Axanar Motion to Compel Discovery Ruling

Janet Gershen-Siegel

Jespah (Janet Gershen-Siegel) has been a fan of Star Trek since probably the first set of reruns of The Original Series. She has an eclectic background, including an undergraduate degree in Philosophy, a JD (she practiced insurance defense law for a few years in New York and is a lot happier since she retired from that in 1990), and a MS in Interactive Media, which is a real-live social media degree.

Along the way, she has about a decade and a half of data analysis work under her belt and currently works as a blog coordinator for a high-end wedding blog and also as a blogger for hire (topics include diverse subjects like ad retargeting but also the nursing job market), and has a shingle out to work on social media presence, with a focus on independent authors as she is also a published science fiction author. Plus, she has been a community manager for a large Q & A website since 2002, which is before that existed as a job title.

She was raised on Long Island so, when she is riled up, the accent gallops back out and she can sound like Fran Drescher with a law degree. She lives in Boston with her husband of over 20 years and more computers than they need.

She can always be bribed with pie.

Latest posts by Janet Gershen-Siegel (see all)

Axanar Motion to Compel Discovery Ruling

The Axanar Motion to Compel Discovery was filed last month, and now there’s a ruling. I’m sorry for how small the images appear. However, please feel free to right-click and save them if you so desire. These documents are a matter of public record and you, the public, have the right to know.

Furthermore, I cover these line by line and I try to make the legalese understandable. However, if I have failed to do so in any manner, please feel free to tell me! I blog about this stuff so that it can be comprehended. If I have not met my own standard, then I want to know about that.

Background

As many readers may be aware, I have been blogging about the CBS/Paramount vs. Axanar case for the past several months for the G & T Show. Because we’re spun off, the posts are now coming here. Thank you for crossing over!

Only three pages have been filed, but they do reference back to some older documents. It’s easier to understand if I reference back.

In late September (the first document was filed on the 29th), the defense in the Axanar copyright infringement case moved to compel discovery. One of the reasons why was because the clock was (and still is) ticking; discovery is supposed to end in early November. However, some of the defense’s demands were rather broad. I covered the motion for G & T and its accompanying attorney declarations and also supplemental memoranda.

So now it’s time to break it down, legal style.

Civil Minutes – General

The first, one-page document is not much more than a cover sheet. So all it really does is confirm the parties met and counsel made their arguments. Lead attorney Jonathan Zavin, and David Grossman, Esq. appeared for the plaintiffs from their firm, Loeb & Loeb. Lead attorney Erin Ranahan, and Kelly Oki, Esq. represented defense from their firm, Winston & Strawn.

 

Civil Minutes - General Docket Entry - Axanar Motion to Compel Discovery Ruling

Civil Minutes – General Docket Entry – Axanar Motion to Compel Discovery Ruling

Civil Minutes – Axanar Motion to Compel Ruling Page 1

Then we get to this page, which shows the overall ruling.

First of all, the ruling notes defense has withdrawn their Issue 3. This issue sought to compel discovery of chain of title documents for Star Trek. Because the plaintiffs complied prior to when the motion was heard and decided, it was withdrawn. So we won’t worry about that, and neither did Magistrate Judge Charles F. Eick. Note: the judge assigned to this matter, Gary Klausner, did not decide the motion.

And the other portion of the ruling reads as follows:

On or before October 28, 2016, Plaintiffs shall: (1) serve supplemental responses without
objection, and produce all documents responsive to, the following requests (except documents withheld
under claim of attorney-client privilege): 14, 35, 36, 37 (limited to the works allegedly infringed and
also limited to documents (which may be summary documents) sufficient to show revenues and
profitability), 17 (limited to 2009 to the present), 18 (limited to 2009 to the present), 21, 25 and 29;
(2) serve supplemental answers without objection to Interrogatories Nos. 8 and 9; (3) produce for
deposition a witness or witnesses prepared to testify as to Deposition Testimony Subject No. 28;
(4) serve a privilege log identifying with particularity all documents withheld under claim of attorney-client
privilege; and (5) to the extent not otherwise ordered herein, fulfill all discovery-related promises
previously made by Plaintiffs to Defendants.

Except as expressly stated herein, the Motion is denied.

For clarity’s sake, I’ll provide the details under the following page.

Civil Minutes - Axanar Motion to Compel Discovery Ruling Page 1

Civil Minutes – Axanar Motion to Compel Discovery Ruling Page 1

Civil Minutes – Axanar Motion to Compel Ruling Page 2

So, what do all of the numbers mean? Here’s where the prior information comes in handy. So take out your secret decoder rings and I’ll explain.

Request #14

This request reads:

All Documents that refer or relate to the commercial impact, if any, that the
promotion, production, or release of fan films, including but not limited to fan films
inspired by Star Trek, has had or might have on the value of the works from which the
fan films are inspired, including but not limited to the Star Trek Copyrighted Works.

Defense is using commercial impact in an effort to show (or, rather, not show) market harm to the plaintiffs. And if defense can prove a lack of market harm to plaintiffs, defense might get out of any real damages.

Except that won’t help them when it comes to statutory damages.

Request #35

This one says:

All Documents and Communications demonstrating how the market for Your
business has been impacted by the Axanar Works.

And again, we have a push to get market harm information (if no market harm can be shown, it doesn’t mean the fair use defense will necessarily fly).

Request #36

And then the next request was for:

All Documents and Communications discussing the impact, or lack thereof, of
the Axanar Works on Your business.

Personally, I had felt (and I still do) that this request is overly broad and might stray into privilege territory. However, see the privilege log, infra, plaintiffs will probably be able to assert some privileges so long as they put the justifications for same into writing.

Request #37

So this one says:

Documents and Communications sufficient to show your profitability, revenue,
ticket sales, and product sales related to Your Works from 2009 to present.

While defense received a favorable ruling on this particular request, the court added that this is

limited to the works allegedly infringed and also limited to documents (which may be
summary documents) sufficient to show revenues and profitability)

Plaintiffs’ objections mainly centered around breadth. Furthermore, they objected the request was overly burdensome. By limiting this request, the judge more or less splits the difference. As a result, we probably won’t see anyone producing or demanding revenue information for, say, utterly irrelevant Voyager tie-in novel revenues.

Request #17

And then this one was granted although “limited to 2009 to the present”:

All Documents that refer or relate to fan films inspired by Star Trek.

Plaintiffs did promise to produce documents back to 2011; this is (perhaps) a slight difference.

Request #18

So here is another one “limited to 2009 to the present”:

All Documents that refer or relate to Your decision whether to pursue legal
action, including but not limited to sending DMCA takedown notices, sending cease
and desist letters, and/or filing lawsuits, with respect to fan films inspired by Star
Trek, including but not limited to 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.

Hence Potemkin, Star Trek: Dark Armada, Star Trek: Intrepid, Star Trek: Odyssey, Blood of Tiberius: A Star Trek Fan Production, Borg War, Starship Valiant, and Star Trek: Ambush (and probably many more) are off the hook.

So, does this mean the court is accepting defense’s claim that they didn’t know they were infringing? Not necessarily, although the ruling at least gives defense a chance to prove same. Maybe.

Request #21

And then we get to this one:

All Documents and Communications regarding Your decision whether to send a
DMCA takedown notice to YouTube or any other person or entity with regard to
Prelude to Axanar or the “Vulcan Scene.”

Back when I covered the motion for the G & T Show, I predicted this one could trip Judge Eick’s ‘reasonability meter’. And so it has.

Request #25

In addition, the next request is for:

All Documents that refer, relate to, or constitute any actual or potential
guidelines for fan films that You have Created, implemented, or considered creating
or implementing, including but not limited to any research, analysis, or
Communications regarding this subject.

With this one, defense may see the memoranda and meeting minutes regarding the creation of the current fan film guidelines. I had said before that I felt this one was irrelevant. However, the judge disagreed with me. Because this information will be discovered, we may see some of it if it makes its way into some future motion. And if plaintiffs’ position flies, that the guidelines weren’t really created because of Axanar, then these documents may turn out to be not so relevant after all. We’ll see.

Request #29

All Documents and Communications relating to the statements made by J.J.
Abrams on or about May 19, 2016 that (a) Justin Lin was “outraged” by this lawsuit;
(b) this lawsuit “was not an appropriate way to deal with the fans”; (c) “fans should be
celebrating this thing”; (d) “[f]ans of Star Trek are part of this world”; (e) Justin Lin
“went to the studio and pushed them to stop this lawsuit”; (f) “within the next few
weeks, it will be announced this is going away”; and (g) “fans would be able to
continue working on their project.”

Yet again, the plaintiffs’ response was objections as to broadness and vagueness. And somewhere, Justin Lin and JJ Abrams are facepalming. However, the court deems it relevant and, apparently, with no caveats or restrictions.

And this is why you don’t go inserting yourself into other people’s lawsuits.

Interrogatory #8

And then this one says:

Identify and describe the harm or injury You claim to have suffered as a result
of Defendants’ actions as alleged in the FAC.

By FAC, they mean the First Amended Complaint. And so this one is another piece of, maybe, the market harm puzzle.

Hence that may be what Winston & Strawn are doing here in the first place. Because this case will likely be a loser at trial or on summary judgment, they are looking ahead to an appeal. And they may be seeking clarification on just exactly what market harm really is.

Interrogatory #9

Defense counsel requested:

Identify and describe the damages that You seek for each cause of action
asserted in the FAC, including by identifying and describing the method(s) used to
compute these damages.

And yet again, the plaintiffs’ lawyers countered that the demand was overly burdensome, etc. In addition, it called for a legal conclusion. Why? Because damage assessments are the purview of expert witnesses. And in this case, such a witness would probably be a CPA.

However, the court is going along with it. So we’ll see what happens. This may mean the parties will jointly hire a CPA to comb through everything quickly in order to get to the specifics.

Deposition Testimony Subject No. 28

All communications between You and J.J. Abrams and/or Justin Lin regarding
fan films, this lawsuit, and/or Axanar.

While objecting as to breadth and relevance, the plaintiffs also note they know of no such communications. And this makes the May 19, 2016 ‘announcement’ by Lin even weirder. At the time, I wrote, “… even if Lin and Abrams have the clout they feel they do, such an announcement was premature at best. Furthermore, such talks would be confidential, subject to NDAs.”

And I also wrote, “What we have here is, instead, an unauthenticated and conveniently vague hearsay statement that seems to have been made solely for the purpose of generating applause at the fan event.”

So now that vague hearsay statement is biting Lin and Abrams in the nether regions. And by extension, that also means it’s biting plaintiffs.

However, if there are no documents, then there are no documents. Would Lin or Abrams be called to testify? Probably not, although this case has been so weird so far, so who knows?

Privilege Log

A privilege log is basically just a list of documents a party considers privileged. Remember how I mentioned, supra, that Request #36 might stray into privileged territory? If it does, then plaintiffs would record that information here.

Fulfill All Discovery-Related Promises

And of course this makes sense. Whether a party is stonewalling, or they just can’t find stuff, if they promise it to the other side, then they must deliver it or show that they tried and the stuff just plain does not exist.

Civil Minutes - Axanar Motion to Compel Discovery Ruling Page 2

Civil Minutes – Axanar Motion to Compel Discovery Ruling Page 2

What Defense Didn’t Get

There were a few items. And I’ll list them here:

Request #23

This one says:

All Documents that refer, relate to, or constitute Your expenditures relating to
the promotion or production of the Star Trek Copyrighted Works, including but not
limited to the salaries paid to the directors, producers, actors, and all other persons
involved in the promotion or production of such works.

Yeah, that one was never going to fly. After all, if anyone can prove to me how the late Grace Lee Whitney’s salary has anything to do with the Axanar case, I will personally send to you a pie of your choosing or I will make a comparable contribution to the children’s or animal-related charity of your choice. I mean it.

Request #24

And this one also seems to have failed the relevancy test for the judge:

All Documents that refer or relate to Star Wars fan films, including but not limited to (a) all Documents that refer,
relate to, or constitute Lucasfilm’s guidelines and/or attitudes regarding
fan films, and (b) all Documents relating to any meetings or other Correspondence
between You and any other person or entity, including at Lucasfilm, regarding this subject.

What’s Next?

First of all, depositions continue. I understand defendant Peters was deposed today. However, it might be easier to follow everything with a timeline.

Future expected timeline of events

  • October
    • 28 – Scheduled date for deposition of Terry McIntosh, former CTO of Axanar. Mr. McIntosh has stated that he has produced 3 terabytes of data regarding this matter.
    • 31 – Mandatory Settlement Conference for all parties
  • November
    • 2 – Scheduled discovery cutoff date
    • 16 – Motion cutoff date
  • December
  • January 2017
    • 9 – Scheduled pretrial conference
    • 31 – Scheduled trial date

So stay tuned! Because there is a lot more to come.

Janet Gershen-Siegel

Jespah (Janet Gershen-Siegel) has been a fan of Star Trek since probably the first set of reruns of The Original Series. She has an eclectic background, including an undergraduate degree in Philosophy, a JD (she practiced insurance defense law for a few years in New York and is a lot happier since she retired from that in 1990), and a MS in Interactive Media, which is a real-live social media degree.

Along the way, she has about a decade and a half of data analysis work under her belt and currently works as a blog coordinator for a high-end wedding blog and also as a blogger for hire (topics include diverse subjects like ad retargeting but also the nursing job market), and has a shingle out to work on social media presence, with a focus on independent authors as she is also a published science fiction author. Plus, she has been a community manager for a large Q & A website since 2002, which is before that existed as a job title.

She was raised on Long Island so, when she is riled up, the accent gallops back out and she can sound like Fran Drescher with a law degree. She lives in Boston with her husband of over 20 years and more computers than they need.

She can always be bribed with pie.

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16 Comments:

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  5. I think #18 is more an attempt to show it was not willful infringement. As stated, it’s already fairly established that just because CBS didn’t sue other fan films doesn’t mean they can’t sue Axanar.

  6. I was wondering if you could clear something up for me. Axanar seems to be reducing CBS/P’s rights to control their own franchise. A franchise worth whatever millions/billions. Shouldn’t that be the “damage” that CBS/P can sue for?

    • Janet Gershen-Siegel

      I’ll try!

      Axanar is kinda, sorta trying to do that.

      We do get into a question of control. And the germane subset of that, so far as Axanar is concerned, is all about enforcing copyright. It’s well-settled in copyright law that trademark is an “enforce or lose it” deal, but copyright can be enforced at the holder’s will and discretion. Hence whether plaintiffs ever talked about suing other productions or warning them or even patting them on the back and giving them attaboys is utterly immaterial. However, Judge Eick permitted discovery on that, probably to go to a question of willful infringement/possible estoppel (defense will fail in the estoppel argument; by their own admission, they know they are violating copyright, and they admitted this before the lawsuit was served).

      As for control of the property (including, perhaps, creative direction), I don’t think Axanar wants to do that although their donors may have been led to believe something else. Expressing displeasure at the Kelvin timeline and even boasting that they can do it better – those seem to have been talking points but I don’t they were truly serious about those.

      Defense success, even on appeal, would not transfer ownership and would not shove the property into the public domain. The IP holders will still have control of their own property, or at least they should. All Axanar should be able to hope for is evading either actual or statutory damages, or some extras as are defined by the copyright code. See: https://www.law.cornell.edu/uscode/text/17/504

      And if defense thinks they will erode the ability of IP holders to pick and choose who to sue for copyright infringement, they’ve got another think coming. That’s rather well-settled law, and a change in that area would undermine every large IP holder doing business in America. It would throw thousands of people out of work if it were to happen because, with the Internet and with near-instantaneous, near-perfect copying becoming cheaper and more plentiful all the time, it would be impossible to enforce copyright. Large and small IP holders alike would be forced into a constant game of Whack-a-Mole (including an IP holder such as myself). Large IP holders would have to stop creating and just spend their time, money, and resources on enforcement. And smaller IP holders would never create in the first place – too many headaches.

      If that is the desired endgame for defense (and it seems to be if you pull it to its end conclusion), then if this matter goes to appeal, we should see other large IP holders filing amicus curiae briefs. These would be corporations like Disney, Marvel, DC, the BBC, etc. But I don’t see it getting that far; this sort of thing would tank the American creative economy.

      I hope I answered your question!

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  8. I’ll bite, because I like pie (just kidding) #23:

    Part of the suit relates to Axanar raising money, paying salaries and using professional actors. If they can somehow prove that these actors were working as a labor of love or that it was not at the level of a commercial productions budget this could go a long way toward convincing a judge and/or jury that it was still a fan film and they could further argue that because of this it may fall into fair use.

    • Janet Gershen-Siegel

      Ah, the pie reels ’em in every time! 😉

      The actors could be volunteers and would still be infringing. For example, if your school (or your kid’s school) or the local PTA or the like puts on Guys and Dolls, they are supposed to get the rights to do so (I found this site, which I believe is correct: http://www.mtishows.com/guys-and-dolls). And so even if the ticket sales all go to a school or a charity, the production can still be found to be infringing.

      Also, benefit isn’t just salaries. It’s also good will and positive press.

      PS Axanar’s own “financial documentation” refers to a $38,000 salary for defendant Peters and a deferred salary for his then-girlfriend, Diana Kingsbury. Plus I believe there were other payments listed although I will admit it’s been a while since I combed through that document.

  9. Amazing detail and information! THANK YOU FOR POSTING THIS GREAT ARTICLE.

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  11. So basically #18 is an attempt by the defense to use OTHER fan films as a reason Axanar shouldn’t have been sued. Yet it really doesn’t matter because the IP holder can pick and choose who they want to sue.

  12. #18 is a non-exclusive request. The other productions you mentioned are by no means “off the hook”. There are other issues but I’m going to give others the chance to point them out.

    • Janet Gershen-Siegel

      That’s true; you’re right. I also noticed I had missed adding the Halloween Mandatory Settlement Conference, so I corrected the post so as to add it.

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