Don't Let the Stars Blind You to Intellectual Property
Intellectual Property Update
Don’t Let the Stars Blind You to Intellectual Property
As a science fiction fan and IP attorney, I always enjoy exploring the intersection of science fiction and copyright or trademark law. Someone may believe a successful storyline is too similar to their preexisting (but less successful) work (copyright infringement) or their attempt to parody a successful brand should be permitted (trademark infringement). Two recent cases address these issues regarding the 2 best known space sagas in the science fiction genre: Star Trek and Star Wars.
COPYRIGHT AND STAR TREK: DISCOVERY
The Star Trek universe has generated 13 movies and nine television series. Abdin v. CBS Broadcasting Inc., 971 F.3d 57, 64 n.6 (2d Cir. 2020). There have been at least 8 reported decisions involving Star Trek related copyright or trademark claims. Id at 59 n.1.
Plaintiff Abdin created a video game incorporating a “tardigrade”. Mr. Abdin alleged 3 episodes of the Star Trek: Discovery series copied the tardigrade element of his video game as well as elements of the plot, characters and the overall feel. His suit was dismissed for failure to state a claim and the Second Circuit Court of Appeals affirmed.
First, tardigrades are in fact a microscopic eight-legged animal that has survived exposure for 10 days to the vacuum and solar radiation of space. The Court took judicial notice these facts were published and scientifically discussed. 971 F.3d at 60-62. The ability of a tardigrade to survive in space “has entered the public domain as a scientific fact”. Id at 67. “[T]he extension of tardigrades’ known ability to survive in space into the ability to travel in space is an unprotected idea” Id at 68. Mr. Abdin can only use copyright law to protect the interaction between humans and the (much larger than reality) fictional tardigrade he created for the video game.
“Exploring the definition of life and how to protect it” is a “narrative staple” used to create the Star Trek universe. Id at 65 (citation omitted). “Discovery’s treatment of the tardigrade is a prime example, as the crew members struggle with whether the tardigrade is a sentient being and whether it is being exploited or abused.” Id. In the video game the tardigrade flies through space with a person enveloped in a “tardigrade hug”. Id at 69. In Discovery the tardigrade (Ripper) is used as a supercomputer to guide the ship. Id. When they realize Ripper is being harmed, the “crew determine to set Ripper free so that it might live long and prosper”. Id at 70. “[T]here is no substantial similarity between the protectible features of Abdin’s tardigrade and the Ripper from Discovery”. Id.
Second, “the science fiction genre typically involves ‘stock themes,’ such as space travel, supernatural forces, war games, alien discovery, and adventuring through space.” Id at 71. The plot and character elements alleged by Abdin “are scenes a faire typical in the science fiction genre.” Id at 72. Copyright protection does not apply to these stock themes – they are treated as unprotected ideas.
Finally the “total concept and feel” of the video game differs from Discovery. “Discovery builds on decades of Star Trek plot lines, themes, and stories, referring back to original characters and settings . . ..” Id at 73. Ripper appears in only 3 episodes. “The main storyline in Discovery focuses on the continuation of storylines beginning in the original Star Trek series and continuing through the decades of Star Trek spinoffs and movies.” Id.
Copyright law requires substantial similarity in the way ideas are expressed. The video game and Star Trek Discovery definitely are not substantially similar. Case dismissed.
TRADEMARK AND STAR WARS MILLENNIUM FALCON
The Star Wars franchise includes 11 films. Lucasfilm Ent. Co., Ltd, LLC v. Moskowitz, Opposition No 91,244,449 at 11-12 (Oct 16, 2020) (not precedential). The original Star Wars film received 6 Academy Awards and “the others have either received an Academy Award or have been nominated for one”. Id at 12. Collectively, the films include “6 of the top 20 all-time grossing movies by domestic box office”, generating more than 3.5 billion in earnings. Id at 12.
“Millennium Falcon is the name of a fictional spacecraft piloted by Han Solo (played by actor Harrison Ford).” Opposition No 91,244,449 at 14. MILLENNIUM FALCON has been used as such an integral part of the STAR WARS stories “it is akin to a character in the stories”. Id at 34. Lucasfilm™ Ent. Co. Ltd, LLC (Lucasfilm) registered MILLENIUM FALCON for toy vehicles in 2001. US Reg. No 2,450,785. “MILLENNIUM FALCON-branded toy vehicles [including LEGO toys] is an early example of Opposer’s merchandizing of consumer products, which was first offered in 1977 and continued to be offered to the present time.” Id at 16.
Applicant, Ilan Moskowitz, applied to register the mark MILLENNIAL FALCON for services including live musical performances. Lucasfilm opposed the application. The dispute was presented to the Trademark Trials and Appeals Board (TTAB).
Lucasfilm had priority of use of MILLENNIUM FALCON1. So the TTAB would deny the application to register MILLENNIAL FALCON if registration would create a likelihood of consumer confusion as to who is providing the services under the MILLENNIAL FALCON mark and the preexisting MILLENNIUM FALCON mark. The TTAB considers the DuPont factors2 to determine likelihood of confusion. “Two key considerations are similarities between the marks and similarities between the goods and services.” Id at 26.
First, similarity of the marks weighed ‘heavily” in favor of confusion; indeed, “they are almost identical in appearance, sound, connotation, and commercial Impression”. Id at 28, 31. Millennial literally means “of or relating to a millennium” Id at 29.
Second, similarities between the goods and services also favored finding a likelihood of confusion. Id at 37. “The Star Wars films are also well-known for their musical scores.” Id at 133. The MILLENNIUM FALCON spaceship is associated with the “STAR WARS films, television series, musical recordings and concerts.” Id at 34. The parties’ entertainment services are sufficiently related to confuse consumers. “[W]hen consumers see the term [MILLENNIUM FALCON] they will view it as an indicator of the STAR WARS mythos.” Id. Consumers encountering Applicant’s MILLENNIAL FALCON mark “are likely to believe that the mark has been licensed by Opposer” and that Applicant’s services “are therefore sponsored by Opposer”. Id at 37.
Third, the TTAB found MILLENNIUM FALCON is an “inherently strong mark”, id at 42, and contributed to global sales of Star Wars merchandise exceeding $3 billion in the first quarter of 2016 alone. Id at 43-44. Consequently, “the DuPont factor of fame weighs in favor of a finding of likelihood of confusion”. Id at 44.
Applicant argued MILLENNIAL FALCON is a parody “aimed at [Opposer’s] use of this generational nostalgia to sell products to Millennials and their families.” Id at 29. The TTAB found “the record is devoid of evidence showing that the relevant public perceives the mark in that way.” Id at 30.
We agree with Applicant that MILLENNIAL FALCON conjures up opposer’s mark, but find no parody in the wording, much less one that is obvious. Moreover, we have long held that parody is a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. Here, the marks are virtually identical.
Id at 304.
In a 49 page nonprecedential decision the TTAB denied registration5. Use of a confusingly similar mark for related services does not properly distinguish your goods and services and is prevented by trademark law. MILLENNIUM FALCON and MILLENNIAL FALCON are confusingly similar as marks related to entertainment.
If you are tempted to assert a copyright claim regarding an established science fiction universe, consider the depth of the financial resources and intellectual property rights arrayed against you in this universe. “I had the same idea first“ is not enough for a copyright claim because ideas are not protected by copyright law. “I meant it as a parody” may not avoid trademark confusion.
If you want to use a trademark to create an association between your goods or services and a well-known star trekking or warring science fiction universe, then you should get a license. Without one you may materialize in litigation (similar to materializing inside a star – a hellish fate, even if you eventually emerge alive).
If star travel is irresistible, then consider turning your resources and creative energy toward events in an undeveloped and largely lawless frontier – similar (but not too similar) to the Outer Rim.
 Lucasfilm registered the MILLENNIUM FALCON trademark in 2001. The Moskowitz application claimed first use in 2016.
 In re E I DuPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973)
 The score of the original Star Wars film was entered by the Library of Congress into the National Recording Registry. The various movie soundtrack albums include 2 certified Platinum and 2 certified Gold. Id at 18.
 The TTAB found that Applicant intended to “trade off of Opposer’s MILLENNIUM FALCON mark”. Id at 48. However the TTAB also found “Applicant intended to parody Opposer’s mark . . . even though he failed in the attempt.” Id at 49. So the bad faith factor was neutral.
 A Westlaw search reveals the TTAB has issued Decisions in over a dozen proceedings involving Lucasfilm