## Facts

- William F. Jenkins (writing as “Murray Leinster”) authored and published the 1945 science-fiction short story titled “First Contact,” depicting humanity’s first encounter with extraterrestrial life.
- The story was reprinted in multiple anthologies and later received a Retro-Hugo Award; plaintiffs (Jenkins’s heirs) owned rights in the story.
- Paramount Pictures owned the *Star Trek* franchise and released the film titled *Star Trek: First Contact*, along with related licensing and merchandising.
- Paramount obtained trademark registrations for *Star Trek: First Contact* and licensed that title for various goods.
- Plaintiffs alleged that Paramount’s use of “First Contact” infringed plaintiffs’ asserted trademark rights in the story title “First Contact” under Lanham Act § 43(a).

## Issues

1. Whether the title of a single expressive work can be protected under Lanham Act § 43(a) absent proof of secondary meaning.
2. Whether “First Contact,” as used in science fiction, is generic or merely descriptive for a class/subgenre of works and therefore not protectable as a mark.
3. Whether plaintiffs produced sufficient evidence of secondary meaning and a likelihood of consumer confusion to avoid summary judgment.

## Decision

- The court granted Paramount’s motion for summary judgment and entered judgment for Paramount.
- The court held plaintiffs lacked enforceable trademark rights in “First Contact” for a single short story because the title was not inherently distinctive and plaintiffs failed to prove secondary meaning.
- The court concluded “First Contact” functioned as the name of a science-fiction subgenre describing initial human–alien encounters, rendering the term generic (or at least unprotectable absent strong secondary meaning) in this context.
- The court found no sufficient showing of likely confusion between Jenkins’s story and *Star Trek: First Contact*, given the prominent *Star Trek* branding and the descriptive use of the phrase.

## Legal Principles

- Titles of single expressive works are generally not inherently distinctive as trademarks and are protectable only upon proof of secondary meaning in the relevant consuming public.
- Generic terms, including genre or category names for expressive works, are not protectable under trademark law; descriptive terms require secondary meaning to be protectable.
- A Lanham Act § 43(a) unregistered-mark claim requires proof of (i) a protectable mark and (ii) likelihood of confusion as to source, sponsorship, or affiliation.
- Summary judgment is appropriate when no genuine dispute of material fact exists and the movant is entitled to judgment as a matter of law, viewing evidence in the nonmovant’s favor.

## Conclusion

The court rejected the heirs’ attempt to claim trademark control over “First Contact,” holding that a single-work title without secondary meaning and a term commonly used to name a science-fiction genre cannot serve as an enforceable mark, and that Paramount’s *Star Trek* branding defeated any plausible likelihood of confusion.


Heirs of the Est. of Jenkins v. Paramount Pictures Corp., 90 F. Supp. 2d 706 (E.D. Va. 2000)