Along with many others, Shyamkrishna Balganesh, Justin Hughes, Peter Menell, and David Nimmer submitted an amicus in Garcia v. Google making a number of interesting arguments; I’m generally sympathetic to the idea that we should be more flexible about joint authorship. But right now I want to talk about a different argument in the brief: they say that, even assuming that Youssef had an implied license to incorporate Garcia’s performance, an implied nonexclusive license is nontransferable. (This line of reasoning depends on the idea that Garcia could own a separate copyright in her performance, rather than a share of the copyright in the entire film by virtue of her performance; if she has a share in the entire film, then Youssef is simply her co-owner and his ability to license nonexclusively is unfettered. Which itself is a good reason to conclude that the only viable “work” here is the film as a whole.)
If that’s so, then the reassurances of the original panel opinion and SAG that implied licenses will usually solve any failure to enter into work for hire agreements are completely wrong. An implied license may work pretty well when a programmer writes a program for internal use at a business. But Warner Bros. needs to license its rights to Netflix, Amazon, Wal-Mart, etc. If all it has is a nontransferable license, then it has nothing of any value. And remember, Petrella means there’s no such thing as a stale copyright claim.
So if a studio didn’t get a signed release from one of the extras in Titanic, the question it ought to be asking itself (and its insurers) is: Do you feel lucky? Well, do you? (According to SAG, that’s enough for a copyrightable performance.)
Side note: The Balganesh et al. brief also introduces a bit of error into the discussion because of the case’s unusual posture–the brief says that Youssef didn’t counternotify. But Google didn’t take down the video after Garcia’s notice, so there was nothing to him to counternotify about. And now that the mandatory injunction requires Google to police all its sites, there’s no way to counternotify, even for the multiple non-Youssef parties who wanted to distribute the video in order to discuss its message.
Side note 2: The brief also takes a position on what would happen if Garcia were a joint author of the film that requires a resolution of what is as far as I know a novel question. If she’s an author, it says, she can file a DMCA notice based on her authorship of the film; Youssef could then counternotify because he’s also an author and thus has the right to put it on YouTube. Perhaps she opens herself up to a 512(f) claim with her notice; but if Google honors it, the film has to stay down for 10 business days regardless of his objections. But sending a DMCA notice requires that the sender own (or act on behalf of an owner of) an “exclusive” right. See 512(c)(3). Is a single co-owner acting alone an owner of an “exclusive” right? My sense is that the right answer is yes, but it does raise the prospect of a co-owner getting undue leverage when another co-owner is using an online intermediary for distribution–and this wouldn’t just include YouTube, but also Amazon and other sites that might be generating substantial revenue.
What do you all think?