Happy Star Wars Day!
This year marks the 40th anniversary of the release of Star Wars: Episode IV – A New Hope, which first premiered in cinemas in 1977. In these four decades, George Lucas – creator of the Star Wars enterprise and founder of Lucasfilm – and Disney – who now owns Lucasfilm – have protected almost every element in the Star Wars universe.
Through a combination of trade marks, patents, copyright, and designs, Lucasfilm has formed an arsenal of intellectual property (IP) rivalling in size to the Star Wars galaxy itself. With new Star Wars movies on the horizon, Lucasfilm’s IP portfolio is only set to grow.
If George Lucas – and now, Disney – hadn’t actively protected Star Wars-related IP all these years, the brand would have never been able to survive this long, much less grow this extensively.
Here’s a thing or two about IP protection that you can learn from Star Wars:
Always Register a Trade Mark
When you have a brand as iconic as Star Wars, you are going to attract a few shady characters who want a piece of your success. The only way you’re going to be able to protect your brand is by registering your IP.
With their library of unique creations, phrases and imagery, Lucasfilm and Disney have filed over 1,000 trade mark applications with the United States Patent and Trademark Office so far. This helps them to protect a substantial percentage of their IP portfolio, and they’re not afraid to enforce their rights.
Last year, Disney sued an American man who owned schools such as the Lightsaber Academy and New York Jedi for trade mark infringement and unfair competition.
A registered trade mark gives the registered proprietor the legal right to use, license or sell the mark within the country that the mark is registered in for the goods and services for which it is registered. Unfortunately, many businesses still think that they get adequate IP protection through the registration of their domain name or by incorporating their company under a particular name.
Trade mark registration is an imperative form of protection for businesses as it gives the owner of the mark a strong legal right against competitors if a dispute arises. A business may still be able to protect its distinctive brand or sign without having an accepted or pending trade mark but this is extremely risky.
When involved in a dispute, the reputation of the business in the marketplace needs to be assessed. This will determine the extent to which the business can enforce its rights under the Australian Consumer Law or the common law Tort of passing off. These actions are often complex, costly, and passing off requires the plaintiff to precisely prove the damage suffered as a result of the infringing trader's conduct.
It is much safer to register a trade mark as it provides the protection you will need for your IP.
Remember to Renew Your Trade Mark Registration
A trade mark in Australia only has a registration life of 10 years. However, this can be extended by renewing your trade mark one year before the expiry date or within a goodwill period of six months after it lapses as long as you are still actively using the mark.
As such, the trade mark “STAR WARS” is still active today even though it was originally filed around the world in 1977. In essence, Lucasfilm can continue to use the mark “Star Wars” indefinitely, providing they continue to renew it every 10 years.
Know What You Can Trade Mark
There are several traditional forms of trade marks, which consist of the majority of trade marks registered today. These are:
- Word marks – such as “STAR WARS”.
- Graphic marks – consisting of an image.
- Composite marks – consisting of an image and a word mark.
Source: IP Australia (This trade mark has since lapsed)
However, trade marks are not restricted to these three types of marks. Parameters such as sounds, scents, colours, tastes and textures can also be registered. In fact, Lucasfilm has trade marks in the U.S. for graphic marks of many of its iconic characters, including C-3PO and R2-D2.
Lucasfilm has even protected some its iconic Star Wars sounds. This includes the sound of a lightsaber being activated, which is described as “a crescendo beginning with a snapping sound followed by a hiss sound”, and Darth Vader’s laboured breathing, described as “the sound of rhythmic mechanical human breathing created by breathing through a scuba tank regulator”.
In order to trade mark a sound, you will need to provide the examiner with an accurate description of the sound. You should be able to describe the melody, the instruments used and the elements that make up the sound as well as represent the sounds in musical notation. The more detailed the description, the more likely it will be accepted.
Similar to how Luke Skywalker was the key in defeating the empire, having a registered trade mark is the key in resolving any potential IP dispute as it reduces the chance of being involved in lengthy legal duals. Whether you wish to protect a name, logo, slogan or even a sound, trade mark protection should be your first priority.
If you have any questions about protecting your IP or trade mark infringement, don’t hesitate to get in touch with us.
May the Fourth be with you.