By Neel Chatterjee and Cathy Shyong
There is no greater fan base than the fan base for Star Trek. Trekkies love celebrating the original TV show, the follow on series, and the completely awesome movies (let’s leave Star Trek VI out of this…..actually we can’t). They wear costumes inspired by the films and shows, write their own stories, and create tons of cool YouTube videos. This “fan fiction” is so fundamental to Star Trek, it is hard to imagine where someone will go where no man has gone before and cross the line to where the owners of the rights to Star Trek would actually take a phaser set to kill to kill the work celebrating Star Trek.
Alec Peters, a well-known Star Trek blogger, took a major attack to his work. He decided to start an independent company called Axanar. His stated goal was to produce a professional-quality, full-length Star Trek film named “Axanar.” It was fan fiction on steroids, or, as it were, ketracel-white. Axanar would act as a “prequel” to the original series and would tell the story of Garth of Izar, a legendary Starfleet captain who fought in the Battle of Axanar. Garth of Izar, the story goes, inspired Captain Kirk and other Starfleet officers.
This project could not be funded with Tribbles. So to fund the project, Axanar used crowdsourcing websites such as Kickstarter and Indiegogo. It raised over a million dollars from fans around the world. Axanar hired professional actors and crew members, many of whom had worked on the original Star Trek series. Axanar did this independently of Paramount and CBS, who own the intellectual property rights to the Star Trek enterprise, and did not license any rights from Paramount and CBS. A tremendous amount of the work in Axanar was created by Alec Peters and his colleagues.
In 2014, at San Diego Comic Con, Axanar premiered a 20-minute preview film, “Prelude to Axanar,” to showcase the Axanar concept. “Prelude to Axanar” discusses the events that will be covered in the full-length film in a “mockumentary” style. Upon the release of “Prelude to Axanar,” Paramount and CBS sued Axanar for copyright infringement in the Central District of California.
Copyright infringement occurs when there is (1) ownership of a valid copyright, and (2) copying of original elements of a work. Funky Films, Inc. v. Time Warner Entm’t Co., L.P., 462 F.3d 1072, 1076 (9th Cir. 2006). Copying can be shown through substantial similarity of a work. In the Ninth Circuit, substantial similarity requires both an “extrinsic” (objective) and “intrinsic” (subjective) comparison of the original work and the allegedly infringing work. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1398 (9th Cir. 1997).
The Court found objective similarity by applying a test in “a Vulcan-like manner.” The extrinsic test has three steps: the court must “dissect” the work into elements, then “filter out” and disregard the unprotectable elements, and compare only the protectable elements of the work with those of the allegedly infringing work. It is important to filter out the nonprotectable elements because “scenes à faire,” or elements flowing naturally from generic plot-lines, are not protectable. Funky Films, Inc. v. Time Warner Entm’t Co., L.P., 462 F.3d 1072, 1077 (9th Cir. 2006). For example, “electrified fences, automated tours, dinosaur nurseries, and uniformed workers” flow necessarily or naturally from the concept of a dinosaur zoo. Cavalier v. Random House, Inc., 297 F.3d 815, 823 (9th Cir. 2002).
The line between scenes à faire and protectable expression is not always clear. On one hand, a “masked magician dressed in standard magician garb whose role is limited to performing and revealing the magic tricks, for example, is not an especially distinct character differing from an ordinary magician in a manner that warrants copyright protection.” Id. at 1019. On the other hand, a Batmobile, or “a fictional, high-tech automobile that Batman employs as his primary mode of transportation,” is distinctive enough to be protectable. DC Comics v. Towle, 802 F.3d 1012, 1015 (9th Cir. 2015).
The Court found the following elements protectable:
Garth of Izar. The court ruled that this legendary starship captain is entitled to copyright protection. Garth of Izar appears as a live action character, so he has “physical as well as conceptual qualities.” He is famous for his exploits in the Battle of Axanar and his exploits are required reading at the Starfleet academy. The court noted that “Garth’s identity as a Federation hero sufficiently delineates him and sets him apart from a stock spaceship officer.”
Klingons and Vulcans. The court noted that these species “may be entitled to copyright protection.”
Klingons are a “militaristic, alien species” from the planet Qo’noS and are long-time enemies of the Federation. Klingons have distinctive physical features including ridged foreheads, dark hair and skin, upward sloping eyebrows, and the men have facial hair, as shown below:
Paramount Pictures Corp. and CBS Studios Inc. v. Axanar Productions, Inc., Case No. 2:15-cv-09938-RGK-E, Dkt. 88-70 at 7.
Vulcans are a species that values logic and reason over emotions. They are advanced technologically and are part of the Federation. They have pointed ears and upswept eyebrows; the men usually have bowl-shaped haircut:
Paramount Pictures Corp. and CBS Studios Inc. v. Axanar Productions, Inc., Case No. 2:15-cv-09938-RGK-E, Dkt. 88-70 at 9.
Costumes. The court viewed several Star Trek costumes as artistic and likely to “contain original expressions protectable under Copyright Act.”
Setting aside the general awfulness of Star Trek VI, the Court found copyrightable expression (even poor quality content can be copyrighted….For example, The Adventures of Pluto Nash has copyright protection). Specifically, the court found that a Klingon officer’s uniform from Star Trek VI – The Undiscovered Country is likely copyrightable. The uniform is a “gray tunic with shoulder covers and a red neckpiece” and is depicted below:
Paramount Pictures Corp. and CBS Studios Inc. v. Axanar Productions, Inc., Case No. 2:15-cv-09938-RGK-E, Dkt. 88-70 at 7.
The court also found that the Vulcan Ambassador Soval’s uniform—an “Asian-style long robe and a drape decorated with Vulcan writing”—is also likely to be copyrightable.
Paramount Pictures Corp. and CBS Studios Inc. v. Axanar Productions, Inc., Case No. 2:15-cv-09938-RGK-E, Dkt. 88-70 at 14.
Other elements: planets, spaceships, plot points, sequence of events, dialogs, mood, and theme. The court noted that elements from Star Trek might be protectable, including the following:
- Planets (Axanar, Qo’noS, and Vulcan)
- Military spaceships including Klingon battlecruisers, Vulcan ships with an engine ring, and Federation spaceships
- Space travel elements such as spacedocks, Vulcan buildings (cathedrals with sword-blade shaped domes, federation logo, stardate, transporters and warp drive
- Weapons such as phasers and photon torpedoes
- Plot points, sequence of events, and dialogs from Star Trek
- Mood and theme of Star Trek as science fiction action adventure
The tension between this holding and the “scenes à faire” doctrine is palpable. Many of these other elements of Star Trek (especially military spaceships, space travel elements, weapons, plot points, and the mood and theme) flow naturally from the fact that Star Trek is a science fiction movie. Other science fictions films like Star Wars have similar elements. The Court nevertheless found that, although these elements might not be individually copyrightable, “they are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.” The law establishes, however, that the copyright protection on a combination of unprotectable elements is often “thin” and protects against “only virtually identical copying.” Satava v. Lowry, 323 F.3d 805, 812 (9th Cir. 2003); Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994) (Apple GUI consisting of overlapping windows, folders, icons, etc. is entitled to only “‘thin’ protection, against virtually identical copying”). The Court did not so limit Star Trek’s protection.
Ultimately, the Court found substantial similarity between “Prelude to Axanar” and Star Trek under the extrinsic test. He left the task of applying the intrinsic test (determining whether the total concept and feel are subjectively similar) up to the jury. The Court further determined that Axanar is not entitled to the fair use defense, in part because it is not a “parody”; it is a feature film meant to replace and compete with the original Star Trek films. Additionally, even though Axanar is to be distributed for free on Youtube, it is commercial in nature because its creators stand to gain indirect commercial benefit, such as increased viewership and job opportunities.
Shortly after the opinion issued, on January 20, 2017, Paramount Pictures and CBS settled with Axanar. Under the settlement agreement, “Prelude to Axanar” can live long and prosper. Axanar can also proceed to make its full-length feature film, which will be shown on Youtube, commercial-free, in two fifteen-minute segments.
At around the same time, Paramount Pictures issued official Guidelines for Star Trek fan films. The Guidelines limit the title, length, fundraising, filming, and distribution of fan films. The film also must be “a real ‘fan’ production” in that the creators, actors, and participants must be amateurs and cannot be compensated. In short, Paramount Pictures seems to be fine with fan films, as long as they remain exactly that.
Cathy Shyong
Cathy is an intellectual property lawyer in Orrick, Herrington & Sutcliffe’s Silicon Valley office. Cathy represents high-tech companies in e-commerce, software, and consumer electronics. Cathy also counsels companies and nonprofits on intellectual property licensing and general commercial contracts. Cathy maintains an active pro bono practice litigating cases involving constitutional rights. Cathy previously served as a law clerk to Chief Judge Claudia Wilken and Magistrate Judge Paul S. Grewal in the United States District Court for the Northern District of California. Cathy’s favorite video game is Phoenix Wright: Ace Attorney; surprisingly, her experience as a lawyer shares few similarities with the game.
For more on this case and the settlement, check out the podcast with Neel Chatterjee and Josh Gilliland.
