To assert a successful infringement claim relative to a mark that has arguably never been used as a source identifier for “real world” products, and which has not been actively promoted for nearly 40 years, is a challenge most trademark lawyers would back away from. For one, establishing trademark rights in a fictional product is itself a challenge, much less demonstrating continued consumer recognition of that mark despite a lapse of so many years since its “introduction.” But Lucasfilm is not a stranger to such challenges.
In a recent preliminary decision getting a lot of attention from film buffs and trademark attorneys alike, a federal court in the state of California recognized that trademark rights could arise from the use of a mark to identify a fictional board game in a popular literary genre, even where the mark has never be used in connection with corresponding goods in the real world marketplace and has not been in continuous use since its introduction in the literary space. It is a case that offers an interesting juxtaposition of the protections available under copyright law (for aspects of literary works such as characters and places that are memorable and resonate for the reader) and trademark law.
Lucasfilm, the production company known for culture changing hits such as the Star Wars and Indiana Jones franchises, sued Ren Ventures Ltd., over its use of the name “Sabacc” to identify a new app that enables players to participate in a game that makes numerous references to events, places, and well-known places from the Star Wars franchise (Ref. 1). As part of that suit, Lucasfilm has moved to cancel Ren Ventures trademark registration for the mark “Sabacc” for cinematographic and photographic devices, as well as entertainment on likelihood of confusion grounds.
At the core of its infringement suit is Lucasfilm’s claim that Ren Ventures took the name for their app from a fictional board game that played an important role in theme and character development in the ever-expanding well-loved fictional Star Wars world. The name “Sabacc” first appeared in a draft of the screenplay for “Star Wars: The Empire Strikes Back” in 1980. While the name of the game was not expressly mentioned in the film, it did feature in the subsequent novelization of the film and in a trilogy of novels following the travails of the character Lando Calrissian (who appears in the film) in 1983. It was in those novelizations that the actual rules of the game of “Sabacc” were explained together with an explanation of the important role the game played in the fundamental back story of the franchise. In Star Wars culture, “Sabacc” is the name of the card game that the central character Han Solo skillfully played in order to win the Millennium Falcon from Calrissian.Besides adopting the name “Sabacc” to identify the app and featured game, Ren Venture’s app also includes references to events, places and well-known phrases from the Star Wars franchise (e.g. “from a Cantina far, far away to your mobile device”) leaving no real room for doubt as to the derivation of the mark and the intended link to the franchise.
In response to Lucasfilm’s infringement suit, the defendant filed a motion to dismiss, claiming that it was not possible for Lucasfilm to demonstrate the fundamental requirements for common law trademark rights, namely, “use in commerce” of the mark in connection with goods or services, given the solely fictional nature of the game in a fictional world, that was never merchandised in any way, much less manufactured, distributed, or sold as an actual game. Defendant argued that the game name could never act as a source identifier since no source ever actually produced a real game. According to the defendant, the fictional nature of the game and the world made the name incapable of serving as a source identifier.
The district court disagreed
According to the court, the relevant segment of the public (presumably, the hard core Star Wars fans) recognizes “Sabacc” as uniquely associated with Lucasfilm and the Star Wars franchise. And, the court concluded, Defendant was obviously aware of and capitalized on this connection by including numerous references in the app to Star Wars lore and lingo.
Despite Ren Venture’s claims that Lucasfilm had not been using the name as a trademark when Ren Venture released its game app, the court recognized the concept of residual goodwill in finding it unnecessary for a trademark owner to release a new product bearing the mark each year for that same mark to remain valid and recognizable in popular culture and continue to serve a source identifying function for years after it was unveiled.
The court’s finding that it is possible for a fictional element of a film franchise to become a protectable trademark is consistent with similar findings relating to the element Kryptonite from the Superman franchise, the General Lee car “character” from The Dukes of Hazzard, and the Krusty Krab character from Spongebob Squarepants. In those cases, as in this one, the use of “the mark” for which protection was sought was not continuous.
While interesting for its larger implications, the court’s decision was very preliminary, reached only in response to a motion to dismiss Lucasfilm’s initial complaint. While the court found that there was enough in the complaint to avert a motion to dismiss, when all factual allegations were taken as true, it does not reflect a ruling of the validity of these claims on their merits.
But the suggestion in the court decision that “fanciful” elements within a franchise may qualify for trademark protection based on association of the element with the franchise is an interesting issue worth watching.
The timing of this lawsuit also undoubtedly factored heavily in the court’s willingness to look “outside” the typical trademark box for relief of what could also be viewed as more akin to an unauthorized derivative work under copyright law. Ren Ventures released its new app on the apparent eve of Lucasfilm’s release of a new widely promoted film in its franchise titled “Solo: A Star Wars Story”. Based on the trailers and advertising materials that have been released so far, it appears that the Sabacc game, factors majorly in the new film’s character and plot development – something which the defendant may have learned from fans in the know. So even if the fictional card game might have been a smaller player in plot development in the past, all of that is likely to change.
The strategy employed by Lucasfilm in its enforcement efforts are worth noting. Lucasfilm did not appear to claim directly use of “Sabacc” as a trademark, but rather claimed rights over the term based on its inclusion in a book, the integral role the game ultimately assumed in the larger Star Wars “story,” and the need to secure same protection as the rest of the more traditional trademark elements in the saga. It leaves open the very interesting question as to how much the secondary elements of a franchise are and should be entitled to protection.
Ultimately, the decision raises a host of interesting questions that may never be answered even if the case proceeds through trial. Do the trademark laws offer the appropriate framework in which to vest protection of a potentially minor fictional element/character that was never merchandised in the real world, and which enjoyed (arguably) minimal consumer visibility for around 40 years except, perhaps, in the minds of the most die-hard fans? Do the copyright laws reservation to the owner of derivative rights offer a more logical framework for protection? And would the decision differ if the element/mark in question were not on the cusp of being revised in a new entertainment property? Stay tuned.
Ref. 1: Examples of these references cited by the court: the use of phrases such as (a) “From a Cantina far, far away to your mobile device, welcome to the world’s largest “Sabacc” site.”; (b) “[B]ecome a Cloud City legend!”; (c) “Go bust? Don’t worry, we won’t take your ship!”. The page also features Star Wars-inspired imagery, and the rules of the game mimic the rules of the fictional “Sabacc” game that appears in the products of Lucasfilm and its licensees.