Axanar Defense Answer and Counterclaim
A look at the Axanar Defense Answer and Counterclaim
The Axanar Defense Answer and Counterclaim were filed on May 23, 2016, and we have the pleadings. As always, I will try to break them down and make them understandable to all. You can get any images through me; these are public documents and you have the right to know.
My credentials, as always, are here. As we have done many times before, we will go through each page in turn.
Emphasis is mine unless otherwise stated.
As we have seen before, this is just a cover page which denotes the parties. The first amended complaint (this document is in response thereto) was filed on March 11, 2016. This pleading is a little early, most likely taking advantage of the Abrams-Lin speech/announcement/ad-lib/bunch of words from the fan event over this past weekend (Friday, May 20, 2016).
The document follows the first amended complaint rather closely; it may be helpful to open a second window and look at the blog post about it at the same time as this one if you want to refer back and forth. Truth is, that’s exactly what I am doing.
This page responds to the two paragraphs regarding the Nature of the Action. The first paragraph response is a fairly standard general denial. This happens a lot with defense practice; you admit only the minimum and then challenge the plaintiff to prove the remainder.
In response to the second paragraph, defendants state:
Defendants admit that Defendants have made a short film entitled Prelude to Axanar, that they intend to produce a fan film called Axanar, and that they have created (and continue to create) multiple versions of a script for the contemplated Axanar film.
The defense is beating the same drum as before, where they are stating the ‘locked script’ is still in flux.
Then the answer gets into the questions of jurisdiction and venue (this part of the response spills over to the following page). Jurisdiction refers to whether it is proper for a court to hear a case (it is, because intellectual property matters are Federal civil cases). Venue refers to whether the particular court is the correct one, e. g. there is more than one Federal district court in California. This is the correct one, as it covers Los Angeles. Fun fact: if filming had occurred in, say, New York, the case could still potentially be brought in the same court, although there could potentially be a question or two. However, defendant Peters is in LA, and Axanar is incorporated in California as a for-profit entity.
This page continues venue/jurisdictional information (it might seem a little silly, but these sorts of things still have to be established). Then the document gets into the paragraphs about the parties herein. The defense pleads a lack of knowledge on paragraphs #6 and #7 as those refer specifically to plaintiffs. Paragraph #8 is interesting. Let’s start with paragraph #8 in the First Amended Complaint:
8. Defendant Axanar Productions, Inc. (“Axanar Productions”) is a
corporation organized under the laws of the State of California. On information and
belief, Axanar Productions is a motion picture, television, and/or video production
And here is the defendants’ answer:
8. Defendants admit that Axanar Productions is a California corporation that produces fan films. Except as otherwise admitted, the allegations in paragraph 8 are denied.
Paragraph #9 goes right back to the statements about there being multiple versions of the script. First, let’s look at the complaint:
9. On information and belief, defendant Alec Peters is, and at all relevant
times was, a citizen of California, residing in Los Angeles, California. On information and belief, Peters is the controlling principal of Axanar Productions, and Peters wrote and produced the Axanar Works, and continues to write the Axanar
Script and produce the Axanar Motion Picture.
Here is the response thereto:
9. Defendants admit that Alec Peters is a citizen of California and resides in Los Angeles, California. Mr. Peters is the president of Axanar Productions and executive producer of the Axanar Works. Defendants admit that Mr. Peters is involved in writing multiple versions of the script for the Axanar Works and in producing the Axanar Works.
The difference in corporate title is fairly minor and is generally the sort of small error which a party will either quietly correct without the other side objecting or may not even bother with until much later. What is more interesting is that the answer does not identify Peters as having the controlling interest. Does he, or doesn’t he? It may seem a minor point, but if there is an unknown and as-yet unseen partner, that person could potentially find themselves named as a Doe defendant.
Paragraph #10 of the complaint puts the potential Doe defendants on notice. The response thereto is:
10. The allegations in paragraph 10 are legal conclusions to which no response is required. To the extent a response is required, Defendants deny the allegations.
Paragraph #11 talks more about the Does and, as might be expected, the response is virtually identical to the response to paragraph #10.
Paragraph #12 also references the Doe defendants. Again, the response is similar to the response to paragraph #10.
Then the answer gets into the Allegations Common to All Claims.
The response to #13 is fairly standard, admitting to any allegations based upon common knowledge and denying anything not directly within their purview. The response to paragraph #14 is similar, although this paragraph briefly mentions Garth of Izar. The responses to paragraphs #15 and #16 are nearly identical to the response to paragraph #13.
Paragraphs #17 – #19 are answered with the same ‘the facts are publicly available, and those that aren’t are denied’ sort of statement we have already seen. Paragraphs #20 and #21 allege the complaint is making legal conclusions. Those are the paragraphs concerning the plaintiffs’ exclusive rights in copyright.
Then we get into a discussion of Axanar’s works. This continues onto the following page, so I’ll address it there.
In paragraph #22, here is what the plaintiffs said:
22. Defendants’ infringing work, Prelude to Axanar is a short film that was
funded on Kickstarter, a crowdsourcing website where parties can raise money for
And here is how the defense responded:
Defendants deny that Prelude to Axanar is “infringing.” Defendants admit that they received donations through Kickstarter to produce the short film Prelude to Axanar. Except as otherwise answered, Defendants lack knowledge or information sufficient to form a belief about the truth of the allegations in paragraph 22, and on that basis deny them.
These kinds of denials may seem small, but if not asserted here, defense may end up forgoing the opportunity to assert them – and that kind of negligence/carelessness in pleading could get an attorney into malpractice-style hot water. Hence Ms. Ranahan is of course doing her job.
In paragraph #23, the plaintiffs allege:
23. Defendant Peters (possibly with the aid of certain of the Doe
Defendants) wrote the Prelude to Axanar screenplay.
And the response:
23. Defendants admit that Mr. Peters was involved in writing the screenplay for Prelude to Axanar. The allegation regarding possible involvement of Doe defendants constitutes a legal conclusion to which no response is required.
Paragraph #24 alleges Peters produced Prelude; the defense does not deny this.
Paragraphs #25 (more about the Does) and #26 (about the defense having access to Star Trek works) are responded to with the same kind of verbiage as was used to respond to paragraphs #17 – 19.
Here’s paragraph #27 from plaintiffs’ perspective:
27. Defendants are currently distributing and publicly performing Prelude
to Axanar online via Youtube.com, and by other means not yet known to Plaintiffs.
This paragraph is an attempt to account for distribution in other areas, such as showings at official and unofficial conventions, and may also include chopping up the file and posting pieces of it on Vine or Vimeo.
From the defense perspective, here is paragraph #27:
27. To the extent the allegations in paragraph 27 constitute legal conclusions or concern facts that are publicly available, no response is required. To the extent a response is required, Defendants admit that Prelude to Axanar was published on Youtube.com in 2014. Except as otherwise answered, Defendants lack knowledge or information sufficient to form a belief about the truth of the allegations in paragraph 27, and on that basis deny them.
Then we get to paragraph #28. Here’s plaintiffs’ side:
28. Prelude to Axanar is directly and unabashedly intended to be a
derivative work of Star Trek, or a Star Trek work, and uses numerous copyrighted
elements from the Star Trek Copyrighted Works (in fact, the full title of this work is “Star Trek: Prelude to Axanar”). Prelude to Axanar tells the story of Captain Kirk’s
hero, Garth of Izar, during the war between the Federation and the Klingon Empire.
To which the defense responds:
28. Defendants deny that Prelude to Axanar is or was intended to be a derivative work, or that it infringes Plaintiffs’ works. Defendants further deny that the full title of Prelude to Axanar is “Star Trek: Prelude to Axanar.” Defendants admit that Prelude to Axanar was inspired by Star Trek, and tells a story about Garth of Izar that has not been told before. To the extent the allegations in paragraph 28 concern facts regarding Prelude to Axanar that are publicly available, no response is required and Defendants refer to the film for its contents.
Oh, but defendants, how do you explain the fact that your Kickstarter campaign is still entitled Star Trek: Axanar?
Like here (screenshot taken on May 24, 2016), perhaps?
Seriously, people, this is like shooting fish in a barrel.
Then we get to paragraph #29. Plaintiffs say (in a single-spaced paragraph! Oh noes!):
29. According to Defendants’ Kickstarter campaign:
Prelude to Axanar is a short film that will give viewers a historical look
at the events leading up to the Battle of Axanar, the central event of the
film Axanar, to be filmed later this year. Shot like a History Channel
special, Prelude to Axanar will be Star Trek like you have never seen
it before, showing the central characters of Axanar giving both a
historical and personal account of the war. How did Starfleet build its
fleet? How did they hold off a Klingon fleet that had been conquering
star systems for centuries? What role did the various founding planets
play in Starfleet? Why were the Constitution class ships so important to
Starfleet? How did Garth of Izar come to be regarded as the greatest
Starfleet Captain of his time? (emphasis added)
Defendants admit the statement was included in their Kickstarter campaign; otherwise, they claim the information is publicly available.
Onward to paragraph #30. Plaintiffs say:
30. Defendants incorporated numerous elements of the Star Trek
Copyrighted Works into Prelude to Axanar, including but not limited to the
elements of the Battle of Axanar itself, the Federation, the Klingons, Vulcans,
Starfleet, and Starfleet officers and commanders, including Garth of Izar.
The defense responds with the same sort of statement about legal conclusions although they also allege that Prelude does not infringe.
The document moves onto the proposed (partially completed) full-length feature, entitled: Axanar.
In paragraph #31, the plaintiffs maintain the defense received funding via Kickstarter and Indiegogo, which the defense does not deny.
Then we circle back to questions about the completeness of the Axanar script. Plaintiffs say:
32. Defendants have created the Axanar Script, and versions thereof, for
the Axanar Motion Picture, which scripts are fixed works. Although Defendants
originally announced that filming would begin in January 2016, they have already
released a scene from the Axanar Motion Picture, which they call the “Vulcan
Scene,” in 2015. On information and belief, Defendants have filmed at least one
other scene from the Axanar Motion Picture.
The defense responds:
32. The allegation that “the Axanar Script, and versions thereof, for the Axanar Motion Picture” are “fixed works” is a legal conclusion to which no response is required. To the extent a response is required, Defendants deny the allegation. Defendants admit that they have created and continue to create multiple versions of the script for the Axanar motion picture. To the extent the allegations in paragraph 32 concern facts that are publicly available, including any public announcement allegedly made by Defendants, Defendants refer to such publicly available sources for their contents. Defendants admit that Axanar Productions released the “Vulcan Scene” in 2015. Defendants deny that they have filmed any other scene from the Axanar motion picture aside from the “Vulcan Scene.” Except as otherwise answered, Defendants deny the allegations in paragraph 32.
Moving onto paragraph #33, plaintiffs claim:
33. Defendant Peters (possibly with the aid of certain Doe Defendants)
wrote the Axanar Script and versions thereof.
Defense response is as follows:
33. Defendants admit that Mr. Peters was involved in writing the multiple versions of the script for the Axanar motion picture. The allegation regarding possible involvement of “certain Doe Defendants” constitutes a legal conclusion to which no response is required.
Well, not exactly. This is the sort of nuance that will come out in discovery, if this case gets that far.
In paragraph #34, plaintiffs allege the production of the full-length feature is ongoing; defense says it was stopped in response to the lawsuit.
These bullets just keep making splashes when I hit the salmon. Dang, I hate when that happens.
Paragraph #35 talks more about the script being written by the defendants and the Does, and is responded to with yet another legal conclusions defense. Then we get to paragraph #36 of the plaintiffs’ complaint, which says:
36. According to Axanar Productions’ Facebook page, as of August 15,
2015, there was a “fully revised and locked script” which is referred to as “the best
Star Trek movie script ever!”
It also includes this helpful image:
The verbiage on that page’s image states as follows:
(the status portion) A fully revised and locked script! Congrats to my writing partner Bill Hunt. Together we were able to produce what director Rob Burnett calls the best Star Trek movie script ever!
(the typed portion, most likely the cover page for the script) AXANAR Written by Alec Peters and Bill Hunt. Directed by Robert Meyer Burnett. August 10, 2015.
The defense’s response to paragraph #36, in its entirety, is:
36. The allegations in paragraph 36 concern facts that are publicly available, and therefore no response is required. To the extent a response is required, Defendants refer to the alleged Facebook page for its contents.
Paragraph #37 is another one about the defense having access to Star Trek and is answered as being a legal conclusion.
Paragraph #38 is another one about the defense having alleged information publicly available.
For paragraph #39, plaintiffs allege:
39. Defendants have disseminated the Vulcan Scene from the Axanar
Motion Picture online via Axanar Productions’ website
(www.AxanarProductions.com), as well as on Youtube.com.
The defense response is an admission.
Paragraph #40 reiterates the plot of Axanar; the defense responds that this information is publicly available.
Paragraph #41 of the complaint states:
41. Defendants incorporated numerous elements of the Star Trek
Copyrighted Works into the Axanar Script and the Vulcan Scene, and will
incorporate those elements into the Axanar Motion Picture, including but not limited
to the elements of the Battle of Axanar itself, the characters, the species, the
costumes, the makeup, weapons (and other props), and the starships.
41. To the extent the allegations in paragraph 41 constitute legal conclusions, no response is required. Defendants refer to Prelude to Axanar, the Vulcan Scene, and the various scripts for the Axanar motion picture for their contents. Defendants deny that it has been determined what they “will” incorporate into the motion picture given that this lawsuit has stalled and impacted the planned production.
As pointed out, supra, production work in front of the camera may have stalled, but there were plenty of other activities going on, at least for a while. Furthermore, the Vulcan scene was essentially a proof of concept.
So, defense, do you mean to tell me that the Vulcan scene, which was shared with donors and potential donors in a July 20, 2015 update to Axanar‘s Kickstarter page, was not going to be a part of the final movie? Was this infringing work served up to donors but not going to be a part of the film? Were the donors were going to receive a bait and switch for their cold, hard cash?
If I am missing something, and this isn’t really a paradox, then please feel free to tell me in the comments section. If I am suffering from a failure of intelligence or imagination, about why these seemingly contradictory statements cannot both be true and coexist in parallel, side by side, then I want to hear it. If you tell me I’m wrong, you won’t hurt my feelings.
For paragraph #42, the plaintiffs allege one-third of the effects are finished. The defense responds that any public statements require no response, but deny the allegation anyway.
In paragraph #43, plaintiffs state:
43. Defendant Peters has admitted that the Axanar Works violate Plaintiffs’
copyrights. In an interview published on February 1, 2016, Mr. Peters stated “We
violate CBS copyright less than any other fan film.” See
The defense responds (the response continues on the following page):
43. The allegations in paragraph 43 concern facts that are publicly available, and therefore no response is required. To the extent a response is required, Defendants refer to the alleged article for its contents. Defendants deny that the Axanar Works violate Plaintiffs’ copyrights and further deny that Mr. Peters has “admitted” that the Axanar works violate Plaintiffs’ copyrights.
Except the cited 1701 News story (many thanks to John Kirk and Michael Hinman) notes:
And at the end of the day, when it comes to what unauthorized Star Trek production is violating copyright more, Peters says it’s not “Axanar.”
“We violate CBS copyright less than any other fan film,” he said. “‘Star Trek Continues’ and ‘Star Trek: New Voyages’ violate more than we do.”
Here we have more salmon full of buckshot, gentle reader.
Here the plaintiffs state the Axanar works are substantially similar to the Star Trek copyrighted works. This is the aggregation of elements I have mentioned several times. E. g. it’s not just the ears that maketh the Vulcan; it’s also the haircut, the naming convention, the green blood, the Pon Farr, the reliance on logic, the sehlats, Mount Seleya, the teachings of Surak, the lirpa, and all the rest of it.
Paragraphs #44 and #45 are about the look and feel of Star Trek, alleging, you guessed it, substantial similarity; the defense responds that these are legal conclusions.
Paragraph #46 from the complaint goes on for over twenty pages and shows alleged infringements from the defense, side by side with the canon elements owned by the plaintiffs. It can be viewed in its entirety (pages 11 – 34, inclusive) here.
Fortunately, the defense’s response is a lot shorter, although it does continue on page 10, infra. Here it is, in its entirety:
46. Defendants deny that Prelude to Axanar copies any protected expression from any of the Star Trek Works. Defendants deny that Prelude to Axanar is substantially similar to, is derivative of, or infringes any of the Star Trek Works. The allegations that Prelude to Axanar “copies many elements” from the Star Trek works, that Defendants “intentionally sought to replicate” the Star Trek Works, and that Defendants sought to create a “Star Trek film” are legal conclusions to which no response is required. Defendants further deny that it is relevant that Plaintiffs believe Prelude to Axanar to be a “Star Trek” work given that this is not a trademark, Lanham Act or unfair competition case, and is thus not in any way about the use of the “Star Trek” name. In response to the allegations in paragraph 46 regarding the various allegedly “copyrighted Star Trek elements” that Prelude to Axanar allegedly copied, Defendants refer to and incorporate by reference the arguments made in their Motion to Dismiss or Strike the FAC (ECF No. 29) and Reply in support thereof (ECF No. 33). Moreover, to the extent Plaintiffs’ allegations in paragraph 46 concern facts that are publicly available and/or within Plaintiffs’ knowledge, no response is required. Defendants refer to Prelude to Axanar and to the identified Star Trek Works for their contents. To the extent any further response is required, and except as otherwise answered, Defendants deny the allegations in paragraph 46. In particular, Defendants deny the allegation that Richard Robau appears in Prelude to Axanar (he does not) and further deny that Soval’s robe in Prelude to Axanar contains “ancient Vulcan script” (the robe contains Chinese letters).
The second motion to dismiss failed spectacularly. Judge Klausner even schooled the defense team on the incorrect application of a case. Why, exactly, would anyone reiterate anything from that loser of a motion?
Could it be the defense is clutching at straws?
As for the error in connecting Robau to Prelude, that’s the sort of thing that could be amended in a pleading. After all, there is still a connection; it’s just that defendant Peters mentioned Robau for the full-length feature.
And then there’s the matter of the Chinese characters. Here’s one (there are actually a few such images in the First Amended Complaint) showing Vulcan robes with writing:
Here’s a good close up, directly from Prelude (the female Vulcan character is named T’Lara, I believe. Please feel free to correct me if I am mistaken):
Here are common Chinese (Hanzi) characters. There are actually thousands more than these, but these are common:
And here’s an image of a Vulcan robe from Star Trek III: The Search for Spock:
Now, dear reader, kindly look at T’Lara’s robe, and at the black robe from the movieverse (which is of course IP owned by Paramount). And then, if you will, look at the Hanzi characters. Which is closer? They do not have to be identical to be infringing. Which one is the Axanar design sensibility closest to – Hanzi or the canon Vulcan lettering on a robe used as a part of IP owned by plaintiff Paramount Pictures? You make the call, sushi fans.
Oh, and by the way, if the letters really are Chinese characters, then they should be translatable by a native speaker, yes? I concede there are many, many more Chinese characters than in the above image. Maybe it says Live Long and Prosper, or Infinite Diversity in Infinite Combinations.
On this page, the defense addresses paragraph #47. This paragraph, as you may recall from the First Amended Complaint, references Vulcans and shows the same image I added under page 9, supra (Soval and T’Lara). The plaintiffs also add a chart of side-by-side comparisons stretching over several pages.
The defense responds as such (their response is presented in its entirety):
47. Defendants deny that the Vulcan Scene copies any protected expression from any of the Star Trek Works. Defendants deny that the Vulcan Scene is substantially similar to, is derivative of, or infringes any of the Star Trek Works. The allegations that Defendants “replicate” various alleged “elements” from the Star Trek Works are legal conclusions to which no response is required. In response to the allegations in paragraph 47 regarding the various “infringing elements from the Vulcan Scene,” Defendants refer to and incorporate by reference the arguments made in their Motion to Dismiss or Strike the FAC (ECF No. 29) and Reply in support thereof (ECF No. 33). Moreover, to the extent Plaintiffs’ allegations in paragraph 47 concern facts that are publicly available and/or within Plaintiffs’ knowledge, no response is required. Defendants refer to the Vulcan Scene and to the identified Star Trek Works for their contents. To the extent any further response is required, and except as otherwise answered, Defendants deny the allegations in paragraph 47. Defendants further deny the allegation that Soval’s robe in the “Vulcan Scene” contains “ancient Vulcan script” (the robe contains Chinese letters) and further deny that the Vulcan Scene depicts the “original Garth of Izar costume worn by the actor from The Original Series” (Mr. Peters purchased the costume for his own collection but it was never used in connection with the Vulcan Scene or the Axanar motion picture).
Nah, the Garth of Izar costume was just used for the Heroes vignette, supra.
And we’re still using the Motion to Dismiss which was 100% denied?
Oh, and how’s that Chinese character translation coming along?
Paragraphs #48 and #49 repeat the same legal conclusions response we have seen before.
Paragraph #50 contains the plaintiffs’ direct statement about an anticipated defense:
50. The Axanar Works are not a parody, nor do they constitute fair use of
the Star Trek Copyrighted Works.
But the defense only provides a legal conclusions response.
For Paragraph #51, the plaintiffs state:
51. The Axanar Works are not licensed by CBS or Paramount.
The defense response is:
51. Defendants admit that Plaintiffs did not enter a formal, express license with Defendants to create the Axanar Works. To the extent paragraph 51 alleges that Defendants needed to enter an express license with Plaintiffs to create the Axanar Works, this is a legal conclusion to which no response is required. To the extent a response is required, Defendants deny that allegation.
Then we get into responses on the claims for relief and begin with Copyright Infringement. Paragraph #52 is plaintiffs’ incorporation by reference paragraph and, as such, properly does not require a response.
Paragraphs #53, #54, and #55 from the plaintiffs establish that Star Trek is a copyrightable work and that they own the rights thereto. They then allege the defense is infringing and that the Axanar works are unauthorized derivative works which have been distributed through online (mostly) channels.
The defense responses are solely to state that these are legal conclusions.
Next up is the second cause of action, Contributory Copyright Infringement. Just like in paragraph #52, paragraph #56 is an incorporation by reference paragraph, and it is naturally responded to the same way (I realize these seem obvious, but they are included every time in order to make it easier for both judge and eventual jury to separate the claims and review them independent of each other, if need be).
Plaintiffs’ paragraphs #57 – #59 are about the defendants’ knowledge of the Axanar works being derivative copies of copyrighted works. Further, the plaintiffs allege the infringements will continue unless they are stopped by the court.
The defense response is to refer to these paragraphs as containing legal conclusions.
Here is the third cause of action, Vicarious Copyright Infringement. Again, we get an incorporation by reference paragraph (#60), with the same defensive response.
Plaintiffs’ paragraphs #61 – #63 are that defendant Peters supervised others and that he enjoyed a direct financial benefit from infringement.
Yet again, the defense response is to refer to these paragraphs as containing legal conclusions.
Then we come to the fourth cause of action, Declaratory Judgment. Paragraph #64 is yet another incorporated by reference paragraph, with the identical defense response.
Plaintiffs’ paragraphs #65 – #69 are about the state of production of the full-length feature and name characters and elements of the overall IP which are being coopted by the defense.
Defense responses to paragraphs #65 and #66 are as follow (they continue onto the following page):
65. Defendants admit that they did not obtain Plaintiffs’ express authorization to produce the Axanar motion picture, but deny that any such authorization was required. Defendants further deny that they are in the process of producing the Axanar motion picture because production has been halted as a result of this lawsuit.
66. To the extent the allegations in paragraph 66 concern an alleged public announcement, Defendants refer to that announcement for its contents. The remaining allegations in paragraph 66 constitute legal conclusions to which no response is required. To the extent a response is required, Defendants deny the allegations.
The remaining responses state the paragraphs are legal conclusions.
Here we move onto the plaintiffs’ Prayer for Relief (which is responded to as being a legal conclusion) and then the Affirmative Defenses.
The First Affirmative Defense is fair use.
Fair use does not seem to apply. According to the United States Copyright Office, under section 107, a finding of fair use is rather limited:
Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
Axanar is a for-profit corporation (claims of applying for 501(c)(3) status are immaterial as they have amounted to nothing and were nothing prior to the filing of the suit. If 501(c)(3) status was granted tomorrow, it would not retroactively protect this production). Its usage of Trek is not for criticism, comment, news reportage, teaching, scholarship or research. The work is nearly entirely composed of copied copyrighted materials. The stated purpose behind the creation of the film and the exhortations to donors were to make ‘the best Star Trek ever’ and to compete in the marketplace as an ‘independent Star Trek film’. These all go against the likelihood of fair use applying herein.
The Second Affirmative Defense is waiver.
I’m not so sure that waiver applies. Per the United States Copyright Office, under section 106A, which is about artists’ rights to their own work, waiver is not something accidentally given away. It has to be an affirmative act. E. g.:
(e) Transfer and Waiver.—(1) The rights conferred by subsection (a) may not be transferred, but those rights may be waived if the author expressly agrees to such waiver in a written instrument signed by the author. Such instrument shall specifically identify the work, and uses of that work, to which the waiver applies, and the waiver shall apply only to the work and uses so identified. In the case of a joint work prepared by two or more authors, a waiver of rights under this paragraph made by one such author waives such rights for all such authors.
(2) Ownership of the rights conferred by subsection (a) with respect to a work of visual art is distinct from ownership of any copy of that work, or of a copyright or any exclusive right under a copyright in that work. Transfer of ownership of any copy of a work of visual art, or of a copyright or any exclusive right under a copyright, shall not constitute a waiver of the rights conferred by subsection (a). Except as may otherwise be agreed by the author in a written instrument signed by the author, a waiver of the rights conferred by subsection (a) with respect to a work of visual art shall not constitute a transfer of ownership of any copy of that work, or of ownership of a copyright or of any exclusive right under a copyright in that work.
The Third Affirmative Defense is the doctrine of unclean hands.
Let’s look at Law.com’s definition:
n. a legal doctrine which is a defense to a complaint, which states that a party who is asking for a judgment cannot have the help of the court if he/she has done anything unethical in relation to the subject of the lawsuit. Thus, if a defendant can show the plaintiff had “unclean hands,” the plaintiff’s complaint will be dismissed or the plaintiff will be denied judgment. Unclean hands is a common “affirmative defense” pleaded by defendants and must be proved by the defendant. Example: Hank Hardnose sues Grace Goodenough for breach of contract for failure to pay the full amount for construction of an addition to her house. Goodenough proves that Hardnose had shown her faked estimates from subcontractors to justify his original bid to Goodenough.
This is the first time anything has been mentioned about CBS and/or Paramount doing anything unethically. While some may feel that not suing the other unofficial productions (still not outside the realm of possibility) is unfair (perhaps it is), it is not unethical. Copyright holders can choose whom to sue, and need not sue every suspected infringer. They need not sue every suspected infringer at the same time or in the same cause of action. Finally, they are under no obligation to provide guidelines or antedate litigation with a formal cease and desist letter. C & D letters are helpful, but are not a requirement, either for the copyright holder or the cause of action.
The Fourth Affirmative Defense is an unspecified First Amendment violation, which is really (I believe) an offshoot of the prior restraint claim they made in their motions to dismiss. In the judge’s ruling rejecting the second motion to dismiss, Judge Gary Klausner had this to say about the defense’s First Amendment claims:
Finally, Defendants argue that it would be an impermissible prior restraint for the Court to allow
Plaintiffs’ claims based on the Axanar Motion Picture to proceed. This argument is unavailing. Plaintiffs
have not yet filed a motion for injunctive relief and Defendants are not restrained by the filing of this
Complaint. Rather, Defendants are on notice that Plaintiffs allege certain copyright infringement
allegations against them. This ruling does not affect Defendants choice to proceed with the production
of the Axanar Motion Picture. Though Defendants attempt to utilize Globe International, Inc. v.
National Enquirer, Inc., No. 98-10613 CAS (MANX), 1999 WL 727232, at *5 (C.D. Cal. Jan. 25, 1999) to support their argument, Defendants point out in both their Motion and their Reply that this case is
regarding a preliminary injunction, which is not the issue here.2 As such, Defendants’ impermissible
prior restraint argument is inapposite.
I do not believe the judge is going to be convinced to change his mind, and believe the plaintiffs would be able to get this affirmative defense stricken, or at least a rather favorable jury instruction if this claim makes it as far as the verdict stage.
The Fifth Affirmative Defense is estoppel.
Let us return to Law.com. Here is their definition of estoppel:
n. a bar or impediment (obstruction) which precludes a person from asserting a fact or a right or prevents one from denying a fact. Such a hindrance is due to a person’s actions, conduct, statements, admissions, failure to act or judgment against the person in an identical legal case. Estoppel includes being barred by false representation or concealment (equitable estoppel), failure to take legal action until the other party is prejudiced by the delay (estoppel by laches), and a court ruling against the party on the same matter in a different case (collateral estoppel).
I feel the defense is somewhat misplaced. The only impediment I can think of is the meeting between defendant Peters and two CBS (I cannot recall if there was a Paramount representative at this meeting) representatives. However, news broke fairly quickly that CBS at least was reviewing its options. While there may not be immediacy in revealing their intentions to Peters (it is possible the people he spoke with were not authorized to go public until more details had been hammered out), I do not believe the delay was a material one. Defendant was given the normal amount of time to answer the complaint and, in fact, was granted an extension at the start of the suit as he was still securing legal representation. Hence I do not feel there is laches, and there is no collateral estoppel as I understand this is the only germane case. That leaves the possibility of equitable estoppel, which will come down to the nature of the meeting itself. I do not believe CBS was under an obligation to reveal its intentions at the August 2015 meeting, but that may come down to discovery.
By the way, here’s an interesting statement made about estoppel (please click through on that link):
Defendants instead allege that Paramount’s failure to commence litigation against other potentially infringing books estops them from bringing this action. Extending the doctrine of estoppel so that a defendant may rely on a plaintiff’s conduct toward another party is both unsupported by law and pernicious as a matter of policy.
The Sixth Affirmative Defense is failure to mitigate.
This one is rather interesting, as I believe the basis for it would be the short delay between November meeting and late December lawsuit. After all, since (currently) the other unofficial productions are not being sued, allowing the creation of Prelude would not seem to fall under this umbrella. Hence we are talking about a delay of perhaps six to eight weeks, approximately.
On the other hand, the second motion to dismiss included the concept that the plaintiffs’ claims were unripe because the feature-length work had not yet been completed and released. The judge threw this theory out (along with everything else in the second motion to dismiss), but it did get me to wondering.
See, if that portion of the second motion to dismiss had been granted, and the film had been permitted to go ahead, then there truly would not have been mitigation. Allowing the full-length work to be completed would have essentially meant that that plaintiffs would have to allow themselves to be damaged prior to bringing suit. Yet damages are not an element to this cause of action. An IP holder can, conceivably, bring an infringement suit even if damages only add up to one thin dime. By filing suit and effectively stopping production (although some collateral work was still performed, see supra), this act mitigated the defense’s damages, thereby potentially saving him some serious dollars.
Nobody likes being sued (not even lawyers), but seriously, CBS and Paramount kind of did the defense a solid by filing.
The Seventh Affirmative Defense is acknowledgment, ratification, consent and acquiescence.
For a decent definition of acknowledgment, we look at the Free Dictionary, which states, in part:
The partial payment of a debt, for example, is considered an acknowledgment of it for purposes of tolling the statute of limitations—the time set by law for bringing a lawsuit—based on a person’s failure to repay a debtor.
Essentially what the defense is looking for is a means of taking the plaintiffs’ somewhat hands-off past behavior with reference to unofficial productions, and converting it into a legal acknowledgement. For true fan films, that may be the case. However, the defendants engaged in several different activities (running a donor store, for example) which seem to take them out of the realm of just a ‘fan film’. This question of fact will potentially be resolved in discovery and could even become a jury question.
For a look at ratification, we return to Law.com, which says:
n. confirmation of an action which was not pre-approved and may not have been authorized, usually by a principal (employer) who adopts the acts of his/her agent (employee).
Peters is not an employee of either plaintiff. About the only way I can see this as applying is if the tacit ‘look the other way’ behavior by plaintiffs somehow comes under this umbrella. However, that is not what seems to have happened here. By defendant Peters’s own admission, the November meeting did not include permission to do anything. He may have been confused and the upshot may have been unclear, but it does not appear as if his actions were confirmed, authorized, or permitted. This may turn out to be a discovery question.
For a look at consent, we go again to Law.com. It says:
1) n. a voluntary agreement to another’s proposition. 2) v. to voluntarily agree to an act or proposal of another, which may range from contracts to sexual relations.
This does not seem to apply, as the November meeting, which at best and at its most favorable to the defense, could be described as confusing. Again, this may be determined in discovery.
For acquiescence, we return to the Free Dictionary, which says (in part):
Conduct recognizing the existence of a transaction and intended to permit the transaction to be carried into effect; a tacit agreement; consent inferred from silence.
Here, the defense may (maybe) have something substantial to work with, as it references inaction. Will this one fly? If the case goes on long enough, this may end up being one of the few pegs where the defense can hang their hat.
The Eighth Affirmative Defense is failure to register.
The defense is claiming the plaintiffs failed to register their copyrights.
Here, I’ll help them out. I know the copyright.gov search is not the best.
- Whom Gods Destroy is copyrighted under registration #: RE0000769427.
- The book, Garth of Izar, is copyrighted under registration #:TX0005745716.
- All of TOS comes under the following document #: V3542D685.
- Here’s Star Trek III: The Search for Spock (where’s T’Lara’s robe’s decorations – oops, Chinese characters! – come from) – registration #: V1992P323-324
- Here’s the 2009 film (with Richard Robau), registration #: PRE000001813
- Here’s Star Trek Into Darkness, registration #: PA0001837943
Records of copyrights from before 1978 have to be searched manually.
The Ninth Affirmative Defense is invalidity of unenforceability of copyright.
This is very close to the eighth affirmative defense; the above list should, if backed by the proper documentation, satisfy both such defenses.
The Tenth Affirmative Defense is authorized use.
Similar to acknowledgment, ratification, consent and acquiescence, supra. I won’t repeat myself here.
The Eleventh Affirmative Defense is forfeiture or abandonment.
This one should fall pretty quickly. The plaintiffs have kept their IP fresh and in the public eye with books, pizza cutters, tunics, comics, and other tie-in merchandising. The property need not be shown on broadcast television. It is neither forfeited, nor is it abandoned.
The Twelfth Affirmative Defense is misuse of copyright.
According to the American Bar Association, copyright misuse:
it’s broadly defined as using a copyright to secure an exclusive right or limited monopoly not granted by the copyright office, contrary to public policy. Most often, the defense applies where the rights holder has included terms in its typical license agreement that are unreasonably anticompetitive, such as prohibiting the use of competing products, or prohibiting the licensee from independent creation of a noninfringing product that would compete with the copyrighted product or would contribute to the public good. The defense also applies when a rights holder attempts to mislead or defraud an infringer by unfairly threatening infringement penalties that exaggerate or misstate the law, or by claiming copyright in a work that is at least partly in the public domain.
Because Axanar admittedly does not hold a license (see, supra) and none of Star Trek is in the public domain, this affirmative defense should readily fall.
The Thirteenth Affirmative Defense is constitutionally excessive damages.
This one will not fly at all because, according to the United States Copyright Office, section 504:
(a) In General. — Except as otherwise provided by this title, an infringer of copyright is liable for either —
(1) the copyright owner’s actual damages and any additional profits of the infringer, as provided by subsection (b); or
(2) statutory damages, as provided by subsection (c). …
(c) Statutory Damages. — …
(2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000.
The Fourteenth Affirmative Defense is lack of standing.
We have been down this road before, and the way was not profitable for the defense. In the second motion to dismiss, the defense claimed the plaintiffs lacked standing to sue. The judge threw out that argument, stating, in part:
Because it is undisputed that Paramount owns the copyrights to the Star Trek Motion Pictures,
which is included in the Star Trek Copyrighted Works, Paramount has standing to sue for copyright
infringement based on these works.
Then the defense asserts other defenses in a kind of catch-all. This is a rather standard aspect of pleadings, intended to cover the defense in the event that another possible defense comes to light as a result of findings from the discovery process.
Now it gets interesting, because here comes the counterclaim.
Before I begin to analyze it, one thing is for sure; this is what is called a compulsory counterclaim. That is, it would have to be asserted within the answer as the fact pattern only applies hereto and, if it is not asserted, it is waived.
Plaintiffs have 21 days to answer the counterclaim.
The first parts, as required, establish venue and jurisdiction. These will likely not be objected to by either plaintiff, as both corporations regularly do business in California. Then we get into the nature of the claim. I’ll post the 7th paragraph of the counterclaim with the next page as it is long (it goes on from the bottom of page 16 and over to 18) for readability’s sake.
In the counterclaim’s 7th paragraph, the defense says:
7. With these ideals in mind, it is not surprising that Gene Roddenberry, the creator of Star Trek, celebrated and encouraged fan fiction in the Star Trek universe. In the 1976 book Star Trek: The New Voyages—which is a collection of short Star Trek stories written by fan fiction authors—Mr. Roddenberry provided this Foreword:
…Certainly the loveliest happening of all for us was the fact that so many others began to feel the same way [about Star Trek as we did]. Television viewers by the millions began to take Star Trek to heart as their own personal optimistic view of the Human condition and future. They fought for the show, honored it, cherished it, wrote about it—and have continued to do their level best to make certain that it will live again.
…We were particularly amazed when thousands, then tens of thousands of people began creating their own personal Star Trek adventures. Stories, and paintings, and sculptures, and cookbooks. And songs, and poems, and fashions. And more. The list is still growing. It took some time for us to fully understand and appreciate what these people were saying. Eventually we realized that there is no more profound way in which people could express what Star Trek has meant to them than by creating their own very personal Star Trek things.
Because I am a writer, it was their Star Trek stories that especially gratified me. I have seen these writings in dog-eared notebooks of fans who didn‘t look old enough to spell “cat.” I have seen them in meticulously produced fanzines, complete with excellent artwork. Some of it has even been done by professional writers, and much of it has come from those clearly on their way to becoming professional writers. Best of all, all of it was plainly done with love.
It is now a source of great joy for me to see their view of Star Trek, their new Star Trek stories, reaching professional publication here. I want to thank these writers, congratulate them on their efforts, and wish them good fortune on these and further of their voyages into other times and dimensions. Good writing is always a very personal thing and comes from the writer‘s deepest self. Star Trek was that kind of writing for me, and it moves me profoundly that it has also become so much a part of the inner self of so many other people.
Viewers like this have proved that there is a warm, loving, and intelligent lifeform out there—and that it may even be the dominant species on this planet.
That is the highest compliment and the greatest repayment that they could give us.
These are beautiful sentiments but (a) they aren’t the law, and more importantly (b) Star Trek: The New Voyages is a copyrighted work.
- New Voyages II is copyrighted under registration #: TX0000008846
- The New Voyages Bible is copyrighted under registration #: TXu001109175
Note: the copyright catalog on Copyright.gov only goes back to 1978. Anything from before that can only be found in the Copyright Public Records Reading Room. Investigating this would probably be the work of a paralegal or law student.
Roddenberry’s statement is also considered hearsay, although since the declarant is unavailable, it could potentially fall under an exception. It would be up to the trier of fact (the jury) to determine whether this positive marketing statement should be followed over settled copyright law.
After describing what a trekkie is, the counterclaim then adds (paragraph 10 continues on the following page):
9. Historically, Plaintiffs tolerated Star Trek fan fiction in all its glory, likely recognizing that it was only fueling the dedicated Star Trek fans, and was not harming Plaintiffs, or otherwise impeding Star Trek fans’ capacity to appreciate and pay to see official Star Trek works offered to them. Until this lawsuit, Plaintiffs, or any predecessor claiming to own copyrights in the Star Trek universe, had never filed a lawsuit against any Star Trek fan in connection with that fan’s efforts to contribute to the wealth of Star Trek fan fiction that currently exists.
10. Plaintiffs’ lawsuit against Defendants here is at odds with the Star Trek ideals of inclusion, tolerance, unity, and peace. Instead, it sets out to destroy and exclude one of Star Trek’s biggest fans, Defendant Alec Peters, for his creation of original works that honor, celebrate and contribute to the deep tradition of fan fiction in the Star Trek universe.
Let’s go over these statements individually.
- The tolerance for fan fiction (e. g. written works) years ago is a far different animal from anything to do with broadcast media today. Axanar itself acknowledges social media is changing the landscape. Other changes include the ability to spread broadcast media around the globe quickly (YouTube is the second-largest search engine, after Google. They process over 3 B searches/month. YouTube is huge) and the ability of the average user to get his or her hands on decent-quality recording and editing equipment has never been greater than it is now.
- The question of impediments to fans’ capacity to appreciate and pay to see official Star Trek works is not one to quickly dismiss. Not every fan is as hip-deep into the oeuvre as many of us are. For many viewers, the appearance of actors reprising their original roles (not just Gary Graham in Axanar, but also Walter Koenig, Tim Russ, etc.) could cause confusion.
- In our copyleft generation, often seen as a right-click, copy whatever generation as well, Internet users can be very confused about what to think and about who owns what. What may feel like a quickie innocent copying can turn into a Napster-style debacle. This is not a slam on anyone’s intelligence; it is more that the rights can be confusing and the details can be rather nuanced.
- Actually, someone has already been sued, before Axanar. See Paramount Pictures Corp. v. Carol Publishing Group, 11 F.Supp.2d 329 (1998). In that case, a book, The Joy of Trek, was published. The case ended with an injunction against the defense. Guess who the lawyer was representing Paramount in that case?
- The Star Trek ideals of inclusion, etc. are noble and lovely. Star Trek also shows a society past money, faster than light travel, and dematerialization. Fiction is fun! But it’s not the law.
- I have blogged about the ‘originality’ of the defendants’ works before, and will not repeat myself.
On this page, the pleading takes a left turn into … I can’t even land.
Paragraph 11 of the counterclaim reads:
11. Mr. Peters is a lifelong Star Trek fan. Starting with the very first Star Trek teaser appearing on NBC in the summer of 1966, Mr. Peters has seen every episode of Star Trek many times over. When Mr. Peters was just eight years old and NBC moved Star Trek to 10:00 p.m., his mother would put him to bed at 8:00 p.m., but would wake him up at 10:00 p.m. only so that he could watch Star Trek, before putting him back to bed again.
Beyond this being neither the law nor any sort of a pertinent fact, it raises another odd question. Dr. Jodi Mindell of Parents.com says the average eight-year-old child requires 10– 11 hours of sleep per night. Web MD agrees. Dr. Jennifer Shu at CNN Health concurs. Is this a tangent on my part? To quote Sarah Palin, you betcha! Tangent for tangent, folks. This paragraph is utterly immaterial.
According to Rule 12 of the Federal Rules of Civil Procedure, a motion to strike any portion of pleadings can happen within 21 days:
(f) Motion to Strike. The court may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. The court may act:
(1) on its own; or
(2) on motion made by a party either before responding to the pleading or, if a response is not allowed, within 21 days after being served with the pleading.
The answer was served on May 23, 2016. 21 days from that is June 13.
Paragraphs 12 and 13:
12. Mr. Peters follows all the licensed Star Trek content. He has read hundreds of Star Trek comic books, and even made his own Star Trek comic book when he was in elementary school. Mr. Peters owns every single Star Trek technical manual, first editions of every single original series Star Trek hardcover novel, and has a 2½ foot long model of the Starship Enterprise in his living room. In 1980, Mr. Peters attended his first Star Trek convention. In law school at the University of North Carolina Chapel Hill, Mr. Peters joined his first Star Trek fan club. Over the years, Mr. Peters has seen every Star Trek movie at least a dozen times, including seeing the 2009 Star Trek reboot four times in the theaters, more than any other movie he has ever seen.
13. In 2006, Mr. Peters attended the Paramount Star Trek 40th anniversary auction at Christie’s in New York and obtained his first two screen-used Star Trek costumes. Mr. Peters was so taken with this new hobby that he started a blog, StarTrekProps.com, that is currently a leading source for information on Star Trek Screen used props and costumes. Mr. Peters spent over $100,000 on these and the other official Paramount auctions on props and costumes, making Mr. Peters one of Paramount’s biggest customers.
Every syllable is irrelevant. Plaintiffs would be well within their rights to move to strike both paragraphs in their entirety. Paragraph #14 continues on the next page. For readability’s sake, I will cover it there.
Paragraphs 14 and 15:
14. Mr. Peters’ expertise in this area was also recognized by CBS when they hired him to sell the assets of the Star Trek Experience, the Las Vegas tourist attraction and ride that was at the Las Vegas Hilton for ten years. Mr. Peters cleared out the 10,000 square foot warehouse filled with the remnants of the ride, salvaged the saleable pieces, and held both a warehouse sale and a CBS licensed auction. Afterwards, Mr. Peters volunteered his time to help CBS with its Star Trek prop and costume archive. Mr. Peters cataloged hundreds of props and costumes, donating his time and expertise to ensure that these relics of the TV shows and movies would be properly preserved for posterity. Mr. Peters even donated his warehouse space to house many of these objects, free of charge and photographed the items for CBS.
15. In 2010, Mr. Peters obtained the original screen-used costume of the character Garth of Izar from the third season Star Trek episode “Whom Gods Destroy,” a character that only ever appeared in one of the over 700 TV episodes that CBS claims to own (and not a single of the dozen movies that Paramount claims to own), and who appeared in that episode as a man that had gone mad after returning from war. To Mr. Peters, this was his holy grail of collecting, because, despite being only a minor character from a 1969 episode, Garth of Izar was fascinating to Mr. Peters. His connection to Garth of Izar was further solidified when Star Trek fan film pioneer, James Cawley, producer of Star Trek: New Voyages, the longest running Star Trek fan film, gave Mr. Peters the opportunity to play Garth of Izar in an episode.
Still irrelevant. Still well within plaintiffs’ rights to move to strike. Paragraph 16 continues on the next page and will be covered there.
16. Like thousands of other Star Trek fans over the last several decades, Mr. Peters has celebrated his love for Star Trek through writing his own Star Trek stories, which most prominently have centered around Garth of Izar. Mr. Peters began writing the script for Axanar, and over the course of four years, gathered a small group of Star Trek friends to help make something special. In March of 2014, Mr. Peters launched a Kickstarter campaign, asking for $10,000 to make a modest Star Trek fan film, which he planned to further fund by selling some of his Star Trek prop and costume collection. To everyone’s surprise, “Prelude to Axanar” raised $101,000, and Mr. Peters and his team started working full time to get the short “Mockumentary” style film done. The film shoot was the first week in May of 2014 and the short premiered at San Diego Comic-Con in July of 2014, and was distributed for free on YouTube, where it still can be seen there today. It has since then won 47 film festival awards all over the world.
So you’re saying you’re continuing to infringe? Good to know.
17. With the enthusiasm and success of Prelude to Axanar, the Axanar team hoped to continue that with a feature length film, and set up a Kickstarter to fund the feature, and again raised far more than initially expected. The script was revised, and the team began to work on concept art for the uniforms, build ships, and create visual effects. Mr. Peters was eventually able to find a warehouse to rent and turn into a soundstage, and he and his team shot the first scene—the “Vulcan Scene”—to show what they could do, and raised more donations. During this time, Mr. Peters kept donors updated constantly with updates on Kickstarter and Indiegogo, a website with news and even a daily blog on the production. Fans flocked to Axanar to celebrate their love for Star Trek.
On page 5 of the Order Denying the Motion to Dismiss, Judge Klausner wrote:
Although it is unclear whether Defendants stand to
earn a profit from the Axanar Works, realizing a profit is irrelevant to this analysis. The Court can easily
infer that by raising $1 million to produce the Axanar Works and disseminating the Axanar Works on
Youtube.com, the allegedly infringing material “acts as a ‘draw’ for customers” to watch Defendants’
Yes, because the Vulcan Scene was disseminated to spur more donations. Otherwise, why bother?
18. Mr. Peters believed he was operating within the tolerated realm of Star Trek fan fiction, but nevertheless, reached out to CBS on multiple occasions in an effort to seek guidelines about the production. Given his extensive history with CBS, including volunteering his time and expertise on the Star Trek archive, Mr. Peters contacted CBS in July 2015 with the goal of participating in a dialogue regarding fan films. Since his initial work with Star Trek: New Voyages in 2010, Mr. Peters has spoken with CBS Star Trek brand manager and licensing director John Van Citters, whom Mr. Peters knew from working on the CBS Star Trek archive as a volunteer expert. In 2012, Mr. Peters met with CBS Consumer Products EVP Liz Kalodner on the Paramount Studio lot. In 2013, Mr. Peters met with Consumer Products VP Bill Burke at the Las Vegas Star Trek Convention. Mr. Peters also spoke with CBS Home Video EVP Ken Ross, who attended the 2014 premier of Prelude to Axanar at the San Diego Comic-Con. Though CBS would not provide specific guidelines, Mr. Peters understood from these discussions that as long as his works stayed non-commercial they would be tolerated, and that CBS would let him know if he had “gone too far.”
For readability’s sake, I will add paragraph 19 to the next page and place most of my analysis there. However, note these names:
- CBS Star Trek brand manager and licensing director John Van Citters
- CBS Consumer Products EVP Liz Kalodner
- Consumer Products VP Bill Burke
- CBS Home Video EVP Ken Ross
If the matter is not settled beforehand, I would expect at least one of these persons would be subpoenaed for deposition by the defense.
Paragraphs 19 and 20:
19. Without any warning, and despite years of Mr. Peters’ contributions in support of both CBS and Paramount, Mr. Peters first learned that Plaintiffs believed he had “gone too far” when he read in a news article that Plaintiffs had sued him. Neither CBS nor Paramount expressed any concerns to Mr. Peters, through a cease and desist letter or otherwise, before they filed this lawsuit.
20. Mr. Peters later entered into an agreement with Plaintiffs, at their request, that Defendants defer shooting Axanar until after Defendants responded to the original complaint. Since that time, Mr. Peters has continued his efforts to try and resolve the case and sought guidelines as to how Defendants can create the Axanar film and honor Axanar’s donors in a manner that is acceptable to Plaintiffs and does not result in crippling liability against Mr. Peters and Axanar.
But wait! There’s this tidbit from a 2015 Axanar Productions blog post written by defendant Peters:
… we use less Star Trek IP than almost all of them.
This is nearly identical verbiage to the 1701 News article (many thanks to John Kirk and Michael Hinman), where defendant Peters claimed he had been misquoted. In that article, he is quoted as saying:
“We violate CBS copyright less than any other fan film,” he said. “‘Star Trek Continues’ and ‘Star Trek: New Voyages’ violate more than we do.”
Hence there is a repeated admission (admittedly hearsay, but it is certainly out there) where defendant Peters admits to violating copyright.
Further, in that same blog post, Peters wrote:
A lot of websites have been copying-and-pasting to create articles based on the piece which ran in The Wrap last week.
Let’s revisit a quote from that article, which defendant Peters clearly read at least once, shall we?
The official line from CBS and Paramount, which manage the TV and film rights to the ‘Star Trek’ franchise, respectively, is not to endorse such a production.
“CBS has not authorized, sanctioned or licensed this project in any way, and this has been communicated to those involved,” a representative from the network told TheWrap. “We continue to object to professional commercial ventures trading off our property rights and are considering further options to protect these rights.” (Paramount did not return TheWrap’s request for comment.)
Wait a second – defendant Peters was told that CBS at the very least was exploring options? That they had not authorized or licensed the project in any way?
Isn’t Peters on notice? Can he not read between the lines here?
Wait, wait, don’t tell me – is he, perchance, a lawyer by training?
And here are some other sites where the defendant spoke about licensing others to produce merchandise for Axanar. He was well aware of the idea of licensing, as he wanted others to buy licenses. From him. Look, it’s Trek.FM! And Hobby Talk!
But why not just go straight to the source?
Axanar podcast #31 references licensing. Go to the 22:00 mark.
On the Axanar FAQ, there is even a reference to defendant Peters having been a licensee. Clearly the requirement of licensure was known to the defense.
Further, because defendant Peters cited The Wrap article in his own blog post, I am left with only two possible scenarios:
- Either he read the article and had a measure of notice, or,
- He blogged about an article without actually reading it.
Are there other possibilities? Tell me in the comments section. I don’t mind if it turns out I am mistaken. That’s how I learn.
21. Plaintiff Paramount’s directors and producers have recently made public statements in support of Axanar and in favor of dropping this lawsuit. On March 14, 2016, Justin Lin, the director of Paramount’s upcoming Star Trek movie, tweeted the following about an article from the Hollywood Reporter that had attached and discussed Plaintiffs’ FAC:
(there is also a response by Axanar which states, “Thanks, Justin! We’re just trying to make a great fan film. #StarTrekBeyond will be awesome! We can’t wait!”)
But beyond all of that, paragraph 21 is still irrelevant, and plaintiffs would be within their rights to move to have it stricken.
Here is page 23 in its entirety. Every bit of it can be stricken as irrelevant. Counterclaims are not the place for discussions of settlement:
22. This past Friday night, May 19, 2016, during a Star Trek fan event at Paramount, J.J. Abrams—who produced and directed Paramount’s Star Trek films in 2009 and 2013, and is producing the upcoming film—announced that:
A few months back there was a fan film, Axanar, that was getting made and there was this lawsuit that happened between the studio and these fans and Justin [Lin], I’ll tell the story…was sort of outraged by this as a longtime fan. We started talking about it and realized this was not an appropriate way to deal with the fans.
The fans should be celebrating this thing. Fans of Star Trek are part of this world. So he went to the studio and pushed them to stop this lawsuit and now, within the next few weeks, it will be announced this is going away, and that fans would be able to continue working on their project.
23. Thus, even Plaintiffs’ own producers and directors have recognized the importance of fans to Star Trek, and have publicly renounced and called for the end of the lawsuit against Defendants.
24. Shortly thereafter, Adam Vary, a senior film reporter for BuzzFeed News, tweeted the following announcement from CBS and Paramount that they were in settlement discussions with Defendants, and would be providing guidelines for fan films:
This page begins with an image of the Adam Vary tweet. However, it does cut off a curious bit of it. Note the follow up tweet at the top (this image was screenshot on May 26, 2016).
Still irrelevant, and it still should be stricken, but it does add an interesting tidbit.
In the remainder of the page, the defense gets into talking about fair use again, which is one of their affirmative defenses. I confess I am unsure as to why those statements are showing up here, as this is the counterclaim. That is, until we get to the next page.
29. The Purpose And Character of the Use is Transformative: Defendants’ use is transformative, in that even though it is inspired by Star Trek, it provides new insights and meaning. Defendants’ works are designed to tell a story of a wholly different character from the stories contained in Plaintiffs’ alleged works, about Garth of Izar, a character that has been ignored in Star Trek episodes and movies since his 1969 appearance. Moreover, Prelude to Axanar portrays (and Axanar would seek to portray) Garth of Izar in a new and unique way—specifically, as a war veteran whose psychological troubles later in life resulted from his traumatic experiences during the Four Years War. Star Trek aired during the Vietnam War, when it was politically unadvisable for the writer to examine issues such as PTSD, which led to his madness. Axanar, then, is both commentary and satire, in that it intends to expose the truth of the horrors of war in a way the original series could not do.Mr. Peters specifically modeled his performance of the character of Garth of Izar after the veterans depicted in the documentary elements of “Band of Brothers,” the HBO mini-series that chronicled the exploits of the 101st Airborne Division in World War II after Normandy. Among other things, Mr. Peters was influenced by the soldiers’ histories and experiences suffering from post-traumatic stress disorder, including the fact that they would not talk about the war with their families, and the distinct “far off look” that Mr. Peters observed in their eyes. In this and other ways, Defendants have added new and original insight into the character of Garth of Izar and broader commentary on the treatment of war, PTSD, and related themes and issues in Star Trek. Defendants’ use is not only transformative, but is also not commercial, in that it is fan fiction that has been and was always intended to be distributed for free online.
First, the basics. There is a Garth of Izar licensed novel (copyright registration #: TX0005745716), copyright date is 2003. While it is true that is neither an episode nor a movie, it is still licensed copyrighted usage of the character.
It is also really interesting that the defendants’ research comes from Band of Brothers. Let us, instead, go to the source.
Unlike defendant Peters, Mr. Smallwood is a real-life Vietnam veteran with real-life PTSD. He is also a real-life Star Trek actor. You know, in a licensed series.
Plus, PTSD has been covered in Star Trek (and on screen, I might add) at least twice:
- Hard Time, a DS9 episode where Miles O’Brien is given the memories of 20 years in captivity and
- the end of Chain of Command, Part II, where Captain Jean-Luc Picard, after being tortured by Gul Madred, acknowledges he requires Counselor Deanna Troi’s assistance in recovery
I would add that the model ship-smashing scene in Star Trek: First Contact also shows the effects of PTSD.
For readability’s sake, the next paragraph will be covered on the next page.
30. The Nature of the Copyrighted Work: The style of Prelude to Axanar is a “Mockumentary” style which no official Star Trek work has ever done, and Axanar’s planned film is about a character that has been largely ignored. Plaintiffs cannot stop Defendants from building on the “idea” of Star Trek, or other facts or ideas contained within its works, but can only seek to prohibit copying specific expression, which Defendants have not copied.
Mockumentary specifically does not seem to have been done before, although news stories have, including News on Parade during ENT’s Storm Front, Part II. A news screen was shown during ENT’s Terra Prime episode. Plus, in one of Star Trek’s best-known and most-beloved episodes, TOS’s City on the Edge of Forever, news stories were shown. An attempt at injecting faux realism into a Star Trek story is hardly new.
31. The Amount and Substantiality of the Portion Used Related to the Copyrighted Work as a Whole Is Minimal: Defendants have featured an obscure character, introduced new characters, and set their works in a timeline that has never been dealt with in authorized Star Trek works, predating the Original Series by 21 years. Defendants’ works do not use any clips, dialogue, plotlines or primary characters from Plaintiffs’ works, and do not resemble substantially any other Star Trek work. Instead, Defendants have created an original story inspired by Star Trek, as Gene Roddenberry hoped fans would continue to do.
Sure, they introduced new characters. And then the counterclaim rather conveniently leaves out the characters they copied (and, in their motion to dismiss, declared were so forgettable they should not be subject to copyright protection). Who were those characters again? Class? Bueller?
- Richard Robau
- John Gill
- Robert April
Oh, and Sarek.
32. Defendants’ Use Has Not Caused Market Harm to Plaintiffs: Plaintiffs have not and will not suffer any market harm as a result of the creation and distribution of Defendants’ works. Instead, these works offer free promotional value to Plaintiffs. The works are not intended to be commercialized, and will not be competing against Plaintiffs’ works in movie theaters or otherwise sold for profit. Any individual who supports the Axanar film who would have otherwise seen Plaintiffs’ works still will do so, and Mr. Peters and the vast majority of Axanar supporters will continue to pay for and fully support Plaintiffs’ Star Trek works.
Not necessarily, defense. After all, the defendants spent a lot of time telling their supporters that they were the guardians of the one, true Trek.
Here we get into the heart of the counterclaim (prior paragraphs incorporate the preceding paragraphs by reference). Paragraphs 36 – 38:
36. Further, Defendants have a real and reasonable apprehension that if they proceed with their planned production, they will face additional litigation by Plaintiffs.
37. Plaintiffs have sued Defendants for planning the feature film Axanar, and Defendants have put their project on hold until they can obtain the necessary guidance to proceed in a manner that will not increase potential liability.
38. Defendants are entitled to a declaratory judgment that Prelude to Axanar, Defendants’ scripts for the planned feature film Axanar, the Vulcan Scene, and any other fixed works that Plaintiffs claim are infringing, are not substantially similar to any of Plaintiffs’ works; and/or are lawful under the fair use doctrine; and do not infringe Plaintiffs’ copyrights.
Actually, paragraph 37 is not quite right. The defense was sued, in part, for planning the feature-length film, yes. But they were also sued for the Vulcan scene, the Heroes vignette, the completed VFX and any other tangible product made with reference to the longer work. That work was not just in the planning stage; it was partially completed and, as the judge himself said,
… the allegedly infringing material “acts as a ‘draw’ for customers” to watch Defendants’
I’ll cover the prayer for relief on the next page, for readability’s sake (yes, I know this blog post is long. Hi from me 🙂).
Prayer for relief:
Defendants pray for the following relief on their Counterclaim:
1. That the Court declare the rights and obligations of Plaintiffs and
Defendants under the Copyright Act, and declare that Prelude to Axanar and the planned Axanarscripts and film are not infringing;
2. That the Court award attorneys’ fees and costs to Defendants as
permitted by law; and
3. That the Court award such other, further, or different relief that it may
find just, proper, and equitable under the circumstances.
Uh, no. The court has already said the motions to dismiss were not going to fly. Judge Klausner saw enough of a question of fact that he felt it was imperative for the matter to continue. I highly doubt he will suddenly declare the defense’s work product to be non-infringing prior to adjudication. As for attorneys’ fees and costs – yes, folks, pro bono does not mean perfectly free. It just means the defense is not paying for Ms. Ranahan and the other lawyers’ billed hours. But they are being charged for travel costs, filing fees, etc. The more trees die and documents are filed with the court, the more the court costs climb. Highly doubtful that any of that will be awarded unless this matter goes to verdict and only if the verdict is in favor of the defense. There are a lot of if’s in that statement.
Fun fact: at least associate attorneys at Winston & Strawn are required to bill 2000 hours/year and only 100 of them can be towards pro bono matters. Ms. Ranahan is of course a partner, so her time requirements differ. However, as a partner, she is also expected to be what’s called a rainmaker. That is, she must bring in new business to the firm. That’s paying business, folks. Furthermore, Andrew S. Jick and Kelly N. Oki, the other two named W & S lawyers on this case, are associates.
Time is finite. I am not suggesting (EVER) that anyone is padding billings. I have experience auditing law firms for time (I used to do so for a major insurance carrier) and the vast, vast majority of lawyers are ethical in this regard. Hence I am not suggesting that. What I am saying, however, is that something’s gotta give. At some point, this case may become too time-consuming for the firm to continue. The firm must go on, under the Code of Professional Responsibility, and they are also required to zealously defend their client. I am fully assured they will follow all ethical precepts (which they have all along, kudos) and will continue to attempt to do so.
But they might not do so gladly once the hours start hitting their limits.
The end of the pleading reiterates the demand for a jury trial which we have seen from both sides.
A lot of that is going to depend on where the parties are in negotiations. If a settlement is not reached, then the next days of interest are June 13 (21 days from the filing of this answer), which would be the due date for plaintiffs’ response to the counterclaim. That might be slightly off due to weekends and the Memorial Day holiday. Also, on June 8 is what I have been referring to as the Doe day of reckoning, where the parties are to bring in any more parties but they cannot do so afterwards. I have speculated a bit about who might be named, but the plaintiffs are under no obligation to name anyone, and they might not. Further, we will see what happens between the two plaintiffs (perhaps nothing, or they could go their separate ways in this matter. We shall see).
In the meantime, I am sure the parties continue to talk. We will try to cover this matter in a timely matter and please feel free to comment or ask questions in the Comments section and I will do my best to answer you.
And, as always, thank you for your kind support herein. I truly and humbly appreciate your interest.
She's also a published author (Untrustworthy, published by Riverdale Avenue Books; QSF Discovery 2 Anthology, published by Mischief Corner Books; and The Longest Night Watch Anthology 1 & 2, published by Writers Colony Press), and a prolific fan fiction writer. You can find her adding her fanfiction to our forums, or live tweeting our show.
We understand that she can be bribed with pie.