 Jo-An Jenkins Evans v. Paramount Pictures Corporation

UNPUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
 JO-AN JENKINS EVANS; ELIZABETH
JENKINS DEHARDIT; WENLLIAN JENKINS
STALLINGS; MARY JENKINS DANIELS,
Heirs of the Estate of William F.
Jenkins, No. 00-1487 Plaintiffs-Appellants,
v.
PARAMOUNT PICTURES CORPORATION,
Defendant-Appellee. 
Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
T. S. Ellis, III, District Judge.
(CA-99-1766-A)
Argued: February 28, 2001
Decided: April 20, 2001
Before WILKINSON, Chief Judge, KING, Circuit Judge, and
Cynthia Holcomb HALL, Senior Circuit Judge of the
United States Court of Appeals for the Ninth Circuit,
sitting by designation.
Affirmed by unpublished per curiam opinion.
COUNSEL
ARGUED: Stanley Clinton Spooner, NIXON & VANDERHYE,
P.C., Arlington, Virginia, for Appellants. Marcia B. Paul, KAY,

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COLLYER & BOOSE, L.L.P., New York, New York, for Appellee.
ON BRIEF: Robert W. Adams, Robert A. Rowan, NIXON &
VANDERHYE, P.C., Arlington, Virginia, for Appellants. Catherine
A. McHale, KAY, COLLYER & BOOSE, L.L.P., New York, New
York; John F. Anderson, RICHARDS, MCGETTIGAN, REILLY &
WEST, Alexandria, Virginia, for Appellee.
Unpublished opinions are not binding precedent in this circuit. See
Local Rule 36(c).
OPINION
PER CURIAM:
Plaintiffs sued Paramount Pictures Corp. for trademark infringe-
ment pursuant to section 43(a) of the Lanham Act, 15 U.S.C. § 1125.
The district court dismissed their claims on summary judgment. See
Heirs of Estate of Jenkins v. Paramount Pictures Corp., 90 F.
Supp.2d 706 (E.D. Va. 2000). Finding no error, we affirm.
Plaintiffs are the heirs of William F. Jenkins, a science fiction
writer. Among Jenkins’ works is the short story "First Contact,"
which was published in 1945 in the magazine Astounding Science-
Fiction. The story is the tale of humankind’s first encounter with alien
life. Although there are many such stories, Jenkins’ tale is widely
considered to be the archetype of this plot.
Defendant Paramount Pictures owns all of the Star Trek properties.
Included in the Star Trek franchise are numerous motion pictures,
several television series, and a vast array of merchandise. In 1996
Paramount released the eighth Star Trek motion picture, entitled:
"Star Trek: First Contact." As did Jenkins’ short story, the movie
recounts Earth’s first contact with alien life. Paramount applied for
and received various trademark registrations for the phrase "Star
Trek: First Contact." It has used these marks to sell a wide variety of
goods associated with its movie.
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Plaintiffs filed suit, alleging that Paramount’s use of the phrase
"First Contact" violated their trademark rights. The suit sought injunc-
tive relief, damages, and cancellation of Paramount’s mark. As the
district court noted, however, the title of a single expressive work is
entitled to trademark protection only upon a showing that it is not
generic and that it has taken on a secondary meaning. Id. at 710 n.12,
711. The district court granted summary judgment to Paramount on
all claims because "First Contact" is generic and because, as the title
of Jenkins’ story, "First Contact" has failed to take on any secondary
meaning.
With respect to genericness, the district court noted that "a generic
term is one that refers to the genus of which the particular product is
a species." Id. at 711 (quoting Park ’n Fly, Inc. v. Dollar Park and
Fly, Inc., 469 U.S. 189, 194 (1985)). Based on this principle, the dis-
trict court concluded that "the title of a single expressive work is
generic if that title is the name of a subcategory of which the work
in question is a member." Jenkins, 90 F. Supp.2d at 711. Here, it is
undisputed that the phrase "first contact" describes the genre of stories
recounting Earth’s first encounter with extraterrestrial life. See id. at
711-12 n.18. Accordingly, the district court held that "First Contact"
must be generic because it has come to describe an entire genre of sci-
ence fiction stories of which Jenkins’ work is merely one, albeit the
seminal, example.
Moreover, the district court held that even if "First Contact" were
descriptive rather than generic, it still would not be entitled to trade-
mark protection because plaintiffs failed to adduce any evidence of
secondary meaning. "Marks that are merely descriptive are accorded
protection only if they have acquired a secondary meaning, that is, if
in the minds of the public, the primary significance of a product fea-
ture or term is to identify the source of the product rather than the
product itself." Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,
464 (4th Cir. 1996) (internal quotation marks omitted). A "title of a
single expressive work has secondary meaning when ‘the title is suffi-
ciently well known that consumers associate it with a particular
author’s work.’" Jenkins, 90 F. Supp.2d at 713 (quoting Rogers v.
Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989)).
We have held that the following seven factors are relevant to the
question of secondary meaning: (1) advertising expenditures; (2) con-
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sumer studies linking the mark to the source; (3) sales success; (4)
unsolicited media coverage of the work; (5) attempts to plagiarize the
mark; (6) the length and exclusivity of the mark’s use; and (7) evi-
dence of actual confusion. Perini Corp. v. Perini Constr., Inc., 915
F.2d 121, 125 (4th Cir. 1990); Lone Star Steakhouse & Saloon v.
Alpha of Va., 43 F.3d 922, 936 n.16 (4th Cir. 1995). Evaluating the
evidence in the light most favorable to Jenkins’ heirs, the district
court found that "none of the relevant factors operate in plaintiffs’
favor." Jenkins, 90 F. Supp.2d at 713. For example, there was no evi-
dence of any effort to advertise the mark, no evidence from contem-
poraneous consumer studies, no evidence of attempts to plagiarize the
mark, and no evidence of exclusive use. See id. at 713-14. Thus the
court held that even if "First Contact" were descriptive, summary
judgment would still be proper because of the absence of any evi-
dence of secondary meaning.
Having had the benefit of oral argument and the parties’ briefs, we
conclude that the district court correctly granted summary judgment
to Paramount. Accordingly, we affirm on the thorough opinion of the
district court.
AFFIRMED
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