It’s “High Noon” in the Axanar lawsuit…and we haven’t even gotten to trial yet! But that ominous background music is playing, and the two gunfighters are facing off for a showdown in the middle of a dusty street in a western town. More specifically, the CBS and Paramount lawyers at Loeb & Loeb are facing down the Axanar lawyers at Winston & Strawn (and vice-versa!), and the entire case could be won or lost right now by either side–months before trial even begins–and both teams of lawyers know it!
Back during the beginning of this year, attorneys filed complaints and responses and amended complaints and amended responses and counterclaims in the Axanar copyright infringement lawsuit. And each time one side or the other would submit a new document, followers of the lawsuit would spring into action declaring how either the studios or Axanar had just delivered the killing blow.
Ultimately, neither side “won” during the pre-trial ramp up…and that’s not at all surprising. At best, Axanar could have declared victory by having the judge grant their motion for immediate dismissal of the case (which the defense side usually makes in lawsuits), but that’s always a long shot at best.
And so the case entered the next phase: the (coincidentally named) “discovery” phase. During this time, both the plaintiff and the defendant must provide the other side with any piece of evidence they ask for that is relevant to the case. Witnesses are questioned (deposed), documents are collected and shared, and queries are submitted in writing requiring honest and open answers. I’ve previously discussed the Axanar discovery phase in somewhat controversial detail in this editorial blog. (It’s very interesting reading!)
What I didn’t mention in that editorial is what happens when one side or the other says, “No, sorry…you can’t have that piece of evidence/document/information/etc. that you just asked us for.” How can they get away with refusing? Well, note above that I said, “…that is relevant to the case.” If one side or the other feels something is irrelevant or protected as privileged information or simply too burdensome for them to produce without an unreasonable amount of effort, they can refuse to provide it during discovery.
This appears to be happening right now in the Axanar lawsuit.
Apparently (according to page 3 of this court document) Alec Peters and the Axanar team have turned over more than 31,000 pages of documentation and e-mails! It’s not unheard in lawsuits for one side or the other to have as part of their strategy to force their adversary to collect and produce so many documents and e-mail records that they decide to just settle rather than deal with all the hassle to track down, compile, and deliver all this stuff.
And indeed, it wasn’t just the studios playing that game. Winston & Strawn were equally ambitious in their list of discovery documentation for CBS and Paramount to turn over. And let’s face it, these two studios have THOUSANDS of people who work and have worked on Star Trek over its 50-year history. In comparison, Axanar has only been around for about 3 years. I can only imagine how many pages of records needed to be searched for, collected, compiled, and delivered by the studios to the defense team!
The studios, however, had a different plan. They simply wouldn’t hand over everything they were asked to.
Now, this doesn’t mean that they handed over nothing. Indeed, I heard through the grapevine that Alec Peters and his lawyers received about 10,000 pages of documentation to read though. But it wasn’t everything that was requested by the defense–far from it–and time was running out! The discovery phase is set to close on November 2, leaving about three months for both sides to go through all the collected evidence and prepare for the trial beginning on January 31 of next year.
With only about a month left before the window or opportunity closed forever on receiving discovery documentation in this case, and assuming that nothing more was forthcoming (both sides had agreed on a date to deliver everything to the other side), Axanar lead attorney Erin Ranahan last week filed a Motion To Compel Discovery with the Central District in the 9th Federal Circuit Court. The procedure in the Central District is that the two parties (plaintiff and defendant) must cooperate in submitting all discovery disputes in one document. So Erin Ranahan first submitted her arguments to Loeb & Loeb, and then they added their responses, and the two sides filed a single Joint Stipulation document with the court last Thursday.
Although the actual infringement case is assigned to the Honorable Judge R. Gary Klausner, all discovery motions in the Central District are given to Magistrate Judge Charles F. Eick. And now that the initial joint document is submitted, each side is now free to provide a supplement up to 5 pages by next Friday, October 7. Then Jude Eick gets to rule on what documents the studios still have to deliver, and once that happens, well, resistance is futile.
All of this can be a familiar game played in lawsuits. It’s not common, but it’s not unheard of either. Litigants make ridiculous demands during discovery to inconvenience the other side and fish for some hidden “smoking gun”somewhere; one side or the other (or both!) fail to deliver everything that was asked for; a motionto compel discovery is filed; arguments are made as to why this is that is an unreasonable request; and so on until the judge rules.
The Joint Stipulation document includes Axanar‘s arguments along with the studios’ explanation of their refusal to deliver many requested items. Your eyes will likely glaze over after reading just a few pages (mine did!), but it really is quite fascinating because if provides an eye-opening insight into the legal strategies that will likely be employed by both sides as the case progresses.
Wanna know what the lawyers are planning for the trial? Read on!
The document conveniently groups the Axanar requests into three categories of documentation:
- Anything dealing with how much of a negative financial impact Axanar might have had on the revenue generated for Star Trek.
- Anything detailing how the studios previously dealt with other fan films and related fan fiction.
- The Chain of Title tracing and proving the studios’ ownership of the Star Trek copyright.
Whew…that’s quite a list!!! Let’s tackle these one at a time. But keep in mind the most important aspect of this lawsuit for both sides: damages. When you strip away everything else about this case, at the core are 57 alleged violations of copyright, each with a potential damage award of up to $150,000 for a possible worst case scenario of an $8.55 million award for the plaintiff. But even if Alec Peters loses, that judgement could end up being significantly less if a) not all of those 57 alleged violations turn out to be an actual violation, and b) the violations turn out to be NON-willful…in which case they could be reduced to as little as $200 each.
So while the “prime directive” for the defense is, of course, to win and get Prelude to Axanar declared “fair use” (I’ll discuss the definition of that shortly), the secondary directive–and just as important as the prime directive!–is to target those alleged violations one-by-one like tribbles in a Klingon shooting gallery.
And with that in mind, let’s look at the defense requests first (we’ll hit the studio plaintiffs responses in Part 2)…
- FINANCIAL DAMAGES TO STAR TREK
Winston & Strawn pretty much asked for the kitchen sink, stove, oven, refrigerator, microwave, and any other appliances in the house. They want to know how much Star Trek has cost to make over the years, market and publicize, profitability of the franchise, and of course, how they’ve measured how Axanar will impact those revenues negatively. In other words, “If you’re claiming that Axanar will damage your brand, then tell us exactly how much you expect to lose because of us.” Pretty much any e-mail or document relating to any or all of the above–including contracts with the actors, directors, writers, production crew to determine how much Star Trek cost to make so it can be subtracted from all gross revenue–is fair game.
As I said, we’ll discuss the studios reasons for NOT providing this information in Part 2, but suffice it to say, there’s a LOT of confidential information being requested along with just a truckload of documentation. (Note: there is a privacy agreement in effect between the parties, meaning that “it’s confidential information” is not necessarily sufficient reason not to share a document.)
Winston & Strawn is pursuing this line of finanical inquiry for two very specific reasons. The first reason has to do with the “fair use” defense. This is from the Joint Stipulation document:
In determining whether a secondary work constitutes fair use, the four statutory factors to be considered are: (1) the purpose and character of the use; (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. 17 U.S.C. § 107. The effect of the allegedly infringing work on the market for, or value of, the underlying copyrighted work is “the single most important element of fair use,” and thus highly relevant to Defendants’ fair use defense.
Said more simply, it’s imperative when trying to prove fair use that you address how much the allegedly infringing work has or will hurt the original property financially. If Axanar isn’t really costing the studios anything because few people even know about fan films and those that do and contribute to funding campaigns remain loyal to the studios offerings, as well, then no harm, no foul. Fair use could be proven.
If, on the other hand, the studios can show that millions of fans are watching Prelude to Axanar online and then deciding not to buy tickets to Star Trek Beyond or are funding Kickstarters with money that is no longer available to pay for a subscription to CBS All Access or buy a toy phaser, well, that’s a smackdown for one of the four elements of a fair use defense.
(Now, considering that a fair number of members of the SMALL ACCESS protest campaign are NOT Axanar supporters and yet are still planning to protest the new Star Trek TV series, it would seem difficult for CBS to blame Axanar exclusively for any future failure to get Trekkie subscribers to All Access.)
The real problem is that the defense simply doesn’t know what the studios’ calculations are! How much is Axanar costing CBS and Paramount in lost revenue? Or is it? Maybe Prelude to Axanar and/or other fan films are acting as “free commercials” for the franchise (as I’ve postulated here on FAN FILM FACTOR in other op-eds). If the studio has done any research or even had discussions of such a positive effect from fan films, that could be the “smoking gun” that supports a fair use claim! But if CBS and Paramount refuse to turn over such potentially damaging evidence (possibly for self-serving reasons), then that damages the defense’s chances. Hence, the motion to compel the plaintiff.
The second goal of trying to determine actual damages is to mitigate the potential judgement against Alec Peters if he loses. Remember that a worst-case scenario is an $8.55 million verdict that leaves Alec Peters bankrupt. But if the actual damages are only in the four or five-figure range, then a seven-figure penalty is unreasonable, as rulings in previous lawsuits have established. So how much financial damage is Axanar really doing to Star Trek? That could, quite literally, be the $8 million question!
2. DEALING WITH OTHER FAN FILMS
When this document first hit the internet, memes like this one started showing up:
The reason some anti-Alec Peters folks were giving for making this claim is the following request from the document:
All Documents that refer or relate to Your decision whether to pursue legal action, including but not limited to sending DMCA takedown notices, sending cease and desist letters, and/or filing lawsuits, with respect to fan films inspired by Star Trek, including but not limited to Star Trek: Hidden Frontier, Starship Exeter, Bring Back Kirk, Star Trek: New Voyages / Star Trek: Phase II, Star Wreck: In the Pirkinning, Star Trek in Lego, Star Trek: Aurora, Star Trek: Of Gods and Men, Starship Farragut, Star Trek: The Next Animation, Dan Hauser’s Animated Star Trek, Star Trek: Phoenix, Star Trek Continues, Star Trek: Specter, Star Trek II: Retribution, Star Trek III: Redemption, Star Trek: Reunion, Star Trek: Secret Voyage, Star Trek: Dark Horizon, Star Trek: Absolution, Star Trek: Renegades, and Star Trek: Horizon.
That’s quite a list! (And it shows that Winston & Strawn is doing their research and not just coming here to FAN FILM FACTOR…since I haven’t even covered nearly half of those fan films yet.)
So, is Alec Peters really throwing other fan films under the bus? Hardly. First of all, nothing is being said to disparage any of the fan films listed, nor is Peters suggesting that because he’s being sued, other fan producers should also be sued. In fact, he’s actually arguing something entirely different, and it’s something that the studios don’t seem to be understanding.
I’ll go into the studios’ side of the argument in Part 2, but in short, they’ve stated repeatedly in the document:
[T]he failure to pursue other infringers has been consistently rejected as a defense to copyright infringement or as an indication of abandonment.
A party’s lack of legal action against other alleged infringers has no bearing on whether the work at issue will damage a potential market.
In other words, the studios are saying that they can choose to sue anyone they want to…even if it’s just one fan production. But they seemingly aren’t grasping what the defense is really trying to prove.
Remember when I said that the $150,000 per copyright violation was a worst-case scenario? Well, it’s also a penalty for WILLFUL infringement. There’s a much lower penalty (as low as $200 per violation) for NON-willful (on innocent) infringement. Again from the document:
In contrast to willful infringement, innocent infringement occurs where the infringer “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright.”
Did Alec Peters have reason to believe that his acts constituted an infringement of copyright? Some would say, “Of course! It’s frickin’ Star Trek, and Star Trek is copyrighted!” But that’s where these requests for documentation and e-mails dealing with other fan productions becomes essential because it opens up the discussion during trial to whether Alec Peters should have expected to get sued. If all these other productions were never told to cease and desist, and especially if the studios knew of their existence (and the producers of several fan series have repeatedly claimed over the years to have been in contact with Paramount and, later, CBS about their projects), then Alec Peters would have been reasonable to assume that he was no more willfully violating the studios’ copyright than any other fan production.
This one is HUGE, folks! The difference between a ruling of willful and non-willful infringement could literally be more than $8 million! So this is not a case of Alec Peters throwing anyone under a bus…since there really isn’t a bus to be thrown under. The guidelines are essentially insulating all new fan productions at this point anyway (assuming they follow the guidelines). So the studios aren’t about to shut down all fan films just to win a case. But even if they did shut every fan production down right now, the studios can’t travel back in time. Forty-five years of not challenging the existence of fan films is what led Alec Peters to believe that his acts did not constitute an infringement of copyright that the studios had a problem with.
So no, not a bus-throwing situation…simply lawyers doing their job to try to save their client from an $8.55 million judgement!
Since this blog is getting pretty long, let’s stop here for today. In Part 2, I’ll cover the last category of the defense’s discovery requests: Chain of Title proving that CBS does, in fact, own Star Trek. (Man, can you imagine what would happen if the judge ruled they DIDN’T own Star Trek????)
And then we’ll look at the other side of the courtroom. How are the plaintiffs justifying not complying with Axanar‘s discovery requests? And will it work???