Lucasfilm Ltd. v. High Frontier

• Decision Date: 26 November 1985
• Docket Number: 85-3668.,Civ. A. No. 85-3609
• Citation: 622 F. Supp. 931
• Parties: LUCASFILM LTD., Plaintiff, v. HIGH FRONTIER, et al., Defendants. LUCASFILM LTD., Plaintiff, v. COMMITTEE FOR A STRONG, PEACEFUL AMERICA, et al., Defendants.
• Court: U.S. District Court — District of Columbia

622 F. Supp. 931

LUCASFILM LTD., Plaintiff, v. HIGH FRONTIER, et al., Defendants.

LUCASFILM LTD., Plaintiff, v. COMMITTEE FOR A STRONG, PEACEFUL AMERICA, et al., Defendants.

Civ. A. Nos. 85-3609, 85-3668.

United States District Court, District of Columbia.

November 26, 1985.

Arthur J. Levine, Laurence R. Hefter, Jay L. Witkin, Philip J. Moy, Thomas W. Gorman, Washington, D.C., for plaintiff.

Marianne Mele Hall, G. Lindsay Simmons, Scott W. Woehr, Washington, D.C., for defendants in 85-3609.

Mary Jacksteit, John McNally, Frederic C. Williams, Anthony Parker, Washington, D.C., for defendants in 85-3668.

MEMORANDUM

GESELL, District Judge.

These two complaints alleging infringement of plaintiff's STAR WARS trademark involve the same questions of law and substantially similar facts. The suits have been consolidated and plaintiff's motion for preliminary injunction in each case will be treated as submitting the issues for final resolution on the merits pursuant to Fed.R. Civ.P. 65(a)(2). The Court has received briefs, affidavits and heard full oral argument by counsel for all parties.

Not so long ago, in a studio far, far away from the policymakers in Washington, D.C., George Lucas conceived of an imaginary galaxy where fantastic creatures and courageous knights battled an evil empire with spaceships, "blaster" guns and light sabers. Plaintiff Lucasfilms Ltd. marketed this imaginative fantasy in three enormously popular films, the first of which was entitled "STAR WARS." STAR WARS has since become a strong trademark owned by plaintiff and registered as a service mark under the Lanham Act. 15 U.S.C. §§ 1051-1127. Plaintiff has built on the national success of these movies and the goodwill associated with STAR WARS by using the STAR WARS mark to merchandise dolls, toys, comic books, cookies, paper cups, watches, candles and even bubble bath.

Meanwhile, in the real world of defense strategy and international politics, newspapers, politicians, scientists and spokesmen of allied and enemy nations have chosen to characterize the Reagan Administration's Strategic Defense Initiative (SDI) as its "star wars" program. SDI seeks to develop defenses against a nuclear attack with weapons based in space somewhat reminiscent of those depicted in the STAR WARS movies. Some see SDI as a brilliant proposal full of promise. Others fear the idea will simply escalate the risk of nuclear war and frustrate efforts toward disarmament. An intense political debate is under way and still raging. Through persistent and prolific use in newspapers and magazines and over television and radio the phrase star wars has become a popular synonym for the SDI proposal.

The principal defendants are public interest groups aligned on opposite sides of this political controversy. Both have chosen to express their views through television messages which refer to SDI as star wars. Except for their viewpoint, defendants' television messages are similar; both focus on a child's response to space defenses against a nuclear attack. In addition, like many others, they sometimes refer to star wars in their literature as a catchy shorthand for SDI. Ironically, because of their opposing viewpoints, defendants are also engaged in a dispute between themselves as to whether star wars is an apt synonym for SDI, or should be replaced by more comforting phrases such as "Peace Shield" or "High Frontier."

Plaintiff disavows involvement in this political fray and wishes only to protect its business interest in the STAR WARS trademark. Plaintiff fears that associating STAR WARS with this political controversy will injure the valuable goodwill it has achieved by developing a mark associated with imaginary battles among fantastic creatures in distant worlds. Inevitably, the political debate identifies STAR WARS in some minds with devastation and death from uncontrollable nuclear escalation. Plaintiff urges this could detract from the public's present association of STAR WARS with humor and fantasy. The goodwill value of the trademark is particularly threatened by defendants' use of television advertisements that are attractive to young television viewers.

Plaintiff seeks to enjoin defendants' use of the phrase star wars alleging trademark infringement, unfair competition, misappropriation, disparagement and a number of other similar business torts. The proof presented at this stage leaves no doubt that STAR WARS is still a strong trademark and defendants' television messages injure the value of the mark in some minds. Nonetheless, while plaintiff admittedly faces this unfortunate series of circumstances, the Court has no authority to provide plaintiff relief.

Plaintiff has no property right in the use of words commonly found in the English language. It is well established that the property right conferred by a trademark is very limited:

A trademark is not property in the ordinary sense, but only a word or symbol indicating the origin of a commercial product. The owner of a mark acquires the right to prevent the goods to which the mark is applied from being confused with those of others and to prevent his own trade from being diverted to competitors through their use of misleading marks. There are no rights in a trademark beyond these.

Industrial Rayon Corp. v. Dutchess Underwear Corp., 92 F.2d 33 (2d Cir.1937), cert. denied, 303 U.S. 640, 58 S.Ct. 610, 82 L.Ed. 1100 (1938); accord Power Test Petroleum Distributors v. Calcu Gas, Inc., 754 F.2d 91, 97 (2d. Cir.1985); Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 464 (3d Cir.1968), cert. denied, 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270 (1968). Thus plaintiff's trademark, STAR WARS, only protects him against those who seek to attach those words to products or services that compete with him in the marketplace, against those who dilute the value of his mark by engaging in a noncompeting trade or business but utilize the mark in connection with a disreputable or sleazy product or service, and, under some circumstances, even against those who injure his business by offering goods or services that disparage the goodwill value of STAR WARS.

This case fits none of these molds. The defendants have not affixed any trademark to any goods or services for sale. Indeed, they are not engaged in selling anything but ideas. They do not compete with plaintiff and are not engaged in creating any confusion or mistake that takes advantage of plaintiff's good will to further a trade or business. Defendants' television messages and literature merely attempt to persuade the public of their respective but conflicting viewpoints. In this sense, their use of the phrase star wars stands on the same footing as its use in books, newspapers, magazines, comics,¹ news reports, editorials or public speechs as a shorthand reference to the SDI program. Thus it is not the type of use that the laws against trademark infringement and unfair competition are designed to restrict.

Nonetheless, plaintiff suggests that defendants' efforts to persuade the public of their viewpoint is a "service" within the meaning of the Lanham Act. Federal trademark laws, however, only prohibit unauthorized "use in commerce" of a trademark "in connection with the sale, offering for sale, distribution or advertisement of any goods or services" or affixing "a false designation of origin, or any false description or representation" to goods and services used in commerce. 15 U.S.C. §§ 1114, 1125(a). "Use in commerce" is...