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The Dille Family Trust v. The Nowlan Family Trust

United States District Court, E.D. Pennsylvania

August 25, 2017

THE DILLE FAMILY TRUST, Plaintiff,
v.
THE NOWLAN FAMILY TRUST, Defendant.

          MEMORANDUM

          WENDY BEETLESTONE, J.

         Remaining in this chapter of the long-running contest between Plaintiff, the Dille Family Trust, and Defendant, the Nowlan Family Trust, over the intellectual property rights to Buck Rogers are Plaintiffs: 1) challenge to the decision of the U.S. Trademark Trial and Appeal Board ("TTAB") rejecting Plaintiffs opposition pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), to the Defendant's intent-to-use application to register the BUCK ROGERS mark; 2) contract claim arising out of a purported Release and Assignment dating to 1942; and, 3) trademark dilution claim under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). Before the Court are Defendant's four motions to exclude the testimony of Plaintiff s proposed expert witnesses, Defendant's motion for summary judgment, and Plaintiffs partial motion for summary judgment.[1]

         I. BACKGROUND

         Although this dispute dates back more than three quarters of a century, the present case is quite narrow in scope. Plaintiff opposes Defendant's application to register the BUCK ROGERS mark, asserting that it has senior rights. Plaintiff also alleges that in 2015, Defendant engaged in negotiations with NBC Universal and attempted to sell a BUCK ROGERS script. Defendant asserts that these actions created a likelihood of dilution of its mark, and also breached a 1942 agreement between John F. Dille, whose newspaper syndicated the original comic strip, and the estate of Philip F. Nowlan, the author of the novelettes that inspired the comic strip, and who for some time provided narrative content for the comic strip.

         A. The Parties

         John F. Dille and Philip F. Nowlan - both long deceased - are not parties to this case, and neither are their estates. Instead, this case involves a dispute by family trusts established by their respective descendants.

         The Dille Family Trust was created on August 16, 1979 by Robert C. Dille - the son of John F. Dille - and his wife, Virginia N. Dille, who were its first trustees. JA 1034. Before 1979, the record contains what appear to be a series of federal trademark registrations, renewals, assignments and licenses between John F. Dille, Robert C. Dille, and various corporations that they controlled, as well as licensing agreements with entities that produced Buck Rogers merchandise and creative works. It is undisputed that from the late 1920's to the early 1980's, Buck Rogers appeared in comic strips, radio, film, and television - including the 1979-1981 film and television series by Universal Pictures. Plaintiff contends that by virtue of these assignments, it succeeds to the rights of John F. Dille in the BUCK ROGERS mark.

         Virginia N. Dille continued to serve as Plaintiffs trustee until her passing in 2009. After a series of interim trustees, Louise M. Geer was made successor trustee in 2011 by Nicholas Flint Dille and Lorraine Virginia Dille Williams, who are the children of Robert C. and Virginia N. Dille, and who are beneficiaries of the Dille Family Trust. For completeness's sake, it should be noted that Geer is the wife of Plaintiff s trial counsel, Daniel Herman. Geer, who is an attorney, and Herman are partners in the law firm of Geer and Herman, P.C. Geer and Herman also own and control Herman & Geer Communications, which does business as "Hermes Press." Plaintiff contends that Hermes Press was, for a period of time, licensed to use the BUCK ROGERS mark on books of reprints of the original Buck Rogers comic strips.

         For its part, the Nowlan Family Trust dates to August 1, 2004, when it was created by its trustee Brian McDevitt, a grandchild of Philip F. Nowlan and Theresa M. Nowlan. JA 3075-95. The Nowlan Family Trust is a business trust organized under Pennsylvania law and registered with the Commonwealth. JA 3075-96. Brian McDevitt's sister, Diane H. McDevitt is an agent for the Nowlan Family Trust. JA 2977. The Nowlan Family Trust Agreement identifies as permissible beneficiaries the descendants of Philip Francis Nowlan, as determined when the net assets of the trust exceed $1 million. JA 3075.

         B. TTAB Proceedings

         Plaintiff proceeds in Count One of the Second Amended Complaint pursuant to 15 U.S.C. § 1071(b), challenging the TTAB's rejection of its opposition to the Defendant's intent-to-use application to register the BUCK ROGERS mark for use on a wide range of goods and services, including films, television shows, and related merchandise. The central issue is whether Plaintiff can establish prior trademark rights in BUCK ROGERS - the TTAB concluded on the record before it that Plaintiff could not, but Plaintiff is entitled to a de novo review of that conclusion before this Court under 15 U.S.C. § 1071(b). If Plaintiff can establish such rights, and provided that Defendant cannot establish that Plaintiff abandoned the mark, 15 U.S.C. § 1127 ("Abandonment (1)"), the question would then arise as to whether Defendant's intended use of the mark would be likely to cause confusion with, or dilution of, Plaintiffs mark, either of which would be grounds to reject Defendant's trademark application. 15 U.S.C. § 1052(d) (asserting seniority is permissible basis on which to oppose a registration); 15 U.S.C. § 1063(a) (identifying "dilution by blurring . . . under section 1125(c) as a permissible grounds for opposition to a registration); 15 U.S.C. § 1125(c)(2)(B) (defining dilution by blurring).

         These questions arise out of a knotty procedural history that dates to the beginning of 2009. At that time, Plaintiff, held two federal registrations for the BUCK ROGERS mark: Registration Number 714, 184 for newspaper comic strips, and Registration Number 1, 555, 871 for board games. JA 4-7. On January 15, 2009, Defendant filed its intent-to-use trademark application. JA 5061-65. Following an examination of Defendant's trademark application, the U.S. Patent and Trademark Office ("USPTO") refused publication pursuant to 15 U.S.C. § 1062(b), concluding that Defendant was not entitled to registration due to a likelihood of confusion with Plaintiffs mark. AJA 11434 (citing Registration Number 714, 184 and Registration Number 1, 555, 871). On October 2, 2009, Defendant filed a petition to cancel Defendant's registrations (Numbers 714, 184 and 1, 555, 871), asserting fraud in their maintenance and abandonment. JA 462-69. In January of 2011, Plaintiff filed a "notice of voluntary surrender" in the proceedings to cancel Registration Numbers 714, 184 and 1, 555, 871. JA 2-3. In light of that filing, on February 1, 2011, the TTAB granted Defendant's cancellation petition, and on April 5, 2011, the USPTO cancelled Registration Numbers 714, 184 and 1, 555, 871. JA 9-10.

         Once the cancellation proceedings were resolved, Defendant's trademark application was published in the Official Gazette on June 14, 2011. JA 12. On July 12, 2011, Plaintiff filed its opposition to Defendant's trademark application. JA 12-22. Plaintiffs asserted basis was that it had used and / or licensed the BUCK ROGERS mark for use on various products and services on an ongoing basis since 1928, including "comic books, action figures, feature films, picture frames, belt buckles, key chains, resin statues, artwork, t-shirts, board games, computer software, internet television show license, DVDs, Blu-Ray video discs, and radio programs, " thereby rendering Defendant's registration of BUCK ROGERS likely to cause confusion with, or dilution of, the Plaintiffs mark. JA 20-21.

         Following several years of litigation, on September 25, 2015, the TTAB dismissed Plaintiffs opposition to Defendant's trademark application. JA 1251-65. Noting that at the time Plaintiff filed its opposition, it did not hold any valid federal registrations, the question was whether Plaintiff could show that it had established trademark rights before January 15, 2009 -the date from which Defendant may be able to claim constructive use of the mark, for the purpose of establishing priority, by virtue of its intent-to-use trademark application. JA 1255. The TTAB dismissed the Plaintiffs opposition primarily due to a lack of evidence connecting the trademark's pre-1942 chain of title to the Dille Family Trust, and a lack of evidence of prior use sufficient to establish trademark rights in the Dille Family Trust. JA 1255-65. Although the TTAB considered Plaintiffs contention that Hermes Press, as a licensee, had sold books of reprinted comic strips from approximately 2008 through 2014, the TTAB did not find sufficient evidence to credit Plaintiffs contention that the books were sold before January 15, 2009, and thus concluded that the use of the mark by Hermes Press was insufficient to establish trademark rights in Plaintiff.

         C. 2010 Negotiations with Cartoon Network

         Meanwhile, in early 2010 the Nowlan Family Trust, Flame Ventures, LLC, (whose principal is Tony Krantz), the Cartoon Network, and later, the Dille Family Trust, engaged in negotiations regarding the licensing of the rights for a Buck Rogers film and television series. JA 5066. Ultimately, these discussions yielded a draft letter agreement dated March 7, 2010, which contemplated the Dille Family Trust and the Nowlan Family Trust granting a license in whatever rights to Buck Rogers they held to Cartoon Network for a Buck Rogers film and / or television series to be produced in conjunction with Flame Ventures. JA 1316-19. The agreement was executed in part by the Nowlan Family Trust, but Brian McDevitt suggested in his affidavit that the Nowlan Family Trust rescinded its acceptance before any other parties executed the agreement. JA 1316; 5066-67. It is, however, undisputed that the Dille Family Trust was aware of the draft agreement, and as relevant here, learned during negotiations that the Nowlan Family Trust had represented to Cartoon Network that it held rights in the Buck Rogers character. See Def's Stmt. Undisputed Facts, ¶ 64; Pl.'s Resp. to Def's Stmt. Undisputed Facts, ¶64.

         D. 2015 Negotiations with NBC Universal/Syfy

         Despite the collapse of negotiations with Cartoon Network, the parties continued to seek various licensing deals to bring Buck Rogers back to the screen, which brings us to the events of 2015 that are the basis for the contract and dilution claims.

         In November of 2013, the Dille Family Trust's licensing agent, Licensing Works, approached Rafael Gomez-Cabrera, a business affairs executive at NBC Universal (which owned the Syfy channel during the time period at issue) with a proposal to license Plaintiffs rights in Buck Rogers for use in a film and / or television series. JA 1963-69. Negotiations lasted for more than a year. Although NBC Universal and the Dille Family Trust exchanged several rounds of offers and counter-offers, they were not able to reach an agreement and negotiations fell through by April of 2015. JA 1970-2031.

         While Gomez-Cabrera was negotiating with the Dille Family Trust, he learned of its ongoing dispute with the Nowlan Family Trust regarding Buck Rogers. JA 1997, 2649-50 (indicating Gomez-Cabrera was aware of the ongoing trademark litigation as early as May of 2014). In the hopes of securing an agreement with all parties who claimed rights in Buck Rogers, in February of 2015, without informing the Dille Family Trust, Gomez-Cabrera contacted counsel for the Nowlan Family Trust. JA 2649-50, 3746. Following initial discussions, in March of 2015, NBC Universal made an offer to the Nowlan Family Trust for a license to use Buck Rogers in a television series. JA 2651, 3757. In April, Diane McDevitt, in her capacity as an agent of the Nowlan Family Trust, met with Rafael Gomez-Cabrera, as well as Paul Shapiro and Eli Kirschner (creative executives with the Syfy channel) in Los Angeles. JA 2652, 3792. On June 29, 2015, Gomez-Cabrera emailed Defendant a revised offer. JA 3813.

         Discussions between NBC Universal and the Nowlan Family Trust continued into the fall of 2015. JA 3821-22. On September 21, 2015, the Nowlan Family Trust's representative, Joel Gotler, emailed Gomez-Cabrera a list of terms that the Nowlan Family Trust wished to incorporate. On October 20, 2015, NBC Universal sent the Nowlan Family Trust a third offer. JA 3826. On October 27, 2015, Tony Krantz emailed Gomez-Cabrera the TTAB decision rejecting Plaintiffs opposition to Defendant's trademark application. JA 3839. Soon after, Gomez-Cabrera and others on NBC Universal's Syfy team scheduled a meeting with the Nowlan Family Trust for November 3, 2015. Before the meeting, Flame Ventures sent NBC Universal Krantz's script for BUCK ROGERS. JA 3855. The cover page for the script reads "BUCK ROGERS, ™ Written by Tony Krantz, Adapted from ARMAGEDDON 2419 A.D. by Philip Francis Nowlan; Flame Ventures in association with Diane McDevitt and Brian McDevitt. BUCK ROGERS is a trademark of the Nowlan Family Trust." JA 3856. Gomez-Cabrera testified that Tony Krantz pitched the Buck Rogers script at the meeting. When Gomez-Cabrera asked whether Defendant "had the rights, " he was told by Defendant's attorney that it did, but that Defendant was not prepared to indemnify NBC Universal. JA 2654.

         No deal came to pass, and on November 19, 2015, Plaintiff filed the instant lawsuit.

         E. Origin and 1942 Release and Assignment

         As for the contract claim, it is necessary to briefly touch on the origins of Buck Rogers -a 25th century character - in the first half of the 20th century. In August of 1928, Philip Francis Nowlan's story Armageddon 2419 A.D. appeared in the magazine Amazing Stories and featured the character "Anthony Rogers" as its protagonist. In 1929, the sequel - The Airlords of Han, also featuring Anthony Rogers - appeared in the same magazine. Around the same time, there is evidence to suggest that Philip F. Nowlan and John F. Dille's National Newspaper Service entered a contract for the syndication of a comic strip titled "Buck Rogers" (the "Syndication Agreement"). JA 3250-52. The contract identified Philip F. Nowlan as the "creator of certain material suitable for newspaper publication . . . entitled 'Buck' Rogers." JA 3250. Nowlan was to provide the National Newspaper Service with material for syndication of "[a] story in strip form of conditions in America [s]ome five hundred years hence, " to run daily for six weeks. Id.

         Although incomplete, and at times somewhat impenetrable, the record suggests that the business relationship between John F. Dille and Philip F. Nowlan continued throughout the 1930's, with ongoing syndication of the Buck Rogers comic strip illustrated by Richard Calkins. After Philip F. Nowlan died in 1940, his widow, Theresa M. Nowlan, as executrix of his estate, brought a case in the United States District Court for the Northern District of Illinois against John. F. Dille, National Newspaper Service, John F. Dille Co., Calkins, and Buck Rogers Company. JA 3253-82. The complaint alleged that the defendants had underpaid Philip F. Nowlan under the Syndication Agreement and other contracts. As a remedy, the estate sought an accounting or specific performance. Id.

         The present breach of contract claim is based on a document dated May 14, 1942, titled "Full and Complete Release and Assignment" (the "1942 Release and Assignment"). JA 49-56. That document is signed "Theresa Marie Nowlan, " and is accompanied by a notary's affidavit - which attests to the signature of "Theresa Maria [sic] Nowlan" in Philadelphia - as well as a stipulation of dismissal of the Illinois lawsuit. JA 51-54. Following three paragraphs of recitals, in which the parties indicate their intention to settle the Illinois suit, the document provided that in exchange for $1, 750, Theresa Marie Nowlan released 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 the parties to the suit, including the rights to receipts from "newspaper strips, merchandise, radio, movies, and all other subject matter. All contracts of every kind or nature which exist or may exist and all right thereunder are hereby terminated and forever released." JA 50-51. In a separate paragraph, the document also provided that:

The party of the first part [Theresa Marie Nowlan] 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.

JA51.[2]

         Although neither party in this matter is a named party to the 1942 Release and Agreement - and indeed, could not have been because the document predates both by decades - Plaintiff asserts that it is the successor in interest to the John F. Dille Co., and that Defendant is the successor in interest to Theresa Marie Nowlan. From that premise, Plaintiff contends that the representations Defendant made during the 2015 negotiations with NBC Universal breached the 1942 Release and Agreement.

         II. RULE 702 MOTIONS

         Turning first to Defendant's motions to exclude Plaintiffs proposed expert opinion testimony. Rule 702 of the Federal Rules of Evidence "embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit." Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396, 404 (3d Cir. 2003) (discussing standard for expert opinion testimony deriving from Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). Although originally propounded in the context of scientific experts, Dauberfs "general principles" also extend to non-scientific expert opinion testimony covered by Rule 702. United States v. Mitchell, 365 F.3d 215, 234 (3d Cir. 2004) (citing Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999)).

         The development of these restrictions has led to a flexible and practical approach to expert testimony. First as to an expert's qualification, "Rule 702 requires the witness to have 'specialized knowledge' regarding the area of testimony." Waldorf v. Shuta, 142 F.3d 601, 625 (3d Cir. 1998). This requirement has been subject to a "liberal" interpretation by the Third Circuit, which has "held that a broad range of knowledge, skills, and training qualify an expert as such." In re Paoli RR. Yard PCB Litig. ("Paoli IF), 35 F.3d 717, 741 (3d Cir. 1994) (citation omitted). Nevertheless, "at a minimum, a preferred expert witness . . . must possess skill or knowledge greater than the average layman." Aloe Coal Co. v. Clark Equip. Co., 816 F.2d 110, 114 (3d Cir. 1987). Second, reliability turns on whether "the particular opinion is based on valid reasoning and reliable methodology." In re TMI Litig., 193 F.3d 613, 665 (3d Cir. 1999) (internal quotation marks and citation omitted). Accordingly, expert testimony must be based on rigorous '"methods and procedures'" rather than '"subjective belief or unsupported speculation.'" Paolill, 35 F.3d at 742 (quoting Daubert, 509 U.S. at 590). More succinctly, it must be "supported by good grounds." Karlo v. Pittsburgh Glass Works, LLC, 849 F.3d 61, 81 (3d Cir. 2017) (internal quotation marks and citation omitted). The Third Circuit has consistently cautioned that the reliability standard is '"not that high'" and is '"lower than the merits standard of correctness.'" Id. at 81 (internal quotation marks and citation omitted). Third, fit refers to the requirement that "the expert's testimony must be relevant for the purposes of the case and must assist the trier of fact." Schneider, 320 F.3d at 404.

         As will be seen, the Court will deny Defendant's motion for summary judgment on the registration claim (Count One), infra Part III.A, but will grant Defendant's motion for summary judgment on the trademark dilution (Count Three) and contract (Count Two) claims, infra Parts III.B and III.C. Because the same disposition of the summary judgment motions would obtain even if the Court were to consider the opinions of Richard A. Spreng, Ph.D, and Michael S. Ramage, and because their opinions are not relevant to the registration claim that will proceed to trial, Defendant's motions to exclude their testimony shall be dismissed as moot. Accordingly, the Court limits its discussion here to the Defendant's motions to exclude the testimony of Jeff Rovin and Michael Lazzara.

         A. Jeff Rovin

         Plaintiff offers Jeff Rovin as an expert in "the history of 'BUCK ROGERS' and the continuous use of 'BUCK ROGERS' in comic strips, books, products and memorabilia." More specifically, he would opine that: (1) the success of Buck Rogers as a cultural phenomenon owes more to John F. Dille's syndication than Philip F. Nowlan's "original inventiveness, " ECF 91 at 4-10, 17; (2) that "the Dille Family Trust trademarks of Buck Rogers, Buck Rogers in the 25th Century, and many of the characters and props that are part of his fictional universe, have been in continuous use since 1928, " id. at 4; and, (3) that "Buck Rogers has been licensed as such - that is, as 'Buck Rogers' not as 'Anthony Rogers' - in a continuous run since 1928 and with an unbroken chain of ownership currently vested in the Dille Family Trust." Id. at 10. Although Plaintiff does not indicate which claims Rovin's testimony would support, it appears from this summary that they may bear on Plaintiffs challenge to the TTAB decision rejecting its opposition pursuant to 15 U.S.C. § 1052(d) to Defendant's trademark application, and Plaintiffs dilution claims pursuant to 15 U.S.C. § 1125(c), but not Plaintiffs contract claim.

         Rovin's first opinion may be characterized as historical - that John F. Dille, the newspaper man, contributed more than Philip F. Nowlan, the content generator, to the success of Buck Rogers. There is little question that Rovin is qualified to testify as an expert in the history of Buck Rogers. Although he has no formal academic training, his professional experiences suffice to provide the requisite specialized knowledge in the field of science fiction history.[3] It also appears that his methods are sufficiently reliable, as he consulted books, ...


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