Star Trek: First Contact (1996): Estate of Jenkins v. Paramount

(1996) Tags: Paramount

Heirs of Estate of Jenkins v. Paramount Pictures

Plaintiffs are the heirs of William F. Jenkins, a science fiction author who published works of fiction under the pseudonym, “Murray Leinster.” Among Jenkins’ work is the novellette “First Contact,” the title of which is the subject of this litigation. The summary judgment motion at bar presents, inter alia, the question whether plaintiffs may claim trademark protection in the title of a single expressive work, when the title is also the name of a science fiction genre.

In 1945, Jenkins, using his pseudonym, published “First Contact” in the magazine Astounding Science-Fiction. “First Contact,” put simply, is a tale of mankind’s first encounter with extraterrestrial life. Although many stories, books, and movies examine alien encounters with earthlings, Jenkins’ short story is widely regarded as the prime example of this plot.

In 1996, defendant released the eighth Star Trek motion picture, “Star Trek: First Contact.” This movie tells the story of Earth’s first contact with alien life in the twenty-first century, an encounter that is Earth’s first step towards entry into the Federation of Planets, and the beginning of an era of peace and prosperity for our troubled planet.

Plaintiffs contend that their ownership of Jenkins’ story gives them trademark protection for the phrase FIRST CONTACT and that defendant’s use of the phrase violates their trademark rights. Plaintiffs seek injunctive relief, damages, and cancellation of defendant’s mark, STAR TREK: FIRST CONTACT.

Judgment: Plaintiffs’ trademark infringement, trademark dilution, and misappropriation claims must fail, as FIRST CONTACT is not entitled to trademark protection. Similarly, plaintiffs’ claim for the cancellation of defendant’s mark relies on plaintiffs’ prior use of FIRST CONTACT, a use which, for the reasons noted, lacks trademark significance. Accordingly, plaintiffs’ complaint must be dismissed, and the merits of defendant’s affirmative defenses need not be reached.