The Star Wars empire has ruled countless industries for over 40 years including movies, toys, games, and clothing. The fame inevitably led to other businesses trying to replicate and capitalise on LucasFilm’s success, selling products with the names or appearances of Star Wars characters.

Of course, LucasFilm (now owned by Disney) was never going to sit back while other companies exploited its intellectual property without permission. They have taken several businesses to court over trade mark or copyright infringement, registering success in some court actions and not others. Below, we set out what lessons your business can learn about copyright and trade mark infringement from Lucas’ lawsuits. 

1. ‘General Association’ Isn’t Enough

Trade mark infringement requires more than a ‘general association’. In 1977, right after the first Star Wars movie came out, Ideal Toy Company started selling action figures under the brand name ‘Star Team’. Characters included an evil “Knight of Darkness” and robot toys called “Zem-21 and Zeroid”. Sound familiar?

At the time, Kenner Products was the official licensee for the Star Wars brand with toys and action figures. They claimed that Ideal Toy Company was infringing the copyright and trade mark that they had licenced and sought a preliminary injunction against the company.

Kenner Products claimed that they were taking advantage of the Star Wars fame and provided evidence from surveys revealing that 65% of children made an association between the Star Team action figures and the Star Wars film.

The Court held that the general association is not enough. Kenner Products would have to show that people would think that the ‘Star Team’ came directly from the movie or that Star Wars ‘sponsored’ the toys. The fact that it may remind people of the Star Wars film wasn’t a sufficient connection.

2. Copyright Doesn’t Protect Ideas, Only the Expression of Ideas

In 1983, LucasFilm challenged another alleged theft of their intellectual property. Universal produced Battlestar Galactica, which Twentieth Century Fox considered too similar to its own Star Wars, and sued for copyright infringement.

The Central District of California decided at first instance that the works weren’t so similar, except for the basic concept of good and evil in space. The Ninth Circuit then heard the matter and considered that the similarities between the two were enough to raise the question of whether it was more than the idea behind Star Wars that Universal copied.

The key takeaway is that copyright doesn’t protect an idea, but the expression of the idea and the Ninth Circuit listed a revealing number of similarities between the two. The case was put on hold but settled before further hearings. By that time Battlestar Galactica had been canceled. 

3. Trade mark Infringement Must Occur Regarding Competitive Goods or Services

In 1983, President Ronald Reagan launched a Strategic Defense Initiative for the development of laser missiles and battle stations based in space. The public and involved parties came to know the initiative as “Star Wars”. LucasFilm did not like this and claimed trade mark infringement for the use of “Star Wars” in media publications and advertisements.

The Court said that the groups who were using the name “Star Wars” were not using it relation to any particular product or service or for the purposes of business or trade. In this situation, Star Wars was being used as a descriptive, non-trade phrase that couldn’t be regulated in the same way as a trade mark.

Questions about copyright or trade mark infringement? Thought of another critical lesson from Star Wars about intellectual property? Tag us on Twitter @legalvision_au and let us know!

Dhanu Eliezer

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