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Some believe that the fictional space explorer Buck Rogers, created in the 1920s by author Philip Francis Nowlan, is in the public domain. Notwithstanding this fact, Nowlan’s heirs are now on the defensive in a lawsuit that accuses them of breaching contact and diluting trademarks by pitching a “Buck Rogers” pilot to the Syfy Network.
Buck Rogers first appeared in Nowlan’s 1929 novella Armageddon 2419 A.D and became a popular character in comic strips, radio programs and a motion picture series. Nowlan was under contract with John F. Dille’s National Newspaper Service, and when the author died in 1940, his wife fought Dille over intellectual property ownership. In 1942, the lawsuit was settled with Nowlan releasing claims and rights to Dille in exchange for $1,750.
Last year, producer Don Murphy (Transformers, Natural Born Killers, League of Extraordinary Gentlemen) wanted to make a film based on Armageddon 2419 A.D, and after receiving an objection from the licensing representative of the Dille Family Trust, he went to court to establish that “Buck Rogers” was in the public domain thanks to a failure to renew the copyright registration. But a Pennsylvania judge decided in March not to entertain the case due to a lack of “actual controversy.”
Meanwhile, the Dille Family Trust is suing the Nowlan Family Trust.
According to the lawsuit, an agent of the Nowlan family met with Syfy representatives this past December. As part of a pitch for a “Buck Rogers” series, the Nowlans provided a “series bible” setting forth characters and descriptions for potential use.
The Dille Family Trust claims that the pitch breached the 1942 agreement, and on Friday, a judge rejected a motion to dismiss the claim on the argument that the release of rights applied only to Nowlan’s late wife.
“Given that Theresa Marie Nowlan entered into the agreement in her role as the executrix of her husband’s estate, one could surmise that the purpose of the contract (i.e. to settle the estate’s intellectual property rights surrounding Buck Rogers) would be substantially undermined if the release and assignment of the trademark applied only to Theresa Marie Nowlan and John F. Dille as individuals,” wrote Pennsylvania District Judge Wendy Beetlestone.
The case involves more than just a nearly 75-year-old settlement agreement. The Dille Family Trust also claims that the pitch to Syfy was a violation of its rights under the Lanham Act.
The U.S. Trademark Office has canceled Dille’s “Buck Rogers” mark and dismissed an attempt to newly register “Buck Rogers” because of a lack of evidence connecting chain of title to the Dille Family Trust. But the murkiness of whether the plaintiff holds any valid trademark rights isn’t yet an impediment to the lawsuit proceeding. Here, Judge Beetlestone renders a split decision.
The Dille Family Trust contends that the pitch to Syfy caused confusion and deception in the marketplace, but the judge notes that such a claim can only be carried forward if it’s in relation to “goods,” and trademarks themselves aren’t such.
“The script and series bible are tangible things, and fall within the ‘printed matter’ class of goods set forth in the federal regulations,” writes Beetlestone. “Thus, to the extent that Plaintiff alleges that Defendant marketed the script and series bible as discrete products to Syfy and other networks, these items constitute ‘tangible products sold in the marketplace,’ and therefore qualify as ‘goods’ under the Lanham Act.”
“The core of Plaintiff’s grievance, however, concerns alleged confusion about the BUCK ROGERS mark itself, as well as the use of the mark in relation to future entertainment products that may be derived from the script and series bible,” continues the judge. “This expansion of Plaintiff’s claim stretches beyond the scope of the Lanham Act. … [F]uture movies or television series are neither ‘tangible,’ nor ‘sold in the marketplace’ because they do not yet exist as discrete products.”
Judge Beetlestone also concludes that the plaintiff has failed to plausibly allege a likelihood of confusion and dismisses this aspect of the Lanham Act claim.
However, she allows the Dille Family Trust to advance a trademark dilution claim — one that contends that the Nowlans have used a famous and distinctive mark in commerce and blurred or tarnished it by lessening the capacity for the Dilles to be identified with “Buck Rogers.”
Beetlestone rules that the Dille Family Trust has provided enough facts to support the the proposition that “Buck Rogers” is famous as well as ” its own established use of the mark in that marketplace” to sufficiently draw “an inference that Defendant’s use created a likelihood of dilution by blurring.”
Although other claims based on Pennsylvania’s laws fail, here’s the full opinion that moves forward this lawsuit over a Hollywood pitch. The fact that the pitch pertained to a science fiction character possibly not subject to either copyright or trademark protection makes it even more remarkable.
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