Of course, Buck Rogers would be the one to teach us about trademark rights that exist only in the future.
In a case that spans almost as much time as Buck’s leap across the centuries, the heirs of Philip Francis Nowlan (the character’s creator) and the Dille Family Trust, purported successor-in-interest to John F. Dille, whose National Newspaper Service had distributed Buck to the masses beginning in 1924, were most recently in court in the U.S. District Court for the Eastern District of Pennsylvania.1
Anyone who has dealt with legacy properties and heirs will recognize the facts of this dispute. They involve a poorly written release from 1942 in which Mr. Nowlan’s widow transferred all Buck Rogers copyrights to “John F. Dille Company” and all trademarks to “John F. Dille,” for a paltry sum. Nearly 70 years later, around the time other folks were starting to make katrillions of dollars on comic character movie franchises, the successors from both sides took notice, ran a race to the USPTO, and started canceling and opposing and applying like crazy, in an attempt to secure rights to get in on the summer blockbuster money making action.2
During the time that all the shots were being volleyed at the USPTO, the Nowlan Family Trust was getting busy trying to cash in, pulling together a “series bible” and a pilot script that an agent pitched to the SY FY cable channel in California in December 2015. (Did they not know that the Dille Trust had already greenlighted the BUCK ROGERS ARMAGEDDON 2419 film project, which got announced at Comic Con in July of that year?) The Dille Family Trust sued, throwing in an appeal of the TTAB’s dismissal of their opposition to the Nowlan registrations. 3 Their primary claims against Nowlan were (1) breach of the 1942 release and (2) trademark infringement, including confusion, deception and “False description,” under Section 43(a) of the Lanham Act, and dilution of a famous mark under Section 43(c) of the Lanham Act.4. The Nowlan Family Trust filed a motion to dismiss all the claims, arguing (1) that the breach of contract claim could not stand because the chain of title between John F. Dille and the Dille Family Trust could not be authenticated and (2) that the trademark infringement claims under the Lanham Act had to fail because (1) Nowlan had not used the trademark in connection with any goods or services and (2) they had not used the mark “in commerce.”
This will not be the first time that we have talked about the use requirement in trademark law. And this case is one in which that all-important element could get lost at first blush. Taking as true the Dilley Family Trust’s claim that it is the exclusive owner of the BUCK ROGERS trademark 5, then this case could seem pretty clear cut. Some guy walks into SY FY and says he can sell them a TV show using MY trademark? Who does he think he is? But frustratingly enough, trademark law is not really your friend here. The Court in this case does consider whether either the “series bible” or the script that the agent took to SY FY could be considered “goods,” and allows for that claim to go forward. At a further stage of the litigation, though, the Dilles may have a problem here. BUCK ROGERS was used as the title or part of the title on this script and series bible. Titles do not operate as trademarks unless they denote the source of a series of works. And the series in question, along with all the other entertainment-related products and services that are at the crux of the Dille Family Trust claim don’t exist yet. SY FY hasn’t made them. All we’ve got is a pitch. And that, without goods, isn’t use.
Here’s another problem for the Dille Family Trust. The Court gives the complaint a strict reading, and finds that the only claims that Dille made under Section 43(a) of the Lanham act are claims as to “false designation of origin” or “false endorsement.” The Court then uses the Dastar Corp. v. Twentieth Century Fox Film Corp. case (539 U.S. 23 (2003)) for the proposition that false designation of origin claims can come only from either “Passing off” (Me saying the crappy goods I make are actually made by you) or “Reverse passing off” (Me saying the awesome goods you make are actually made by me). I don’t believe Dastar says that, since Dastar was a case entirely about reverse passing off. The Court effectively dismisses the 43(a) claim by tying it to whether the behavior in which the defendant engaged involved lying about who made the products. So the next time your trademark is being infringed, make sure the infringer lies about the source of the goods, I guess. The Court then says that the broader “false endorsement” claim can’t stand either, because Nowan never claimed that Dille owned the mark. Well, of course they didn’t! So somehow a false pronouncement of ownership of a mark slides between the two different theories of infringement in play here. No Section 43(a) claim. It strikes me as harsh.
Interestingly, since the dilution claim under Section 43(c) has a completely different set of elements, it is allowed to stand (a 43(c) claim is based on dilution of a famous mark, which is the product of an idea that when owners of a mark invest so much marketing (and get so lucky) that mark becomes famous, it’s entitled to some higher level of protection where confusion as to the types of goods doesn’t matter. BUCK ROGERS probably can qualify as famous (it’s a high standard – LOTS of people have to recognize the mark), but it will be interesting to see where this goes. Does anyone else know of a case where the regular old infringement claim failed but the dilution claim succeeded?
Thanks for reading!
1. [The Dille Family Trust has a real problem with chain of title here, which is not uncommon in cases where the rights have been transferred and assigned multiple times since the early 20th century. I use the “Dille” and “Nowlan” names loosely throughout, since it isn’t always clear whether we are talking about the parties, a predecessor-in-interest, or a would-be predecessor if the chain of title had been done right.]↩
2. [I’m aware that trademark registrations do not “secure rights.” I’m not sure either of the parties to this case are aware of that.]↩
3. [Which the Court, inexplicably, ignores completely]↩
4. [15 U.S.C. §1125(a), §1125(c)]↩
5. [We have to take their claim as true, because that’s how a motion to dismiss is analyzed – if all the facts in the complaint are accepted as true, are the elements of a claim satisfied?]↩