STAR TREK FAN FILM: Yes, it WILL Boldly Go
As I reported in a recent blawg post [https://www.gurwinskeyboard.com/star-trek-fan-film-will-it-boldly-go/], a Federal court in Los Angeles was set to decide just how far the Star Trek universe’s copyright reach extends. In the case of Paramount Pictures Corporation v. Axanar Productions, Inc., studio giant Paramount and CBS Studios alleged that a small independent film entitled Star Trek: Axanar infringes upon “thousands of copyrights” owned by Paramount and CBS to the various Star Trek movies and television shows, and that Axanar Productions is “using innumerable copyrighted elements of Star Trek, including its settings, characters, species, and themes.”
In the past, the studio has tolerated previous Star Trek fan films, as long as they were done strictly as homages and not for profit. None of those films, however, had the level of funding of Star Trek: Axanar. I’m not sure that the studio anticipated the level of blowback it would receive as a result of the lawsuit.
The fan film community, and especially the Star Trek fan film community, was up in arms (or is that phasers?) over that case. Amicus briefs (so-called “Friend of the Court” briefs) even were filed on behalf of Axanar. In one, an organization called the Language Creation Society filed a brief arguing that the Klingon “language” is not copyrightable.
Well, rest easy, Trekkies. At a recent Star Trek fan event, Star Trek Beyond Executive Producer J. J. Abrams announced that the lawsuit was “going away.” Apparently, Paramount realized that, not only was the lawsuit engendering very bad feelings with its audience and fan base for the studio Star Trek films, but that the lawsuit could prove to be a logistical and procedural nightmare for the studio. After the lukewarm fan response to the studio’s last Star Trek film, Star Trek Into Darkness, Paramount felt that it could not afford to alienate its fan base. All of this added up to a case of Paramount rethinking its position. Axanar (the defendant in the case) is now working with Paramount towards dismissing the lawsuit fully. Of course, things could change during those discussions between legal counsel, but all indications now are that the lawsuit will be dismissed and the production of Axanar will move forward.
STAIRWAY TO HEAVEN: Did Led Zeppelin Spirit it Away?
Last year, I wrote a post about a case that was about to be filed challenging the authorship of Led Zeppelin’s rock classic, “Stairway to Heaven.” [https://www.gurwinskeyboard.com/long-ago-far-away-copyright-infringement-claims-raging-bull-stairway-heaven/]. Two weeks after that post, a lawsuit was filed in Los Angeles Federal District Court in which the successor-in-interest to the rights of the estate of musician Randy Craig Wolfe, known professionally as “Randy California,” of the band Spirit, sued Led Zeppelin and its members, alleging that the iconic opening passages in “Stairway to Heaven” were lifted from a song called “Taurus” that was previously written and performed by Spirit. Spirit had toured with Led Zeppelin, and the lawsuit alleges that members of Led Zep heard the tune, liked it and incorporated a material portion of it as the beginning of “Stairway.”
The U.S. Supreme Court, in the case discussed in that prior blawg post, stated that the statute of limitations for copyright cases is a “rolling” three-year term. In other words, each act of infringement would start a new three-year statute of limitations. A reissue of “Led Zeppelin IV” was released last year. Significantly, the re-reIease contained newly released studio takes and live tracks, including a remastered track for “Stairway to Heaven.” As a result, the rolling three-year period has not expired, and the Court is allowing this suit to proceed, even though the original composition was written in 1969.
The defendants in the case, entitled Michael Skidmore v. Led Zeppelin, et al., previously filed a Motion for Summary Judgment, seeking to have the case dismissed as a matter of law. For those of you who are not lawyers, a “Motion for Summary Judgment” is a motion seeking the court to rule that, as a matter of law, there is no legal basis for a claim. However, this assumes that there are no genuine issues of material facts in dispute. The Court granted the defendants summary judgment on certain of the claims, but it denied the motion on the key claim of copyright infringement. Under copyright law, to win an infringement suit, a copyright plaintiff must prove: 1) that it owns the copyrights in question; and 2) that the defendant copied protected elements of the plaintiff’s work. Since direct copying often cannot be proven, such copying can be inferred if the plaintiff can prove that the defendant had access to the copyrighted work at the time of the alleged infringement and that the two works are “substantially similar.”
Each side brought in their own musicologists to dissect the pertinent musical passages and to opine on whether the two works were substantially similar. Not unexpectedly, each side’s “expert” came to a different conclusion as to the substantial similarity between the two works. As a result, the Court decided that there is a genuine dispute as to the issue of substantial similarity.
There is also another interesting, but less reported, issue in the case. Led Zeppelin claims that Randy California waived his rights to the song “Taurus.” Defendants allege that in 1991, California was interviewed in connection with a new album of Spirit recordings entitled “Time Circle.” In the interview, California was asked about the possibility that Led Zeppelin had copied the opening of “Taurus” for its song “Stairway.” California responded that members of Led Zeppelin “used to come up and sit in the front row of all of [Spirit’s] shows and became friends, and if they wanted to use [“Taurus”], that’s fine.” Later in that same interview, California stated more directly: “I’ll let [Led Zeppelin] have the beginning of “Taurus” for their song without a lawsuit.” The defendants have submitted the original article, audio recordings of that interview and a deposition from the journalist who conducted the interview as evidence in support of their Motion for Summary Judgment, arguing that California’s public statements demonstrate his abandonment of any rights to that passage from “Taurus.”
So, on the one hand, Jimmy Paige and Robert Plant are disputing that there is any substantial similarity between the two songs. On the other hand, they appear to be admitting that they ripped it off but claim that they were “authorized” to do so by Randy California. The case will proceed on these issues. It will be interesting to see whether the outcome impacts the reputations of Messrs. Paige and Plant.
STAR TREK FAN FILM: Will it Boldly Go?
Courtesy of GettyImages
A Federal court in Los Angeles is set to decide just how far the Star Trek universe’s copyright reach extends. In an interesting case that is being closely followed in the entertainment industry, Paramount Pictures Corporation v. Axanar Productions, Inc., studio giant Paramount and CBS Studios have alleged that a small independent film entitled Axanar infringes upon “thousands of copyrights” owned by Paramount and CBS to the various Star Trek movies and television shows, and that Axanar Productions is “using innumerable copyrighted elements of Star Trek, including its settings, characters, species, and themes.”
By way of background, there have been a total of six Star Trek television series, dating back to the original Gene Rodenberry produced Star Trek that originally aired on NBC from the mid-1960s. In addition, there have been twelve Star Trek motion pictures over the years. Some of these various shows have been set in different time periods (i.e., sequels and prequels), while others have been remakes of original character stories (i.e., reboots). Suffice to say, that among all of these various shows and movies, certain fictitious “worlds” have been created, as well as very specific characters inhabiting those works.
The film at issue isn’t a home hobbyist’s homage. It is a studio-quality film which has yet to be released but for which over $1 million has been raised via a Kickstarter crowdfunding campaign. However, the producer of Axanar (backed up by a powerful law firm representing it) is not backing down. In a motion recently filed in the case, Axanar Productions has stated that Paramount and CBS have not been specific enough in terms of stating which specific copyrights are being infringed. The motion seeks to force Paramount and CBS to state specific ownership information about the copyrights to the Star Trek franchise as well as discuss the nuances of the multiple television series and the many films that have spawned from Captain James T. Kirk’s original five-year mission aboard the U.S.S. Enterprise.
Axanar’s Motion to Dismiss employs several arguments in favor of dismissal of the case. First, Axanar argues that the plaintiffs must show, with specificity, which copyrights are being infringed and how such copyrights are being infringed. Its argument is that the entire Star Trek universe cannot be lumped together as the basis for a lawsuit. Rather, specific copyrights for elements of the universe have to be spelled out in the Complaint. In making this point, the motion stated that the original 1960s TV series featured a certain adventure aboard the U.S.S. Enterprise, featured characters such as Captain Kirk, Dr. McCoy and Mr. Spock, and introduced the audience to the fictitious species of Vulcans and Klingons, whereas a later Star Trek series, Star Trek: The Next Generation, had new captain (Jean-Luc Picard) and explored different worlds (although many of the core premises of the original Star Trek series were incorporated into Star Trek: The Next Generation).
The defendants motion also describes how two further series, Star Trek: Voyager and Star Trek: Deep Space Nine introduced yet another set of new characters, plots, fictional worlds and settings. The various Star Trek films similarly have introduced such new elements.
While there are certain themes, elements and similarities that run through all of these (such that I would argue that ALL of these are derivative works of the original 1960s television series), Axanar’s motion attempts to force Paramount and CBS to be very specific as to where such elements originated. In other words, this argument by Axanar does NOT appear to claim that the studios do not own any copyrightable interests here. Axanar simply feels that it should not have to guess as to what the studios have allegedly that they have infringed, nor should they be required to sift through each movie and TV episode to determine the claims against them. The motion states: “Plaintiffs do not allege that Defendants are engaged in wholesale copying of each Star Trek motion picture and television episode, or even that Defendants lift substantial material from each of Plaintiffs’ alleged works….Plaintiffs’ conclusory allegations do little to put Defendants on adequate notice of the claims against them.”
Axanar has also argued that the plaintiffs must prove what copyrights are owned by whom. The “chain of ownership” to the Star Trek works is quite complicated. The original show on NBC was owned by Desilu Productions (which was owned by Lucille Ball and Desi Arnaz). Paramount acquired it from Desilu in the late 1960s. About twenty years later, Paramount was acquired by Viacom, which then merged with CBS, which subsequently separated from one another. As a result, there is a series of copyright registrations in various owners’ names, as well as numerous copyright assignments. All of this has to be sorted out in order to determine who is the owner of the specific copyrights at issue. As stated in the motion, “Which Plaintiff owns which alleged copyrights is critical to Defendants’ investigation into Plaintiffs’ claims, as it could be that the only works that Plaintiffs are actually alleging Defendants infringed are owned by one Plaintiff as opposed to the other….Plaintiffs’ joint ownership allegation is not plausible in light of the contradicting information in the Complaint regarding assignment, presenting another ground upon which dismissal is proper.” While these arguments may have merit procedurally, it might also be a clever stall tactic by Axanar.
Because the crowdfunded film hasn’t actually been made yet, Axanar also has argued that stopping its production would constitute an impermissible prior restraint on speech. Courts are highly reluctant to stop an infringement before it occurs, under the theory that relief can later be obtained through monetary relief and an injunction once the film has been completed. In other words, it is not appropriate to sue to stop a film before it has actually been made since the actual film may not, in point of fact, infringe upon anything.
Once all of this procedural jousting has been worked out, and assuming that the case is not dismissed, the burden will still be on Paramount and CBS to establish that elements protectable under copyright—expression and not mere ideas—have been infringed. Inasmuch as the crowdfunded film has not been completed, Paramount and CBS will have a difficult time showing that infringement has occurred (at least for now). Even assuming that the film were to be completed, the trier of fact in the case still will have to determine whether the themes, mood, setting, pace, plot and characters are substantially similar and that the similarities are not merely a result of similar ideas.
Following the production of the film, even if Paramount and CBS could show that copyrightable elements have been taken, Axanar still would have the ability to argue that its use of such elements in the context of this film constitutes “fair use” (which I have discussed in numerous posts on this blawg (Homage or Rip-Off?…, Let’s Go Crazy… and Fan Art: Tribute or Tribulation)). In the motion to dismiss, Axanar’s lawyers stated that: “Defendants intend to vigorously defend their use (if any) as a fair use. Without a film, the Court cannot evaluate the purpose and character of Defendants’ film, whether it is transformative, or a parody, and the amount and substantiality taken (if any). Similarly, the Court will not be able to evaluate any de minimis use defense.”
While some studios welcome (and even encourage) this type of “fan film” as a way to bolster and enhance the “franchise” of the product, the opposite approach is being taken in this situation. As a result, this case will be closely watched in the entertainment industry.
FAN ART: Tribute or Tribulation?
“Fan Art”—you’ve probably seen it and didn’t know it. Maybe you’ve even purchased it, not knowing it wasn’t legally created. So what is it, exactly? Fan art is art created by fans of characters that were originally created by another person. It can take the form of merchandise, such as paintings, t-shirts, buttons, posters, etc.
Courtesy of GettyImages
Fan art has become incredibly widespread. It regularly appears at large comic book and collectible conventions, often for sale right under the noses of the intellectual property owners of the characters. For example, it is commonplace to see offered for sale at shows things such as Marvel superhero characters immortalized in new paintings and posters that were not licensed to be produced or reproduced. There is also widespread manufacture and sale of other fan art items such as print on demand t-shirt sites on commercial websites.
In my view, such fan art is nearly always an illegal violation of the copyrights to the original works. Under copyright law, the owner of a copyright to a literary work (such as a book), a motion picture work (such as a movie or cartoon) or a work of fine art (such as a drawing or painting) owns not only the exclusive right to display and reproduce that work, but also the exclusive right to create “derivative works” based on the work. A “derivative work” is defined as a “work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” Clearly, in my view, fan art constitutes a derivative work of the original work upon which it is based.
Although copyright’s Fair Use Doctrine permits certain uses that would otherwise constitute copyright infringement, the application of the Fair Use Doctrine is limited to certain uses such as parody, criticism, comment, scholarship, research and the like. However reproducing a work of fan art primarily for commercial purposes (such as fan art created for sale at shows, as opposed to creating a parody of a famous character for political commentary) would seem to fall squarely outside of the scope of Fair Use. (For a more detailed discussion of the Fair Use Doctrine, see https://www.gurwinskeyboard.com/homage-or-rip-of/.)
So WHO owns the copyrights to the fan art? Clearly, that portion of the fan art that merely incorporates the original art is owned by the owner of the original art. But what about the elements added to that original art, i.e., the new elements of the derivative work? This becomes an issue if the owner of the original work seeks to commercially exploit the unauthorized derivative work. For example, if Marvel were to see an unauthorized Spiderman statue but felt it could be commercialized, could it simply take that statue, reproduce it and sell it without paying anything to the fan artist who created it without Marvel’s permission?
While that question is generally unsettled among the various Federal juridical circuits, the most favored approach is that the author of an unauthorized derivative work has NO rights in the derivative work, even the aspects that are original or distinct from the original copyrighted work. So who DOES own those rights? Again, while it is not a settled issue, most of the circuits have taken the position that those new aspects are in the public domain, as opposed to being owned by either the owner of the original copyright or the author of the unauthorized derivative work.
In the case of Keeling v. Hars, recently decided by the influential Second Circuit Court of Appeals, the court held that if the derivative work is fair use, the author of the derivative work IS entitled to copyright protection in the aspects of the derivative work that were his or her original creative contributions. However, as I’ve noted above, given the commercial nature of much of this fan art, I do not think it likely would be deemed to be fair use. Given an appropriate circumstance, however, such as fan art that constitutes a political commentary or parody of the original work which qualifies as fair use, the Second Circuit view is that the copyright to that portion of such fan art that was not part of the original work would be owned by the fan artist, not the original copyright holder.
Trademark law also can serve as a protection against fan art. The unauthorized use of a mark that is likely to cause confusion with an existing trademark or service mark is an infringement. So, if the fan art consists of reproducing a well-known logo (e.g., “Spiderman”), that would constitute not only copyright infringement, but also trademark infringement. While certain types of trademark parodies are considered to be a form of “fair use” (think, Mad Magazine or Garbage Pail Kids), simply appropriating a well-known mark and reproducing it in the form of fan art likely would not constitute permissible a use.
The question is why is fan art activity still so widespread? The answer lies in the practicalities of enforcement, both in terms of costs and relationships with consumers.
I asked one of my clients, Kevin Stecko, President of 80sTees.com, Inc. (80sTees.com), a leading website that sells authentic licensed character merchandise, to weigh in with his thoughts.
When I asked Kevin how the rise of “fan art” has impacted his business, he stated that fan art, by itself, does not hurt his business. “For example deviantart.com is essentially an online gallery for anyone who wants to post their art, and there are a ton of great fan artists who post on there.” However, Kevin pointed out that there are specific sites that have made a business model out of selling unlicensed fan art for the brands that 80sTees.com sells. He gave the example of teefury.com, which has an entire page where they sell “Galactic Style,” “which is just a way of not actually saying Star Wars T-Shirts: teefury.com/collections/galactic-style.” Other examples Kevin cites are redbubble.com and riptapparel.com which have similar business models. Many of these companies even sell “mash ups” of two or more brands.
According to Kevin, these companies have huge advantages over companies like 80sTees.com: “Since there is no licensing, there is no approval process, no royalties, no limits at all, really. So they can move faster and source less expensively than we can.”
I asked Kevin how his licensors were policing these unauthorized products. He told me that, for the most part, the movie and TV studios are not actively pursuing the creators or sellers of this fan art. However, certain smaller brands or individuals sometimes do a great job. He noted that both Chuck Norris and the heirs of Bob Ross are really active in policing their respective IP rights.
Kevin feels that there are three primary reasons for this lack of policing:
- The property owners fear a public relations backlash from fans for cracking down on individuals who are more or less expressing love for their product;
- The property owners do not fully realize just how profitable some of these unauthorized sites are and, therefore, don’t see policing as something in which to to invest; and
- They understand the practical problem of engaging in a costly lawsuit against an entity that does not have much money—essentially making it judgment proof.
While brand awareness and popularity is an obvious benefit for licensors and licensees alike, to the extent that fan art goes beyond mere “homage” to a commercial undertaking where the creators/sellers of such fan art have an unfair competitive advantage over those who are properly licensed, this will continue to be a problem in this industry.
At some point, the owners of this valuable intellectual property will need to take a stand. Otherwise, they run the risk of losing their IP rights or of finding licensees willing to pay license fees to produce products that others are producing without the cost of the license.
My thanks to Kevin Stecko of 80sTees.com for his assistance with this blawg post.
APE ACT: Martin and Lewis Had No Recourse Before Emergance of New Legal Right
In the late 1940s and early 1950s, Jerry Lewis was the undisputed king of comedy. His “man child” shtick was known throughout the world and, at age 26, he was quite wealthy and powerful. He and his partner, handsome Italian crooner Dean Martin, were part of the most famous comedy duo in history.
Ever heard of Sammy Petrillo and Duke Mitchell? I hadn’t either until one of my law partners showed me this film trailer from a 1952 movie entitled Bela Lugosi Meets a Brooklyn Gorilla. Take a couple of minutes to watch it, and then read on.
Now you are saying: Wait a minute—that is Jerry Lewis and Dean Martin, right? Wrong. It is an obscure film (which also featured an aging and ill Bela Lugosi) that nearly flawlessly captured the look and feel of Lewis and Martin during their heyday.
Sammy Petrillo was ten years younger than Jerry Lewis. He became a bit of a novelty act because of his uncanny resemblance to Lewis and his ability to mimic the better-known comic. (Lewis even had him as a guest performer on his Colgate Comedy Hour Show but later became irritated by Petrillo’s act). Petrillo was teamed up with a handsome Italian singer named Duke Mitchell (who looked and sounded very much like Dean Martin and even had the same initials), and they were cast in this film.
Why didn’t Lewis and Martin take legal action against Petrillo and Mitchell for “stealing their act?” From a copyright law standpoint, the film did not take anything from a Martin and Lewis film that would amount to copyright infringement. Rather, Petrillo and Mitchell “aped” their overall act. So why didn’t Martin and Lewis sue for unlawfully misappropriating their professional personas? Simple. The law regarding the right of publicity (the right to control the commercial exploitation of one’s name, likeness and persona) had yet to be recognized as a property right in the United States. That would occur just one year after the release of the film.
Prior to the landmark decision in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953) (in which the issue of the commercial exploitation of baseball players’ images on trading cards was at issue), the “right of publicity” had been viewed by the U.S. courts merely as a subset of the right to privacy. In essence, it was the right to be left alone—a tort—not a separate property right. However, the Topps case (decided under New York law) was the first instance in which the “right of publicity” was recognized as a separate property right—the right to commercially exploit one’s name and likeness. While the law varies from state to state (see https://www.gurwinskeyboard.com/video-game-battle-ground-fight-right-publicity/), it is now recognized in 38 states in one form or another. The entertainment industry, no doubt, would be greatly impacted by the court’s decision.
Had the law in New York in 1952 recognized the existence of the right of publicity as a property right, Jerry Lewis and Dean Martin may have had a very valid case against Petrillo and Mitchell and the producers of Bela Lugosi Meets a Brooklyn Gorilla. As it stood then they were left with little legal recourse to stop the rip off of their act (although I have read that they and their studio did put economic pressure on Petrillo and Mitchell in an effort to blackball them from future film projects.) That approach must have had a practical impact–Bela Lugosi Meets a Brooklyn Gorilla would be the only major film project by Petrillo and Mitchell.
After the release of the film, Sammy Petrillo spent a lifetime of working on the fringes of show business. One of his ventures was a successful comedy club, called The Nut House, in his hometown of Pittsburgh. In that capacity, he launched the standup comedy careers of both Richard Pryor and Dennis Miller. Sammy Petrillo died in 2009. Duke Mitchell, who passed away in 1981, had a few minor roles after the film, but never really had much of a career thereafter.
As for Lewis and Martin, they would break up as a comedy team in 1956. Dean Martin went on to enjoy great success as a singer, actor, member of The Rat Pack, and television performer. Jerry Lewis continued as an actor (and, at least according to the French, a comedy genius) and became a famous director who innovated several new techniques in filmmaking and, of course, became synonymous with the annual Muscular Dystrophy Telethon that bore his name.
