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Infringe Them You Should Not

On Behalf of | Dec 22, 2015 | Legal Blog

A long time ago (circa 1977) in a galaxy not so very far away (our very own Milky Way galaxy) George Lucas unleashed a branding juggernaut when he released the first Star Wars film, Star Wars Episode IV – A New Hope. Since then, we’ve learned to love most things Star Wars (of course Jar Jar and Ewoks aren’t on my personal list of favorites) and the lexicon of film characters (Han Solo, Luke Skywalker, Darth Vader, et al.) and fictional places (Naboo, Tatooine, the Death Star, etc.) and the manifestation of gizmos and gadgets (light sabers, the Millennium Falcon, R2D2) have spawned a never-ending opportunity for mimicry, infringement, and outright counterfeiting under the guise of salutation. Nowhere is this phenomenon more prevalent than in the realm of intellectual property, where blatant ripoffs and unlicensed uses of Star Wars trademarks and copyrights are more prevalent than the snow fleas on a tauntaun carcass.

The Empire v. Ainsworth – Copyrighted Stormtrooper Helmets. In 2004, Lucasfilm filed suit in the U.S. for infringement of copyrights it claimed in the design of the helmets worn by Stormtroopers in the original film trilogy. One Andrew Ainsworth of Great Britain had helped create the original design for the helmets based on concept art by Ralph McQuarrie. He then copied the helmet design and began selling the wearable replicas to anyone with a few hundred bucks and a desire to march around like a black and white space Nazi. Seeking monetary damages of $20 million and an injunction against further sales, Lucasfilm won in the U.S. court, but Mr. Ainsworth didn’t own anything in the States. Lucasfilm was forced to seek enforcement of its judgments in Mr. Ainsworth’s home country in order to shut him down.

The problem for Lucasfilm was that British copyright law, while similar to that in the U.S., is not strictly the same. Under British law, if the helmets were determined to be merely an “industrial prop,” that is, something used to further the making of the movie, then they would not be protectable as copyrighted designs. Despite being back by directors Steven Spielberg, James Cameron and Peter Jackson (who had their own vested interested in protecting movie props as copyrights), the British High Court, Court of Appeal, and Supreme Court all sided with Ainsworth. Despite his loss, George Lucas still argues that Britain should fall in line with the rest of the world and offer full copyright protection to the works of art.

The Empire v. Jedi Mind – These aren’t the trademarks you’re looking for. In 2010, Lucasfilm filed suit against Jedi Mind, a company that marketed itself as allowing people to control computers with their brain waves. Lucasfilm sought $5 million in compensatory damages for Jedi Mind’s use of the “Jedi Mind trick” when describing its products such as Master Mind and Jedi Mouse. In case you didn’t know, the “Jedi Mind trick” first appeared in the “Star Wars” films.

Initially, Jedi Mind agreed to give up its name and all references to the Jedi Mind trick, Reuters reported, but the company did not follow through. In addition to the $5 million in damages, LucasFilm wants Jedi Mind to remove all mention of the Jedi Mind trick to avoid the possibility of consumers being affected by “false endorsement, which is likely to cause confusion.” The lawsuit worked (even if the Jedi Mind trick did not) and the company eventually changed its name to Mind Technologies, Inc.

The Empire v. Empire Brewing Company – Strikes Bock Beer. In 2014, Lucasfilm trained its X-wing fighters on a beer company in Syracuse, New York, Empire Brewing Company, when it began marketing and selling a lager called Strikes Bock (a play on the title to the 2nd movie in the first trilogy, Star Wars Episode V – The Empire Strikes Back.) Lucasfilm doesn’t sell beer or other alcoholic beverages (even though it does seem to license its characters, film clips, music, tie-ins, etc. to just about anyone with a few million bucks to spend) and it was concerned that Strikes Bock may confuse consumers and thereby dilute the value of its trademark in The Empire Strikes Back trademark.

Empire Brewing had been making the lager since 2007, but filed for trademark registration with the U.S.P.T.O. in 2014 in the hopes of taking its distribution national. Lucasfilm opposed the registration, arguing the aforementioned likelihood of confusion, but the Trademark Office disagreed. Registration issued in April (USPTO TM No. 4716490).

Why It Matters. Everyone loves Star Wars. And, given the opportunity, everyone would love to make a buck or two off of one of the most successful movie franchises in history. The problem, of course, is that when Disney acquired the Star Wars brand a few years back it did so with every intention of swarming infringers like TIE fighters on an incoming X-wing. Needless to say, The Force is rarely with those who would infringe against Disney and the infringers have about as much of a chance of surviving as an Imperial officer who upsets Lord Vader.