Randazza: Copyright Ruling May Have Implications for Adult Industry

Marc J. Randazza

LAS VEGAS — This week, the 9th U.S. Circuit Court of Appeals ruled that actors and actresses have copyright rights in their performances when they act in a video. 

On February 26, 2014, the court issued its opinion in Garcia v. Google Inc., No. 12-57308, arising from the controversial “Innocence of Muslims” film.

The plaintiff, Cindy Lee Garcia, claimed that she never signed a release for the production, and moreover was lied to about the nature of the work she’d be doing.

Garcia claimed she was promised a role in a desert adventure movie – but instead was depicted in an anti-Islamic film, where her lines were dubbed over with criticism of the Prophet Muhammed.

When Garcia began receiving death threats for her role in the film, she sent take-down notices to Google under the Digital Millennium Copyright Act, claiming she had rights in her performance in the video. Google refused to remove the video. 

Garcia sued Google in federal court, seeking an injunction against Google displaying the video.  The trial court denied Garcia’s request for an injunction, and she appealed to the 9th Circuit.

The 9th Circuit’s opinion held that Garcia had a sufficient copyright right in her performance, despite the fact that she only appeared in the film for a few seconds, to remove the film from circulation.

The court found that Garcia had created an original work in her performance, which was copyrightable, and that she retained those rights because she did not execute a valid model release transferring them to the film’s creator. The court also found that film producers normally have an implied license in the performance of actors and actresses appearing in their creations, but that the film’s creator far exceeded that license in this case.

Under the Copyright Act, it is novel – though not unprecedented – for the court to find a performer has copyright rights in his or her performance.  An actor’s performance contains originality and may be preserved in a fixed form, satisfying the standards for copyrightability under the Copyright Act.

Nevertheless, no court has ever found these rights to be quite this expansive, nor has a court ever granted rights on such a limited performance.

Most commentators have criticized the ruling, stating that there should be no such copyrights.  Nevertheless, whether these rights should exist or not, they can be assigned to a producer using a proper model release form. 

In the Garcia case, there were many issues with the model release that the 9th Circuit did not resolve, ranging from whether Garcia was fraudulently induced to sign it, to whether her signature was forged. Because there was not a valid release assigning the copyright rights in her performance to the producer, she retained the rights to her performance. A strong and valid model release could have avoided this problem entirely.

As to the producer’s implied license to Garcia’s performance, this too could have been avoided with a proper model release.

The 9th Circuit’s opinion turned on the producer’s representation to Garcia that she would be acting in a desert adventure movie. If “Innocence of Muslims” had been a desert adventure movie, its producer would have had an implied license to her performance even if she retained the rights.

However, because the final film was so radically different from what Garcia says she agreed to appear in, the producer violated the implied license to use her performance.

The 9th Circuit did not articulate a clear standard for when there may be an implied license violation, and this decision has the potential to create much confusion.  A broad and clearly written model release can avoid any question about what license a performer gives a producer to use her performance. This should be a non-issue if the model release transfers the actor’s performance rights to the producer.

But, to the extent any copyright rights in the actor’s performance remain with him or her, the implied license to use the performance cannot be violated if it is broadly written and clearly stated. For example, a strong model release should expressly state that the performance is to be used for a pornographic video, and that the footage of him or her can be used for any purpose at all.  his way, there is no confusion as to what use of the actor’s performance is allowed.

The 9th Circuit’s ruling in Garcia has the potential to cause great turmoil between performers and producers. 

Most adult producers are familiar with the concept of “actor’s remorse.” This decision ensures that there will be more “actor’s remorse” claims, as it gives revengeful actors a strong tool with which to create mischief. 

By using appropriate model releases, though, adult producers can minimize the risks that will present themselves in the wake of this decision.  All of the potential uncertainty caused by the Garcia decision could have been avoided if the film’s producer used a model release that assigned the actress’ performance rights to him, and accurately disclosed how her performance would be used.

Marc Randazza is the managing partner at Randazza Legal Group. The firm has offices in Las Vegas and Miami, both specializing in intellectual property, First Amendment and Internet law. The author recently completed an LLM degree in international intellectual property Law administered by the World Intellectual Property Organization and the University of Turin Faculty of Law in Italy.

(c) Marc Randazza.

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