Trademark Wars: Lucasfilm’s Unique History With Intellectual Property
As we arrive at yet another May the Fourth™, so comes another opportunity for Lucasfilm to pounce on potential advertising mishaps from companies overstepping their legal boundaries.
The final installment of the third Star Wars trilogy is less than two years from release, and “Solo: A Star Wars Story” is just weeks away from flying its proverbial Millenium Falcon into theatres. As we look forward, entire galaxies of neverending new trilogies, TV shows, video games, merchandise, characters, and quotable lines will continue barrelling toward us at light speed. With this, we can also expect a plethora of new trademark applications from the notoriously savvy Lucasfilm & Disney empire.
Star Wars is one of the most valuable film franchises of all time. According to Forbes, Disney was wise to snag the franchise at $4 billion; as of 2017, the series was projected to be worth roughly $10 billion.
Historically, a significant amount of franchise value is attributed to the Lucasfilm's famously loose licensing standards. Who can forget Star Wars-themed air sickness bags, porcelain kitchenware featuring Darth Vader, and a Tauntaun sleeping bag which allows one to sleep in the beast's stomach, just like Luke in one of the series’ most cringe-worthy sequences?
In 2015, experts projected that the Star Wars franchise was earning $32 billion from licensing every year, increasing by at least $1.5 billion annually.
A New Hope . . . for Lucasfilm Profit Margins
Lucasfilm filed its first Star Wars related trademark application on July 14, 1977, months after the release of A New Hope. Lucas applied to register a trademark for “THE FORCE” to be used on t-shirts. Lucasfilm didn’t even register the term “Star Wars” until almost two years later.
Just as Luke and his gang of intergalactic space rebels forged a profound legacy for taking a dent out of the Empire, the Lucasfilm empire has continuously tested the limits of trademark and copyright law. Some have even credited George and the Lucasfilm gang for “practically inventing modern licensing” due to their efforts from 1977 onward.
Since that first trademark application, Lucasfilm has added 200+ patents, 1100+ trademark applications, and 3500+ registered copyrights to its name.
A Long History of Disputes & Odd Decisions
Here is a brief account of Lucasfilm’s extensive history with trademark law, ranging from sensible to downright bizarre.
Just in time for May 4, 2018, an independent company, Ren Games, has launched a suit against Disney, Lucasfilm, and Denny’s for featuring their trademarked game of “Sabacc” in the new Han Solo film and its promotions. Sabacc is most famous for being mentioned off-hand in previous Star Wars installments; uncharacteristically, “Sabacc” was not trademarked by Lucasfilm. Lucasfilm first launched legal action last year to cancel Ren’s trademark and ban them from using the title. It's become a David vs. Goliath scenario, as Ren displays Solo-esque bravado in the face of the Lucas empire . . . something tells me that we shouldn’t tell them the odds. “Don’t tell me the odds,” by the way, doesn't appear to be registered, though Lucasfilm did apply to secure another of Han’s quips: “I’ve got a bad feeling about this.”
In the past, Lucasfilm has emerged victorious against titans like Verizon, who they sued for naming an original Android model “The Droid.” Ironically, Lucas didn’t even invent the term “droid,” which he found in an obscure 1952 sci-fi novel. Nonetheless, you'll find it amusing that Motorola, the mobile technology company that brought us the Droid range of smartphones, has to pay for a license to use the term "Droid."
Sometimes, Lucasfilm takes on battles so big that they become the “David” in the Goliath dynamic. When Ronald Reagan’s administration began using the term “Star Wars” to describe an anti-missile defense program in space, Lucasfilm didn’t sue the administration, but a marketing initiative tightly attached to it. Unsurprisingly, Lucasfilm lost.
Still, we have also learned that Lucasfilm isn’t afraid to try to squash the meagerly small. They demolished the dreams of an American humbly using crowdfunding to construct a life-size AT-AT, but also gained no traction in their action against Empire Brewing’s “The Empire Strikes Bock” craft beer.
In general, Lucasfilm seems to lose as often as they win, but they’re always up for the fight. *flings open lightsaber®
The First Dispute
Before A New Hope, Lucas and his company reached out to a range of toy companies, looking to forge a licensing partnership. Many denied his offer. Most, however, handled their mistake less ridiculously than Ideal Toy Corp.
In response to the overwhelming success of Star Wars-- remember, children were overjoyed to receive an empty box, a slip of paper, and a six-month sentence of anticipation-- Ideal launched their attempt at competition. Without a film to contextualize the characters, the Star Team featured a menacing figure who wore a black mask and cape named night of Darkness, a silver, gangly humanoid robot named Zem 21, and Zeroid, who was just R2-D2 with his arms cut in half.
Despite the lack of success, many believe this initial case intensified Lucasfilm's obsessive use of trademark and copyright law to build its empire.
The Star Ballz Saga
Another notable loss was the failed case against Star Ballz.
Lucasfilm accused the film - a bizarre pornographic rendition featuring a blend of edgy, comical, and undeniably disturbing images- of both copyright and trademark infringement.]
It was ruled, however, that the “Star Wars films are so famous that it is doubtful that consumers would believe that Star Ballz connects with Star Wars or LucasFilm.”
Partially due to the publicity from the case, Starballz has found more fame than it ever deserved.
A Lightsaber Duel
One of many casualties to be taken down in the Disney-era of the Star Wars franchise was the New York Jedi Academy. After many “cease & desist” letters, Disney finally sued. The Jedi Academy claimed that they asked for permission and were ignored, and thus were not in the wrong for continuing their operation; this, unfortunately, is not a very good defense. The correct verdict, in this case, required considerably less scrutiny from the officials at play for several reasons:
1) The ‘Academy’ had a logo which was almost identical to the Jedi Order logo
2) The term “Jedi” is a Lucasfilm trademark
3) Lightsabers are also a registered trademark of Lucasfilm
At least it wasn’t this easy for the Empire to take down the Jedi Academy in the fictional universe.
Obviously, within the rules they helped to define, it makes sense for the Lucasfilm to have registered trademarks on the series’ major characters. Stranger, though, has been the company’s propensity for securing the names of more obscure characters, such as individual Ewoks for a shampoo endeavor which never came to fruition.
Most fans will be relieved to know that seven of the eight trademarks for Jar Jar Binks have been abandoned or, at least, not renewed. Not only does this mean that there will be less Jar Jar Binks on the horizon, but it also opens an opportunity if you’ve ever had an idea for Binks-themed refried beans.
As the 21st century began, Lucasfilm had already redefined licensing and trademark law in the film industry through thorough exploration of its limits. However, if you thought the final frontier had been reached, you were wrong.
Feeling slighted by others capitalizing on the iconic sound effects of the series, Star Wars started applying for “Sound Marks.”
The sound of a lightsaber being activated is an iconic Sound Mark, defined as “a crescendo beginning without a snapping sound followed by a hiss sound.” Darth Vader’s breathing has also been trademarked, codified as “the sound of rhythmic mechanical human breathing created by breathing through a scuba tank regulator.”
Although the “Sound Mark” sounds slightly trivial, Lucasfilm successfully sued Dr. Dre over a violation involving their “THX Deep Note.” Lucasfilm owns THX, and the Deep Note is the crescendo which plays during the THX title screen, often before a film. Despite warnings from the Lucasfilm legal team, Dre decided to use the sound to start his acclaimed “Dr. Dre 2001” album, and he paid a hefty price of $1.5 M for the sample.
It’s Okay. You Can Say It.
“May the Fourth Be With You® ”
Don’t let this article cause you to be too afraid to take part in the unofficial “Star Wars Day.”
Although Lucasfilm has registered the trademark (yes, for “May the 4th Be With You, as well), they claim to have done it solely to prevent others from obtaining the rights to capitalize on the annual cultural phenomenon, and nobody has been penalized for using this phrase to join the fun.
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Hawkins IP is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, reach out and let's chat.