Star Trek Fan Fiction Copyright Decision Stuns Usefulness of Summary Judgment on Substantial Similarity for Plaintiffs in Ninth Circuit

On Stardate Tuesday, January 3, 2017, Judge Klausner of the Central District of California filed the Court’s summary judgment decision in Paramount Pictures Corp. v. Axanar Productions, Inc., Case No. 2:15-CV-09938-RGK-E.  The ruling, which denied the parties’ dueling motions, is the most important decision for the fictional universe in which Paramount’s Star Trek properties are set since Starfleet’s court martial of Captain James Tiberius Kirk in Season One, Episode 20 of the original Star Trek series.  While the Court’s ripeness and fair use analyses are relatively straightforward, its ruling on substantial similarity could tilt the playing field on the issue towards copyright infringement defendants.  The Court noted that no case in the Ninth Circuit has found for Plaintiffs on substantial similarity at summary judgment and that out of the Ninth’s Circuit’s brace of extrinsic and intrinsic substantial similarity tests, the latter must be reserved for a jury.  Unless that point is clarified at the Circuit level, parties’ litigation budgets should allow for the strong possibility that a jury must weigh even the most obvious instances of substantial similarity.

As an initial matter, the Court noted that the existence of a final shooting script rendered Defendants’ planned Star Trek fan fiction film ripe for adjudication and for copyright infringement.  Indeed, the Court had already decided the issue at the Motion to Dismiss stage and found that the Defendants had not advanced any new arguments on the issue.

On fair use, the Court applied the four traditional factors to Defendants’ script, and found that they all weighed in favor of Paramount.  First, the Court found that the fan fiction at issue was not a parody or criticism of Star Trek, in part because Defendants intended to create films that were faithful to the Star Trek canon.  Second, it found that Paramount’s works were creative in nature (declining even to address Defendants’ argument that the factor favored them because the works were published some time ago).  Third, the Court found that the totality of individual elements that the Defendants used in their script, including alien species, spaceship shapes, and Federation uniforms, were qualitatively important to both parties’ works.  Finally, and perhaps most notably, the Court set its phasers to kill in shooting down Defendants’ main argument that the fan fiction at issue was not a market replacement for Paramount’s commercial Star Trek works, citing Defendants’ own statements that it was creating an alternative to those works, which fans should fund instead of “dumping hundreds or thousands of dollars a year on . . . cable.”

On substantial similarity, however, the Court engaged in a half-measure.  In the Ninth Circuit, courts apply an objective extrinsic test, carefully analyzing elements of a work to determine if it is substantially similar to the initial work in question.  The Court compared the application of such test to “Vulcan-like” logic.  The Ninth Circuit also uses a subjective “intrinsic” test which asks whether an ordinary, reasonable person would find the total concept and feel of the two works to be substantially similar.  To illustrate the purpose of the second test, the Court quoted Captain Kirk from the original series episode “A Taste of Armageddon” (without citation), noting that “[s]ometimes a feeling is all we humans have to go on.”

The Court easily found substantial similarity under the extrinsic test, citing numerous elements — even Defendants’ own statements that their work “feels like Star Trek.”  However, citing uncertainty as to whether the intrinsic test must always be left for the jury (and Cavalier v. Random House, Inc., 297 F.3d 815, 826 (9th Cir. 2002)), it declined to analyze substantial similarity further.  The Court noted that Plaintiffs cited no Ninth Circuit case law finding for any Plaintiff at summary judgment under such a test.  However, it failed to explain why it did not find a First Circuit case on the subject persuasive, or, why Ninth Circuit substantial similarity cases that found for the Defendant at summary judgment would not be relevant to its decision to proceed to trial on the issue.

Reading between the lines, the Court may well be inviting Ninth Circuit input on the issue in this or a future case.  In the meantime, potential plaintiffs in copyright cases that involve substantial similarity should be prepared for jury trials in California to multiply like tribbles.