207 F. Supp. 3d 535
E.D. Pa.2016Background
- Buck Rogers created by Philip Francis Nowlan; 1942 Release: Theresa Marie Nowlan (as executrix) assigned/releases IP rights including the "Buck Rogers" trademark to John F. Dille in exchange for payment. Plaintiff claims it now stands in Dille’s shoes; Defendant is successor to the Nowlans.
- Nowlan Family Trust filed an intent-to-use application to register BUCK ROGERS in 2009; Plaintiff filed and later had its older BUCK ROGERS registrations cancelled; Plaintiff opposed the Nowlan application at the TTAB and lost in 2015.
- In December 2015, an agent of Nowlan Trust pitched a Buck Rogers script and series bible to SyFy, allegedly asserting ownership and licensability of the mark.
- Plaintiff sued in November 2015 asserting breach of the 1942 Release, federal Lanham Act claims (false designation/endorsement and dilution), and Pennsylvania claims (trademark infringement, unfair competition, state dilution).
- Defendant moved to dismiss all claims except the TTAB appeal; the court denied dismissal of the breach-of-contract and federal dilution claims, but dismissed the Section 43(a) false designation and related state trademark infringement and state dilution claims (state dilution dismissed for failure to allege actual dilution required under Pennsylvania law).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Breach of the 1942 Release — timeliness | Breach occurred by pitching in Dec 2015; within 4-year limitations | Any breach accrued in 2009 when Nowlan applied to register mark, so claim time-barred | Denied dismissal on statute-of-limitations ground; 2015 conduct plausibly a discrete breach requiring discovery |
| Breach — scope (who bound) | 1942 Release’s trademark assignment applied to Nowlan’s successors (executrix signed for estate) | Second paragraph lacked "heirs, executors, or administrators" so trademark assignment bound only Theresa Nowlan personally | Denied dismissal; construing release plausibly covers successors and assignment can bind Nowlan Trust |
| Lanham Act § 43(a) — goods, commerce, likelihood of confusion | Script and series bible are tangible "goods"; defendant’s use likely to confuse sponsor/approval and origin | Script pitch is mere advertising for a hypothetical product; no interstate commercial use; no likelihood of confusion as to the script itself | Dismissed § 43(a) false designation (reverse passing off) and false endorsement claims: script/ bible could be "goods," and use was in interstate commerce, but pleadings failed to allege reverse-passing (no allegation plaintiff produced script) or plausible sponsorship confusion |
| Lanham Act § 43(c) — dilution | BUCK ROGERS is famous nationwide; Nowlan’s use of same mark in same marketplace likely to dilute by blurring | Plaintiff lacks active registration and sufficient facts to show fame or likelihood of dilution | Denied dismissal; plaintiff plausibly alleged fame and likelihood of dilution by blurring sufficient to survive Rule 12(b)(6) |
| Pennsylvania state claims (infringement, dilution) | State law parallels federal claims; dilution claim pleaded as likely to cause dilution | State dilution requires actual dilution; plaintiff pleaded only likelihood | State trademark infringement and unfair competition dismissed (federal §43(a) failure); state dilution dismissed for failure to allege actual dilution required by PA statute |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard: factual plausibility)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility pleading test)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (trademark law protects origin of tangible goods; trademarks/rights not "goods")
- Gonzales v. Raich, 545 U.S. 1 (Commerce Clause can reach local commercial activity that substantially affects interstate commerce)
- Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270 (elements for § 43(a) claim)
- Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (false endorsement elements)
- Phoenix Entm’t Partners v. Rumsey, 829 F.3d 817 (digital/tangible media can be "goods" depending on context)
- Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (pre-TDRA precedent requiring actual dilution)