Don’t Mess With Star Wars

I. Introduction

Lucasfilm, Ltd. was recently awarded $20
million in damages from the British company Shepperton Design Studios
for trademark infringement, copyright infringement, and unfair
competition.  [1].  Shepperton was using Lucasfilm's TIE fighter pilot
helmets and Stormtrooper helmets and costumes from the Star Wars
movies.  [2],[3]. The strength of the Star Wars mark and all of the
characters in each movie is very strong, as evidenced by a judgment
like this.

II. Analysis

The U.S. District Court for the Central District of California awarded
Lucasfilm the $20 million in damages.  [4]  Shepperton was found to
have made and sold unlicensed copies of Stormtrooper and TIE fighter
costumes and fraudulently said they were authentic items.  [5].  On top
of the damages, a permanent injunction was granted against Shepperton 
permanently barring them from "copying, reproducing, importing,
licensing, marketing or displaying any of its unauthorized Star Wars
products in the United States."  [6]. 

As far as the trademark and unfair
competition part of this case the Lanham Act presumably played a big
part.  The Lanham Act’s purpose is to “secur[e] to  a mark’s owner the
goodwill of his business and protect[] consumers’ ability to
distinguish among competing producers.”  [7].  Section 43 of the Lanham
Act states:

"Any person who, on or in connection
with any goods or services . . ., uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which (a) is likely to
cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her
goods . . . shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by such act." 
[8].

It is clear here that Shepperton
violated this provision of the Lanham Act almost completely.  They used
Lucasfilm’s trademarks of the Stormtrooper and TIE fighter when they
replicated the helmets and costumes of the respective Star Wars
characters.  By claiming that the items were authentic, Shepperton
falsely represented an association with Lucasfilm.  By these facts, it
is easy to see that a consumer looking to buy these items would be
confused and deceived into believing there was an association between
Shepperton and Lucasfilm.  Under these facts, it would be very
difficult to show that Shepperton was acting properly under the law. 

III. Next Step

Lucasfilm's next move it so go after
Shepperton to enjoin them from making and selling their Star Wars items
in the U.K.  [9]. Howard Roffman, the president of Lucas Licensing,
said “Infringers like Shepperton need to understand that we will pursue
them anywhere in the world to shut them down and seek restitution.”
[10]. This is not the first time Lucasfilm has gone after infringers.
[11].

[1]  IPLaw360.com, $20M Award Reveals "Dark Side" of Costume Making, http://ip.law360.com/Members/ViewArticlePortion.aspx?Id=11594 (October 11, 2006).

[2] Id.

[3] TIE fighter pilots wear a flight
helmet reminiscent of the stormtrooper design, with breather tubes
affixed to provide necessary life support in the cramped quarters of
their starfighters.  StarWars.com, TIE Figher Pilots, http://www.starwars.com/databank/organization/tiefighterpilots (last visited Oct. 26, 2006).

[4] StarWars.com, Lucasfilm Wins Lawsuit Against Stormtrooper Pirate, http://www.starwars.com/collecting/news/misc/news20061011.html (last visted Oct. 26, 2006).

[5] Id.

[6] ipnewsblog.com, Another Battle Over Star Wars, http://ipnewsblog.com/index.php/2006/10/11/another-battle-over-star-wars (Oct. 11, 2006).

[7] Two Pesos v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992).

[8] 15 U.S.C. § 1125(a)(1)(A) (2000).

[9] StarWars.com, Lucasfilm Wins Lawsuit Against Stormtrooper Pirate, http://www.starwars.com/collecting/news/misc/news20061011.html (last visted Oct. 26, 2006).

[10] Id.

[11] See e.g. Lucasfilm, Ltd. v. Media Market Group, Ltd., 182 F. Supp. 2d 897 (N.D. Cal. 2002); and Lucasfilm, Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985).

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