“The title you’re trying to protect is generic. But if it weren’t generic, you’d still lose. And now I’m going to look at how badly you’d lose even in my hypothetical, because your day hasn’t been bad enough already.”
trademark: First contact
OK I’m sorry to do this, but it can’t be helped. This case from 2000 makes some important points about trademark law, but even if it didn’t I would probably include it, because it’s about Star Trek and I’m a big ol’ Trekkie geek. The case is The Heirs of the Estate of William F. Jenkins, v. Paramount Pictures Corp., 90 F. Supp. 2d 706 (2000), but you don’t have to worry about all that; I’ll give you the gist.
In 1945, William F. Jenkins published a short story in Astounding Science-Fiction magazine. His story, “First Contact,” is about mankind’s first encounter with extraterrestrial life.
Paramount Pictures owns all of the Star Trek properties. The Star Trek franchise includes 9 motion pictures, 10 television series, and a large and extremely lucrative licensing and merchandising program that’s generated over a billion dollars. Paramount holds at least 50 registered trademarks relating to Star Trek.
So in 1996, Paramount released another Star Trek movie (and in my opinion the best of the pre-2009 ones), called “Star Trek: First Contact,” about the first contact between humans and an alien race (mostly Vulcans, but Borg and Klingons were involved, too).
Jenkins’ estate claimed ownership of the trademark for the phrase “First Contact” and sued Paramount. First, Jenkins’ family have to show that the phrase “First Contact” is entitled to trademark protection, and that Paramount’s is likely to cause confusion among consumers between a big-budget franchise movie and a short story from the 1940s. Because “First Contact” was never registered by Jenkins, the estate has to prove both questions—there’s no incontestability here.
So as you’ll recall, normally book titles are not copyrightable, and they’re not really trademarkable either. The only way for a book title to be trademarked is if it has a secondary meaning: that is, the public understands that the title represents something else, not just the title of a book. That’s a tough thing to prove because, as the court points out, the title of a single work is, by its very nature, at best, descriptive of that work.
The court concluded that “First Contact” is a generic phrase, even if it was descriptive once upon a time back in 1945 when people still read Jenkins’ books. It’s generic because it’s acquired the popular meaning of describing a whole genre of science fiction. If someone says “This is a first contact book” you don’t immediately think, “Hooray, This is a nearly 80 year old sci-fi book by some William F. Jenkins!” Instead, if you say anything, you say “Hooray, this is a book about humans meeting space aliens for the first time. I wonder what will happen?”
The point is, that since “First Contact” is generic, it’s not entitled to trademark protection. But the judge decided to make the lives of Jenkins relatives particularly unpleasant, so he went on to discuss what would happen if “First Contact” was trademarkable (which he’s already said it isn’t), just for funsies.
To be protectable, the descriptive mark has to have an additional, secondary meaning, that makes consumers associate it with the author, not just the book or song. Remember, the judge has already said the title is generic and not protectable, but that just for giggles he decides to consider what would happen if it were not generic.
So he lists the requirements for determining secondary meaning:
- advertising expenditures
- consumer studies
- sales success
- unsolicited media coverage of the work
- attempts to plagiarize the mark
- the length and exclusivity of the mark’s use, and
- evidence of actual confusion.
In other words, he’s saying to the Jenkins family, “The title you’re trying to protect is generic. But if it weren’t generic, you’d still lose. And now I’m going to look at how badly you’d lose even in my hypothetical, because your day hasn’t been bad enough already.”
And so he lists the ways that, basically, no one cares about William F. Jenkins or the title of his book.
- No one promoted or advertised it
- No consumers associate the title with Jenkins
- Very few copies were sold
- No one’s mentioned it in the media
- No one’s ever bothered to plagiarize it
- And it’s never been exclusively used.
Way to make folks feel bad. 🙁
So the court concludes that “First Contact” is not entitled to trademark protection. The plaintiff’s request to dissolve Paramount’s trademark in “Star Trek: First Contact” is rejected as well, because the phrase “Star Trek: First Contact” refers both to a specific film as well as to the larger universe of Star Trek movies, shows, books, action figures, toy spaceships, and t-shirts.
 Interestingly, a search of the Copyright Office’s database suggests that Jenkins didn’t register a copyright for his story, either.