THE ANNALS OF COPYRIGHT NUMBER 1 « Law Offices of Timothy Bowles | Top Employment Law Firm in Los Angeles


When In Doubt, Choose Contracts Over Lunch 

In a 1990 copyright decision over a sci-fi flick featuring alien frozen yogurt enslaving the human race (yes, that is correct),  federal Ninth Circuit Court of Appeals Judge Alex Kozinski  noted that the producer defendant — a “low-budget horror movie mogul” – justified his attempt to use another’s special effects footage without written permission because  “moviemakers do lunch, not contracts.”  Rejecting the position, Judge Kozinski helpfully observed: “Common sense tells us that agreements should routinely be put in writing. This simple practice prevents misunderstandings by spelling out the terms of a deal in black and white, forces parties to clarify their thinking and consider problems that could potentially arise, and encourages them to take their promises seriously because it’s harder to backtrack on a written contract than on an oral one.”   Effects Associates, Inc. v. Larry Cohen, et al., (1990) 908 F.2d 555.

Judge Kozinski  earlier this year issued a highly controversial decision in another copyright case – this time over an actor’s attempt to have footage removed from YouTube, a Google company.   Garcia v. Google, (2014) 743 F.3d 1258.  Once again, the lack of a written contract played a part in the decision.

The film this time was the anti-Islamic Innocence of Muslims, which our government had initially claimed was the impetus for the fatal September, 2012 attack on the U.S. consulate in Benghazi, Libya.  While this allegation was later shown to be untrue, Innocence of Muslims did prompt death threats against all involved in its production because it posed the profane question, “Is your Mohammed a child molester?”  Actor Cindy Lee Garcia, who had played the character who supposedly uttered that line, was one of those targeted.

Garcia, who had spent three days on set and was paid $500, claimed she actually never said those words and had no idea she was going to be in an incendiary film that could easily lead to riots and death threats.   Garcia contended the producer lied, claiming she was performing in “Desert Warrior” — an adventure film purportedly set in ancient Arabia.   She asserted the script did not contain the offensive words but were later dubbed in without her permission or knowledge for the final film.

After the death threats forced her to move her home and business and engage in other security measures to protect her safety, Garcia attempted eight times to get Google to remove the film from YouTube to no avail.  She then filed for an injunction in federal court, claiming she owned the copyright in her own performance and that Google was required on her demand to take the video down.  Although the trial court judge disagreed, on appeal Judge Kozinski, now Chief Judge of the Ninth Circuit, awarded Garcia that injunction.

While Judge Kozinski’s decision will almost certainly not be the last word, it is potentially monumental, the first time a court has ruled that an individual actor with a minor film role has a copyright in her own performance.  This in turn gave Garcia the power to require any alleged copyright infringers – in this case Google and YouTube — to refrain from showing that film.  

Typically, when a movie is made, the producer has all actors, and certainly the minor ones, sign a contract to ensure that they give up any rights they might possibly claim to ownership of any copyright connected with the production.  In the usual industry practice, producers hire the actors as employees, in which case their contributions to the film are deemed works made for hire under U.S. Copyright law.  If, on the other hand, a production hires actors as independent contractors, they will typically sign away (assign to the production company) any rights they may have in their performance.  Here the court found that the producer did not obtain any such written agreement.  Although Google submitted an agreement that Garcia had supposedly signed, Garcia claimed it was a forgery.

An authentic, adequately worded written agreement taking all such copyright rights away from Garcia would have almost certainly left the producers, as well as Google and YouTube, with the discretion of showing the Innocence of Muslims film however and whenever they chose.  Yet, for moviemakers inattentive enough to mistakenly presume a handshake over lunch is just as good as a written contract, the potential ramifications of that decision are virtually limitless, turning discretion over to the actors to impose their control over a film’s content, distribution and marketing. 

A producer’s or director’s artistic vision can play a critical role – for better or worse – in the collective cultural life of our world, but only if the legal details are confirmed in writing.   Maintaining that role requires contracts with each participant in a film that acknowledges who owns all copyrights, whether as a work made for hire, by assignment, or, ideally both.  Such agreements should also always ensure that assignment includes all moral rights, or droit moral – rights to control the artistic use of a creative contribution.  It should also go without saying that such agreements should honestly portray the production to which the actors are contributing.

For more information on this subject, contact the firm’s Of Counsel attorney, Helena Kobrin.

May 14, 2014