Using proprietary content without permission lands Star Trek fan film in legal battle.
In late December last year, CBS Studios and Paramount Pictures commenced copyright infringement proceedings against Axanar Productions Inc., the company behind the Star Trek fan film ‘Axanar.’
The film, which to date has raised more than USD 1.13 million via crowd-funding platforms Indiegogo and Kickstarter, follows the story of Garth of Izar, a ‘legendary star fleet captain’ who appeared briefly in the third season of the original Star Trek television series.
CBS and Paramount, who own copyright in the Star Trek television series and films respectively, allege that the producers of the film infringed their copyright by taking ‘innumerable copyrighted elements of Star Trek, including its settings, characters, species and themes.’ They seek damages of USD 150,000, legal costs, and an injunction restraining the release and distribution of the film.
The case, in addition to raising a number of interesting intellectual property issues, provides some important reminders to businesses thinking about incorporating the proprietary material of third parties in their products or advertising.
The unlicensed use of proprietary material may expose a business to various causes of actionIn Australia, the unlicensed use of proprietary material – for example, a character from a famous television franchise - may expose a business to various legal causes of action, including claims for passing off, contravention of the Australian Consumer Law, trade mark infringement and copyright infringement.
Even ‘relatively obscure’ elements may still be protected by copyrightBusinesses should be cautioned from thinking they may escape liability by taking only seemingly insignificant parts of a copyright work. Alec Peters, the executive producer of ‘Axanar,’ previously downplayed the likelihood of any legal action by CBS and Paramount, claiming that the production team had limited the use of Star Trek logos and likenesses in the film, and used only three protected characters, all of whom were ‘relatively obscure.’ This was evidently of little comfort to CBS and Paramount and may not ultimately assist Axanar’s legal case.
Under Australian law, copyright is infringed if a ‘substantial part’ of a copyright work has been taken. This is said to involve a ‘qualitative’ rather than a ‘quantitative’ assessment. Businesses should be aware that the taking of seemingly insignificant or disparate elements of a copyright work may still constitute infringement if the combination of those elements is found to comprise a ‘substantial part’ of the work.
Defences to infringement may not be available where the infringer is in competition with the copyright ownerWhile there are a number of defences to copyright infringement, defences may not be available in a commercial context - particularly if an infringer is in direct competition with the copyright owner. Although fan made content does not normally compete with the official canon of a film or television franchise, the unprecedented scale, ambition and publicity of ‘Axanar’ means there is a real risk that its release could impact the market for authorised Star Trek productions. This, in turn, is likely to make it difficult for Axanar to rely on any defence to infringement.
Just because ‘other people are doing it’ does not mean that you shouldCopyright infringement is undeniably prevalent in the internet age, and small scale infringements go unchecked on a daily basis. However, the apparent complacency of certain rights holders should not be taken as an invitation to infringe.
As Peters noted, CBS previously had a ‘long history of accepting fan made films.’ These films are likely have flown under the radar by reason of the fact that they were ‘not particularly commercial’, and would not have warranted intervention of the rights owner from a damages standpoint. By contrast, the extensive publicity surrounding Axanar and the resultant threat it posed to the authorised Star Trek franchise would have made the fan-film difficult for CBS and Paramount to ignore. The lesson being that while some right holders may appear content to allow unlicensed derivation of their works, this does not mean they will not seek to enforce their rights in future, particularly if an infringer experiences commercial success or threatens the commercial interests of the rights holder.
Ensure any licence is clearly documentedBusinesses seeking to use proprietary content should obtain appropriate licences from the rights holder, and ensure that the terms of any such licences are clear and well-documented.
The producers of Anaxar claim that they met with CBS during development of the film to discuss what they could and could not do, but the studio did not offer any specific guidelines, other than saying that they could not make money from the project. CBS, on the other hand, have stated that they never “authorized, sanctioned or licensed this project in any way, and this has been communicated to those involved.” The perils of relying upon on oral or implied authorisation to use a copyright work are obvious. Where authorisation to use proprietary material is granted, businesses should ensure that the terms of the licence are clearly documented in a formal licence agreement.
While the success of CBS and Paramount’s suit is not a foregone conclusion, at the very least, the Court proceedings are likely to cause a massive disruption to Axanar’s production schedule. The case of Axanar serves as an important reminder of the dangers of using proprietary content without obtaining necessary clearances.
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Author: Harrison Ottaway