PUBLISHED BY HEATHER M. MORADO

I am an attorney at Morado Law, PLLC.  I practice in the areas of entertainment, intellectual property, and business law.

Thursday
May172018

Is a fictional science fiction game title protectable as a trademark?

LucasFilm, the owner of the iconic Star Wars movie franchise, has scored an early win in a lawsuit against the game developer of Sabacc, a lesser-known element of the fictional Star Wars universe.  According to Star Wars lore (specifically, the 1980 novelization of The Empire Strikes Back), Han Solo won the Millennium Falcon from Lando Calrissian through a winning hand in a game called Sabacc, a fictional betting game involving a special deck of cards where the goal is to finish with a hand as close as possible to positive or negative 23. 

In 2016, London-based Ren Ventures obtained a U.S. federal trademark registration for Sabacc in connection with mobile games, claiming a first use date of November 2015.  Although LucasFilm is well-known to be an aggressive enforcer of its extensive Star Wars-related trademarks (e.g., Jedi, The Force, Darth Vader, etc.), it’s likely that the Sabacc application slipped through LucasFilm’s trademark monitoring measures, because LucasFilm never secured a federal trademark registration for the term.  Notwithstanding the absence of its own federal registration, LucasFilm filed both a Petition to Cancel the Sabacc registration with the Trademark Trial and Appeal Board, and a lawsuit in California Federal District Court alleging trademark infringement.  However, without a federal registration and its accompanying presumptions of validity, LucasFilm has the added challenge of establishing its common law rights to Sabacc in order to prevail on its claims. 

Ren Ventures filed a Motion to Dismiss the lawsuit, alleging that Sabacc is merely a fictional card game in the Star Wars fantasy universe that does not function as a protectable trademark for real-world goods or services.  In order to be protectable, trademarks must function as source identifiers that allow consumers to distinguish between products and services in the marketplace.  Ren Ventures argued that the mere mention of the fictional game Sabacc in Star Wars lore is insufficient grounds for LucasFilm to claim protectable trademark rights in the term. 

Although the lawsuit is still in the early stages, the judge appears to be leaning in favor of LucasFilm.  In denying Ren Ventures’ Motion to Dismiss, the judge noted that even if Sabacc did not function as a trademark for a stand-alone game product, it could function as a source identifier for the overall Star Wars franchise.  The judge concluded that because Ren Ventures had used Sabacc with the intent that consumers associate the unlicensed game with licensed Star Wars products, LucasFilm had stated a viable claim for trademark infringement for purposes of defeating the Motion to Dismiss. 

In response to Ren Ventures’ argument that LucasFilm’s limited use of Sabacc was not continuous enough to establish trademark rights, the judge first noted that the issue involved a factual inquiry that could not be decided on a Motion to Dismiss (which is resolved based solely on the allegations made in the pleadings).  The only alleged usage of Sabacc claimed by LucasFilm was in connection with a one-time release of playing cards that were not offered as a stand-alone game, but sold in conjunction with a Star Wars fan book entitled Crisis on Cloud City (see below).   The judge noted that LucasFilm would not be required to establish at trial that it had released a new Sabacc card game each year in order to prevail on its claims.  Instead, LucasFilm would only need to show that a prior release of the game had remained popular, and continued to circulate years after the initial release date. 

It remains to be seen if the case will proceed to trial, but at least at this early stage, the court appears to be leaning in favor of LucasFilm on the merits of its claims. 

The case citation is LucasFilm, LTD., LLC, et. al. v. Ren Ventures, LTD., et al., Case No. 17-CV-07249-RS

Below is a screen shot of Ren Ventures’ mobile app game for Sabacc:

 

From page 8 of the Complaint, a photo of the cover of the book Crisis on Cloud City, featuring an advertisement in the top right corner for “Sabacc Card Game Inside!”

 

Attached as Appendix A to the Complaint is a picture of the deck of Sabacc cards featured in the book.  However, the term Sabacc does not appear anywhere on the product packaging - instead, the cards are labeled with characters written in the Star Wars fictional language Aurebesh (which allegedly, translates into English as Sabacc):


Friday
May262017

Connecting Writers with Hollywood

Today I will be presenting at the Connecting Writers with Hollywood conference, in Spokane, Washington.  I will be speaking about intellectual property and other legal issues that arise for writers and producers.  More information about the conference can be found here.

 

Thursday
Apr062017

Does stealing jokes constitute copyright infringement?  

In an unusual case, a comedian has filed suit against the Conan O-Brien Show for copyright infringement arising out of alleged joke theft.  The plaintiff, Robert Alexander Kaseberg, alleges that five jokes posted on his comedy blog and Twitter account were unlawfully stolen and featured in the Conan show monologue.  The following are two examples of Kaseberg’s alleged infringements:

The “Tom Brady” joke:

Kaseberg version: “Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots.  So enjoy that truck, Pete Carroll.”

Conan monologue version: “Tom Brady said he wants to give the truck that he was given as SuperBowl MVP to the guy who won the SuperBowl for the Patriots.  Which is very nice.  Yeah, I think that’s nice.   I do.  Yes.  So Brady’s giving his truck to Seahawks coach Pete Carroll.”

The “Bruce Jenner” joke:

Kaseberg version: “Three towns, one in Texas, one in Tennessee, have streets named after Bruce Jenner and now they have to consider changing them to Caitlyn.  And one will have to change from a Cul-de-Sac to a Cul-De-Sackless.” 

Conan monologue version: “Some cities that have streets named after Bruce Jenner are trying to change the streets’ names to Caitlyn Jenner.  If you live on Bruce Jenner cul-de-sac it will now be cul-de-no-sack.” 

In order to establish copyright infringement, Kaseberg must show that the Conan show writers had access to his jokes; and that the monologue jokes are substantially similar to Kaseberg's jokes.  In their motion for summary judgment, the Conan defendants first argue that merely posting content online is insufficient to establish access.   Further, the Conan defendants point out that the factual setups for all of the jokes are derived from current news events and stories, for which no comedian may claim a monopoly.  Finally, the Conan writers also testified that parallel thought among comedy writers is an innate reality in the world of late-night talk shows, and it is not unusual for multiple comedians and social media users to independently create jokes in a similar vein.  Conan O’Brien has vehemently denied the lawsuit allegations, stating in a deposition that “accusing a comedian of stealing a joke is the worst thing you can accuse them of, in my opinion, short of murder.” 

While the jokes at issue do appear to bear some similarities, I think it’s unlikely that Kaseberg's claims will survive summary judgment.  Jokes are generally derived from the realm of mere “ideas,” which are not protectable under copyright.  Oral argument in the case is scheduled for this afternoon, and the judge will likely issue a ruling shortly thereafter.  The case citation is Kaseberg v. Conaco, LLC et. al., 3:15-cv-01637-JLS-DHB.  

Tuesday
Nov082016

Congrats to client Andy Brown

Congratulations to client Andy Brown on the release of his book, Warnings Unheeded: Twin Tragedies at Fairchild Air Force Base.  The book is a vivid and moving account of the events that led up to the 1994 mass shooting and B-52 bomber crash at Fairchild Air Force Base in Spokane, Washington.  These two tragic events occurred only four days apart.  Warnings Unheeded is the result of seven years of meticulous research and development, and focuses on the numerous warning signs from mental health professionals and military airmen that could have prevented the tragedies - but instead, went unheeded.  The author, Staff Sergeant Brown, was the military police officer that successfully ended the Fairchild hospital mass shooter’s rampage with a remarkable and heroic pistol shot. 

The book is available for purchase on Amazon and Fairchildhospitalshooting.com

UPDATE: Warnings Unheeded reached the #1 spot on Amazon's "True Crime" new release list - congrats Andy!


Friday
Jun242016

Jury verdict in Led Zeppelin trial

In a case closely watched by the music industry, a California jury has found that Led Zeppelin’s iconic song “Stairway to Heaven” does not infringe the copyright of the song “Taurus” by the band Spirit.  At trial, both Jimmy Page and Robert Plant testified that they had never heard “Taurus” prior to the creation of “Stairway to Heaven.”  Interestingly, the jury found otherwise on this issue (see the jury’s answer to question two below), but their verdict ultimately rested on the lack of extrinsic substantial similarity between the two songs. 

At trial, the jury was only permitted to hear an expert guitar performance of “Taurus” that was based on the sheet music submitted with the federal copyright registration, rather than the actual studio recording (featured below).  Other curiosities of the trial included Robert Plant’s testimony that he cannot read nor write music; and the over 100 objections sustained against counsel for plaintiff Michael Skidmore (the trustee of the estate of songwriter Randy Wolfe).  Observers of the trial have commented that the conduct of plaintiff’s counsel appeared to test the limits of both the judge’s and jury’s patience.  Plaintiffs have vowed to appeal the jury’s verdict.  The case citation is Michael Skidmore v. Led Zeppelin et. al., CV 15-03462-RGK.

 

 

Skidmore v. Led Zeppelin jury verdict