Motion to Compel Discovery

See also: Court Orders Studios to Turn Over Documents and Protective Order

Axanar’s attorneys sparred with CBS and Paramount Pictures’ counsel over documents relating to Star Trek fan fiction, and 50 years of financial and copyright ownership records, asking federal magistrate Judge Charles F. Eick to force the studios to produce relevant witnesses and evidence.

In a 62-page joint filing September 29, 2016, the two sides asked for an October 21 hearing before Eick to make arguments.¹⁾ Though Klausner is overseeing the entire case, Eick is the magistrate who granted the order to protect confidential information gathered through discovery.

Defense attorney Erin Ranahan sought evidence she hoped would bolster defense contentions that:

• Producer Alec Peters’ “20-minute mockumentary fan film [Prelude to Axanar] that was distributed, free of charge, on the Internet,” and the “non-commercial” feature, Axanar, posed no financial threat to CBS and Paramount.²⁾

  « This case is about a commercial enterprise designed to take money from Star Trek fans. » — Attorneys for CBS, Paramount

• The studios “long tolerated and encouraged … Star Trek-inspired works of fan fiction.”³⁾
• The studios’ “tacit acknowledgement that works of fan fiction such as the Axanar Works have no negative impact” on Star Trek’s market.
• The lack of market harm would be an integral part of the fair use defense Axanar planned in the case.
• Little or no need for statutory damages from whatever copyright infringement the plaintiffs might prove.
• The 50-year chain of title for Star Trek’s copyrights may have broken links imperiling the studios’ standing to bring suit.

Much of the defense motion revolved on Axanar’s request for the studios’ financial records, which Ranahan insisted were central to her case’s fair use defense, an important part of which is measuring what market harm was posed by the alleged infringement. And, in the event the studios could make their case, Ranahan claimed any damages should be minimal since a fan film given away for free could not have done much damage to “two huge corporations.”

Ranahan, of Winston & Strawn, complained her counterparts at Loeb & Loeb, the plaintiffs’ attorneys, “have refused to produce sufficient documents responsive to those RFPs [requests for production of documents] and Interrogatories.”⁴⁾

Loeb’s refusals, Ranahan said, asserted “unfounded and unavailing boilerplate objections,” or simply resulted in no documents being produced.

Moreover, the trade secrets, private and proprietary information, would remain confidential under the protective order already issued by the judge, Ranahan said, so there was no reason to refuse to turn it over.

For their part, Loeb attorneys criticized Ranahan’s motion as “self-serving and deliberately misleading,” characterizing it as “unnecessary and an unfortunate waste of the Court’s time.”⁵⁾ Loeb asserted the defense:

• Wanted documents that don’t exist.
• Asked for information and documents plaintiffs had already agreed to produce, or had produced two days before the motion was filed, yet still included in this motion.
• Failed to meet with Loeb attorneys to resolve issues that didn’t need to be included in the motion.
• Made requests, without legal basis, that were “extremely broad, unduly burdensome, and seek documents and information that are neither relevant to any party’s claims or defenses, nor proportional to the case.” They specifically referred to 50 years of CBS and Paramount’s financial and copyright ownership records.
• Harrassed plaintiffs by seeking records about Abrams and Lin’s public statements, which occurred after the lawsuit was filed, therefore having no bearing on the infringement alleged prior to the suit.
• Wanted “irrelevant” records, such as those relating to other Star Trek fan films, or whether the studios had pursued legal action against any other infringers.

Much of the plaintiffs’ response to the motion was based on a firm assertion that Axanar is not a fan production at all — in Peters’ own words:

Defendants acknowledged, while they were engaging in their pre-litigation activities, that they were knowingly infringing Plaintiffs’ copyrights. Defendants also repeatedly pronounced that they were creating a “professional” and “independent” Star Trek film, starring actors (that were paid for their services) that have portrayed roles on Star Trek television series, and produced with professional crew members. Indeed, in spite of defense counsel’s recent statements to the contrary, prior to the filing of this suit, Defendant Peters and his colleagues expressly stated that they were not creating a “fan film.” This case is about a commercial enterprise designed to take money from Star Trek fans, which funds were used to pay Defendant Peters along with his friends and colleagues, to create, as Defendants describe it, “an independent Star Trek film.”⁶⁾

The plaintiffs go on to quote many instances where Peters publicly and explicitly disavowed Axanar‘s status as a fan film and instead described it as a professional production.

The website for Axanar’s commercial production facility, Industry Studios.

CBS and Paramount attorneys also pointed to “the commercial nature of [Axanar’s] endeavor, specifically calling out its:

• Use of “donations to build out a 'studio' that is being rented out for other non-Star Trek projects.”
• Accepting donations that resulted in providing perks that included infringing Star Trek-branded merchandise.
• Paying “Peters himself and his girlfriend tens of thousands of dollars, and used the funds obtained from Star Trek fans’ donations on travel expenses, tires, car insurance, and gas.”⁷⁾

Ranahan, outlined the defense effort to obtain information about:

• Finances from all Star Trek copyrighted works going back 50 years, including five television series and 12 movies.
• Salaries Documents demonstrating how much the studios paid “every actor, director, and producer for every single Star Trek movie and television show.”⁸⁾
• J.J. Abrams and Justin Lin Documents relating to Star Trek producer J.J. Abrams’ and director Justin Lin’s statements supporting Axanar.
• Fan Fiction Policies Documents and testimony about the studios’ attitudes and policies regarding fan fiction, including cease and desist letters (C&Ds) and takedown notices to websites found to be hosting infringing material.

J.J. Abrams and Justin Lin at the May 20 event where Abrams announced the Axanar lawsuit would be “going away in a few weeks.”

Both sides addressed other related issues.

The defense asserted throughout its motion that Star Trek creator Gene Roddenberry had originally owned the copyright. By all accounts, Roddenberry never possessed the copyright; he created Star Trek as a work-for-hire under Desilu Productions, and then for Paramount. Indeed, the plaintiffs observed, “Ms. Ranahan does not explain what basis she has for assuming that Gene Rodenberry ever owned the rights to Star Trek.”⁹⁾

Now in possession of an audit of Axanar’s finances, the plaintiffs’ newest motion raises the amount of money Peters generated from $1.3 to $1.5 million. It’s likely that $200,000 bump represents the undisclosed revenue Peters had steadfastly refused to account for.

The defense spent a great deal of time describing the many and varied ways it wanted to assess whether Axanar had or would cause any harm to the market for Star Trek. The plaintiffs, however, pointed out that financial records aren’t the only way to assess harm:

NO JOY for this book whose publication was halted by CBS/Paramount attorney Jonathan Zavin in a 1998 copyright case with similarities to Axanar.

To the extent that Defendants are asserting that this [financial] information is relevant to the market harm element of the fair use analysis, this is not an accurate statement of law. As the Supreme Court held in Harper & Row, Publrs. v. Nation Enters. … for the plaintiff to negate the element of market harm, it “need[s to] only show that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work…This inquiry must take account not only of harm to the original but also of harm to the market for derivative works.”¹⁰⁾

In other words, CBS and Paramount maintain that if “professional, commercial ventures” like Axanar were permitted to create Star Trek works, the widespread use by other “fan” productions would damage copyright holders’ “potential market for derivative works.”¹¹⁾

Interestingly, the case cited for potential harm to future derivative works was a 1998 case won by Jonathan Zavin, Loeb’s lead attorney for the plaintiffs.

The plaintiffs tried to turn the tables on the defense, questioning how the defense could use “the financial performance of hundreds of [the studios’] works over the course of the last decade to demonstrate that they are not liable for copyright infringement.”¹²⁾ Instead, the studios attorneys wrote:

It is Defendants’ expenditures that are relevant here, not Plaintiffs’. Defendants’ documents show that they have spent tens of thousands of dollars, raised from Star Trek fans, on personal expenses and salaries, including car insurance and tires. This is the financial information that is relevant to this case, as well as the profits of Defendants.¹³⁾

The defense also asked for documents relating to CBS’ relationship with fan films, especially whether it ever issued takedown notices for 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.¹⁴⁾

Ranahan sought records about how or whether the studios enforced their copyright against other fan productions. CBS and Paramount’s lawyers claimed such documents were shielded by attorney-client privilege.

The defense also asked for documents and communications about whether to take down either Prelude to Axanar or the “Vulcan Scene” on YouTube. (Ironically, Axanar removed the Vulcan Scene from public view after the lawsuit, and issued its own takedown notices against copies posted on YouTube and Facebook.)

The plaintiffs attempted to forego Axanar’s appeal to how other fan films have been treated by the studios, singling out only Axanar for legal action. Again, citing Zavin’s earlier case:

Failure to pursue third-party infringers has regularly been rejected as a defense to copyright infringement or as an indication of abandonment. … A self-avowed substitute for other Paramount licensed products adversely impacts the market for derivative works.¹⁵⁾

Curiously, the motion includes a request related to Star Wars fan productions, fan film guidelines used by Lucasfilm, and any communications between CBS or Paramount personnel and Lucasfilm employees. The plaintiffs argued this request was overly broad and irrelevant, particularly since Axanar is not a fan film.¹⁶⁾

Oddly, the defense’s motion rarely explicitly refers to Prelude to Axanar or Axanar by their proper titles. Ranahan’s motion instead refers to them broadly as “the Axanar works,” or specifically as “the 20-minute mockumentary” and “the longer, non-commercial film.”

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