On Thursday, December 21, Disney’s Lucasfilm filed a trademark lawsuit in federal court against Sabacc Creative Industries Ltd., a San Francisco-based company, in order to block their mobile app. The app is described as a high stakes card game that can be played online, and is supposedly based on the famous Star Wars franchise.
The issue that the lawsuit brings is the word “Sabacc,” which is the card game referenced first in the Star Wars movie “The Empire Strikes Back.” The term “Sabacc” has appeared in various Lucasfilm forms, including as a card game. In 2015, a London, United Kingdom-based company by the name of Ren Ventures Ltd. began selling Sabacc as a mobile game, and even applied for, and obtained, a U.S. trademark for the term “Sabacc,” which was registered in 2016. As would be expected, in May 2017, Disney challenged the registration and filed to have the trademark cancelled, arguing that it was likely to create customer confusion. Ren Ventures argued against Disney, stating that Lucasfilm never bothered to trademark “Sabacc.”
The current lawsuit names both Ren Ventures and Sabacc Creative Industries as co-defendants, and the complaint claims copyright infringement, trademark infringement, unfair competition, and a petition to cancel a trademark.
Variety reports that in a motion for summary judgment filed before the Trademark Trial and Appeal Board, Ren Ventures argued that “[t]he rare, intermittent appearance of ‘Sabacc’ on the packaging for games about ‘Star Wars’… does not render ‘Sabacc’ a trademark for these games.”
The lawsuit comes as Disney is preparing to launch their next film “Solo: A Star Wars Story,” on May 25, 2018. It is currently unknown whether Disney is planning to feature Sabacc in any of its own “Star Wars” merchandise for the upcoming film. In the lawsuit, Disney claims that the rules for the Sabacc mobile game are an exact copy of the rules of the fictional game from the Star Wars universe. Disney argues in the lawsuit that “[t]here can be no question that Defendants’ mobile game is intended to, and does, copy and appropriate Plaintiffs’ Sabacc game in order to capitalize on the goodwill of the Sabacc Mark and the Star Wars franchise.”
Disney is seeking a preliminary and permanent injunction against the Ren Ventures and Sabacc, banning both companies from using the term, the delivery to Lucasfilm for destruction, “any and all infringing merchandise in their possession or under their control” that bears any Sabacc marks, triple damages under the trademark act, punitive damages under the Copyright Act, damages for disgorgement of profits, as well as attorney’s fees.
If you want to follow this lawsuit, the case information is:
Lucasfilm Ltd. LLC et. al. v. Ren Ventures Ltd. et. al., U.S. District Court, Northern District of California, No. 3:2017-cv-07249 (read the complaint here).