Star Wars and
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 are some of the questions that Lucasfilm
and a game manufacturer in the UK called Ren Ventures are currently in intellectual property
ligitgation to answer. Lucasfilm is 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 is hoping that a certain element in Lucasfilm's Star Wars universe will 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
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 seems to be 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 is still in its early stages. Accordingly, it's unknown how the court will rule and whether or not Lucasfilm will prevail. The Sabacc game and its rules are not
nearly as recognizable as "kryptonite" or "The General Lee," but with a property as well-known as Star Wars, it would not be shocking if the court found in their favor.