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Plot Thickens for Dispute over 'Star Wars'-Related Card Game App
In a lawsuit over rights to a card game with a pivotal role in the Star Wars saga, Lucasfilm Ltd. won an early battle against app maker Ren Ventures Ltd. when a federal district judge in San Francisco declined to dismiss Lucasfilm's claims based on Ren Ventures' use of various trademarks, primarily centered on the game Sabacc. Lucasfilm Ltd. LLC v. Ren Ventures Ltd., 3:2017cv07249.
In the Star Wars universe, Han Solo won the iconic Millennium Falcon spaceship by beating Lando Calrissian in a game of Sabacc, a fact first noted in a draft of the screenplay for Star Wars V: The Empire Strikes Back and then the novelization of the 1980 film. A trilogy of novels about Calrissian published in 1983 included an explanation of the blackjack-line game in which players seek a hand as close as possible to positive or negative 23 without going over.
Lucasfilm sued Ren Ventures last year claiming the company's Sabacc app violated the film company's intellectual property rights. The Sabacc app page in the Apple App Store, Lucasfilm's lawyers at New York's Shapiro Arato pointed out, makes numerous Star Wars allusions, including “From a Cantina far, far away to your mobile device, welcome to the world's largest Sabacc site” and “Go bust? Don't worry, we won't take your ship!”
But the app maker's lawyers at Hunton & Williams earlier this year asked Northern District of California Judge Richard Seeborg, who is overseeing the case, to dismiss Lucasfilm's federal and common-law trademark infringement and unfair competition claims. Trademarks, the Hunton lawyers claimed in their motion to dismiss, “distinguish the source of goods and services in commerce.” “As a matter of logic, it is impossible to offer fictional goods and services in commerce because they do not exist,” the lawyers wrote.
The app maker's lawyers also pointed out that the parties are fighting a parallel battle over a Sabacc trademark Ren Ventures registered in 2015 in a forum far, far away: the Trademark Trial and Appeal Board.
But in the recent court order, District Judge Seeborg found Lucasfilm had sufficiently shown its use of Sabacc marks predated the app maker's. The federal judge also found that in the Star Wars context, Sabacc doesn't simply function as a mark for a fictional game. Lucasfilm, the judge pointed out, profits from all sorts of merchandise based on its broad and fanciful Star Wars universe.
“The crux of Lucasfilm's claims is that defendants use the 'Sabacc' mark with the intention that consumers associate their unlicensed product with the 'Star Wars' franchise and its licensed products,” Judge Seeborg wrote.
But soon after Judge Seeborg ruled, the app maker struck back at Lucasfilm, filing a lawsuit of its own against the film studio and the Denny's restaurant chain. The complaint, also filed in the Northern District of California, claims that a Sabacc-related promotion partnership between Lucasfilm and Denny's for the recently released Solo: A Star Wars Story movie violates Ren Ventures' registered trademark. Ren Ventures v. Lucasfilm LLC, 3:2018cv02417.
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Ross Todd is Bureau Chief for The Recorder, a San Francisco-based ALM affiliate of Entertainment Law & Finance.
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