District court rules that fair use defense does not apply to unauthorized “Star Trek” works “Star Trek: Prelude to Axanar” and “Star Trek: Axanar,” and that those works are substantially similar to plaintiffs’ Star Trek works under Ninth Circuit’s extrinsic similarity test, and reserves subjective substantial similarity for jury to decide.
Paramount Pictures and CBS Studios own the copyrights in the “Star Trek” franchise, which includes six television series and 13 motion pictures created over a 50-year period. Plaintiffs sued Axanar Productions and its principal, Alec Peters, alleging copyright infringement, contributory copyright infringement and vicarious copyright infringement in connection with defendants’ creation of two “Star Trek” “fan fiction” films — “Star Trek: Prelude to Axanar” and “Star Trek: Axanar.”
“Prelude to Axanar” is a short film that tells the story of “Star Trek” character Garth of Izar during the Four Years War between the Federation and the Klingon Empire. Defendants funded “Prelude” through the crowdsourcing websites Kickstarter and Indiegogo, and distributed the short film on YouTube to generate interest in, and help raise additional funds for, the production of a feature-length motion picture project called “Star Trek: Axanar.” The planned feature-length film was to take place 21 years before the first episode of the original “Star Trek” television series and would have featured Starfleet Captain Garth of Izar (Captain James T. Kirk’s hero), and his starship crew.
All told, defendants raised almost $1.5 million for these projects, which they used to hire a professional crew and actors, many of whom previously worked on the “Star Trek” franchise itself. Defendants completed a script for “Axanar,” and filmed and released at least one scene.
Following discovery after the district court’s denial of defendants’ motion to dismiss the complaint (read our summary of the court’s decision on the motion to dismiss here), the parties filed cross-motions for summary judgment. The district court denied defendants’ motion, and granted plaintiffs’ motion, in part.
The district court granted plaintiffs’ motion to dismiss the defendants’ defense of fair use. The district court rejected defendants’ argument that their “fan fiction” works constituted fair use, concluding that all four factors of the Copyright Act’s fair use test weighed in favor of plaintiffs. Considering the first of the four traditional fair use factors — the purpose and character of the use — the district court concluded that the works were not transformative. Instead, it noted, defendants sought to “stay true” to the “Star Trek” canon by using elements similar to those in the copyrighted works — including the use of a supplement to the Paramount-licensed game “The Four Years War” “as a bible” in developing the script for “Prelude” — without altering their expression. The district court held that, despite the fact that defendants planned to distribute the films for free, the use was commercial in nature because defendants, among other things, leveraged “Prelude” to conduct a successful crowdsourcing fundraising campaign for “Axanar,” profited from not having to pay a license fee and hoped to derive other nonmonetary benefits such as additional job opportunities. The district court also rejected defendants’ argument that the works were transformative “mockumentaries” because the works did not parody or criticize “Star Trek” but rather sought to stay faithful to the franchise canon. In addition, the “Axanar” script was not written in mockumentary form.
The remaining three fair use factors — the nature of copyrighted work, amount and substantiality of the portion used, and effect of the use upon the potential market — likewise weighed in favor of the studios. The copyrighted works, the district court held, were the types of creative works typically given broad protection, and the portion of those works used, while difficult to quantify, was substantial and pervaded “Prelude” and “Axanar.” Moreover, according to the district court, there was “little doubt” that unrestricted and widespread conduct of the sort engaged in by defendants would result in a substantially adverse impact upon the potential market for “Star Trek.” Defendants’ works are the kind of potential derivatives that the studios would develop or license to others — as demonstrated by previous films and role-playing games that, like the two “Axanar” works, expanded upon the original “Star Trek” series. The district court also pointed to defendants’ successful fundraising effort as evidence of a market for the studios to exploit and observed that fans could have redirected that money to cable channels on which the copyrighted works are shown. That the “Axanar” works may increase the sale and visibility of the copyright works did not, in the district court’s view, make the copying “fair.”
Next, the district court analyzed whether the works at issue were “substantially similar” and thus supported a finding of infringement. It concluded that the Ninth Circuit’s objective extrinsic test — whether the works share a substantial similarity of ideas and expression as measured by external, objective criteria — was satisfied.
As an initial matter, the district court pointed out that the “Axanar” works used various expressive elements of the “Star Trek” works that were protectable either individually or in combination, including distinctive characters (e.g., Garth of Izar, the Klingons and Vulcan species); costumes (whose artistic aspects, the district court held, exist separately from their utilitarian purpose); settings (e.g., specific planets, recognizable spaceships, other distinctive space travel elements); key plot points; and the “Star Trek” “science fiction action adventure” mood and theme. Defendants intended to create works that stayed true to the “Star Trek” canon “down to excruciating details,” the district court pointed out, which supported a finding that these elements, as used in both sets of works, were substantially similar under the extrinsic test. It rejected the notion that defendants merely created a new story about an “obscure” character or that their works were “inspired by many sources,” from which they would need to obtain permission for use in any event.
However, the district court held that under Ninth Circuit precedent a jury must consider whether the subjective intrinsic test — whether the ordinary, reasonable person would find the total concept and feel of the works substantially similar — is satisfied. Although it recognized “some uncertainty” regarding whether this question must be left to a jury in the case of nonliterary works, the district court said it was unable to find any Ninth Circuit precedent in which courts found summary judgment for plaintiffs after applying the intrinsic test.
The district court also left for the jury the issue of willful infringement. It noted there are issues of fact regarding Peters’ state of mind, in light of his purported belief that CBS would tolerate “fan fiction” films and his prior reports to CBS that other parties were, in his belief, using “Star Trek” intellectual property without authorization. Because the claims for contributory and vicarious infringement against Peters depended upon the jury’s finding on subjective substantial similarity, the court declined to award summary judgment on those claims. It did hold, however, that in the event the jury found infringement, Peters had materially contributed to the infringing conduct of Axanar Productions by writing scripts for the offending works and otherwise being substantially involved in their production, and also had vicariously infringed through Axanar because he supervised and controlled the company as its president and was responsible for many of its artistic decisions.
Finally, the district court rejected defendants’ argument, rehashed from their motion to dismiss, that the studios’ claims were premature with respect to “Axanar” because the feature-length film had not been completed. Citing its previous ruling, the district court maintained the final shooting script was sufficient to compare the works at issue and demonstrated that the infringement claims were not based upon “abstract disagreements.” The district court additionally determined that the studios’ request for declaratory and injunctive relief was premature, as it depended upon the jury’s ultimate findings.
Summary prepared by David Grossman and Frank D’Angelo