What Fan Media Makers Should Know About Transformative Use: A Conversation with Rebecca Tushnet (Part Two)

You make what some will find to be a provocative statement above: “The Star Trek works have also been published for a very long time, and have had many chances to earn a return already, which can favor a finding of fair use.” So, let’s be clear about what you are saying here. Are you saying that if an IP holder has made more than enough money, it suddenly starts to lose some of its copyright protections? The courts’ reasoning here is not that the copyright owner has made “enough” money—in some of these cases (and subsequent cases relying on them), the works were previously very successful, in others not so much—but rather that the copyright owner has had a fair chance to economically exploit the work, and also that its wide availability is more likely to justify responses and reworkings. See, e.g., Seltzer v. Green Day, Inc., 725 F.3d 1170, 1178 (9th Cir. 2013) (“Scream Icon was widely disseminated, both on the internet and on the streets of Los Angeles before Green Day used it in their concerts. Accordingly, Seltzer controlled the ‘first public appearance’ of his work. This tends to weigh in favor of the fair use of that work.”) (citations omitted); Kelly v. Arriba Soft Corp., 336 F.3d 811, 820 (9th Cir. 2002) (“Published works are more likely to qualify as fair use because the first appearance of the artist's expression has already occurred.”); Arica Inst. v. Palmer, 970 F.2d 1067, 1078 (2d Cir. 1992) (plaintiff’s work was “a published work available to the general public,” and the second factor thus favored the defendant); see also National Center for Jewish Film v. Riverside Films LLC, 2012 WL 4052111 (C.D. Cal. 2012) (finding that factor two “slightly” favored fair use because copied films were old and had been available for a long time).

 Yet, to play devil’s advocate here, some of those who have come out in support of the fan film guideline argue that some of the current fan productions, because of their substantial similarities with the original texts, because of their improved technical polish, do run the risk of confusing consumers and damaging the market for commercial produced films.

Confusion isn’t really part of the copyright infringement test; I definitely agree that fan films should be clearly unofficial, but technical polish in itself doesn’t signal official production, especially in this day and age. And fans are generally practiced in distinguishing fanworks from official works—if you label something an “unofficial fan film,” confusion is unlikely. As for damaging the market, that’s the explicit concern of the last factor of the fair use test. The key question for factor four is whether the accused work substitutes for part of the copyright owner’s legitimate market. See, e.g., Authors’ Guild, Inc. v. HathiTrust, 755 F.3d 87, 99 (2d Cir. 2014) (“any economic ‘harm’ caused by transformative uses does not count because such uses, by definition, do not serve as substitutes for the original work”) To weigh in favor of a copyright owner, the fourth factor requires a “meaningful or significant effect” on the market for the copyright owner’s work via substitution. Authors Guild v. Google, 804 F.3d 202, 224 (2d Cir. 2015).

Thus, though I do believe that fanworks help sustain the franchise, that isn’t even required for fair use—if a work is transformative and otherwise fair, it’s ok if it harms the market for the original (for example, by convincing people that the original is dumb), as long as that harm doesn’t come by means of substituting for the original.

Many of the cases which the Organization for Transformative Works has dealt with are self-consciously transformational: fan fiction or fan videos are produced in part with the goal of critiquing or rewriting aspects of the original to more fully satisfy the interests of those fans, who, as I’ve noted, are often surplus viewers in the minds of the producers, that is, outside what they initially imagined their market to be. Yet, many of the fan films are affirmational (in that they see themselves more closely aligned with the themes of the series) and aspirational (in that they are often produced with the goal of breaking into the media industry). The standards there often encourage more fidelity to the original story, characters, and worlds as a display of mastery over the program content. They also stress technical mastery as the producers seek to duplicate the original special effects, settings, costumes, and performances. The goal is often to produce something that would “pass” as a Star Trek episode. So, without judging what would or would not be protected, which as has been noted would ultimately be up to the courts to decide, is it worth asking what would constitute the minimum degree of transformation necessary to be protected? Does it matter whether or not the creator of the work meant for the film to be transformative? Does the effort to match the original ultimately undermine some claims to be transformative?

 You ask, “is it worth asking what would constitute the minimum degree of transformation necessary to be protected?” Now I have to give the annoying law professor answer: Definitely worth asking, but not easy to answer. The courts have looked for new meaning or message. That’s easier to find when the new meaning is in some way critical of the original, or even when it’s orthogonal to the original. For the latter, I’m thinking of the great Information Society song What’s On Your Mind and its McCoy/Spock quotes. It may not really comment on the original, but it’s also doing something so different that its meaning/message is very far from that of Star Trek. The very odd IRS training film might also fall into this category.

You ask, “Does it matter whether or not the creator of the work meant for the film to be transformative?” The influential Second Circuit Court of Appeals has said that the answer to this question is no. Richard Prince, provocateur/appropriation artist, copied some photographs and was sued; in his deposition, he denied any intent at all, much less transformative intent. Probably he considered his statements part of his art. The court of appeals said that his work was still transformative because of the way that people reacted to it.

Finally, you ask, “Does the effort to match the original ultimately undermine some claims to be transformative?” Yes, though it would depend very much on what exactly was going on—filming David Gerrold’s original script for Blood and Fire with its overt homosexuality (which was, not for nothing, more overt than the nod to Sulu’s family life in the reboot) to show the contrast between what was and wasn’t acceptable to network TV at the relevant time would probably still be transformative, even if it was otherwise highly faithful in terms of character, setting, etc. That faithfulness might well highlight just how different—or not different—a Star Trek that was more diverse would have been. I would say that transformativeness in plot/character is probably the most important thing. While lack of fidelity in costumes, sets, etc. could be an important signal that a production isn’t going to compete with the market for the original (the other highly important fair use factor), fidelity in those elements probably doesn’t matter nearly as much as transformativeness in what actually happens on the set.

We’ve already discussed the fact that courts do not always make clear distinctions between commercial competitors and fannish labors of love. Yet, there’s a street sense that companies should have the right to protect themselves from unlicensed commercial products that seek to profit from their intellectual properties. Again, to play devil’s advocate, one defense of the new fan guidelines is that they seek to provide insight into what distinctions Paramount and CBS are making between amateur and commercial productions. If the law does not make such distinctions, it would seem that in this case, Paramount and CBS are trying to map some of its own.

You talk about the fan guidelines as indicating what distinctions Paramount/CBS make, even if the courts aren’t clear on what constitutes commerciality. I agree that the guidelines are helpful on what they won’t object to in terms of finances. But they’re very vague on what you can actually have in terms of plot/character, which means that people who want to be sure they’re within the guidelines are likely to end up making pretty anodyne fan films. (The restrictions on involvement of people who’ve worked on official Star Trek seems to me to be needless, and also overreaching in terms of the deals struck with those people—if Paramount/CBS wanted them to refuse such involvement, there was plenty of opportunity to put a specific noncompetition clause in their contracts.)

If Paramount/CBS want to say they’re not objecting to fan films at a certain level of investment, that would make sense to me, but content guidelines beyond “be very clear that this isn’t official,” like rule #2, really limit the usefulness of the guidelines for people who want to experiment. Content must be “family friendly and suitable for public presentation,” and must not include “offensive, fraudulent, … disparaging [does disparaging Ferengi count, especially given the ethnic analogies some critics have made?], … threatening, hateful, or any other inappropriate content.” How certain could anyone be that their script didn’t have any of that in it, especially if it had an actual conflict in it? Is there a single ST:TOS episode that couldn’t be dinged for having some un-family friendly, offensive or inappropriate content by someone who just didn’t like it? I know that I have to explain a lot about sexual mores of the 1960s to my kids when we watch ST:TOS. And the ban on depictions of drugs and alcohol is, in some ways, as funny as it is sad. What are we going to do with McCoy and Scotty, and all those pleasure planets? Or maybe it’s just a way to keep fan films out of character …

Another easy improvement to the guidelines would be to do what the Creative Commons license does: the CC license allows various uses without further contact with the copyright owner, and then the license also makes clear that fair use exists and that the license does not try to limit what you can do under fair use. Clear recognition by Paramount/CBS that fair use exists and that they don’t want to crush it would be one key element of a fair balance.

Rebecca Tushnet is a professor of law at Georgetown. Her work focuses on copyright, trademark, and false advertising law.  She previously clerked for Associate Justice David Souter and worked in private practice.  Her publications include “Worth a Thousand Words: The Images of Copyright Law” (Harvard L. Rev.); “Running the Gamut from A to B: Federal Trademark and False Advertising Law” (U. Penn. L. Rev.); and “Copy This Essay: How Fair Use Doctrine Harms Free Speech and How Copying Serves It” (Yale L.J.).  She helped found the Organization for Transformative Works, a nonprofit dedicated to supporting and promoting fanworks.