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At a May promotional event in advance of the release of Star Trek Beyond, executive producer J.J. Abrams may have talked out of turn by addressing a copyright lawsuit that CBS and Paramount Pictures had filed against Axanar Productions, which had raised more than $1 million on crowdfunding platforms to produce a professional-quality “fan film,” a prequel to the late 1960s Gene Roddenberry television series. Abrams said the suit wasn’t an appropriate way to deal with fans, that Beyond director Justin Lin was outraged and had pushed the studios to drop it. Lastly, Abrams gave out false hope by commenting, “Within the next few weeks it will be announced this is going away and fans will be able to work on their projects.”
The lawsuit, however, didn’t go away.
As more evidence that the parties haven’t let this dispute out of the Alpha Quadrant, Axanar Productions is now in a fight over documents from the studio. On Thursday, the defendant brought a motion to compel discovery.
Among what’s being demanded are all communications between Paramount/CBS and Abrams and Lin about fan films and this very lawsuit.
Axanar explains the basis for the request to the judge.
“Statements that Star Trek belongs to all of us and that the lawsuit is ridiculous and was going to be ‘dropped’ is relevant to the impact on the market prong of the fair use analysis, and Plaintiffs utter lack of damages,” write defendants’ lawyers. “Though these documents and deposition testimony are directly relevant to demonstrating the impact of the Axanar Works on the market for the Star Trek Copyrighted Works, and Plaintiffs’ allegations of willful infringement, Plaintiffs have either refused to produce, or produced insufficient documents.”
Paramount is objecting that the document request is overly broad, unduly burdensome and irrelevant.
“First, statements made in May of 2016, six months after the filing of this suit, could not possibly have any bearing on Defendants’ ‘state of mind’ when they created the infringing works,” responds Paramount’s lawyers. “Second, Defendants have provided no authority for the proposition that their subjective ‘belief’ has any bearing on whether or not they committed copyright infringement, or on whether or not Plaintiffs’ were damaged by that infringing conduct.”
The discovery dispute highlights how Abrams’ comments could put him and Lin in an uncomfortable position as this litigation moves forward. Characterizing the two as Star Trek “ambassadors” in letters to opposing counsel, Axanar’s legal team at Winston & Strawn is trying to rebut the charge of “willful infringement” with the point that Axanar‘s filmmakers had a reasonable basis for believing that their fan-funded film would be fine by the studios. Paramount and CBS hardly think Abrams and Lin are their copyright agents, but as two with much familiarity with the Star Trek universe, they could at some point be asked to testify in the lawsuit. If that happens, their loyalties would be tested.
The other big aspect here is the “fair use” analysis. There are four factors that dictate whether use of Star Trek copyrighted material is in-bounds. Besides the purpose of the use, the nature of the copyrighted work, and amount used in relation to the copyrighted work as a whole, a judge will be examining the effect of the use on the potential market for or value of the copyrighted work. The defendants point to a 1985 Supreme Court case (Harper & Row Publishers, Inc. v. Nation Enters.) for the proposition that the market factor is the “single most important element of fair use” with the goal of showing that Axanar could hardly impact the commercial appetite for a work like Star Trek Beyond.
The defendants not only want Abrams and Lin communications to help support its arguments on this topic, but they aim to compel the studios to hand over everything from financial documents related to Star Trek to internal discussions about fan films and fan film guidelines. They surely hope that CBS and Paramount’s long acquiescence to fan films is further supportive of their position.
In response, the studios argue that some of the information is protected by attorney-client privilege or constitutes confidential information and trade secrets. They further contend that it’s irrelevant because copyright law doesn’t require an owner to pursue each and every infringer to maintain a copyright. And finally, they attempt to throw some cold water on the notion that Axanar is really a fan film.
“It is designed to be a professional production, with paid actors and a commercial studio,” note the plaintiffs.
The discovery dispute has one other issue worth pointing out. Along with the protectability of the Klingon language and Vulcan ears, this issue came up at an earlier point of the case. It has to do with records of copyright ownership. The defendants want Paramount and CBS to produce all documents and communications related to chain of title on the franchise. They tell the judge that the registrations aren’t sufficient.
“Defendants are entitled to investigate the chain of title from the time the rights to the Star Trek Copyrighted Works were transferred from their creator, Gene Roddenberry, to Plaintiffs, to the present,” defendants argue. “If Plaintiffs were, or are, involved in disputes regarding ownership of the copyrights, Defendants have the right to inspect and review any documents pertaining to those disputes, as they are directly related to the potential allocation of damages, and the potential exposure created by this case.”
In response, the studios represented by attorneys at Loeb & Loeb, are objecting that the other side has failed to make a good faith effort to meet and confer about the topic, that they’ve already produced all non-privileged responsive documents, and that opposing counsel has failed to explain what basis they have for assumptions like “Gene Rodenberry ever owned the rights to Star Trek.”
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