On February 26th the Ninth Circuit court of appeals handed down a ruling that, taken to its logical conclusion, could have a significant impact on both the movie and photography communities. In the case of Garcia v Google, Inc., actress Cindy Garcia asserts a claim to a copyright interest in a portion of a video she acted in.
Although this case applies to an actor in a movie, the principles apply equally to a model in a photograph. Anyone who has worked with a talented model would agree that her creativity in posing and expression contributes to the final photo; the court has now created the presumption that performers who are creative are owners of copyright to that creation: “An author ‘in a constitutional sense’ is one ‘to whom anything owes its origin; originator; maker.’ Feist Publ’ns, 499 U.S. at 346 (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)). In other words, the creator of copyrightable artistic expression is an author. Which is why, for example, Sinéad O’Connor can claim a copyright in her performance of ‘Nothing Compares 2 U’ even though the song was written by Prince.”
The appeals court stated that: “We need not and do not decide whether every actor has a copyright in his performance within a movie. It suffices for now to hold that, while the matter is fairly debatable, Garcia is likely to prevail.” [emphasis added.]
The court recognizes the apparent problems with its ruling: “As the above discussion makes clear, any analysis of the rights that might attach to the numerous creative contributions that make up a film can quickly become entangled in an impenetrable thicket of copyright.” But they dismiss the issue based on their understanding of the way movies are produced: “But it rarely comes to that because copyright interests in the vast majority of films are covered by contract, the work for hire doctrine or implied licenses.”
While that may be true for most movie productions, it is not true for most photographs. There is often no contract in advance of a shoot that discusses usage, and “work for hire” generally does not apply to models even in professional commercial photo shoots. Even when a “model release” is used, it typically deals only with the model’s rights of publicity and privacy, not copyright, since it has generally been understood that the copyright in a photo belongs to the photographer unless there is something in writing to the contrary. This ruling challenges that understanding.
It can be argued that by granting a release of those privacy and publicity rights in the “model release”, the model is also granting an implied copyright usage license. But that is not established law. Even if it is true, the limitations on that implied license are not clear; if a model argues that a subsequent use of a photograph by a photographer is outside the scope of what she thought she agreed to, the “implied license” may provide no protection. As an example, suppose the photographer tells a model that her picture will not appear on “an adult website”. If he later uses it on his own personal photography page or model mayhem portfolio that contains nudes, is that outside the scope of the implied license? The court opinion suggests that it may be: “A clear sign that Youssef exceeded the bounds of any license is that he lied to Garcia in order to secure her participation, and she agreed to perform in reliance on that lie. Youssef’s fraud alone is likely enough to void any agreement he had with Garcia. But even if it’s not, it’s clear evidence that his inclusion of her performance in ‘Innocence of Muslims’ exceeded the scope of the implied license and was, therefore, an unauthorized, [copyright-]infringing use.”
In this case there was no valid written contract or release, which points strongly for the need for a release whenever a photographer shoots pictures of a model. With no release, the copyright license which may be implied by a release is that much harder to demonstrate. If a model objects to any online use, for instance, she now has standing as “an author” to demand the picture be taken down with a DMCA takedown notice.
The court seems not to view this as a settled issue; it has remanded the case back to the trial court to determine whether or not Garcia does, in fact, have a copyright claim. But the wording of the order prejudices the outcome: “Neither party raised the issue of whether the author of a dramatic performance must personally fix his work in a tangible medium. Because the question is not properly before us, we do not decide it. The parties are free to raise it in the district court on remand.”
By stating the charge to the trial court in those terms, the appellate court is asking the judge to decide what has already been decided in a string of cases: the author does not have to personally “fix” his work. An example from the Third Circuit makes this clear, but adds an additional requirement not mentioned in the Ninth Circuit opinion: “That statutory language and the Supreme Court’s guidance produce a definition of an author as the party who actually creates the work, that is, the person who translates an idea into an expression that is embodied in a copy by himself or herself, or who authorizes another to embody the expression in a copy. The definition, however, has limits. When one authorizes embodiment, that process must be rote or mechanical transcription that does not require intellectual modification or highly technical enhancement . . . .”
There are two issues here: the work is fixed under the authority of the creator, and the fixation must not be something that itself requires creativity. Both seem to fail in this case, but neither is mentioned, leaving the trial court with no charge to examine them.
But in a photo shoot the “authority” to fix an image may be open to question. When a photographer or client hires a model for a shoot, arguably the images are “fixed” under the authority of the photographer or model. But whose “authority” operates in a TFP collaboration, or when the model requests and pays for the shoot? That seems less clear.
As the court itself seems to recognize, these issues are far from settled law even within the Ninth Circuit. Further findings by the trial court will clarify them to some extent; further appeals are also likely. But if this ruling by a two to one majority of a panel stands, photographers and models may have to change the way they do business.