New York Court Sees No Fair Use in <i>Star-Trek</i> Inspired Fan Film

This year, the district court not only denied the defendants' motion for summary judgment but also torpedoed their key defense of fair use. The court also denied the plaintiffs' motion for summary judgment but left the jury with the question of whether the “total concept and feel” of the works, which defendants had said “feels like Star Trek,” were substantially similar. (That question had a reasonably predictable affirmative answer. See below.)

But 11 days before trial, a settlement was announced and only a much-diminished version of the defendants' intended film will see the light of day.

Fan Created Works

Still, Judge Klausner's decision offers an object lesson in how fan films, as well as fan novels and any other unauthorized fan-created derivative of a popular work, may court legal disaster. As further instruction, several months after commencing the lawsuit Paramount and CBS Studios issued official guidelines to would-be fan filmmakers that, if followed, would avoid their getting sued, too. The fan film guidelines, as well as terms of the parties' settlement, show the limited degree to which at least one pair of copyright owners is willing to indulge fan-made derivatives.

The feature-length film that defendants Axanar Productions, and its president Alec Peters, planned on making would have depicted a human Star Trek character, Garth of Izar (who appeared in an early Star Trek TV episode), and the Battle of Axanar in which he played a key part. A prequel in nature, the defendants' film script was set in the Star Trek universe 21 years before the first television series. The defendants raised over a million dollars on crowd-sourcing websites Kickstarter and Indiegogo, and initially produced a 21-minute film, Star Trek: Prelude to Axanar, which was released on YouTube to promote the feature film and raise money. They also completed a final shooting script of the feature and revealed a “Vulcan Scene” preview.

The prelude and the motion picture script, to which the district court referred as the Axanar Works, included many characters, costumes settings and details from the Star Trek films and television series that the court thought were protected by copyright or likely were protectable or may be protectable by the plaintiffs. The character Garth fit in the first category: His “physical and conceptual qualities” as former starship captain famous for his exploits in the Battle of Axanar, his distinction for having “charted more planets than any other Starfleet captain,” and, in sum, his “identity as a Federation hero,” set him apart from a “stock spaceship officer” and earned copyright protection for the plaintiffs.

Other prominent features of the Axanar Works fell into the “maybe” category. These included Klingons (a militaristic alien species with ridged foreheads, dark hair and skin, upward sloping eyebrows and facial hair on the males) and Vulcans (a technologically advanced “species that suppresses emotions in favor of logic and reason,” and is distinguished by pointed ears, upswept eyebrows, and a bowl-shaped haircut).

Among elements of the Axanar Works in the “likely protected” category were a Klingon officer's uniform (gray tunic with shoulder covers and a red neckpiece) and a Vulcan ambassador's long robe and drape decorated with Vulcan writing.

A fourth legal category also emerged. Elements “may not be individually original and copyright protectable” but were numerous enough and sufficiently original in selection and arrangement to constitute, in combination, a protectable original work of authorship “especially when combined with the costumes and fictional characters and species.” This category comprised planetary settings, military spaceships, architecture, dialogue, events and plot points. Specific examples included the Vulcan council, the teachings of Vulcan philosopher Surak, the use of the Federation logo, stardate system, transporters, warpdrive, phaser, photon torpedoes, the Klingon language, and conflicts between the Federation and the Klingon Empire. Then there was the shared “mood and theme” as science fiction action adventure, “specifically a military space drama.”

Substantial Similarity Test

Before addressing the defense of fair use (which comes into play only when an unauthorized borrowing would otherwise infringe), the district court analyzed whether or not the Axanar Works were substantially similar to the Star Trek works and capable of infringing. In the Ninth Circuit, there are two parts to this test: the “extrinsic test” through which substantial similarity of ideas and expression is measured by external, objective criteria (“in a Vulcan-like manner,” Judge Klausner explained). The second part of the test, the subjective “intrinsic test,” asks a jury to determine “whether the ordinary, reasonable person would find the total concept and feel of the works to be substantially similar.” Only the extrinsic test could be applied by a court on the plaintiffs' motion and the district court had no trouble doing so.

The defendants argued that the works were not substantially similar because they created “their own story about the obscure character Garth of Izar and the general events surrounding him.” Judge Klausner, to begin with, did not agree that Garth was obscure and further held that the defendants' use of “many elements from the Star Trek universe” were “qualitatively important” enough for a finding of substantial similarity. Arguing that the Axanar Works were “inspired by many sources” also proved unavailing for the defendants. The defendants' intentional use of many elements from the Star Trek works to “stay true to Star Trek canon down to excruciating details” distinguished this case from another, Hogan v. DC Comics, 48 F.Supp. 2d 298 (S.D.N.Y. 1999), in which no substantiality was found despite use of a common main character.

In fact, the district court was well satisfied “that Defendants [had] achieved their goal of creating authentic Star Trek films and script” with the result of substantial similarity under the extrinsic test. The intrinsic test was to be left to the jury.

Had the case gone to trial for the jury's determination of substantial subjective similarity, the defendants would have had no fair use defense, because Judge Klausner held that none applied. Using the familiar four-part fair use analysis from §107 of the U.S. Copyright Act, the district court found, among other things, that the defendants' works were intended to supplant the Star Trek works — the opposite of a “transformative” use. The use was commercial, even if the prelude and film were distributed for free, because there was “at least indirect commercial benefit from the [viewership] boost [the defendants] had reason to hope would (and in fact did) result.”

The notion of a parody was dismissed out of hand. The creative nature of the Star Trek works weighed against fair use. The elements borrowed to “stay true to Star Trek canon down to excruciating details” were both quantitatively and qualitatively significant. And widespread “conduct of the sort engaged in” by the defendants would result in a substantially adverse impact of market substitution for the original. “Indeed,” Judge Klausner noted, “the Star Trek television series to premiere in 2017 goes back in time and takes place 10 years before the [original Star Trek television series].”

Last June, CBS and Paramount Pictures issued 10 guidelines for the benefit of “amateur fan filmmakers” who wished to “showcase their passion for Star Trek” through “ non-professional and amateur” productions. Fan filmmakers who complied would be spared objections by, and legal action from, Paramount and CBS.

Among other provisions, the guidelines limit a fan production to less than 15 minutes for a single self-contained story with no more than two episodes, not to exceed 30 minutes in total. Sequels and remakes are forbidden. The title cannot include “Star Trek” and must be accompanied by a subtitle declaring “A STAR TREK FAN PRODUCTION.” There can be no “reproductions, recreations or clips” from Star Trek works; official merchandise (like costumes and accessories) must be used when available; all participants must be amateurs working without compensation; fundraising must be limited to $50,000; and merchandising is out of the question. The film must be “family friendly,” and distributed online without charge and without generating revenue. A disclaimer of affiliation with CBS, Paramount, and the Star Trek franchise must appear in film credits.

The settlement in the Axanar case allowed the defendants to continue showing the prelude commercial-free on YouTube and to produce the feature film “as two fifteen-minute segments that can be distributed on YouTube” with no ads, consistent in those respects with the guidelines.

The guidelines issued by Paramount and CBS are quite limiting, but they do afford amateurs a narrow creative path to express their passion for the Star Trek brand. Those with grander aspirations will go forth with far greater uncertainty.

***** Neil J. Rosini and Michael I. Rudell, the latter who is a member of the Board of Contributing Editors of Entertainment Law & Finance, are partners in the New York law firm Franklin, Weinrib, Rudell & Vassallo.