Dille Family Trust v. Nowlan Family Trust

207 F. Supp. 3d 535, 2016 U.S. Dist. LEXIS 126191, 2016 WL 4943361
CourtDistrict Court, E.D. Pennsylvania
DecidedSeptember 16, 2016
DocketCIVIL ACTION NO. 15-6231
StatusPublished
Cited by3 cases

This text of 207 F. Supp. 3d 535 (Dille Family Trust v. Nowlan Family Trust) is published on Counsel Stack Legal Research, covering District Court, E.D. Pennsylvania primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Dille Family Trust v. Nowlan Family Trust, 207 F. Supp. 3d 535, 2016 U.S. Dist. LEXIS 126191, 2016 WL 4943361 (E.D. Pa. 2016).

Opinion

OPINION

WENDY BEETLESTONE, District Judge

This case is the latest installment in a decades-long dispute over the intellectual property rights to Buck Rogers, a science-fiction character created in the 1920s. In the current iteration of the conflict, Plaintiff the Dille Family Trust has appealed a ruling of the U.S. Trademark Trial and Appeal Board (“TTAB”) -rejecting its opposition to the registration of the BUCK ROGERS mark by Defendant the Nowlan Family Trust. Plaintiff has also asserted claims for breach of contract (a settlement agreement relating to an earlier chapter of the dispute); confusion, deception, and false description under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); trademark dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); and claims for trademark infringement, unfair competition, and interference under Pennsylvania law, 54 Pa. Cons. Stat. §§ 1123-1124. Defendant has filed a motion to dismiss all claims except the TTAB appeal. That motion shall be granted in part and denied in part.

I. BACKGROUND

The Buck Rogers character made its newspaper comic strip debut in 1929, having been developed for that format by Philip Francis Nowlan, under a contract with John F. Dille’s National Newspaper Service. Throughout the 1930s, Buck Rogers continued to appear in newspapers, and later expanded to radio programs and a motion picture series.

After Philip Francis Nowlan died in 1940, his estate, administered by his wife Theresa Marie Nowlan, filed a federal lawsuit in Illinois against John F. Dille, the John F. Dille Company, and others disputing intellectual property rights associated with the Buck Rogers character. The claim was settled in 1942 when Theresa Marie Nowlan signed a “Full and Complete Release and Assignment” (the “1942 Release”) releasing all claims that “Philip Francis Nowlan or I have had, now have, or may have in the future, or which my heirs, executors, or administrators hereafter can, shall or may have,” against any of [539]*539the parties to the suit, including the rights to receipts from “newspaper strips, merchandise, radio, movies, and all other subject matter.” Second Am. Comp. (“SAC”) Ex. A at 2. In a separate paragraph, the 1942 Release also provided that:

The party of the first part hereby assigns, releases, waives and conveys all claims, rights and interests of any kind whatsoever in and to all copyrights to John F. Dille Co., and in and to all trade-marks, good will, titles including specifically “Buck Rogers” and “Buck Rogers In The 25th Century” and all characters, patents and inventions and all other subject matter relating in any way to the Buck Rogers features to John F. Dille.

SAC Ex. A at 3. In exchange for these releases, Theresa Marie Nowlan, as executrix of her husband’s estate, received a payment of $1,750 on behalf of all the defendants in the lawsuit. Plaintiff alleges that through a series of assignments, successions, and contracts, Plaintiff stands in the shoes of John F. Dille for the purposes of the rights assigned in the 1942 Release and that Defendant, the Nowlan Family Trust, is the legal successor to Theresa Marie Nowlan and Philip Francis Nowlan, and thus now stands in the shoes of Theresa Marie Nowlan for the purposes of the 1942 Release.

In January 2009, 67 years after that release was signed, the Nowlan Family Trust filed an intent-to-use application to register the trademark BUCK ROGERS (the “Defendant’s Trademark Application”). Later in 2009, Plaintiff filed two applications of its own seeking to newly register the BUCK ROGERS mark (the “Plaintiffs Trademark Applications”), even though it already held registrations in the mark dating to the 1980s. In April 2011, Plaintiffs decades-old registrations of the BUCK ROGERS mark were can-celled.1 Three months later, Plaintiff filed an opposition to Defendant’s Trademark Application with the TTAB (the “TTAB Opposition”). The asserted basis of Plaintiffs Opposition was that, notwithstanding the cancellation of its own registration of the BUCK ROGERS mark, Plaintiff has continued to license the mark for use on various products and services on an ongoing basis since 1929, and specifically from at least 2003 through the present, including DVD sets, an action figure and statue, die cast models of a Buck Rogers “Floor Flyer Spaceship,” an eight-volume republication of original comic strips, a comic book series, a music soundtrack, art posters, clothing, and a novella. In addition to this ongoing production of merchandise, Plaintiff has noted that at least 30 Buck Rogers-related objects have been displayed as part of the permanent collection at the Smithsonian Institution in Washington, D.C. After briefing and oral argument, the TTAB dismissed Plaintiffs Opposition on September 25, 2015, based primarily on a lack of evidence connecting the trademark’s pre-1942 chain of title to the current parties in this case.

In December 2015, Tony Krantz (“Krantz”), who Plaintiff alleges is an agent of the Nowlan Family Trust, met with representatives of the Sy-Fy Network (“Sy-Fy”) in Los Angeles, California to pitch a “Buck Rogers” pilot script and “series bible” (a written guide setting forth characters and descriptions) for use in a television series or movie project and associated merchandising. In the course of the meeting, Krantz allegedly asserted that Defendant was the owner of the BUCK ROGERS mark and could lawfully license [540]*540the materials to Sy-Fy. Plaintiff alleges that other similar meetings were scheduled with at least two other potential buyers for the script in 2015, although there is no assertion that those meetings actually took place.

II. LEGAL STANDARD

“To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ ” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). “In light of Twombly, it is no longer sufficient to allege mere elements of a cause of action; instead a complaint must allege facts suggestive of the proscribed conduct.” Great W. Mining & Mineral Co. v. Fox Rothschild LLP, 615 F.3d 159, 177 (3d Cir.2010) (internal quotation marks and brackets omitted). A plaintiff need not show that success on his or her claims is probable, but must assert ‘“enough facts to liaise a reasonable expectation that discovery will reveal evidence of ” each necessary element in a claim. Phillips v. Cnty. of Allegheny, 515 F.3d 224, 234 (3d Cir. 2008) (quoting Twombly, 550 U.S. at 556, 127 S.Ct. 1955). However, “ ‘[w]here a complaint pleads facts that are merely consistent with a defendant’s liability, it stops short of the line between possibility and plausibility of entitlement to relief.’ ” Bistrian v.

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207 F. Supp. 3d 535, 2016 U.S. Dist. LEXIS 126191, 2016 WL 4943361, Counsel Stack Legal Research, https://law.counselstack.com/opinion/dille-family-trust-v-nowlan-family-trust-paed-2016.