Heirs of Estate of Jenkins v. Paramount Pictures

• Decision Date: 20 March 2000
• Docket Number: No. Civ.A.99-1766-A.,Civ.A.99-1766-A.
• Court: U.S. District Court — Eastern District of Virginia
• Parties: The HEIRS OF THE ESTATE OF William F. JENKINS, Plaintiff, v. PARAMOUNT PICTURES CORP., Defendant.

90 F.Supp.2d 706

The HEIRS OF THE ESTATE OF William F. JENKINS, Plaintiff, v. PARAMOUNT PICTURES CORP., Defendant.

No. Civ.A.99-1766-A.

United States District Court, E.D. Virginia, Alexandria Division.

March 20, 2000.

Stanley Clinton Spooner, Nixon and Vanderhye, P.C., Arlington, VA, for plaintiff.

John F. Anderson, Richards, McGettigan, Reilly & West, P.C., Alexandria, VA, for defendant.

MEMORANDUM OPINION

ELLIS, District Judge.

In this trademark infringement action brought pursuant to section 43(a) of the Lanham Act, 15 U.S.C. § 1125, plaintiffs, the heirs of an author and owners of that author's work, claim that defendant's motion picture bears a title which is confusingly similar to the title of a short story published over half a century ago by the author. The summary judgment motion at bar presents, inter alia, the question whether plaintiffs may claim trademark protection in the title of a single expressive work, when the title is also the name of a science fiction genre.

I

Plaintiffs are the heirs of William F. Jenkins, a science fiction author who published works of fiction under the pseudonym, "Murray Leinster." Among Jenkins' work is the novellette¹ "First Contact," the title of which is the subject of this litigation. Defendant Paramount Pictures Corporation produces, advertises and distributes television programs, movies, and related products.

In 1945, Jenkins, using his pseudonym, published "First Contact" in the magazine Astounding Science-Fiction. "First Contact," put simply, is a tale of mankind's first encounter with extraterrestrial life. Although many stories, books, and movies examine alien encounters with earthlings, Jenkins' short story is widely regarded as the prime example of this plot.² In that regard, Jenkins' story has been reprinted in numerous anthologies since its initial publication in 1945, and in 1996, twenty-one years after Jenkins' death, the story was honored with a 1946 Retro-Hugo Award.³ In addition, perhaps as a result of Jenkins' story, a vast line of literature, movies, and nonfiction reports of alien encounters are described as "first contact" stories.

Defendant owns all of the so-called Star Trek properties. The Star Trek franchise includes nine motion pictures, four television series, and a large and extremely lucrative licensing and merchandising program. Defendant owns at least fifty registered trademarks related to Star Trek, which marks are licensed for use on a wide variety of merchandise, including books toys, bookmarks, games, greeting cards, watches, clocks, software, and other goods. In total, defendant and its licensees have sold over $1 billion of Star Trek-related merchandise. Further evidence of Star Trek's ubiquity is found in a vast and mysterious Star Trek subculture, comprised of people who call themselves Trekkies or Trekkers. In short, through defendant's aggressive merchandising and the enduring popularity of the Star Trek television shows, movies, and books, STAR TREK has become one of the most famous trademarks in the world.

In 1996, defendant released the eighth Star Trek motion picture, "Star Trek: First Contact." This movie tells the story of Earth's first contact with alien life in the twenty-first century, an encounter that is Earth's first step towards entry into the Federation of Planets, and the beginning of an era of peace and prosperity for our troubled planet. Apparently, the Borg, "a half-organic, half machine collective with a sole purpose: to conquer and assimilate all races,"⁴ has traveled backward through time from the twenty-fourth century, to prevent Earth's entry into the Federation. The crew of the U.S.S. Enterprise, captained by the fearless Jean-Luc Picard, follows the Borg back through time in an effort (successful, of course) to halt its evil scheme.

Defendant applied for, and received, various trademark registrations for STAR TREK: FIRST CONTACT,⁵ and consistent with defendant's practice, used that mark to sell a wide variety of goods. Plaintiffs contend that their ownership of Jenkins' story gives them trademark protection for the phrase FIRST CONTACT and that defendant's use of the phrase violates their trademark rights. Plaintiffs seek injunctive relief, damages, and cancellation of defendant's mark, STAR TREK: FIRST CONTACT. Defendant now moves for summary judgment.

II

On a motion for summary judgment, the moving party must demonstrate that "there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Rule 56(c), Fed.R.Civ.P. The facts themselves, and the inferences to be drawn from those facts, must be viewed in the light most favorable to the nonmoving party. See Ross v. Communications Satellite Corp., 759 F.2d 355, 364 (4th Cir.1985). Summary judgment is appropriate when a party "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The opposing party must do more than "simply show that there is some metaphysical doubt as to the material facts." Matsushita Electric Industrial Co., Ltd., v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Moreover, "the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment." Anderson v. Liberty Lobby Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In addition, in a case in which the nonmoving party bears the burden of proof at trial, as in this case, "Rule 56(e) requires the nonmoving party to go beyond the pleadings and by [his] own affidavits, or by the `depositions, answers to interrogatories, and admissions on file,' designate `specific facts showing that there is a genuine issue for trial.'" Celotex, 477 U.S. at 324, 106 S.Ct. 2548.

III

To prevail on a claim brought pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125, plaintiffs must show (i) that FIRST CONTACT is entitled to trademark protection and (ii) that defendant's use of the phrase is likely to cause confusion among consumers. See Lone Star Steakhouse & Saloon v. Alpha of Va., 43 F.3d 922, 930 (4th Cir.1995). Because the putative mark, FIRST CONTACT, is not registered with the trademark office,⁶ plaintiffs bear the burden of proof on both inquiries.⁷ And in this case, analysis begins and ends with the question whether plaintiffs may claim trademark protection for the phrase FIRST CONTACT.

The value of a trademark to the trademark holder is tied to the good will that the mark represents to consumers.⁸ Consequently, the degree of protection a trademark receives "is directly related to the mark's distinctiveness." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir.1996). To determine the degree of protection a trademark deserves, courts typically categorize marks as "fanciful," "arbitrary," "suggestive," "descriptive," or "generic," in descending order of strength.⁹ See, e.g., Sara Lee Corp., 81 F.3d at 464. Fanciful, arbitrary, and suggestive marks are inherently distinctive and receive the highest degree of trademark protection; descriptive marks are not inherently distinctive, and receive trademark protection only upon a showing that the mark possesses secondary meaning;¹⁰ and generic marks receive no protection as they are simply the "common name of a product or service itself."¹¹ See Sara Lee Corp., 81 F.3d at 464.

Courts typically have not applied this analytical framework to titles of single expressive works; instead, they have assumed that the title of a single work is entitled to trademark protection only upon a showing of secondary meaning, without classifying that title as a descriptive mark.¹² These decisions have led the Second Circuit and trademark law's leading commentator to observe that titles of expressive works are treated differently from other trademarks, in that titles, even if suggestive, arbitrary, or fanciful, nonetheless require secondary meaning to receive trademark protection, while other suggestive, arbitrary, and fanciful marks do not.¹³ On closer scrutiny, this perceived difference is illusory, because the title of a single work is, by its very nature, at best, descriptive of that work. This follows from the observation that each expressive work is inherently unique, distinct, and original, "the contents of which are new ideas in different forms." In re Cooper, 45 C.C.P.A. 923, 254 F.2d 611, 618 (Cust. & Pat.App.1958). And when an author writes a novel or a song, and assigns a title to that novel or song, the title becomes the primary means of referring to that work.¹⁴ Yet the novel, song, poem, or play is but one characteristic of the product that is eventually sold: A novel may be illustrated, bound in hardback, or embossed; a song may be sold by itself or included in an album. The product that is sold is not the song or the novel; it is the compact disc or the book. And the title describes but one (albeit significant) characteristic of that compact disc or book.¹⁵ Thus, the title of a single expressive work is descriptive of that work, no matter how that work is packaged or from what source it is derived.¹⁶ More precisely, titles, by their nature, are neither suggestive nor arbitrary; they are instead inherently descriptive or, in some instances, generic. Accordingly, the title of a single expressive work may receive trademark protection only upon a showing that the title is not generic, and that it has acquired secondary meaning.

Analysis thus begins with the question whether FIRST CONTACT is generic, when that mark is used as the title of an expressive work. A term is generic if it "`denominate[s] a type, kind, genus or subcategory of goods,'" or if it "`identifies the general nature of an article.'" Sara Lee Corp., 81 F.3d at 464 n. 10 (citations omitted...