Is CBS switching back from copyright infringement lawsuits to cease & desist letters? It’s hard to read the tea leaves when it comes to a multi-billion dollar corporation, but we may have just gotten a clue.
The year 2016 was a turbulent and uncertain time for the world of Star Trek fan films. It began with a copyright infringement lawsuit against Alec Peters and AXANAR, and then by the summer, fans were presented with a series of fan film guidelines listing the things fans were and were not allowed to do if they wanted to avoid legal action on the part of CBS and Paramount.
But were lawsuits now the “new normal”? Would fan films that violated the guidelines find themselves dragged into court for expensive litigation? The studios weren’t saying. For many years, most fan film producers had (perhaps naively) assumed that the worst that would happen would be they’d get a call (or letter or e-mail) from the studios saying, “Stop what you’re doing.” Even Alec Peters himself figured he’d probably get a call long before ever being served with a multi-million dollar lawsuit. Man, was he wrong!
Ironically, had the studios simply sent Alec a cease & desist letter instead of suing, they could have saved themselves nearly a million dollars in attorneys fees and 12 months of polarizing publicity with likely a similar result of a scaled-down Axanar. But that’s a “what if” scenario that we’ll never see played out in this universe.
But here’s a question: did CBS’s and Paramount’s experience with the year-long Axanar lawsuit leave a bad enough taste in the studio execs’ mouths that they’ve decided to dial things back from battlestations to just yellow alert? Are the studios ready to return to good ol’ fashioned cease & desist letters to get the job done?
The answer to this question might come from another copyright infringement lawsuit going on right now involving Star Trek…and Dr. Seuss!
Last year, DAVID GERROLD (the guy who wrote “The Trouble with Tribbles”…among other things) and Eisner Award-winning comic book artist TY TEMPLETON, along with their publisher, ComicMix, got sued for copyright infringement for trying to publish a book that was a “mash-up” of Star Trek and Dr. Seuss. Based on the popular Seuss book Oh, the Places You’ll Go!, the mash-up was a new “trekkified” version with corresponding illustrations and prose featuring Star Trek characters, settings, objects, and themes.
Figuring they fell under classification as a “parody” (which automatically gets “fair use” copyright protection under the law), the authors and publisher launched a Kickstarter campaign last September that took in $30,000 before they were forced to suspend the campaign and take down the page. They were then sued for both trademark and copyright infringement.
But the complaint wasn’t being filed by CBS (the rights holder of Star Trek) but rather by Dr. Seuss Enterprises, the owners and license controllers for the complete works of the Dr. Seuss estate.
Fans wondered if CBS was going to file a similar lawsuit, or perhaps join the Seuss complaint as a co-plaintiff (as CBS and Paramount were co-plaintiffs in the Axanar lawsuit). But curiously, there was no mention in any of the media coverage about any action or involvement from CBS.
Last month, the mash-up authors and publishers won a partial victory in court when the judge dismissed the trademark infringement claim, leaving only the copyright claim still to be resolved. You can read more about that in this blog.) But as I said at the time I wrote that blog, while it was indeed a key victory in the battle, the war was far from won. In fact, the worst might be yet to come!
Y’see, while many fan supporters of David Gerrold and Ty Templeton (and I count myself as one of their supporters) were thinking the dragon was all but slain, I noticed that the judge’s pre-trial rulings allowed Dr. Seuss Enterprises two weeks to refile an amended complaint. That new filing could address the concerns that led the judge to dismiss the trademark claims completely and determine that the “fair use” claims on copyright might be pretty evenly balanced between the plaintiff and defendant (likely leading to a jury trial to determine fair use…something Axanar was never allowed to do).
Two weeks would have been the third week of June, and I found myself musing a few days ago, “Hmmm, I wonder if the Seuss folks ever filed their amended complaint…” Guess what? They did. And here it is:
It looks longer than it really is because I’ve supplied a version that includes both the amended complaint followed by the original complaint with all changes/additions marked in blue.
If you do bother to read it, you’ll see that the plaintiffs are far from rolling over and giving up. Just the opposite, in fact. They’re firing with both barrels and supplying everything that the judge suggested was missing from the original complaint. Similar to what happened with Axanar, the first complaint filing wasn’t sufficient to get the job done and resulted in a pre-trial ruling somewhat favorable to the defense. The plaintiffs were NOT about to make that mistake again, and their firm, DLA Piper, brought on Stan Panikowski, a partner from their San Diego office with 18 years experience in intellectual property trial and appellate litigation to craft the amended complaint. And Stan pulled no punches.
So no, this ain’t over folks…and in the coming weeks, I might write an editorial update on how the lawsuit is progressing. But not today. (Although, I do think it’s still going to be hard to prove hundreds of thousands of dollars worth of damages resulting from a book that was never completed, published, distributed or sold to the public. But we’ll see what happens.)
Right now, though, I wanted to share something with you from page 19 of the amended complaint that was NOT there before:
On or about February 27, 2017, counsel for CBS Studios, the owner of the intellectual property in Star Trek, sent Defendants a letter asserting CBS Studios’ exclusive rights in the intellectual property in Star Trek, and stating that Defendants’ use thereof was an infringement of CBS Studios’ rights. The letter demanded that Defendants immediately cease all use of the intellectual property in Star Trek.
Personally, I find this fascinating….although not entirely unexpected. I suspect that, initially, CBS wasn’t even aware of this mash-up project. Dr. Seuss Enterprises jumped into action almost immediately, sending out their first cease & desist letter on September 28, 2016 and following up with another on October 7 after getting no response to the first. Also on October 7, they contacted Kickstarter explaining the situation and demanding the Kickstarter page be taken down…something that happened within a few hours. ComicMix then refused to follow the cease & desist demand and threatened a counter-claim for tortious interference and unfair business practices, contacting Kickstarter to file a counter-notice. The lawsuit was then filed on November 10.
This situation escalated very quickly in a matter of just six or seven weeks…and one wonders if there was even time for CBS to find out about the book in the first place. But I’m assuming that, by the time the lawsuit was filed in November, CBS likely knew about it. So why didn’t they taken legal action, as well?
I am going to move into conjecture mode at this point, as I have no idea what the folks at CBS were thinking at any point in this unfolding of events. However, we do know that, in November of last year, CBS and Paramount were still involved in ongoing pre-trial motions with Axanar Productions, and the trial itself had a starting date of January 31, 2017
While CBS can certainly afford to litigate two infringement suits simultaneously (and probably does more often than we’d think), this would have been a second Star Trek-related lawsuit to take its place beside the Axanar case just at the point when CBS was trying to launch a new Star Trek TV series in May (now rescheduled for September).
One Star Trek lawsuit might be a footnote in a news story about the debut of Star Trek: Discovery. Two lawsuits against fans (one of whom is the writer of one of Star Trek‘s most beloved episodes)…now THAT has the potential of running away as the main story, leaving Discovery as the footnote.
Once the Axanar case settled in mid-January, CBS was potentially freed up to either join the existing lawsuit as a co-plaintiff with Dr, Seuss Enterprises (I’m sure the Seuss folks would have welcomed the opportunity to split the legal fees) or else file a separate lawsuit of their own.
Instead, on February 27, CBS simply sent a cease & desist letter.
In my opinion, this was the right move to make. CBS can now watch the case progress and proceed as necessary… if necessary. If Dr. Seuss Enterprises prevails, it’s game over anyway. The dragon is slain…and who cares which knight delivered the death blow? CBS saves potentially hundreds of thousands of dollars in legal fees, and the outcome is the same. Problem solved.
If, however, David, Ty, and ComicMix win the day, then CBS can decide what to do next. If the mash-uppers win, it’ll be because a “fair use” defense carries the day. Depending on how concrete that verdict or judgment ruling is, CBS might decide, “Oh, well…win some, lose some. This one ain’t worth the time to re-litigate.”
On the other hand, CBS could also look at the outcome and think, “Here’s where the plaintiffs went wrong, and we can do it better.” Since CBS has already sent a cease & desist letter, the mash-uppers can’t rely on a non-willful infringement defense (as Alec Peters did). So even if they win against Dr. Seuss Enterprises…the owners of the OTHER Enterprise (the NCC-1701 one) might still come after the mash-uppers.
But for now, CBS is taking a wait-and-see position…and personally, I think that’s a good thing for fan films. It’s obvious that the Axanar lawsuit did not go the way that CBS initially hoped. (I know from a source on the CBS side that the initial hope was for no legal defense at all and a quaking and sobbing Alec Peters pleading for mercy). The last thing CBS expected was a top I.P. law firm taking on the case pro bono (for free) and dragging it out for a year both in court and in the media.
So maybe, just maybe, CBS is reconsidering the strategy of starting off with a full missile strike and is instead returning to diplomacy first and lawsuits second. This might still result in some fan films getting shut down if they violate the guidelines (or not, as seems to be happening with Star Trek Continues). But fan producers might not have to lie awake at night worrying that they might wake up the next morning to find someone knocking at their door, holding an envelope containing a lawsuit.
Yeah, it could still happen. And it’s impossible to predict what CBS will do in any given situation. But I hope that now the lawsuit scenario might be more the exception rather than the rule going forward. Stay tuned!