As noted
by Tibbie in last the installment of CopyKat, Judge Klausner from the Central
District Court of California sent the Paramount
v. Axanar case off to jury trial on January 4, as he denied both parties’
motions to dismiss. Tibbie explained that the fair use defense failed. What
could be next?
Judge Klausner noted that both motions “raise two core issues – whether the Axanar Works are substantially
similar to the Star Trek Copyrighted Works, and whether Defendants have a valid
fair use defense under the Copyright Act.” This is catnip for IP attorneys,
especially IP attorneys writing for a cousin of The IPKat blog. We
wrote about the Paramount v. Axanar
case several times before (see here,
here,
and here)
and it seems that 2017 will provide more opportunities for us to try to find
witty [at least for us] Star Trek-related
titles.
Plaintiffs in this case are Paramount and CBS Studios, which
filed a copyright infringement suit against Axanar Studios and its principal
Alec Peters claiming that the short movie Prelude to Axanar is an unauthorized derivative work. Axanar
Studios is also planning to issue a full feature film, crowdfunded by Star Trek
fans.
The case is not
immature
Defendants were arguing that the court could not determine
whether Defendants had indeed infringed Plaintiffs’ copyright without the
completed Axanar motion picture, but Judge Klausner disagreed, as “evidence of a final shooting script
satisfies the judicial standard for summary judgment.”
Substantial
similarity between Plaintiffs’ and Defendants’ works
Judge Klausner noted that “the copyright infringement claim can live long and prosper if the
Axanar Works are substantially similar to the Star Trek Copyrighted Works.”
[Ha!]
To establish a prima facie case of copyright infringement, a
plaintiff must demonstrate (1) ownership of a valid copyright, and (2) copying
of constituent elements of the work that are original.
A plaintiff claiming copyright infringement must demonstrate
that the defendant copied a substantial amount of elements of the protected
work that are original. Courts in the Ninth Circuit use an objective extrinsic
test and a subjective intrinsic test to find out whether there are substantial
similarities between the works. This two-part test was first coined in the Sid & Marty Krofft Television Prods.,
Inc. v. McDonald's Corp. 1977 Ninth Circuit case. The extrinsic test asks
if there is similarity of ideas, and analytic dissection is allowed. The
intrinsic test asks if an "ordinary reasonable person" would perceive
a substantial taking of protected expression. Analytical dissection is not
appropriate.
Judge Klausner found the Axanar works, that is, both the
short movie and the upcoming motion picture, have objective substantial
similarities to the Star Trek copyrighted works, that is, the original television
series and the movies. The intrinsic test “must
be left to the jury.”
Judge Klausner performed the extrinsic test, analyzing whether
Defendants used copyright protected elements from Plaintiff’s works.
Defendants use
elements protected by copyright
Copyright only protects original works of authorship and
therefore courts must filter out and disregard the elements of a protected work
which are not copyrightable. This is called dissecting and filtering. Only
elements which are protectable are then being compared with the allegedly
infringing work. If there is substantially similarity, there is copyright
infringement. Judge Klausner noted, however, that a combination of
unprotectable elements can be protected by copyright “if those elements are numerous enough and their selection and
arrangement original enough that their combination constitutes an original work
of authorship.”
Infringement of the
character of Garth of Izar
Defendants argued that the characters and species used in
their works were not subject to copyright protection. Judge Klausner disagreed,
“at least with respect to Garth of Izar.”
To reach this conclusion, he used the DC Comics v. Towle three-part test
used in the Ninth Circuit to determine whether a particular character is
protected by copyright. A character must (1) have physical and conceptual
qualities, (2) be sufficiently delineated to be recognizable as the same
character whenever it appears and (3) be especially distinctive and contain
some unique elements of expression to be protectable by copyright.
Judge Klausner applied this test to Garth of Izar and
concluded that this character can be protected by copyright. Garth appeared in
the Whom Gods Destroy television episode
as a live character and thus has physical as well as conceptual qualities. He
is a former starship captain and he is very famous among Starfleet officers,
including Captain Kirk, because he won the battle of Axanar in such an
illustrious way that his exploits were required reading at the Starfleet
Academy. The Garth of Izar novel published by Plaintiffs in 2003 further developed
this character. As such, his “identity as
a Federation hero sufficiently delineates him and sets him apart from a stock
spaceship officer.”
Klingons and Vulcans
species may be protected by copyright
The Klingons, long-time enemies of the Federation, stem from
the planet Qo’noS. They have ridged foreheads and dark hair. Vulcans are part
of the Federation, and one of their finest specimens is Spock, who, as do all
his other fellow Vulcans, “suppresses
emotions in favor of logic and reason.”
Vulcans have pointed ears and upswept eyebrows, and males “usually have a bowl-shaped haircut.” For Judge Klausner, these
characteristics of Klingons and Vulcans are not elements of expressions that
necessarily follow from the idea behind the expression and may be entitled to
copyright protection.
Star Trek Costumes
may be protected by copyright
Judge Klausner found that several costumes from the original
Star Trek works, such as a Klingon officer’s uniform, “a gray tunic with shoulder covers and a red neckpiece,” or the
costume of Vulcan Ambassador Soval, an “Asian-style
long robe and a drape decorated with Vulcan writing,” were similar to those
used by Defendants in their works. Judge Klausner was careful to note that “[t]he
artistic aspects of these costumes… can be identified separately from, and are
capable of existing independently of, the utilitarian purpose of the costumes,”
since utilitarian articles are not protected by U.S. copyright. However,
these costumes may be protected by copyright, as “[t]he combination of artistic
visual elements of these uniforms likely contains original expressions
protectable under the Copyright Act.”
Settings and the
Klingon language may be protected by copyright
Judge Klausner also found that the settings for the original
Star Trek works, such as the planets Axanar, Qo’noS, and Vulcan, “the 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” are protectable.
Judge Klausner also listed “the Federation, the Klingon Empire, and conflicts between the two in
the Four Years War at the Battle of Axanar… , the Vulcan council, the teachings
of the Vulcan philosopher Surak, the use of the Federation logo, stardate,
transporters and warp drive, weapons such as phasers and photon torpedoes, and
the Klingon language” as being protectable.
Judge Klausner explained that [a]lthough each of these
elements may not be individually original and copyright protectable, they are
“numerous enough and their selection and arrangement original enough that their
combination constitutes an original work of authorship,” especially when
combined with the costumes and fictional characters and species, examples of
which are described above.”
Works are
substantially similar
Judge Klausner found that under the extrinsic test,
Defendants’ works were substantially similar to Plaintiffs’ works. He noted
that Defendants wanted “to create an
authentic and independent Star Trek film that [stayed] true to Star Trek
canon down to excruciating details.” Defendants’ works are set in the Star
Trek universe and “intentionally use or
reference many elements similar to those appearing in the Star Trek Copyrighted
Works,” such as the appearance of the Klingons and their weapons. For Judge
Klausner, “Defendants intentionally
use[d] elements from the Star Trek Copyrighted Works to create works that stay
true to Star Trek canon down to excruciating details.”
“Excruciating details” seems to be used by Judge Klausner in
place of “substantial similarity” and this cannot be good news for Defendants’
attorneys.
Defendants are not
entitled to the fair use defense
Judge Klausner examined the four fair use factors to decide
whether the use of the original Star Trek works by Defendants was fair and
found that all the factors weighted in favor of Plaintiff.
As for the first factor, the purpose and character of the
use, Judge Klausner found that Defendants’ use was not transformative, as it
does not have a further purpose or different character, nor does it alter the
original Star Trek works with new expression, meaning, or message, as required
by Campbell v. Acuff-Rose Music. Indeed, “Defendants want the Axanar Works to supplant
the Star Trek Copyrighted Works” by creating “alternative ways for fans to view Star Trek.”
Defendants argued that their works are “mockumentaries,”
that is, fictions presented in a documentary form, which is a form of parody
and are thus transformative. Judge Klausner was not convinced, reasoning that,
under Campbell, a parody must use
some elements of a prior work to create a new work that criticizes the
substance or style of the prior work, and must “target the original, and not just its general style, the genre of art
to which it belongs, or society as a whole.” Judge Klausner could not discern
any criticism of the Star Trek Copyrighted Works in Defendants’ works.
Defendants argued that their works are not commercial
because they are and will be distributed for free. Judge Klausner was not
convinced by this argument either, noting that “Peters hoped to derive non-monetary benefits, for example, other job
opportunities, from the Axanar Works.” Therefore, Defendants, who did not
obtain a license from Plaintiffs, “profit
from exploitation of the copyrighted material without paying the customary
price.”
Judge Klausner also found that the second fair use factor,
the nature of the copyrighted work, weighted in favor of Plaintiff as their
works “have transported the hearts of a
legion of fans to the Star Trek universe. …They are the type of works that are
given broad copyright protections.”
As for the third factor, the amount and substantiality of
the portion used, Judge Klausner found that Defendants used elements which are
part of the Star Trek canon “down to
excruciating details” [the third time Judge
Klausner wrote ‘excruciating details,’ ouch] and that Star Trek elements
“pervade” Defendants’ works.
Finally, Judge Klausner found that the fourth factor, the
effect of the use upon the potential market, also weighted in favor of
Plaintiffs, because “Defendants evidently
intend for their work to effectively function as a market substitution to the
Star Trek Copyrighted Works,” further noting that “[t]he fact that Defendants
distributed Prelude and the Vulcan Scene for free online and intend to likewise
distribute their future works may likely increase the risk of market
substitution as fans choose free content over paid features.”
The ultimate, but
infringing fan fiction?
Peters wanted to create “a
whole new way that fans can get the content they want, by funding it themselves.”
It is an interesting initiative, which tests the scope of the legality of fan
fiction. The case may ultimately set a precedent to the detriment (or benefit?)
of more modest fan fiction initiatives.
