Heirs of the Estate of Jenkins v. Paramount Pictures Corp.

MEMORANDUM OPINION

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 novellette 1 “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, *708 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 Trek-kies 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 in-junctive 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 trade *709 mark 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 pro- *710 teetion, as they are simply the “common name of a product or service itself.” 11 See Sam 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 (Oust. & 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 *711 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). Put differently, “[a] generic term is one that refers to the genus of which the particular product is a species.” Park ‘n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Or, as the leading commentator on trademark law put it, “descriptive terms describe a thing, while generic terms name the thing.” 2 McCarthy on Trademarks § 12:20.

It follows from this principle that the title of a single expressive work is generic if that title is the name of a subcategory of which the work in question is a member. And one means of organizing single expressive works into subcategories is to sort each work according to its respective genre. 17 Accordingly, FIRST CONTACT is generic, even if, ab initio, it was descriptive of Jenkins’ story, because that phrase has come to describe an entire genre of science fiction, namely literature about humankind’s first encounter with extraterrestrial life. It is undisputed that commentators routinely refer to “first contact” stories, a genre that includes movies and books about human encounters with space aliens. 18 Indeed, The Encyclopedia *712 of Science Fiction refers to “first contact stories” as “the most common communications [with alien life] scenario in [science fiction]” and names Jenkins’ story, as “perhaps the best known of them.” 19 Furthermore, at least two books about alien, encounters (fictional or otherwise) have been published that include FIRST CONTACT in their title, but do not include Jenkins’ story or involve defendant’s motion picture. 20 It is thus clear from the record, that FIRST CONTACT has become the generic term for an entire class of stories, books, and films, of which Jenkins’ story is now simply one example, although it was the seminal example. 21 Accordingly, FIRST CONTACT, because it is generic, is not entitled to trademark protection. 22

Even assuming arguendo that FIRST CONTACT is not generic, but is instead a descriptive mark that refers to Jenkins’ story, plaintiffs have not shown that the mark has secondary meaning. A mark has secondary meaning when, “in the mind of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Sara Lee Corp., 81 F.3d at 464 (citation and internal quotation marks omitted). It follows from this general principle that the title of a single expressive work has secondary meaning when “the title is sufficiently well known that consumers associate it with a particular author’s work.” Rogers v. Grimaldi, 875 F.2d at 998. The “particular author” may be unknown, as long as consumers believe the mark refers to a “single source, even if that source is anonymous.” Mal-jack Productions, Inc. v. GoodTimes *713 Home Video Corp., 81 F.3d 881, 887 (9th Cir.1996).

The question of secondary meaning is a fact-based inquiry, in which the following factors are relevant: (i) advertising expenditures, (ii) consumer studies, (iii) sales success, (iv) unsolicited media coverage of the work, (v) attempts to plagiarize the mark, (vi) the length and exclusivity of the mark’s use, and (vii) evidence of actual confusion. 23 In this case, none of the relevant factors operate in plaintiffs’ favor. First, there is no record evidence that plaintiffs have spent any substantial time, energy, or money advertising or promoting the mark, or that they ever attempted to trade on the mark in any way other than by licensing the story for inclusion in anthologies and release as a book on tape. Indeed, that a story has been distributed in many different forms suggests that it emanates from several publishing sources, rather than a single source. Second, plaintiffs have not shown that consumers believe FIRST CONTACT refers primarily to Jenkins, his story, or a single, otherwise anonymous source. 24 Instead, the record reflects that FIRST CONTACT is commonly used to describe an alien encounter, whether it be fiction or otherwise, and not to refer to Jenkins or his story. 25 Third, the record reflects that the mark *714 has achieved only slight sales success, in that Jenkins’ story has generated a modest $7,000 in revenues since his death in 1975, and there is no evidence that the story or the mark has been otherwise used. Fourth, unsolicited media coverage is relatively rare, and, in any event, overwhelmed by references to the term FIRST CONTACT without reference to Jenkins/Leister or his story. Fifth, there is no evidence that people plagiarized the mark, or otherwise attempted to free ride on plaintiffs’ good will. Sixth, while plaintiffs have shown that the alleged mark has been used as the title of Jenkins’ short story since 1945, they have not shown exclusive use of the phrase as a either a mark or title. And seventh, the evidence of actual confusion is extremely limited. Plaintiffs have identified four people who plaintiffs claim were “confused” by defendant’s mark. Yet, of the allegedly confused people, one is a plaintiff in this case, one is Jenkins’ former literary agent, one is an unidentified person who was present at the Hugo Awards Ceremony where Jenkins was honored, and one is a science fiction fan who, in a letter to the Los Angeles Times, described Jenkins’ work as “highly praised and much anthologized.” In short, these anecdotal references are both unrepresentative and biased, and therefore do not create an issue of fact sufficient to forestall summary judgment. Thus, even assuming FIRST CONTACT were descriptive and not generic, plaintiffs have not shown that the term has secondary meaning.

In sum, plaintiffs’ trademark infringement, trademark dilution, and misappropriation 26 claims must fail, as FIRST CONTACT is not entitled to trademark protection. Similarly, plaintiffs’ claim for the cancellation of defendant’s mark relies on plaintiffs’ prior use of FIRST CONTACT, a use which, for the reasons noted, lacks trademark significance. Accordingly, plaintiffs’ complaint must be dismissed, and the merits of defendant’s affirmative defenses need not be reached. 27

An appropriate order will issue.

The Clerk is directed to forward copies of this Memorandum Opinion to all counsel of record.