May the Lawsuit Be With You
May 2 2018
Unless you have been living under a rock (and not a rock on Tatooine), then you have heard of a little film called Star Wars, things called lightsabers, the Millennium Falcon, and even droids. But do you know how to play Sabbac?
For those of you who are not Star Wars aficionados, Sabacc is a card game rooted in unexplored mythology of Star Wars. Sabacc was first referenced in a draft screenplay for the 1980 motion picture Star Wars V: The Empire Strikes Back, and later in a volume from the trilogy of novels about Lando Calrissian, published in 1983. This 1983 reference explained the rules of Sabacc, a betting game, in which the goal is to finish with a hand as close as possible to positive or negative 23 without going over.
What else is Sabacc? It’s the axis of a lawsuit between Lucasfilm and UK gamemaker, Ren Ventures. Why? It may have something to do with Han Solo. See, he won the Millennium Falcon from Lando Calrissian in a game of Sabacc and Lucasfilm will soon be releasing the next film in the Star Wars anthology called Solo which is about a young Han Solo.
Ren Ventures – The Phantom Menace or Opportunistic Gamemaker?
In 2015, Ren Ventures created a mobile game titled “Sabacc – The High Stakes Card Game”. The game follows the rules as described in the 1983 Lando Calrissian novel and, during game play, makes a handful of Star Wars references, including: (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 game also includes elements of various space figures that, one could argue, are stylistically similar to certain characters appearing in one or more Star Wars properties.
On August 23, 2016, Ren Ventures secured a federal registration for the mark SABACC covering, primarily, on line computer games. Its application claimed a November 20, 2015 priority date. In May, 2017 Lucasfilm filed a petition with the Trademark Trial and Appeals Board to cancel the SABACC registration. Ren Ventures answered the petition and then filed a motion for summary judgment. Less than 20 days later, Lucasfilm suspended the cancellation at the TTAB and sued Ren Ventures for copyright and trademark infringement.
In its complaint, Lucasfilm argued that it used SABACC as the name of an element of Star Wars entertainment products and that “dozens of Star Wars products created or licensed by [Lucasfilm] have used [SABACC]” including “card games, mobile games, video games, magazines, comic books, novels, television episodes, a live theme park experience, and a major motion picture.” Lucasfilm argued that the timing of Ren Ventures’ use of SABACC reflects its intent to infringe. Prior to Ren Ventures claimed first use, Lucasfilm had publicly announced the development of a motion picture focused on Han Solo as a young man and that any Star Wars fan would expect Solo’s acquisition of the Millennium Falcon from Lando Calrissian to be part of this picture.
In February, Ren Ventures filed a motion to dismiss Lucasfilm’s trademark infringement claim. Ren Ventures argued that Lucasfilm had no protectable common law trademark rights in SABACC because Lucasfilm failed to use SABACC in a trademark manner. Ren Ventures argued that; Lucasfilm can not claim trademark rights to goods or services that are only featured in a work of fiction. Ren Ventures argued that it has superior trademark rights due to its use and registration of SABACC.
Since Lucasfilm had not registered SABACC as a trademark, the question before the district court on Ren Ventures’ motion to dismiss was whether Lucasfilm had common law trademark rights in SABACC. While Ren Ventures argued that it didn’t because Lucasfilm failed to use SABACC in a trademark manner – use on or in connection with goods or services. Lucasfilm argued that Sabacc’s role as an element of the star Wars universe is sufficient to establish trademark rights with regard to the Star Wars franchise itself. Does its use of SABACC as a fictional card game in movies and books create protectable trademark rights? To be certain, Lucasfilm appears to have distributed a Sabacc card game in 1989, but that game appears to have been short lived (like the planet Alderaan).
In the end, Ren Ventures’ claim that the lack of traditional trademark use by Lucasfilm means it has no trademark rights was not enough to escape the complaint’s forcefield. In ruling on the motion to dismiss, the court noted that fictional elements of expressive works (like a movie) can function as trademarks because those elements can symbolize the creator of the expressive work (i.e., the movie maker) or its products to the general public. The court noted that trademark protection had been extended to the “General Lee” car from the TV series, “The Dukes of Hazzard,” to the fictional restaurant “The Krusty Krab” from the SpongBob SquarePants animated series, to the fictional element “Kryptionite” from the Superman comics, and to the physical appearance of the E.T. character from the movie of the same name.
The Southern District of New York, in granting trademark protection to Kryptonite, summed up the policy reason why trademark protection may be granted to a fictional element fo an entertainment property, not yet used in a traditional trademark manner:
[W]here the the product sold by plaintiff is “entertainment” in one form or another, then not only the advertising of the product but also an ingredient of the product itself can amount to a trademark protectable under § 43(a) because the ingredient can come to symbolize the plaintiff or its product in the public mind
DC Comics, Inc. v. Filmation Assocs., 486 F. Supp. 1273, 1277 (S.D.N.Y. 1980).
Although the Court elected to allow Lucasfilm’s trademark claims to go forward, it will be interesting to see how the court will rule at the summary judgment phase (if this case gets that far) when it is able to consider evidence. Without question, SABACC is not is not as well known as the General Lee or Kryptonite and, who knows if consumers encountering Ren Venture’s online video game would believe that Lucasfilm is the source of or the sponsor or endorser said game. All that may change after Solo premiers at the Cannes Film Festival on May 15, 2018.