IP Law Daily Jury must decide if crowdfunded Star Trek works infringe; fair use defense photon-torpedoed
Thursday, January 5, 2017

Jury must decide if crowdfunded Star Trek works infringe; fair use defense photon-torpedoed

By Peter Reap, J.D., LL.M.

Crowdfunded works set in the fictional Star Trek universe, produced by Alec Peters and Axanar Productions (the "Defendants"), including a 21-minute film Star Trek: Prelude to Axanar ("Prelude") and a planned and started full-length feature film (the "Axanar Motion Picture," and, collectively with Prelude, the "Axanar Works"), are substantially similar, at least under the extrinsic test employed by the Ninth Circuit, to copyrighted works owned by Plaintiffs Paramount Pictures Corporation and CBS Studios, the federal district court in Los Angeles has ruled. However, the second part of the Ninth Circuit substantial similarity test, subjective similarity, must be decided by a jury. Moreover, the Defendants’ assertion of a fair use defense was rejected. All four of the statutory fair use factors favored a finding that the Axanar Works are not a fair use of the Plaintiffs’ copyrights to Star Trek motion pictures, television series, and numerous Star Trek derivative works (together, the "Star Trek Copyrighted Works"). Accordingly, the court denied the Plaintiffs’ motion for partial summary judgment as to liability and injunctive relief, and the Defendants’ motion for summary judgment (Paramount Pictures Corp. v. Axanar Productions, Inc., January 3, 2017, Klausner, G.).

The original Star Trek television series ("The Original Series") chronicle the adventures of the spaceship U.S.S. Enterprise and its crew as they explore space, the final frontier in the 23rd century. U.S.S. Enterprise is one spaceship in the Starfleet of United Federation of Planets (the "Federation"). The Original Series feature humans and fictitious species such as Vulcans and Klingons. A human character known as Garth of Izar ("Garth") appear in one episode. As depicted in The Original Series, Garth is a former starship captain and famous among Starfleet officers for his exploits in the Battle of Axanar. Planet Axanar seems to be the namesake of Defendant Axanar Productions. The Axanar Works are set in the Star Trek universe 21 years before The Original Series and depict the Battle of Axanar and the exploits of Garth.

Ripeness. The Defendants asserted that the Plaintiffs’ claims with respect to the Axanar Motion Picture are premature because the motion picture is not completed. The court explained its rejection of this argument in the order denying the Defendants’ motion to dismiss. The court refused to repeat its rationale here, except to note that evidence of a final shooting script satisfied the judicial standard for summary judgment. The claim against the Axanar Motion Picture is not based on "abstract disagreements" and is ripe for adjudication, the court held.

Substantial similarity. Substantial similarity is a doctrine that helps courts adjudicate whether copying of the constituent elements of the work that are original actually occurred when an allegedly infringing work appropriates elements of an original without reproducing it in toto. In the Ninth Circuit, the substantial similarity analysis involves an objective extrinsic test and a subjective intrinsic test. The intrinsic test determines whether the ordinary, reasonable person would find the total concept and feel of the [two works] to be substantially similar. The extrinsic test considers whether two works share a substantial similarity of ideas and expression as measured by external, objective criteria. To perform the extrinsic test, the court dissects the works down to their constituent elements, filters out and disregards unprotectable elements in the copyrighted work, and compares the protectable elements with their counterparts in the allegedly infringing work for proof of copying as measured by substantial similarity.

The Ninth Circuit applies "a three-part test for determining whether a character in a . . .television program . . . is entitled to copyright protection." DC Comics v. Towle, 802 F.3d 1012, 1021 (9th Cir. 2015), cert. denied, 136 S. Ct. 1390 (2016). "First, the character must generally have physical as well as conceptual qualities. Second, the character must be sufficiently delineated to be recognizable as the same character whenever it appears . . . Third, the character must be especially distinctive and contain some unique elements of expression." Id.

Applying the three-part test to Garth of Izar, he is entitled to copyright protection, the court concluded. Garth’s identity as a Federation hero sufficiently delineates him and sets him apart from a stock spaceship officer. Also prominent in the Axanar Works are two fictional species from the Star Trek Copyrighted Works: Klingons and Vulcans. These characteristics of Klingons and Vulcans are not elements of expressions that necessarily follow from the idea behind the expressions (visual expressions, for example) and may be entitled to copyright protection, the court said.

Additionally, the Plaintiffs submitted evidence showing several costumes from the Star Trek Copyrighted Works similar to those the Defendants used in the Axanar Works, including a Klingon officer’s Uniform. The combination of artistic visual elements of these uniforms likely contains original expressions protectable under the Copyright Act, the court reasoned. The evidence also included settings from the Star Trek Copyrighted Works such as planets Axanar, Qo’noS, and Vulcan (including a shot of Vulcan from Star Trek III: The Search for Spock); military spaceships including Klingon battlecruisers, Vulcan ships with an engine ring, and Federation spaceships with their iconic saucer-shaped hull (e.g., the U.S.S. Enterprise), space travel elements such as spacedocks, and Vulcan buildings—cathedrals with sword-blade-shaped domes. The evidence further described plot points, sequence of events, and dialogs from the Star Trek Copyrighted Works. Finally, the evidence described mood and theme of the Star Trek Copyrighted Works as science fiction action adventure, specifically a military space drama. All these elements appear in the Axanar Works. Accordingly, the Defendants use copyright-protected elements in the Axanar Works, the court found.

Under the extrinsic test, the Axanar Works are substantially similar to the Star Trek Copyrighted Works. This conclusion was strongly supported in the Defendants’ intent for the Axanar Works. "Defendants expressly set out to create an authentic and independent Star Trek film that [stayed] true to Star Trek canon down to excruciating details." The Defendants argued that the works are not substantially similar because the Defendants "create[d] their own story about the obscure character Garth of Izar and the general events surrounding him." This argument failed for two reasons. First, the court did not agree that Garth, being a featured character in one television episode, and the title character of one licensed novel is obscure or lightly sketched. Second, the Defendants used many elements from the Star Trek universe in their works, not just Garth of Izar and the general events surrounding him. After reviewing the evidence, The Axanar Works are substantially similar to the Star Trek Copyrighted Works, at least under the extrinsic test, the court decided.

The intrinsic test appears to be exclusively the province of the jury in the Ninth Circuit, the court observed. Thus, this test would be left for the jury.

Fair use. In the event that the jury finds substantial similarity under the intrinsic test and hence copyright infringement, the Defendants nonetheless may be free from liability if they can establish that their copying falls within fair use. The Copyright Act provides four factors for the determination of fair use. 17 U.S.C. §107.

The first factor is "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." Here, the Defendants set out to create a motion picture "prequel" to The Original Series. The Defendants intentionally used or referenced many elements similar to those in the Star Trek Copyrighted Works to stay true to Star Trek canon down to excruciating details. Viewed as a whole, the Axanar Works do not have a further purpose or different character, altering the Star Trek Copyrighted Works with new expression, meaning, or message.

The Axanar Works are also commercial, the court determined. The Defendants argued that the Axanar Works are not commercial because they are, and will be, distributed for free. This argument was unpersuasive because, even though the Defendants do not profit directly from distributing the works, they stand to benefit indirectly, the court determined.

The Defendants also argued that the Axanar Works are transformative because they are mockumentaries—fictions presented in a documentary form—a form of parody according to Wikipedia. For the purposes of copyright law, however, parody must use some elements of a prior work to create a new work that criticizes the substance or style of the prior work. Here, the court was unable to discern from the Axanar Works any criticism of the Star Trek Copyrighted Works. Thus, the first fair use factor weighs in favor of the Plaintiffs.

The second factor, "the nature of the copyrighted work," also weighs in favor of the Plaintiffs. The creativity in the Plaintiffs’ Works and their status as published works are not disputed. They are the type of works that are given broad copyright protections.

The third factor is "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." Here, the Defendants intentionally used elements from the Star Trek Copyrighted Works to create works that stay true to Star Trek canon down to excruciating details. It was fair to say that elements of the Star Trek Copyrighted Works pervade the Axanar Works. The elements from the Star Trek Copyrighted Works that the Defendants used are qualitatively important because they give the Axanar Works the Star Trek feel and enable the Defendants to stay true to the Star Trek canon. Thus, the third factor weighs in favor of Plaintiffs as well, the court explained.

The fourth factor is "the effect of the use upon the potential market for or value of the copyrighted work." Here, the prequel depicted in the Axanar Works is the kind of potential derivative that the Plaintiffs would in general develop or license others to develop. Although the Axanar Works are set 21 years before The Original Series, it is not outside the timeframe for the Plaintiffs’ potential derivative work. The fact that the Defendants distributed their content for free online and intended to likewise distribute their future works could likely increase the risk of market substitution as fans choose free content over paid features. Thus, the fourth factor also weighs in favor of the Plaintiffs.

All four fair use factors weigh in favor of the Plaintiffs. If the jury finds subjective substantial similarity, the Axanar Works are rightfully considered derivative works of the Star Trek Copyrighted Works, the court decided. Rejection of the Defendants’ fair use defense was consistent with copyright’s very purpose because derivatives are an important economic incentive to the creation of originals.

Willfulness. Star Trek has a long history of fan films that stayed free from copyright disputes, the court noted. Although Peters repeatedly stated that the Axanar Works were not to be called fan films, the Defendants asserted that this statement was made only to distinguish the quality of the Axanar Works. Thus, Peters’ belief that the Axanar Works were noncommercial fan films in light of his understanding from CBS that it would tolerate such films created an issue of his state of mind that must be adjudicated by the jury, the court said.

Contributory and vicarious infringement. The viability of the Plaintiffs’ claims for contributory and vicarious are infringement was contingent upon the jury’s finding of subjective substantial similarity, according to the court.

The case is No. 2:15-CV-09938-RGK-E.

Attorneys: Jennifer Jason (Loeb & Loeb LLP) for Paramount Pictures Corp. and CBS Studios Inc. Erin R. Ranahan (Winston & Strawn LLP) for Axanar Productions, Inc.

Companies: Paramount Pictures Corp.; CBS Studios Inc; Axanar Productions, Inc.

MainStory: TopStory Copyright CaliforniaNews

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