Case 3:17-cv-07249-RS Document 57 Filed 05/17/18 Page 1 of 27

1 Cynthia S. Arato (State Bar No. 156856)

Fabien M. Thayamballi (State Bar No. 284752)
2 SHAPIRO ARATO LLP
500 Fifth Avenue, 40th Floor
3 New York, New York 10110
Tel.: (212) 257-4880
4 Fax.: (212) 202-6417
carato@shapiroarato.com
5
Counsel for Plaintiffs Lucasfilm Ltd. LLC
6 and Lucasfilm Entertainment Company Ltd. LLC
7
UNITED STATES DISTRICT COURT
8
NORTHERN DISTRICT OF CALIFORNIA
9
SAN FRANCISCO DIVISION
10
Lucasfilm Ltd. LLC and Lucasfilm
11 Entertainment Company Ltd. LLC, Case No. 3:17-cv-07249-RS
12 Plaintiffs/Counter-Defendants,
v. MOTION TO STRIKE DEFENDANTS’
13 STATE LAW COUNTERCLAIMS
Ren Ventures Ltd. and Sabacc Creative PURSUANT TO THE CALIFORNIA
14 Industries Ltd., ANTI-SLAPP STATUTE
15 Defendants/Counter-Plaintiffs. Hearing: June 21, 2018 at 1:30 p.m.
16
17
18
19
20
21
22
23
24
25
26
27
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1 TABLE OF CONTENTS

2 Page

3 TABLE OF AUTHORITIES .......................................................................................................... ii

4 PRELIMINARY STATEMENT/STATEMENT OF ISSUES ....................................................... 1

5 BACKGROUND ............................................................................................................................ 4

6 I. The Star Wars Franchise And Lucasfilm’s Sabacc ......................................................... 4

7 II. Solo: A Star Wars Story And Defendants’ Promotions For The Motion Picture............. 6

8 III. Defendants’ Mobile App Rip-Off .................................................................................... 7

9 IV. The Counterclaims ........................................................................................................... 9

10 ARGUMENT ................................................................................................................................ 11

11 I. Defendants’ State Law Claims Should Be Stricken Under California’s Anti-SLAPP

Statute............................................................................................................................. 11
12
A. Defendants’ Claims Arise From Acts In Furtherance Of The Right To Free
13 Speech Concerning A Public Issue ....................................................................... 12

14 1. The challenged activities are acts “in furtherance” of Solo: A Star Wars
Story, which is protected free speech in connection with an issue of
15 public interest ............................................................................................ 14

16 2. The challenged activities are acts “in furtherance” of the No Kid Hungry
campaign, which is protected free speech in connection with an issue
17 of public interest........................................................................................ 15

18 3. The challenged activities are protected written or oral statements or

writings made in a public forum ............................................................... 15
19
4. Advertisements and promotions for protected speech are protected
20 speech and not commercial speech ........................................................... 16

21 B. Defendants Cannot Demonstrate A Probability Of Prevailing On Their State

Law Claims ........................................................................................................... 17
22
1. Defendants cannot demonstrate a probability of prevailing on their
23 forward confusion theory .......................................................................... 18

24 2. Defendants cannot demonstrate a probability of prevailing on their

reverse confusion theory ........................................................................... 20
25
CONCLUSION ............................................................................................................................. 23
26
27
28

i
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1 TABLE OF AUTHORITIES

2 Page(s)
3 Cases
4 Abercrombie & Fitch Co. v. Moose Creek, Inc.,
486 F.3d 629 (9th Cir. 2007) .................................................................................................... 18
5
Anthony v. Buena Vista Home Entm’t, Inc.,
6 No. 2:15-cv-09593-SVW-JPR, 2016 WL 6836950 (C.D. Cal. Sept. 28, 2016) .... 14, 15, 16, 17
7 Caterpillar Inc. v. Walt Disney Co.,
287 F. Supp. 2d 913 (C.D. Ill. 2003) ........................................................................................ 20
8
Choose Energy, Inc. v. Am. Petroleum Inst.,
9 87 F. Supp. 3d 1218 (N.D. Cal. 2015)...................................................................................... 15
10 Cleary v. News Corp.,
30 F.3d 1255 (9th Cir. 1994) .................................................................................................... 17
11
Club Members for an Honest Election v. Sierra Club,
12 45 Cal. 4th 309 (2008) .............................................................................................................. 11
13 Davis v. Elec. Arts,
775 F.3d 1172 (9th Cir. 2015) .................................................................................................. 12
14
Doe v. Gangland Prods., Inc.,
15 730 F.3d 946 (9th Cir. 2013) .................................................................................. 11, 12, 15, 17
16 Eastland Music Grp., LLC v. Lionsgate Entm’t, Inc.,
707 F.3d 869 (7th Cir. 2013) .................................................................................................... 21
17
Forsyth v. Motion Picture Ass’n of Am., Inc.,
18 No. 16-cv-00935-RS, 2016 WL 6650059 (N.D. Cal. Nov. 10, 2016) .............................. passim
19 Fortres Grand Corp. v. Warner Bros. Entm’t Inc.,
947 F. Supp. 2d 922 (N.D. Ind. 2013) ...................................................................................... 19
20
Gen. Motors Corp. v. Cadillac Marine & Boat Co.,
21 226 F. Supp. 716 (W.D. Mich. 1964) ....................................................................................... 21
22 Greater Los Angeles Agency on Deafness, Inc. v. Cable News Network, Inc.,
742 F.3d 414 (9th Cir. 2014) .................................................................................................... 11
23
Guglielmi v. Spelling-Goldberg Prods.,
24 25 Cal. 3d 860 (1979) ............................................................................................................... 14
25 Hart v. Cal. Med. Facility Mail Room,
No. S 05-1543 DFL DAD P, 2005 WL 1984490 (E.D. Cal. Aug. 15, 2005) ............................ 2
26
Hilton v. Hallmark Cards,
27 599 F.3d 894 (9th Cir. 2010) .................................................................................................... 12
28 Kronemyer v. Internet Movie Data Base, Inc.,
150 Cal. App. 4th 941 (2007) ................................................................................................... 14

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1
Lexmark Int’l, Inc. v. Static Control Components, Inc.,
2 134 S. Ct. 1377 (2014) ............................................................................................................. 22

3 Martinez v. Metabolife Int’l, Inc.,

113 Cal. App. 4th 181 (2003) ................................................................................................... 13
4
Metabolife Int’l, Inc. v. Wornick,
5 72 F. Supp. 2d 1160 (S.D. Cal. 1999) ...................................................................................... 15

6 Mindys Cosmetics, Inc. v. Dakar,

611 F.3d 590 (9th Cir. 2010) .................................................................................................... 12
7
Navellier v. Sletten,
8 29 Cal. 4th 82 (2002) ................................................................................................................ 13

9 New.Net, Inc. v. Lavasoft,

356 F. Supp. 2d 1090 (C.D. Cal. 2004) .............................................................................. 11, 20
10
Nygard, Inc. v. Uusi-Kerttula,
11 159 Cal. App. 4th 1027 (2008) ................................................................................................. 13

12 Sebastian Brown Prods. LLC v. Muzooka Inc.,

No. 15-CV-01720-LHK, 2016 WL 5910817 (N.D. Cal. Oct. 11, 2016) ................................. 17
13
SLY Magazine, LLC v. Weider Publications L.L.C.,
14 529 F. Supp. 2d 425 (S.D.N.Y. 2007) ................................................................................ 21, 22

15 Tamkin v. CBS Broad., Inc.,

193 Cal. App. 4th 133 (2011) ................................................................................................... 13
16
Thomas v. Fry’s Elecs., Inc.,
17 400 F.3d 1206 (9th Cir. 2005) .................................................................................................. 11

18 Traditional Cat Ass’n, Inc. v. Gilbreath,

118 Cal. App. 4th 392 (2004) ................................................................................................... 12
19
20 Statutes
21 15 U.S.C. § 1114 ........................................................................................................................... 22
22 15 U.S.C. § 1125 ........................................................................................................................... 22
23 Cal. Civ. Proc. Code § 425.16................................................................................................ passim
24 Cal. Code Civ. Proc. § 425.17....................................................................................................... 16
25
26 Secondary Sources

27 4 McCarthy on Trademarks and Unfair Competition § 23:10 ...................................................... 22

28  

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1 PLEASE TAKE NOTICE that Plaintiffs/Counter-Defendants Lucasfilm Ltd. LLC and

2 Lucasfilm Entertainment Company Ltd. LLC (together “Lucasfilm”) will move the Honorable
3 Richard Seeborg, United States District Judge for the United States District Court, Northern
4
District of California, on June 21, 2018, at the San Francisco Courthouse, Courtroom 3, 17th
5
Floor, 450 Golden Gate Avenue, San Francisco, California 94102, pursuant to California’s anti-
6
SLAPP statute, Cal. Civ. Proc. Code § 425.16 et seq., to strike the state law counterclaims
7
8 asserted by Defendants/Counter-Plaintiffs Ren Ventures Ltd. (“Ren Ventures”) and Sabacc

9 Creative Industries Ltd. (“Sabacc Creative”) (together “Defendants”).1 Defendants’ state law

10 claims are Counts Four, Five, and Six for common law trademark infringement, common law
11 unfair competition, and unfair competition under Section 17200 of the California Business and
12
Professions Code. The grounds for the Motion are that (1) the counterclaims target activity
13
protected under the anti-SLAPP statute—specifically, an advertisement, a promotional tweet, and
14
statements made during an interview related to the much anticipated motion picture Solo: A Star
15
16 Wars Story, all of which are in furtherance of and in connection with protected free speech; and

17 (2) Defendants cannot meet their burden of establishing a probability of success on the merits as

18 to any of these claims.

19
Lucasfilm seeks an order striking Defendants’ state law causes of action under
20
California’s anti-SLAPP statute, Cal. Civ. Proc. Code § 425.16 et seq.
21
PRELIMINARY STATEMENT/STATEMENT OF ISSUES
22
Defendants apparently believe that the best defense is any offense, including a meritless
23
24 one fueled by gall. In December 2017, Lucasfilm commenced this action against Ren Ventures

25 and Sabacc Creative. Lucasfilm sued Defendants for trademark infringement, unfair competition,
26 and copyright infringement over Defendants’ unauthorized exploitation and marketing of a
27
28 1
The counterclaims appear at pages 13 through 43 of Defendants’ Answer and Counterclaims,
Dkt. 56 (“Counterclaims”).
1
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1 mobile application that offers a digital version of the game Sabacc. Sabacc is the legendary card

2 game through which Star Wars character Han Solo won his iconic spaceship, the Millennium
3 Falcon. It is an element of the Star Wars franchise that helps frame the Star Wars story, and, like
4
other aspects of Star Wars lore, it is the creation of Lucasfilm.
5
Defendants designed their app, and market it as Sabacc, to unfairly exploit Sabacc’s
6
association with Star Wars. Defendants’ app mimics Lucasfilm’s Sabacc game; Defendants
7
8 released their app because “interest in the ways of the Force has never been stronger”; Defendants

9 center their marketing campaign around Sabacc’s connection to Star Wars; and Defendants

10 expressly misrepresent their product to unsuspecting consumers as coming from Lucasfilm.

11 Incredibly, Defendants now bring these counterclaims against Lucasfilm, attacking
12
Lucasfilm’s use of Sabacc in its own movie, Solo: A Star Wars Story—part of the franchise that
13
birthed Sabacc—and the marketing of that movie.2 Solo is the much-anticipated film that tells the
14
story of the young Han Solo. The counterclaims nevertheless contend that certain of the
15
16 promotions for this movie are likely to cause confusion—either “forward confusion” over

17 Defendants’ connection to Solo: A Star Wars Story or “reverse confusion” regarding Lucasfilm’s

18 connection to Defendants’ app. According to Defendants’ logic, this is because the promotions
19
depict or reference the legendary game of Sabacc that Lucasfilm created and which the motion
20
picture depicts.
21
22
23
2
24 On April 23, 2018, shortly before filing their counterclaims against Lucasfilm in this action,
Defendants commenced a separate, duplicative lawsuit in this Court against Lucasfilm, Denny’s,
25 and two other parties. See Ren Ventures Ltd. v. Lucasfilm Ltd. LLC, 3:18-cv-02417, Dkt. 1. The
claims Defendants assert in that case are virtually identical to the counterclaims Defendants bring
26 against Lucasfilm in this case. Defendants’ duplicative filings are vexatious and wholly
unjustified. Hart v. Cal. Med. Facility Mail Room, No. S 05-1543 DFL DAD P, 2005 WL
27 1984490, at * 2 (E.D. Cal. Aug. 15, 2005) (“[A] litigant who abuses the judicial process by filing
28 duplicative actions or duplicative claims may be declared vexatious, and appropriate limits may
be imposed”). Although Defendants marked their affirmative case as related to the instant action,
they have yet to file the requisite Administrative Motion alerting this Court to that filing.

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1 Based upon this brazen, through-the-looking-glass contention, Defendants bring a

2 collection of federal and state law claims against Lucasfilm for trademark infringement and unfair
3 competition. This Court should strike Defendants’ state law claims under California’s anti-
4
SLAPP statute.
5
First, Defendants’ state law claims target acts in furtherance of and in connection with
6
protected free speech—the much-anticipated next Star Wars movie. Second, Defendants cannot
7
8 demonstrate a probability of success on the merits. To prevail on their state law claims,

9 Defendants must demonstrate that Lucasfilm’s use of Sabacc in the promotions for Solo: A Star

10 Wars Story are likely to cause consumer confusion as to the origin, source, or sponsorship of
11 Sabacc. Defendants have zero probability of demonstrating this confusion.
12
Defendants cannot prove their “forward confusion” theory—that consumers who see
13
promotions for Solo: A Star Wars that feature Sabacc are likely to be confused that these
14
promotions come from and/or are sponsored by Defendants. Indeed, Defendants admit that
15
16 Sabacc has long been associated with the Star Wars franchise: that is why Defendants coopted

17 Sabacc from Lucasfilm and released their app in the first place. In this setting, there is no

18 possibility that consumers seeing Lucasfilm promote its own Sabacc creation, in connection with
19
its own Star Wars film, will believe that Defendants are the source of these promotions.
20
Defendants also cannot succeed on their “reverse confusion” theory—that the promotions
21
for Solo: A Star Wars Story are likely to confuse consumers over whether Lucasfilm endorses,
22
sponsors, or is affiliated with Defendants’ unauthorized mobile app. To be clear, Lucasfilm
23
24 agrees with Defendants that consumers are likely to be confused about Lucasfilm’s connection to

25 Defendants’ unauthorized app. That is the basis of Lucasfilm’s affirmative case against
26 Defendants. But while Lucasfilm may assert claims against Defendants for creating this
27
likelihood of confusion, the reverse is not true. Here, it is Defendants that released their mobile
28
app precisely because Star Wars had already popularized the Sabacc game as part of the Star

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1 Wars universe. And it is Defendants that intentionally exploit that connection to trade off

2 Lucasfilm’s goodwill. Having made the trading off the Star Wars story the centerpiece of their
3 business strategy, Defendants cannot cry foul that consumers are likely to mistakenly believe that
4
Lucasfilm is associated with their product—the exact result Defendants were seeking.
5
For these reasons, all of Defendants’ state law claims must be stricken under the anti-
6
SLAPP statute.
7
8 BACKGROUND

9 I. The Star Wars Franchise And Lucasfilm’s Sabacc

10 The 1977 release of the motion picture Star Wars launched an iconic franchise that has
11 grown over the last four decades to incorporate motion pictures, television series, books, and
12
comic books. The fictional Star Wars universe includes recognizable characters, creatures,
13
extraterrestrial locations, spaceships, and games. One such element is “Sabacc.”
14
Sabacc first appeared in a draft screenplay for the 1980 motion picture Star Wars Episode
15
16 V: The Empire Strikes Back. (Declaration of Pablo Hidalgo (“Hidalgo Decl.”) Ex. A at 5).3 The

17 game was included in the 1980 novelization of The Empire Strikes Back, which recounts that

18 Lando won a mining colony in a “sabacc match.” (Id. Ex. B at 4). A trilogy of novels about
19
Lando Calrissian, published in 1983, discusses the rules of Sabacc. (Id. Ex. C at 6-23). Star
20
Wars novels also tell a story of the fateful game of Sabacc that resulted in Han Solo winning the
21
Millennium Falcon from Lando. (Id. Ex. D at 5-8).
22
In the decades since creating “Sabacc,” Lucasfilm and its licensees have used the mark on
23
24 or in connection with an extensive variety of entertainment products. As Defendants admit in

25 their public relations materials (see below), Star Wars “popularized” Sabacc. By way of limited
26 example:
27
28
3
Citations to page numbers in the exhibits refer to the ECF pagination.

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1  In the online multiplayer game Star Wars: The Old Republic (“SWTOR”), which has
been offered since 2011, players may visit cantinas and casinos in which there are
2 Sabacc tables. (Id. Ex. E).
3  In January 2015, Lucasfilm released “Idiot’s Array,” an episode of the popular Star
4 Wars Rebels television series that is set in motion by a game of Sabacc. (Dkt. 51 at 4;
Dkt. 53 Ex. C.)
5
 Sabacc has appeared in many publications, including the reference book A Guide to
6 the Star Wars Universe (Del Rey 1994); the story “One Night in the Dealer’s Den”
posted on the SWTOR developer blog on February 13, 2015; the story “Rebel Bluff”
7 in Star Wars Insider #158 (Titan Magazines, June 9, 2015); novels in the collection
8 Rise of the Empire (Del Rey 2015); and the comic book Star Wars: Chewbacca #1
(Marvel, Oct. 14, 2015). (Hidalgo Decl. Exs. F-J).
9
 Sabacc has been featured in table-top role-playing games (“RPGs”) distributed under
10 license from Lucasfilm. In a 2008 episode of Star Wars: Dawn of Defiance, players
must “take part in the famous Cloud City Sabacc Tournament (the same tournament in
11 which, years later, Han Solo will win the Millennium Falcon from Lando Calrissian)”
to advance to the next level of the game. (Id. Ex. K at 3; see generally id. Ex. K). In a
12
2013 episode of Star Wars: Edge of the Empire, players are invited to “join in a game
13 of Sabacc” and are given rules of the game to help them. (Id. Ex. L at 9; see also id.
Ex. L at 5-11).
14
Well before Defendants released their app, the press has featured Sabacc in unsolicited
15
media coverage, and Star Wars fans actively engaged with the game.
16
17  Star Wars fans document and discuss the rules of Sabacc and how to make their own
decks of Sabacc cards on fan sites and online forums. (Declaration of Cynthia S.
18 Arato (“Arato Decl.”) Ex. 1).
19  A fan site called ForceCast started a monthly podcast called “The Sabacc Table” in
2013. The podcast is dedicated to all things Star Wars gaming, including video, card
20 and role-playing games. (Id. Ex. 2).
21
 When Lucasfilm distributed a deck of Sabacc cards at the April 2015 Star Wars fan
22 convention known as Celebration Anaheim, fans expressed excitement on social
media at the prospect of being able to play the game. (Id. Ex. 3).
23
 Sabacc has invaded popular culture. For example, one news article noted that
24 “Director J.J. Abrams [wa]s keeping his sabacc cards close to his chest” regarding the
25 contents of Star Wars Episode VII: The Force Awakens (id. Ex. 4 at 4), and the
entertainment website The A.V. Club has listed “Sabacc [from] Star Wars” as one of
26 the top “fictitious pop-culture games with convoluted rules” (id. Ex. 5 at 2-3).

27  Star Wars fans have created their own version of Wikipedia called “Wookieepedia.”
The site contains detailed information on all things Star Wars and features several
28 listings for Sabacc. (Id. Ex. 6).

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1  Press articles that were published before the challenged promotions were broadcast or
displayed discuss the Star Wars origins of Sabacc. (See, e.g., id. Ex. 7 at 5 (“And then
2 there’s the interior of the Millennium Falcon itself, which we already know was
Lando’s property before Han won it in a game of Sabacc.”); see also Counterclaims
3 Ex. D).
4
II. Solo: A Star Wars Story And Defendants’ Promotions For The Motion Picture
5
In July 2015, Lucasfilm announced that it would be making a new motion picture about a
6
young Han Solo, slated for release in May 2018. (Arato Decl. Ex. 8 at 2). The film would tell the
7
8 story of how Han Solo “became the smuggler, thief and scoundrel whom Luke Skywalker and

9 Obi-Wan Kenobi first encountered in the cantina at Mos Eisley.” (Id. at 5). In July 2016,

10 Lucasfilm announced that Alden Ehrenreich would play the role of Han Solo. (Id. at 6). In
11 October 2017, Lucasfilm revealed the title of the new motion picture, Solo: A Star Wars Story.
12
(Id. at 9). In response, journalists and fans speculated that the film would feature the pivotal
13
game of Sabacc by which Han Solo wins the Millennium Falcon from Lando. (Id. at 15-38).
14
Lucasfilm began promoting Solo: A Star Wars Story on February 4, 2018 with a teaser
15
16 aired during Super Bowl LII. (Id. Ex. 7 at 3-4). Journalists and fans resumed speculating about

17 whether the movie depicted Han Solo’s pivotal Sabacc match. For example, one fan site

18 announced that “[i]n the upcoming Solo: A Star Wars story, Han Solo will win the Millennium
19 Falcon from Lando Calrissian playing a heated game of Sabaac [sic],” which it crowned an
20
“iconic game.” (Id. Ex. 9 at 2; see also Counterclaims Ex. D). Since February 4, 2018,
21
Lucasfilm has continued to promote Solo: A Star Wars Story.
22
As one example of the promotion of the movie, Lucasfilm joined forces with Denny’s,
23
24 Inc. to co-promote Solo: A Star Wars Story and to raise money for kids in need. Denny’s is one

25 of America’s largest full-service family restaurant chains. For the past seven years, as part of its
26 commitment to feeding the communities that it serves, Denny’s has supported No Kid Hungry, a
27
campaign to end childhood hunger in the United States. (Arato Decl. Ex. 10 at 2, 5). As part of
28
this co-promotion, fans will be able to purchase and collect Star Wars themed trading cards

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1 featuring characters from the movie as well as try a new movie-inspired menu. (Id. at 2, 4-5).

2 Denny’s will donate a portion of all trading card pack sales to No Kid Hungry. (Id. at 3-5).
3 The movie had its premiere at the Cannes Film Festival on Tuesday, May 15, 2018.
4
Reviews confirm that it depicts Han Solo’s legendary game of Sabacc and recognize Sabacc’s
5
place in Star Wars lore. (See, e.g, id. Ex. 11 at 2 (“[T]here are a lot of questions that, in the 41
6
years since I saw the first ‘Star Wars’ movie . . . it has never occurred to me to ask. . . . What was
7
8 the winning hand in the game of Sabacc that gave him possession of the Millennium Falcon?); id.

9 Ex. 12 at 5 (“fans will look forward to the fateful Sabacc game (or two) between Han and his new

10 friend and fellow pilot, Lando Calrissian (Donald Glover)”)).

11 III. Defendants’ Mobile App Rip-Off
12
Defendants Ren Ventures and Sabacc Creative promote and distribute a mobile game app
13
titled “Sabacc – The High Stakes Card Game.” Defendants designed their app to exploit Sabacc’s
14
association with Star Wars and trade off Lucasfilm’s goodwill. Defendants’ Sabacc app mimics
15
16 both the fictional Sabacc game from Lucasfilm’s Star Wars franchise and the corresponding

17 physical Sabacc card games previously licensed and authorized by Lucasfilm. (Arato Decl. Ex.

18 13; Hidalgo Decl. Ex. M at 4-6; id. Ex. N). The names and values of the suits (Coins, Flasks,
19
Sabres, Staves), face cards (e.g., the Evil One, the Star), and hands (e.g., Pure Sabacc, Idiot’s
20
Array) are identical; the goal is identical, i.e., to finish with as close as possible to positive or
21
negative 23 without going over; and the mobile app includes the Star Wars-created “Sabacc
22
shift,” where the cards in the player’s hand occasionally change unless they are placed in the
23
24 “interference field.” (Arato Decl. Ex. 13; Hidalgo Decl. Exs. M, N). Defendants, in fact, tout

25 that their Sabacc game was “[p]opularised by the Star Wars universe.” (Arato Decl. Ex. 14).
26 Defendants released their app in May 2016 (id. Ex. 15), not long after the release of the
27
motion picture Star Wars Episode VII: The Force Awakens and reports that Alden Ehrenreich
28
would be playing the role of Han Solo in the next Star Wars release (id. Ex. 16 at 2, 5).

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1 Defendants timed their release to trade off the additional enthusiasm for Star Wars generated by

2 those events. Defendants conceded that strategy in a press release from 2016. As Defendants
3 explained:
4
With new life being pumped into the franchise and characters from a galaxy far,
5 far away, interest in the ways of the Force has never been stronger. However,
while some fans have been dusting off their memorabilia, many more have begun
6 partaking in the most skillful game of chance in the galaxy, courtesy of Sabacc
Creative, a gaming conglomerate of the Trade Federation.
7
(Id. Ex. 17 at 2, 4 (emphasis added)).
8
9 Defendants’ page in the Apple App Store (https://itunes.apple.com/us/app/sabacc-the-

10 high-stakes-card-game/id1105884765?mt=8) includes obvious Star Wars references such as:

11 (a) “From a Cantina far, far away to your mobile device, welcome to the exclusive home of
12
Sabacc, the most exciting card game around.”; (b) “[B]ecome a Cloud City legend!”; (c) “[I]f you
13
go bust, don’t worry, we won’t take your ship!” (Arato Decl. Ex. 18 at 2; see also id. at 4;
14
Hidalgo Decl. Ex. D at 8; id. Ex. M at 2-3). Defendants’ website (www.sabacccreative.com/),
15
16 Facebook page (www.facebook.com/sabacccreative/), and Twitter page (https://twitter.com/

17 sabacc_creative) also feature or featured images and dialogue from Star Wars motion pictures and

18 television episodes and references to other well-known Star Wars events, places, and trademarks,
19 including images of Lando Calrissian and Yoda, along with quoted lines from Star Wars films;
20
images of the character Zeb losing a game of Sabacc to Lando Calrissian; an illustration of Lando
21
wagering the Millennium Falcon; famous quotations from the motion pictures (“May the Force be
22
with you,” and “Many Bothans died to bring [you] this information”); and a tutorial video that,
23
24 among other things, describes Sabacc as “the social card game popularized by the Star Wars

25 universe, and the means by which Han Solo won the Millennium Falcon from Lando.” (Arato

26 Decl. ¶ 22; id. Exs. 19-20; see also Dkt. 52 ¶¶ 4-5, 8, 10-10.2; Dkt. 53 Ex. A at 1:09:23, 1:14:18,
27 1:20:32; id. Ex. B at 0:49:32; id. Ex. C at 0:00:48).
28

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1 Defendants have actively and expressly misrepresented themselves and their product to

2 unsuspecting consumers. Under the pseudonyms “koko ren” or “kokoren” (Arato Decl. Ex. 21 at
3 4), Defendants’ principal, Ime Ekong, has targeted Star War fan sites to market and promote the
4
Defendants’ product under false pretenses. Among other things, he encourages Star Wars fans to
5
access Defendants’ Sabacc product by falsely masquerading as a fan who just happened to come
6
across the app and by asking for advice—which he does not need—on the best way to play the
7
8 game. Most significantly, he states that “they” have released a Sabacc app. Although Ekong is

9 clearly implying, falsely, that Lucasfilm is the source of the product, he provides Star Wars fans

10 with links to Defendants’ Sabacc app. For example, on June 17, 2016, Ekong posted the
11 following on the online forum for the game Star Wars Galaxy of Heroes: “For those of you
12
unaware, they recently released a Sabacc card game app on iOS and Android, along with some
13
videos on Youtube. […] [H]as anyone taken a look at optimal gameplay strategies[…]? Would
14
love to get any insights!” (Arato Decl. Ex. 22 at 2 (emphasis added)).4
15
16 Players of Defendants’ game commented on its connection to Star Wars well before

17 Lucasfilm published or aired the promotions for Solo: A Star Wars Story that Defendants

18 challenge in this action. (Id. Ex. 23).

19
IV. The Counterclaims
20
Defendants’ Counterclaims asserts federal and state law claims for alleged trademark
21
infringement and unfair competition against Lucasfilm. Defendants allege that Defendant Ren
22
Ventures obtained a federal trademark registration for “Sabacc.” (Counterclaims ¶ 2). The
23
24 registration covers computer games and entertainment services related to computer games, online

25 games, electronic games, and websites featuring games and puzzles. (Id. Ex. C). Each of
26 Defendants’ claims challenge the “us[e] [of] the term ‘Sabacc’ to refer to a playing-card game in
27
28 4
Ekong has posted similar false messages on EU Cantina Forums, Star Wars Galaxy of Heroes
Forums, Star Wars Battlefront II Forums, and the Dented Helmet. (Id. at 5, 8, 12, 14, 16).

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1 connection with a widespread, nationwide marketing and promotional campaign for the upcoming

2 film Solo: A Star Wars Story.” (Id. ¶ 4). That “playing-card game” is not just a game. It is the
3 game that Lucasfilm created, as Defendants’ marketing materials admit. It is the game that Star
4
Wars popularized, as Defendants’ marketing materials tout. And it is the game that fans speculate
5
may be depicted in the underlying movie that the challenged materials promote.
6
Although Defendants repeatedly complain about Lucasfilm’s widespread campaign, their
7
8 claims identify just three isolated matters. First, the claims attack the broadcast and website

9 posting of a Denny’s television commercial that co-promotes the movie and the related trading

10 cards that Denny’s is offering to raise funds for the No Kid Hungry campaign. Defendants do not
11 allege that the Denny’s commercial uses the term “Sabacc.” Rather, Defendants complain that
12
the commercial is titled “Hand of Sabacc” and “depicts a playing-card scene.” (Id. ¶¶ 75-79, 90,
13
114, 138, 162, 186, 210). Second, the claims attack the actor Donald Glover for stating, during
14
an interview about the film, “Yeah, we are playing a game of sabacc. A lot of it, you know?”
15
16 (Id. ¶ 67; see also id. ¶¶ 88, 112, 136, 160, 184, 208-09). Third, the claims attack Ron Howard,

17 the director of the film, for using the word Sabacc in a tweet celebrating the presales for the

18 movie. (Id. ¶¶ 70-71, 89, 113, 137, 161, 185).

19
Defendants contend that these uses cause so-called “forward” or, alternatively, “reverse”
20
confusion. With respect to “forward” confusion, Defendants contend that “consumers are likely
21
to mistakenly believe that [Defendants] []are the source of, and/or sponsor[] or endorse[], the
22
upcoming Solo Film and/or [Lucasfilm’s] Hand of Sabacc Commercial, and/or that [Defendants]
23
24 . . . []are otherwise associated with or connected to [Lucasfilm].” (E.g., id. ¶ 96).

25 With respect to “reverse” confusion, Defendants contend that “consumers are now likely
26 to mistakenly believe that [Lucasfilm is] the source of, sponsor[s], and/or endorse[s] goods and/or
27
services offered under RV’s SABACC Mark and/or SCI’s pre-existing SABACC brand video
28
playing-card game.” (Id. ¶ 5; see also, e.g., id. ¶ 94). Defendants also contend that “consumers

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1 are now likely to mistakenly believe that [Defendants] are trading off [Lucasfilm’s] uses of the

2 term ‘Sabacc’ in [Lucasfilm’s] widespread, nationwide marketing and promotional campaign to

3 market and promote SCI’s pre-existing SABACC brand video playing-card game.” (Id. ¶ 6; see
4
also, e.g., id. ¶ 95).
5
ARGUMENT
6
I. Defendants’ State Law Claims Should Be Stricken Under California’s Anti-SLAPP
7 Statute
8
The anti-SLAPP statute, Cal. Civ. Proc. Code § 425.16 et seq., applies in federal court to
9
state law claims. Thomas v. Fry’s Elecs., Inc., 400 F.3d 1206, 1206 (9th Cir. 2005). The anti-
10
SLAPP statute provides a procedural remedy “designed to allow for early dismissal of non-
11
12 meritorious cases aimed at chilling First Amendment expression through costly, time-consuming

13 litigation.” New.Net, Inc. v. Lavasoft, 356 F. Supp. 2d 1090, 1098 (C.D. Cal. 2004); see also

14 Club Members for an Honest Election v. Sierra Club, 45 Cal. 4th 309, 315-16 (2008). The statute
15 reflects the California legislature’s considered judgment that “it is in the public interest to
16
encourage continued participation in matters of public significance, and that this participation
17
should not be chilled through abuse of the judicial process.” Cal. Civ. Proc. Code
18
§ 425.16(a). For this reason, the anti-SLAPP statute is to be construed broadly. See id.
19
20 § 425.16(a); Greater Los Angeles Agency on Deafness, Inc. v. Cable News Network, Inc., 742

21 F.3d 414, 422 (9th Cir. 2014).

22 Courts apply a two-step inquiry to determine whether claims must be stricken under the
23
anti-SLAPP statute. First, a court first determines whether “the lawsuit arises from defendant’s
24
act in furtherance of its right of petition or free speech.” Doe v. Gangland Prods., Inc., 730 F.3d
25
946, 953 (9th Cir. 2013); accord Forsyth v. Motion Picture Ass’n of Am., Inc., No. 16-cv-00935-
26
27 RS, 2016 WL 6650059, * 2 (N.D. Cal. Nov. 10, 2016) (Seeborg, J.).5

28
5
Here, the references to “plaintiffs” and “defendants” in these quotations correspond to Counter-

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1 Second, once the defendant makes that threshold showing, “the burden shifts to plaintiff to

2 demonstrate a probability of prevailing on the merits of each of plaintiff’s claims.” Gangland

3 Prods., 730 F.3d at 953; accord Forsyth, 2016 WL 6650059 at * 2.
4
“[T]he plaintiff must demonstrate that the complaint is both legally sufficient and
5
supported by a sufficient prima facie showing of facts to sustain a favorable judgment if the
6
evidence submitted by the plaintiff is credited.” Hilton v. Hallmark Cards, 599 F.3d 894, 903
7
8 (9th Cir. 2010) (quotation marks omitted). “[T]hough the court does not weigh the credibility or

9 comparative probative strength of competing evidence, it should grant the motion if, as a matter

10 of law, the defendant’s evidence supporting the motion defeats the plaintiff’s attempt to establish
11 evidentiary support for the claim.” Id. (quotation marks omitted); see also Mindys Cosmetics,
12
Inc. v. Dakar, 611 F.3d 590, 599 (9th Cir. 2010) (“The applicable burden [on the plaintiff] is
13
much like that used in determining a motion for nonsuit or directed verdict, which mandates
14
dismissal when no reasonable jury could find for the plaintiff.”) (quotation marks omitted). See
15
16 also Davis v. Elec. Arts, 775 F.3d 1172, 1177 (9th Cir. 2015) (acknowledging that a defendant’s

17 defenses are properly considered on an anti-SLAPP motion); Traditional Cat Ass’n, Inc. v.

18 Gilbreath, 118 Cal. App. 4th 392, 398 (2004) (a court should grant an anti-SLAPP motion if the
19
defendant’s opposing evidence defeats a plaintiff’s case as a matter of law).
20
A. Defendants’ Claims Arise From Acts In Furtherance Of The Right To Free
21 Speech Concerning A Public Issue
22 This Court recently explained the application of first prong of the statute—determining
23
whether the claims arise from the defendants’ acts in furtherance of their right of free speech in
24
connection with a public issue (Cal. Civ. Proc. Code § 425.16(b)(1))—as follows:
25
Such acts include “any written or oral statement or writing made in a place open
26 to the public or a public forum in connection with an issue of public interest, or
. . . any other conduct in furtherance of the exercise of the constitutional right of
27 . . . free speech in connection with a public issue or an issue of public interest.”
28
Plaintiffs (Ren Ventures and Sabacc Creative) and Counter-Defendants (Lucasfilm), respectively.

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1 Id. § 425.16(e)(3)-(4). What constitutes an “issue of public interest” is construed

broadly:
2
“[A]n issue of public interest’ within the meaning of section
3 425.16, subdivision (e)(3) is any issue in which the public is
interested. In other words, the issue need not be ‘significant’ to be
4 protected by the anti-SLAPP statute—it is enough that it is one in
5 which the public takes an interest.”

6 Nygard, Inc. v. Uusi-Kerttula, 159 Cal. App. 4th 1027, 1042 (2008) (emphasis in
original). . . . Meanwhile, “[a]n act is in furtherance of the right of free speech
7 [under subdivision (e)(4)] if the act helps to advance that right or assists in the
exercise of that right.” Tamkin v. CBS Broad., Inc., 193 Cal. App. 4th 133, 143
8 (2011).
9
Forsyth, 2016 WL 6650059, at *2.
10
In assessing whether a claim “arises from” protected conduct, courts look to the
11
“gravamen or principal thrust of the claims asserted.” Martinez v. Metabolife Int’l, Inc., 113 Cal.
12
App. 4th 181, 188 (2003) (emphasis added). The focus in this prong of the inquiry is not on “the
13
14 form of the [proponent’s] cause of action,” but on the “activity that gives rise to his or her

15 asserted liability—and whether that activity constitutes protected speech or petitioning.”

16 Navellier v. Sletten, 29 Cal. 4th 82, 92 (2002).

17 Defendants’ claims target Lucasfilm’s advertising and promotion for the motion picture
18
Solo: A Star Wars Story, including the posting of the challenged commercial on social media
19
websites. Defendants’ claims arise from protected conduct for three reasons. (1) The claims
20
target acts “in furtherance of” Solo: A Star Wars Story, which is protected free speech in
21
22 connection with an issue of public interest; (2) the claims target conduct “in furtherance of” the

23 No Kid Hungry campaign, which is also protected free speech in connection with an issue of
24 public interest; and (3) the claims target the broadcast or posting of content about Solo: A Stars
25
Wars Story and No Kid Hungry on public forums.
26
27
28

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1 1. The challenged activities are acts “in furtherance” of Solo: A Star Wars
Story, which is protected free speech in connection with an issue of
2 public interest
3 Defendants are suing Lucasfilm for using the term Sabacc “in a nationwide advertising
4
campaign.” (Counterclaims ¶ 1). Defendants concede that this campaign is “for the upcoming
5
film Solo: A Star Wars Story.” (Id. ¶¶ 4, 63). Defendants thus admit the obvious: the
6
challenged “campaign” promotes the movie and encourages consumers to see it. The challenged
7
8 acts are, accordingly, “in furtherance” of protected free speech in connection with an issue of

9 public interest. Cal. Code Civ. Proc. § 425.16(e)(4).

10 First, it is well established that motion pictures are protected speech on matters of public
11 concern. See Guglielmi v. Spelling-Goldberg Prods., 25 Cal. 3d 860, 865 (1979); Joseph Burstyn,
12
Inc. v. Wilson, 343 U.S. 495, 502 (1952); Forsyth, 2016 WL 6650059, at *2 (“movies themselves
13
are a form of free speech”); Anthony v. Buena Vista Home Entm’t, Inc., No. 2:15-cv-09593-SVW-
14
JPR, 2016 WL 6836950, at *6 (C.D. Cal. Sept. 28, 2016) (“The Plaintiffs concede that movies
15
16 involve free speech.”); Kronemyer v. Internet Movie Data Base, Inc., 150 Cal. App. 4th 941, 947

17 (2007) (“[W]e conclude that the motion picture ‘My Big Fat Greek Wedding’ was a topic of

18 widespread public interest.”). Solo: A Star Wars Story is one of the year’s most anticipated
19
motion picture releases. Its release—and even the challenged promotional activities
20
themselves—are the subject of intense press attention. (Counterclaims ¶¶ 68, 78-79; Arato Decl.
21
Exs. 8, 11, 12, 24). Solo: A Star Wars Story unquestionably is “an issue of public interest.”
22
Second, advertising and promotion for this movie, itself a protected exercise of free
23
24 speech, furthers this exercise and is therefore “in furtherance of” protected free speech. Buena

25 Vista Home Entertainment establishes the point. The plaintiff in that case brought claims
26 challenging, among other things, advertisements for captioned and subtitled films. The defendant
27
moved to strike the claims under the anti-SLAPP statute, and court granted the motion. It found
28
that the closed captioning being advertised was “itself protected free speech” and that the

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1 “advertising and labelling of [captioned] movies and shows were “in furtherance of that

2 [protected] captioning” because they were “a mechanism by which protected speech is

3 disseminated to the target consumer.” 2016 WL 6836950, at *8. The same holds true here. See
4
also Gangland Prods., 730 F.3d at 953 (“By its terms, [the anti-SLAPP statute] includes not
5
merely actual exercises of free speech rights but also conduct that furthers such rights.”)
6
(emphasis added); cf. Forsyth, 2016 WL 6650059, at * 2 (“Movie ratings are also ‘in furtherance
7
8 of free speech,’ because movies themselves are a form of free speech, and the ratings help

9 advance that free speech by giving potential audiences an indication of a movie’s content or

10 suitability.”).
11 2. The challenged activities are acts “in furtherance” of the No Kid
12 Hungry campaign, which is protected free speech in connection with
an issue of public interest
13
The challenged commercial promotes the No Kid Hungry campaign, which aims to end
14
childhood hunger in the United States. (Arato Decl. Ex. 10). Childhood hunger is undoubtedly
15
16 an issue of public interest. The activities challenged by Defendants, which are in furtherance of

17 speech on that issue, therefore satisfy Cal. Code Civ. Proc. § 425.16(e)(4) for this reason as well.

18 3. The challenged activities are protected written or oral statements or

writings made in a public forum
19
20 Defendants’ claims are also subject to the anti-SLAPP statute because the challenged

21 activities—broadcasting an advertisement, posting on websites, and making statements during an

22 interview, all for Solo: A Star Wars Story—are “written or oral statement[s] or writing[s] . . .
23
made in . . . a public forum in connection with an issue of public interest.” Cal. Code Civ. Proc.
24
§ 425.16(e)(3). See Choose Energy, Inc. v. Am. Petroleum Inst., 87 F. Supp. 3d 1218, 1224 (N.D.
25
Cal. 2015) (“websites constitute ‘public forums’ for the purposes of anti-SLAPP”); Metabolife
26
27 Int’l, Inc. v. Wornick, 72 F. Supp. 2d 1160, 1165 (S.D. Cal. 1999) (“[A] widely disseminated

28 television broadcast . . . is undoubtedly a public forum.”), aff’d in part, rev’d in part on other

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1 grounds, 264 F.3d 832 (9th Cir. 2001); Jackson v. Mayweather, 10 Cal. App. 5th 1240, 1252

2 (2017) (statements made during an interview satisfy the public forum requirement).
3 4. Advertisements and promotions for protected speech are protected
4 speech and not commercial speech

5 Defendants cannot escape the anti-SLAPP statute’s reach by contending that their claims
6 target advertising and promotional activities that are “pure commercial speech.” The court in
7
Buena Vista Home Entertainment properly rejected that identical contention. The plaintiff in that
8
case contended that the anti-SLAPP statute could not apply to the challenged advertisements for
9
captioned and subtitled movies because advertisements are commercial speech. The court
10
11 disagreed, holding that if the challenged advertisements promote an underlying product that is

12 itself protected speech, the advertisements are also protected. See 2016 WL 6836950, at *8.

13 The commercial speech exemption written into the anti-SLAPP statute further supports
14 this conclusion. This exemption, Cal. Code Civ. Proc. § 425.17(c)(1), provides that the anti-
15
SLAPP statute does not extend to lawsuits against commercial sellers for misrepresentations
16
regarding their products or competitors’ products. However, that exemption does not apply to
17
actions against “any person or entity based upon the creation, dissemination, exhibition,
18
19 advertisement, or other similar promotion of any dramatic, literary, musical, political, or artistic

20 work, including, but not limited to, a motion picture or television program.” Cal. Code Civ. Proc.

21 § 425.17(d)(2) (emphasis added).

22 As this Court recognized in Forsyth, “[w]hile the legislature amended the [anti-SLAPP
23
statute] so that it generally would not apply to claims arising from commercial advertising, it
24
provided a carve-out for . . . advertisement[s] . . . [for] a motion picture.” 2016 WL 6650059, at
25
*3 (citation and quotation marks omitted). Thus, “the legislature clearly indicated that when the
26
27 underlying product involved First Amendment issues, and specifically including movies and

28

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1 television shows, the anti-SLAPP exemption for commercial speech did not apply.” Buena Vista

2 Home Entm’t, 2016 WL 6836950, at *8.

3 B. Defendants Cannot Demonstrate A Probability Of Prevailing On Their State
4 Law Claims

5 Defendants cannot meet their burden of “demonstrat[ing] a probability of prevailing on

6 the merits.” Gangland Prods., 730 F.3d at 953. To prevail on the state law claims that

7 Defendants allege, Defendants must demonstrate that (1) they own a valid mark that is entitled to
8 protection; and (2) Lucasfilm’s use of their alleged mark is likely to cause consumer confusion as
9
to origin, source, or sponsorship. See Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir.
10
1994); Sebastian Brown Prods. LLC v. Muzooka Inc., No. 15-CV-01720-LHK, 2016 WL
11
5910817, at *11 (N.D. Cal. Oct. 11, 2016). Defendants have no probability of prevailing on their
12
13 state law claims because there can be no actionable confusion stemming from Lucasfilm’s use of

14 its own Sabacc game to promote its own Star Wars film.

15 Despite Lucasfilm’s prior creation and use of Sabacc for decades before Defendants
16 created their mobile app, Defendants’ claims presume that Defendants are the “senior” user, and
17
that Lucasfilm is the “junior” user, of the Sabacc Mark because Defendants debuted their mobile
18
app and obtained a federal registration before Lucasfilm began its recent co-promotion with
19
Denny’s. Defendants’ contention is logically inconsistent given their reliance on Lucasfilm and
20
21 Star Wars to promote their mobile app. However, Lucasfilm will indulge Defendants’ “senior

22 user” fiction for purposes of this motion, since Defendants nevertheless have no probability of
23 demonstrating that Lucasfilm’s use of Sabacc to promote Solo: A Star Wars Story gives rise to
24
any actionable confusion.6
25
26
27 6
Lucasfilm contends and will establish that Defendants have no valid trademark rights in the
28 word Sabacc because Lucasfilm has “common law trademark rights in ‘Sabacc’ that predate use
of the mark by [Ren Ventures and Sabacc Creative].” Order Denying Mot. to Dismiss, Dkt. 48 at
5. This Court, however, need not address this infirmity on this motion to strike. Rather, this

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1 Defendants’ claims plead both forward confusion and reverse confusion. “Forward

2 confusion” occurs when consumers believe that goods bearing the junior mark came from, or
3 were sponsored by, the senior user of the mark. See Abercrombie & Fitch Co. v. Moose Creek,
4
Inc., 486 F.3d 629, 634 n.2 (9th Cir. 2007). “Reverse confusion” occurs when consumers dealing
5
with the senior user believe its goods came from or are sponsored by the junior user, or that the
6
senior user is an unauthorized infringer. See id.
7
8 1. Defendants cannot demonstrate a probability of prevailing on their
forward confusion theory
9
Defendants’ “forward confusion” theory posits that consumers who see advertisements for
10
Solo: A Star Wars Story that mention Sabacc will be confused into thinking that these promotions
11
12 come from or are sponsored by Defendants. (See, e.g., Counterclaims ¶ 96). Defendants have no

13 probability of prevailing on this theory. First, as noted above, Defendants are the ones who took

14 Sabacc from Lucasfilm and not the other way around. Indeed, Sabacc exists only because of Star
15 Wars. Second, the promotion of Solo is expressly related to the larger Star Wars universe. There
16
is no allegation—nor could there be—that Lucasfilm’s association with the movie is not apparent
17
to all viewers of the promotion.
18
Defendants’ own documents demonstrate that Lucasfilm created Sabacc and made it part
19
20 of Star Wars lore no later than 1980, almost four decades before Defendants began exploiting

21 their mobile app in 2016, and that the Star Wars franchise popularized the game and its
22 connection to Han Solo. Indeed, a tutorial video that Defendants sponsored for their app and
23
previously prominently featured on their website describes Sabacc as “the social card game
24
popularized by the Star Wars universe, and the means by which Han Solo won the Millennium
25
Falcon from Lando.” (Arato Decl. ¶ 22).
26
27
28
Court can readily conclude that Defendants have no probability of prevailing on their claims
based solely on Defendants’ inability to demonstrate any actionable confusion.

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1 Defendants’ documents also demonstrate that they coopted Sabacc from Lucasfilm to ride

2 the coattails of the release of new Star Wars movies and to trade off Sabacc’s pre-existing
3 connection to Star Wars:
4
 Defendants’ August 2016 press release admits that Sabacc was “[p]opularised by
5 the Star Wars universe.” (Id. Ex. 14).

6  Defendants’ June 2016 press release, which copies from Star Wars’ famous
opening crawl, admits that Defendants released their mobile app because “new life
7 [is] being pumped into the franchise and characters from a galaxy far, far, away”
8 and “interest in the ways of the Force has never been stronger.” (Id. Ex. 17).

9  Defendants addressed their June 2016 press release to “Fans from Mos Eisley to
Cloud City,” respectively the famous lawless port and floating city within the Star
10 Wars universe. (Id.; see also, e.g., Hidalgo Decl. Ex. M at 2-3).
11  Defendants’ social media posts regularly refer to Star Wars or link to popular Star
Wars hashtags. (Arato Decl. Exs. 19-20).
12
13 Star Wars’ connection to Sabacc is the backbone of Defendants’ entire business strategy.

14 It is impossible in these circumstances for Defendants to demonstrate that consumers are likely to

15 be confused by Lucasfilm’s own use of its own Sabacc game to promote its own Star Wars films,
16 much less a movie centered around Han Solo that depicts the legendary hand of Sabacc that
17
Defendants admit Solo played. For this reason alone, it is preposterous for Defendants to contend
18
that consumers are likely to be confused into mistakenly believing that Lucasfilm got Sabacc
19
from Defendants or are using it under their authority.
20
21 Lucasfilm, moreover, is the well-known source of the Star Wars franchise. No

22 consumer—reasonable or unreasonable—would believe that promotions related to Solo: A Star

23 Wars Story originate from or are affiliated with Defendants. In Fortres Grand Corp. v. Warner
24
Bros. Entertainment Inc., 947 F. Supp. 2d 922 (N.D. Ind. 2013), aff’d, 763 F.3d 696 (7th Cir.
25
2014), for example, the plaintiff was a software manufacturer that owned a computer program
26
called “Clean Slate.” Defendant Warner Bros. released a Batman movie, and because the film
27
28 referred to a fictional computer program bearing the same name, the plaintiff sued for trademark

infringement.

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1 The court dismissed the action, holding that no consumer would be confused by Warner

2 Bros.’ references to “clean slate” software in its motion picture. As the court explained, “Plaintiff
3 is not in the motion picture business, and it would be absurd to think that customers buy tickets
4
to The Dark Knight Rises or purchase the DVD/Blu-ray because of a perceived association of the
5
Film with [Plaintiff’s] products.” 947 F. Supp. 2d at 930. Indeed, the court found that “any such
6
allegation would be too implausible to support costly litigation.” Id. (quotation marks omitted).
7
8 The same is true here, which is precisely why the Court should grant this anti-SLAPP

9 motion to strike.7 See, e.g., New.Net, 356 F. Supp. 2d at 1098 (the anti-SLAPP statute provides a

10 procedural remedy “designed to allow for early dismissal of non-meritorious cases aimed at
11 chilling First Amendment expression through costly, time-consuming litigation”). Defendants’
12
allegations are all the more impossible to prove because the challenged promotional materials
13
bear the well-known Star Wars mark, such that no reasonable juror could conclude that
14
consumers will be confused about the source of Sabacc in promoting its own Star Wars film.
15
16 2. Defendants cannot demonstrate a probability of prevailing on their
reverse confusion theory
17
Defendants contend, in the alternative, that consumers are likely to be confused into
18
believing that Lucasfilm endorsed, sponsored, or is affiliated with Defendants’ mobile app. (See,
19
20 e.g., Counterclaims ¶¶ 5, 94). That is most certainly the case, but not because Lucasfilm is

21 promoting its movie Solo: A Star Wars Story. It is because Defendants chose to build their
22 business around Star Wars after Star Wars popularized Sabacc. The confusion on which
23
Defendants rely exists because Defendants have tried to coopt the Sabacc game from Lucasfilm.
24
25
26 7
The court in Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003), reached
the same conclusion. Caterpillar sued Disney for depicting Caterpillar bulldozers in the film
27 George of the Jungle 2. The court denied Caterpillar’s request for a preliminary injunction,
28 finding, in part, that “it appears unlikely to the Court from the limited record before it that any
consumer would be more likely to buy or watch George 2 because of any mistaken belief that
Caterpillar sponsored this movie.” Id. at 920.

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1 The law, accordingly, does not allow Defendants to use that confusion to support infringement

2 claims against Lucasfilm.

3 First, a party who selects a mark that consumers already associate with another party has
4
no basis to complain about the resulting confusion. In SLY Magazine, LLC v. Weider
5
Publications L.L.C., 529 F. Supp. 2d 425 (S.D.N.Y. 2007), aff’d, 346 F. App’x 721 (2d Cir.
6
2009), for example, the plaintiff exploited an online women’s shoe magazine named “Sly.” The
7
8 defendants later launched a magazine, also titled “Sly,” that was affiliated with the actor Sylvester

9 Stallone. The plaintiff sued for trademark infringement, claiming it was the senior user of “Sly”

10 because it released its magazine first, and that the defendants’ subsequent, “junior” use of the
11 name for defendants’ magazine created reverse confusion. The court refused to grant plaintiff
12
any relief, primarily because plaintiff had elected to use “Sly” as the name for its magazine even
13
though “Sly” had long been Stallone’s nickname. As the court explained:
14
The strength of the association between “SLY” and Mr. Stallone stems, not from
15 defendants’ penetration into the magazine market, but from the very famous Mr.
16 Stallone and his long use of this nickname. Plaintiff, to its own detriment, chose
the well-known nickname of a world-famous actor as the mark for its publication.
17 Plaintiff knew or should have known that Mr. Stallone is known as “Sly” and that
the marketplace might associate the word “Sly” with Mr. Stallone, instead of a
18 women’s magazine.
19
Id. at 438. Cf. Eastland Music Grp., LLC v. Lionsgate Entm’t, Inc., 707 F.3d 869, 871 (7th Cir.
20
2013) (Plaintiff was “in no position to complain” that the defendant’s film used a similar name
21
because, in choosing that name, the plaintiff had “entered a crowded field, and its rights [we]re
22
correspondingly weak and narrow.”); Gen. Motors Corp. v. Cadillac Marine & Boat Co., 226 F.
23
24 Supp. 716, 724 (W.D. Mich. 1964) (Preexisting associations with the name Cadillac were “known

25 to the plaintiff corporation when it appropriated the name. That others would use ‘Cadillac’ as a
26 business name and a product name was a foreseeable consequence.”).
27
Defendants’ conduct is immeasurably worse than the conduct of the plaintiff in SLY and
28
conclusively forecloses Defendants’ claim. There was no allegation in the SLY case that the

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 Case 3:17-cv-07249-RS Document 57 Filed 05/17/18 Page 26 of 27

1 plaintiff named its magazine “Sly” to connect to Sylvester Stallone or to trade off Stallone’s good

2 will. At most, the court found that the plaintiff either knew or should have known that the market
3 might associate that name with Stallone. Still, since the plaintiff nevertheless named its own
4
magazine “Sly,” it had no right to thereafter impair or restrict Stallone’s right to use that name,
5
even for a subsequently published, competing magazine. Here Defendants did not simply name
6
their game Sabacc despite knowing of Sabacc’s association with Star Wars; Defendants have
7
8 sought to exploit and profit from that connection. Defendants, accordingly, did not just know that

9 consumers might associate their mobile app with Star Wars—they banked on it. Having made

10 Star Wars the centerpiece of their entire business strategy, it is preposterous for Defendants to
11 now cry foul that consumers associate their game with Lucasfilm.
12
Second, for the very same reason, Defendants’ claims also fail for a lack of causation. To
13
prevail on their reverse confusion theory, Defendants must demonstrate that Lucasfilm’s alleged
14
infringement—and not other conduct—is the cause of confusion over whether Defendants’ game
15
16 is sponsored by, connected to, or affiliated with Lucasfilm. See Murray v. Cable Nat’l Broad.

17 Co., 86 F.3d 858, 861 (9th Cir. 1996) (defining “reverse confusion” as when “consumers come to

18 believe that the infringer, rather than the plaintiff, is the source of the trademarked product”
19
because the infringer “saturates the market with promotion of his trademark”) (emphasis added);
20
SLY, 529 F. Supp. 2d at 438 (rejecting reverse confusion claim because any confusion was not the
21
result of “defendant’s [later] penetration into the . . . market”); 4 McCarthy on Trademarks and
22
Unfair Competition § 23:10 (4th ed.) (suggesting that senior user in a reverse confusion case must
23
24 prove that it is the junior user’s subsequent actions that causes the confusion). Cf. 15 U.S.C.

25 §§ 1114(1)(a) (conduct is infringing only if it is “likely to cause confusion”) (emphasis added);

26 id. § 1125(a)(1)(A) (same); Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct.
27
1377, 1390 (2014) (unfair competition requires proximate causation). It is impossible for
28
Defendants to establish the requisite causation since, by their own admission, Lucasfilm and Star

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 Case 3:17-cv-07249-RS Document 57 Filed 05/17/18 Page 27 of 27

1 Wars popularized Sabacc long before Defendants made their unauthorized digital version of the

2 game. As a matter of law, Lucasfilm’s allegedly “infringing” use of Sabacc to promote Solo: A
3 Star Wars Story cannot be the root cause of any confusion about Lucasfilm’s connection to
4
Defendants’ game; the root cause of the confusion is Lucasfilm’s preexisting connection to the
5
game, which is exactly the confusion that Defendants greedily sow.8
6
CONCLUSION
7
8 For the foregoing reasons, the Court should grant Lucasfilm’s motion to strike.

9 Dated: New York, New York

May 17, 2018
10
11 SHAPIRO ARATO LLP

12 By: /s/ Cynthia S. Arato

Cynthia S. Arato
13 (State Bar No. 156856)
Fabien M. Thayamballi
14
(State Bar No. 284752)
15 500 Fifth Avenue, 40th Floor
New York, NY 10110
16 Tel: (212) 257-4880
Fax: (212) 202-6417
17 carato@shapiroarato.com
18 Counsel for Plaintiffs Lucasfilm Ltd. LLC
19 and Lucasfilm Entertainment Company Ltd.
LLC
20
21
22
23
24
25
26 8
Defendants also contend that consumers are likely to mistakenly believe that Defendants are
trading off Lucasfilm’s use of the term “Sabacc” in Lucasfilm’s marketing campaign for Solo: A
27 Star Wars Story. (See, e.g., Counterclaims ¶¶ 6, 95). This contention fails for the same reasons
28 explained above. Defendants, moreover, are not simply trading off Lucasfilm’s use of Sabacc in
the promotion for this Star Wars film; they are trading off Lucasfilm’s longstanding and pre-
existing use of Sabacc.

MOTION TO STRIKE 23 Case No. 3:17-cv-07249-RS