Michael Nam, Emory University School of Law, Georgetown University Law Center
In December 2015, Paramount Pictures Corp. and CBS Studio Inc. filed a copyright infringement complaint against Axanar Production Inc., creator of a Star Trek fan film “Prelude to Axanar,” accusing the fan film creators of infringing upon the original Star Trek’s copyrights. Plaintiffs asserted in their complaint that defendants have taken various unique elements of the original Star Trek series, ranging from general “feel and mood”, Klingon language and cosmetic details such as costume, jewelry, and makeup, including Vulcan’s signature pointy ears and eyebrows. According to plaintiffs, “defendants have intentionally sought to replicate the Star Trek copyrighted works (down to copying costumes, makeup, and jewelry) and, in doing so, they have sought to create a ‘Star Trek’ film.”
The right to prepare “derivative works” is copyright holder’s exclusive right, which is a right to create a work based on the copyright holder’s preexisting work. A derivative work is defined in copyright law as “an expressive creation that includes major copyright-protected elements of an original, previously created first work. The derivative work becomes a second, separate work independent in form from the first.” Generally speaking, any work, whether a translation, dramatization, motion picture, or fictionalization, if it stems from another’s copyrighted work, then the later work is deemed a derivative work of the first work. A derivative work is infringing on a copyrighted work if it is created without the consent of the copyright holder. Therefore, a fan fiction which inevitably stems from another author’s work embodying the storyline or characters of the original work, is often categorized as a “derivative work” and is subject to copyright infringement lawsuit. For example, in Anderson v. Stallone, a case where a Rocky fan wrote a movie script based off Rocky character portrayed by Sylvester Stallone, the court held that the copyright of that derivative work belonged to Stallone. Also 60 Years Later: Coming Through the Rye, a fan fiction created by a fan of The Catcher in the Rye featuring a story of 76-year old Holden Caulfield was held to be an unauthorized derivative work.
Nevertheless, while copyright law allows a copyright owner to go after anyone that creates unauthorized derivative work of his original creation, copyright law also places some limitation that allows one to utilize another’s copyrighted work without infringing, that is, if a subsequent work qualifies as a “fair use.” Speaking generally, a fair use is any copying of copyrighted material done for a transformative purpose, meaning that if the purpose of a derivative work is to comment upon, criticize, or parody another copyrighted work, such creation of a derivative work is considered to be a fair use. For example, in Suntrust Bank v. Houghton Mifflin, the court held that the novel The Wind Done Gone, a novel written from the perspective of a slave in Gone with the Wind was a transformative parody and constituted a legitimate fair use. Further, the Second Circuit in Cariou v. Prince expanded the scope of fair use by holding that copying is a fair use and not infringement if the infringing work is “new and different,” “have a different character, give [original work] a new expression, and employ new aesthetics with creative and communicative results distinct from [original work]”
So should creation of the fan film “Axanar” be treated as a fair use of Star Trek series or merely an appropriation of Star Trek’s copyrights? As fuzzy as the legal standard of a fair use in derivative use already is, the result will ultimately turn on whether Axanar can be considered a transformative work that contains elements sufficient to set itself apart from the original Star Trek series. Customary practice today involving copyrighted works and their fanfiction is that the author of the original work generally retains the right to exercise power to prohibit fanfiction from becoming available to the public. Thus, some authors may encourage and appreciate fanfictions while some may go after every single fan made materials for copyright infringement, or, some may be like JK Rowling, who is generally receptive of fanfiction, but has pulled down some works she felt were inappropriate or improbable for her characters. But considering that a fanfiction (not only the phrase “fanfiction” plainly indicates that the work is a derivative of another) often embodies substantive copyrighted elements of the original work, such as character and storyline, it would be difficult for creators of fanfiction or fan film to escape accusation of copyright infringement unless they demonstrate that their work expresses new and different meaning distinct from the original work.
Many scholars today endorse the proposition that there should be some mechanism that provide some protection for fan made derivative works. Many see that copyright law which is meant to promote progress of arts, has now became hindrance to them, especially as we face millions of fan made art being shared through channels such as YouTube or FanFiction.net, which hosts more than 3 million fanfictions. Some scholars have come up with a suggestion that the Congress should amend Copyright Act to include statutory language that explicitly allows “noncommercial transformative use” and “transformative” meaning use that does not merely supersede the original but “adds something new” to the original work through different character or further purpose.
It is necessary to protect a copyrighted work from being tainted by unauthorized derivative works, for example, JK Rowling would have an interest in prohibiting fanfiction that portrays her characters in sexually explicit way, characters that she created through years of research and imagination. On the other hand, there is a competing interest, that the purpose of copyright law is to promote arts, creativity and culture, which is the very essence of the copyright law. Therefore, in the face of today’s digital era, and countless channels of which one can express their creativity, an imminent need to achieve the balance between two interests is called for.