Star Wars and Intellectual Property
What is a trademark? Perhaps just as importantly, do common law trademark rights extend to protect many of the familiar elements in a work of fiction like a novel or a film?
These were some of the questions that Lucasfilm and a game manufacturer in the UK called Ren Ventures were in intellectual property litigation to answer in 2017. Lucasfilm was hoping to get similar answers to the ones that courts gave when trademark rights were extended to “kryptonite” from the Superman comics and the “General Lee” car from The Dukes of Hazzard television show. Ren Ventures was hoping that a certain element in Lucasfilm’s Star Wars universe would not be entitled to this protection.
Exactly why are these two companies engaging in costly litigation?
History of Sabacc
Back in 1980, Lucasfilm drafted a screenplay for a movie called Star Wars V: The Empire Strikes Back. This early draft contained a reference to Sabacc, a gambling card game in which Han Solo is supposed to have won the Millennium Falcon spaceship from Lando Calrissian.
Sabacc pops up again in a trio of Lando Calrissian novels, the first of which was released in 1983. The rules of Sabacc are explained in great detail in the books, including that the object of the game is to obtain a score that’s close to positive or negative 23.
It is only the true devotees of the Star Wars universe who are likely to remember what Sabacc is, and the number of people who read the Lando Calrissian novels closely enough to recall the rules of the game is even smaller. However, it seems that the people at Ren Ventures were paying attention. Their attention was so avid that they noticed that Lucasfilm had never sought formal trademark protection for the mark SABACC.
The Legal Argument for Ren Ventures
Ren Ventures clearly felt that this left a door open, as in 2015 they released a mobile game that they called Sabacc – The High Stakes Card Game. The rules are identical to those used in the Lando Calrissian books, and the marketing material for the game uses numerous Star Wars-related references.
By 2016, Ren Ventures had secured a U.S. trademark registration for the mark SABACC for goods including an online computer game. Lucasfilm evidently heard about the registration, because the company filed a petition to cancel the registration with the U.S. Trademark Trial and Appeal Board in 2017. Ren Ventures responded to the petition, at which point Lucasfilm suspended the proceedings in favor of a lawsuit for infringement of trademarks and copyrights.
It’s true that Lucasfilm never filed a trademark application for the mark SABACC. Was this shortsighted of them? Consider that over the decades, the Star Wars universe has become vast. It contains millions of details like the gambling game Sabacc. Protecting them each individually with federal registration is economically unfeasible. Plus, it’s hardly as if they company was using SABACC as a trademark. They would have to sell goods or offer services under the name Sabacc to have protection, wouldn’t they?
That’s the angle that Ren Ventures was arguing in their case with Lucasfilm. They say that Lucasfilm wasn’t using the word in a trademark sense, which should virtually make it fair game for someone else to use. Naturally, Lucasfilm doesn’t see it that way. They have created a widely recognized fictional world that enjoys copyright protection and, arguably, common law trademark protection. Lucasfilm believes that their rights to SABACC should be recognized as one more element in a universe that legally belongs to them.
The intellectual property litigation was still in its early stages but after a year the judgement was made.
The Final Judgement from Copyright.Gov
The court determined that defendants’ use of the Works was not fair. The court
concluded that the first factor, purpose and character of the infringing work,
weighed in favor of Lucasfilm. Because defendants “merely reposted images and dialogue from original works” with only some minor alterations or additions, the use was not transformative. Moreover, in posting the Works to promote their app, defendants’ use was commercial. The second factor, nature of the copyrighted work, favored defendants. While the Works are expressive, they have also been “published extensively,” since images, illustrations, and similar quotes appear at numerous locations online. The court observed: “As a result [of the publication of the Works], the authors have likely realized their expressive and economic interests to a great extent.” The third factor, amount and substantiality of the portion used, weighed for a finding of fair use, because defendants used clips only seconds long.
In comparison to the Works, these clips “are quantitatively insignificant.” The final factor, effect of the use upon the potential market, weighed against fair use. The court found “these GIF images can . . . have an adverse effect on the derivative market.” The court determined that because defendants use was non-transformative and commercial, it could presume the likelihood of market harm. The court concluded that since defendants did not “produce evidence to show lack of market harm to Lucasfilm from their unlicensed use, this factor weighs against fair use.”
Weighing the factors, the court heavily considered “the more important first and fourth factors” and concluded that defendants’ use was not fair. Therefore, the court granted Lucasfilm’s motion for summary judgment on its claim of copyright infringement.