Trademarking Imaginary Goods: A Star Wars Story

Trademark law in the United States is centered around “use in commerce.” In other countries, trademarks are thought to be a gift from the government (or historically, the King), so an applicant does not need to prove they are using the trademark. Americans place a high value on work and individual effort and this is reflected in our laws and policies governing trademarks. To obtain a registration from the U.S. Patent and Trademark Office, an applicant must show a bona fide use of the mark in interstate commerce. This is often accomplished by screenshots of a website where a consumer can purchase the goods or services.

But how do you prove use in commerce if your goods are imaginary?

Background:

Lucasfilms is suing Ren Ventures, alleging they have infringed their trademark “Sabacc” by making a mobile phone game of the same name. Ren Ventures has counterclaimed that Lucasfilms does not have a U.S. trademark because of lack of use in commerce, as “Sabacc” is a fictional card game only intermittently mentioned in the Star Wars universe.

Han Solo won the Millennium Falcon from Lando Calrissian in a game of “Corellian Spike” sabacc, and Solo kept the pair of golden dice used in that game. Han’s golden dice are featured in The Force Awakens (2015) and The Last Jedi (2017). The game has been mentioned or featured in Star Wars video games, magazines, television shows, comics, novels, and movies. Lucasfilms argues the first use of the mark occured in 1978 in an early draft of the Empire Strikes Back (Hollywood Reporter). In the movie, Empire Strikes Back (1980), Han just reminds Lando that he “lost her to me fair and square” (clip), but in the novelization released that same year, the game is mentioned by name. In Star Wars Rebels season 1, episode 10, Lando wins the droid Chopper playing Sabacc (clip). It is assumed that Sabacc will be used in the upcoming prequel, Solo: A Star Wars Story (2018), showing how Han met Lando and won his ship.

In 2015, Ren Ventures began selling Sabacc as a mobile game. The company successfully registered SABACC in International Class 9 and 41 for computer games in 2016 (U.S. Reg No. 5025710). The mobile game has the exact rules of the Star Wars game and marketing material includes references to “cloud city” and other copyrighted Star Wars material (App Store). Lucasfilms alleges that Ren Ventures introduced the game on the eve of The Force Awakens release to capitalize on the success of Star Wars. Ren Ventures admits the game is related to Star Wars, but they are arguing Lucasfilms lacks use in commerce to have a trademark in the first place.

Related Case Law:

  • Batman from DC Comics (1982)
    • Fictional characters from Batman comics like Batman and Joker can be trademarked because they function as source indicators of the Batman comics
  • Duff Beer from The Simpsons (1996)
    • South Australian Brewing Company (owned by Lion Nathan Brewery) made “Duff” beer after the beer served in the television show The Simpsons.
    • Australian court found that Duff Brewery only exists in the fictional universe of the Simpsons, thus Fox must rely on copyright law, not trademark law if they want to prevent “the unauthorized duplication of the expressive aspects of that world.”
      At Universal Studios in Hollywood and Orlando, you can drink Duff Beer at a Simpsons themed beer garden. The beer is specialty made by a Florida brewery. (Orlando Informer)
  • Kryptonite from Superman (2004)
    • Kryptonite Corp. sold bicycle accessories under the mark “kryptonite” and when sued by DC Comics, they counterclaimed “kryptonite” was only used in the Superman stories for narrative purposes and DC never used the mark in commerce.
    • The U.S. District Court for the Southern District of New York found
      the fictional element “Kryptonite” from DC’s Superman series to be “an element associated with Superman entertainment products” and thus entitled to trademark protection.
    • Even though the Court found that trademark rights flow from kryptonite’s appearance in Superman entertainment products, DC has trademark rights for games, apparel, and toys – but not bicycle accessories.

      Kryptonite was able to successfully register their company name (Kryptonite).

  • Clean Slate software from the Dark Knight Rises (2013)
    • The 7th Circuit Court of Appeals found in Grand Corp. v. Warner Bros. Entertainment, Inc. that the First Amendment protects Warner Brothers and DC Comics expressive use of “Clean Slate” in the Dark Knight Rises.
    • No likelihood of confusion by consumers between software sought by Catwoman and real software provided by the company Fortres Grand Corporation.

Analysis:

Fictional goods are trademarkable if they function as a source indicator. Consumers know that Joker and Kryptonite originate from Batman and Superman comics. Therefore, consumers understand the source of the marks, even if they don’t know who owns the rights to Batman and Superman. Similarly, consumers understand that Fanta refers to fruit flavored sodas, even if they don’t know they are owned by Coca-Cola.

Previous case law in the US supports Lucasfilms’ arguments that fictional products can function as source indicators, however each case is decided on the facts. Lucasfilms must prove that “Sabacc” functions as a source indicator by showing evidence that people know the mark is associated with Star Wars. In the Complaint filed in the U.S. District Court Northern District of California, Lucasfilms includes covers and portions of Star Wars books, comics, and television shows. They also cite to a number of geek websites such as io9 and avclub that mention Sabacc. However, if Lucasfilms comissed a survey of Americans today, it is doubtful many would know of Sabacc beyond committed Star Wars fans. If the game is mentioned in Solo: A Star Wars Story in May, this will all likely change as then millions of casual movie watchers will know the name of the game.

Lucasfilms has a stronger case than DC Comics in DC Comics v. Kryptonite Corp. The entertainment company has never created kryptonite. The comic book company has never created kryptonite, which is probably a good thing as in the comics kryptonite is very radioactive. In 2015, Lucasfilms published a limited series Sabacc card game, therefore the product in question is not just imaginary. However, Lucasfilms will probably not rely on the argument that Sabacc has been manufactured because they are not currently selling it and do not want to open themselves up to an abandonment claim. That is why so much focus is being placed on the fictional use and not the instances where Lucasfilms has sold the game because they have not sold the game continuously. Since Lucasfilms has not sold the game continuously, their focus is on the fictional use of the mark.

Even if Lucasfilms successfully wins that they hold a trademark in “Sabacc” they will still have to prove likelihood of confusion. In DC Comics v. Kryptonite Corp. and Clean Slate, the courts found no likelihood of confusion. Kryptonite Corp. is still allowed to make bike locks called “kryptonite.” Lucasfilms might be one of the few cases that can succeed on likelihood of confusion of imaginary good because Ren Ventures has also likely infringed copyrighted Star Wars material. Kryptonite’s marketing makes no reference to Superman or his world, while Ren Ventures references the main villain of the sequel trilogy, Kylo Ren, in their company name. Ren Ventures marketing material is also peppered with references to Star Wars, including a drawing of Obi-Wan Kenobi in sunglasses.

Conclusion:

Fictional goods can be trademarked if they serve as source indicators. Lucasfilms will probably be successful in proving that consumers associate SABACC with Star Wars. Ren Ventures surely realizes this and is either hoping the judge will focus on the fact that Lucasfilms produced a real deck of cards modeled on the fictional game but has not sold any in over 2 years or that Disney will buy their company out.

Lucasfilms is probably not selling Sabacc card games even though merchandising is such a large part of Star Wars because the game is notoriously difficult to play (Sabacc Card Game Rules). Luckily, to prove that Lucasfilms has a trademark they do not have to convince people to play the game, they just need consumers to associate Sabacc with Star Wars.

UPDATE: The “Sabacc” game was featured prominently in Solo: A Star Wars Story. During the introduction of Lando Calrissian, they even make a joke about the pronunciation of the game (clip). In June 2018, Lucasfilm won summary judgment on the copyright infringement claims but Lucasfilm Ltd LLC v Ren Ventures Ltd and Creative Industries Ltd. is still proceeding to trial as Ren Ventures has alleged that the infringement was innocent so Lucasfilm is not entitled to damages.

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Kate Montgomery is a graduate from Arizona State University's Sandra Day O’Connor College of Law. Kate previously attended the University of Arizona where she earned her undergraduate degree in Spanish and Philosophy, Politics, Economics, and Law (PPEL). When Kate is not studying or working, she enjoys trivia nights, making costumes, and visiting with friends and family.