Lucasfilm Ltd. and Lucasfilm Entertainment
Company Ltd. LLC recently filed a trademark infringement and copyright
infringement suit in the Northern California District Court against Ren
Ventures Ltd, Sabacc Creative Industries Ltd., which created and released in
2015 the “Sabacc” mobile game app, shortly before the release of the Star Wars The Force Awakens movie. The
case is Lucasfilm Ltd. v. Ren Ventures Ltd, 3:17-cv-07249.
Han Solo cunningly used his Sabbac skills to win his
spaceship, the Millennium Falcon, from Lando Calrissian. The game was played, a long time ago, in a
galaxy far, far away, using cards, while we seem to play in the 21st
century mostly on our phones.
Defendant Ren Ventures also owns the “Sabacc” U.S. trademark, in class 09 and 41, for computer
games software and entertainment services. As this blog is about copyright, I
will not discuss the trademark infringement claim in detail.
The complaint alleges that Defendants used protected
works owned by Plaintiffs, such as
images and quotes from movie dialogues, on their website, Facebook page,
and other social media sites in order to promote their app, such as “From a Cantina far, far away to your mobile
device, welcome to the world’s largest Sabacc site.” Defendant’s “Ren
Ventures” name is inspired by the Star
Wars The Force Awakens character Kylo Ren.
What is the Sabacc
game?
“Sabacc” is a fictional card game which first
appeared in the 1978 draft screenplay, Star
Wars Episode V: The Empire Strikes Back,
under the name “Sabacca” , which was later changed to “Sabacc.” The game then
appeared in three novels about Lando Calrissian published in 1983. One of these
novels, Lando Calrissian and the Mindharp
of Sharu, describes Sabacc’s rules, as stated as such in the complaint:
“The
Sabacc deck comprises a number of face cards (including the Idiot, the Evil
One, and the Star) and four suits of fifteen pip cards (Flasks, Sabers, Staves,
and Coins). It is a betting game in which the goal is to finish with a hand as
close as possible to positive or negative 23 without going over. At various
intervals, the cards in a player’s hand change at random (the “Sabacc shift”)
unless they are placed in an “interference field” that reveals their value to
the other players.
The only hand that defeats a hand of positive or negative 23 (“Pure
Sabacc”) is a hand comprising the Idiot, a 2 card, and a 3 card (the “Idiot’s
Array).”
A Sabacc card game was published by Plaintiffs in 1989 and again in 2015. The game
was also referenced in Star Wars
comic books and in the television series Star Wars Rebels “Idiot’s Array”
episode in 2015.
Can a card game be
protected by copyright?
Could these rules be protected by copyright? Section 102(b) of the Copyright Act excludes protection of ideas,
procedures, processes, systems, methods of operation, concepts, principles, or
discoveries, “regardless of the form in
which it is described, explained, illustrated, or embodied in such work.”
Therefore, the mere rules of a game cannot be
protected by copyright. However, the Second Circuit explained in Affiliated Hosp. Prod., Inc. v. Merdel Game Mfg. Co. that “arrangement of the rules and the manner of
their presentation, [but] not their content” can be protected by
copyright. Therefore, the way the cards or the board game are designed, even
the way the instructions are written and presented, can be protected by
copyright.
However, the rules themselves cannot be
protected, as explained by the Southern District Court of Texas in DaVinci Editrice SRL v. Ziko Games because, “[u]nlike a book or movie plot, the rules and
procedures, including the winning conditions, that make up a card-game system
of play do not themselves produce the artistic or literary content that is the
hallmark of protectable expression.”
Can a third party
register as a trademark a word protected by copyright?
The answer if no, but… Is it possible for a
single word to be protected by copyright? Titles, names, short phrases, and
slogans are not protected by copyright, and it can be argued that ‘Sabacc’ is
the name of a game. Plaintiffs do not claim that they own the copyright in
‘Sabacc’, but that the app:
“mimics
the fictional Sabacc game… as well as the physical Sabacc card games previously
licensed and authorized by Plaintiffs. The names and values of the suits
(Coins, Flasks, Sabres, Staves), face cards (e.g., the Evil One, the Star), and
hands (e.g., Pure Sabacc, Idiot’s Array) are identical.”
Plaintiffs seem to claim they own the common
law ‘Sabacc” trademark. One can argue that it was an oversight on their part
not to register the federal ‘Sabacc” trademark. Do. Or do not. [register a
federal trademark] There is no try.
Image is courtesy of Flickr user Camille Rose under a CC-BY-NC-ND 2.0 license.
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