10:29am PT by Eriq Gardner
'Buck Rogers' Ownership at Center of Coming Trial
Buck Rogers isn't quite as well-known as Luke Skywalker, Captain James T. Kirk or Flash Gordon, but people are more familiar with Buck Rogers than John Carter, Hal 9000 and The Doctor from Dr. Who. How do we know that? A survey was taken as part of an ongoing lawsuit.
The lawsuit is between descendants of author Philip Francis Nowlan, who created the fictional space explorer in the 1920s, and descendants of John Flint Dille, whose newspaper company once syndicated a Buck Rogers comic strip. On Friday, a Pennsylvania federal judge wrote the latest chapter in a long-running contest over rights with a decision that sets up a forthcoming trial over ownership.
The genesis of this dispute dates back to Nowlan's death in 1940. Afterwards, his widow brought a lawsuit against Dille alleging that the author had been underpaid. This settled in 1942, and in exchange for $1,750, the widow released claims and assigned rights.
More recently, the heirs of each side appeared at the U.S. Trademark Trial and Appeal Board with dueling attempts to register (and cancel) "Buck Rogers." The outcome was a victory for the Nowlan Family Trust.
The Dille Family Trust is now challenging the TTAB's decision to reject its opposition to the other side's registration in a lawsuit. The descendants of the publisher also claimed that the Nowlans were diluting trademarks and had breached the 1942 agreement via conversations with NBCUniversal for a "Buck Rogers" pilot for Syfy Network.
According to court papers, a business affairs executive at NBCU secretly opened up discussions with the Nowlans after already being in talks with the Dilles and learning of the ongoing ownership dispute. Although offers were exchanged and NBCU got a script adapted from Nowlan's work, Armageddon 2419 A.D., no deal was ever reached. The Nowlans weren't prepared to indemnify NBCU.
A new summary judgment opinion (read here) from U.S. District Court judge Wendy Beetlestone rejects the contract claim. She writes that there's nothing in the record to establish the Nowlan Family Trust is a successor in interest to the widow and is bound by the old settlement agreement.
As for ownership of trademarks, that's still an open issue.
Beetlestone doesn't see the benefit at this point of regarding various experts, including one who was offered up by the Dilles, to opine that the success of the Buck Rogers character owed more to the syndication of the comic book than the author's original inventiveness.
"Although the question of whether the commercial success of Buck Rogers owes more to John F. Dille or Philip F. Nowlan is surely of great interest to the parties, and to Buck Rogers fans, it is simply irrelevant to the trademark questions that the trier of fact must answer here," writes the judge.
The first big trademark question is who had priority on "Buck Rogers." Who came first to claim "Buck Rogers" as their own? Not Nowlan or Dille, but rather their respective trusts. The Dilles no longer have a valid federal registration, so they must establish prior use of the mark in a way sufficiently public to be identifiable in the minds of the public.
Beetlestone writes that "there is a genuine issue as to whether Plaintiff can establish priority of use in the BUCK ROGERS mark. It must be noted that it is not necessary for Plaintiff to trace its claim to the BUCK ROGERS mark back to John F. Dille or Philip F. Nowlan. Instead, Plaintiff need only point to evidence from which a trier of fact could conclude that it developed trademark rights in the mark prior to January 15, 2009."
That's the date the Nowlans filed an intent-to-use trademark application.
The judge notes that the Dilles held registrations on "Buck Rogers" in the 1980s and had licensed those rights for games, comics and books.
Then again, leading to the second big trademark question, it's possible that the Dilles may have abandoned those rights. Many of the licensing agreements were terminated. In the late 1990s, there was an agreement with Walt Disney Pictures for a new Buck Rogers film or TV show, but nothing was made. The Dilles point to the way it continued to license "Buck Rogers" for vintage merchandising and role-playing game.
All this will be evidence for a trial.
The Nowlans can't get the judge to head off a trial by pointing to what the TTAB had decided, but they at least beat the Dilles' trademark dilution claim.
To establish dilution, the Dilles had to first show they were the owner of a famous mark.
The Dilles put forward various pieces of evidence, including a survey that showed 63 percent of respondents recognized Buck Rogers. In comparison, 91 percent recognized Captain America, 87 percent recognized Luke Skywalker and 5 percent recognized a made-up character known as "Frederick Johnson" (perhaps showing that one can get 1 in 20 people to respond "yes" to practically anything).
Beetlestone says the results "fall far short of the recognition of their marks held to be famous," also shrugging at a Buck Rogers show at the Smithsonian and insubstantial royalties for old movies and commemorative statues.
Maybe a Buck Rogers reboot would bolster the space explorer's name recognition, but it appears that won't happen until some of the issues surrounding ownership get sorted.