dissent. Under those circumstances, the First Amendment implications of impliedly altering the context of others' unrelated speech from other discrete parts takes on more importance, and would have weighed more strongly than it does (at least to my way of thinking, and relying only on the record summaries in this opinion and in Judge Fitzgerald's opinion below). Further, it would have diminished the weight of any authorship claim by Garcia herself... because even if I can't ennumerate it, there is some quantity relating to the whole below which an authorship interest becomes background noise (and should have been handled by contract anyway).

  1. This is one of the areas in which I think Judge Kozinski's use of quotation marks around the films' names is in error. There is a long tradition in H'wood — unsupported by substance, and meaningful only in the archly commercial minutiae of venue provision and rental rates — of putting anything that is a short film inside quotation marks, while a feature gets italics. This ignores the substance; the distinction should be whether the piece is purely stand-alone or is intended as a discrete element of another, overarching work. Under H'wood rules, for example, each episode of Ken Burns' The Civil War should be italicized, because they all exceed 42 minutes in length; conversely, a one-act play presented as part of an otherwise-disjoint series of Playhouse 90 broadcasts gets mere quotation marks. Substantively, however, these should be reversed. In Garcia, the film in question (regardless of whether we're talking about the never-released Desert Warrior or the actually-released Innocence of Muslims) was intended to stand by itself... and the typography used should reflect that. In a way, this unconscious acceptance of dubious custom has some disturbing parallels with value-of-authority problem.
  2. Not to be a broken record or anything, but this is the only branch of the work-for-hire doctrine that clearly passes constitutional muster: Patronage of output. Patronage by the work — the other branch — requires assuming that Congress has the authority to redefine the word used in the Constitution ("Authors") as something that nobody in the late eighteenth century, or today, would acknowledge as having that meaning. There's some pretty significant precedent from other areas of law that Congress has the power to clarify, but not to substantively alter, the meaning of terms in the Constitution; I think it telling that the international conventions to which the US Copyright Act is necessarily subordinate — they are treaties, which are "superior" to mere statutes — reject redefining "author" to mean "patron of the work." But the details of that argument are for another time.
  3. The statutory text reads:

    A "work made for hire" is — .... (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

    17 U.S.C. § 101.

  4. Specific disclaimer: I have no direct experience with the counsel acknowledged in the opinion (slip op. at 3); I have had negative experiences with one of the firms, but not with those particular lawyers, and not in any matter/fashion/dispute even arguably close to this matter above that of an argument-over-beers-or-the-'net concerning theory.