Foley Hoag, David Kluft* – Haven’t seen the new Star Wars movie yet? The pop culture zeitgeist recommends that you binge-watch all six of the prior Star Wars movies before going to see Episode VII, The Force Awakens and, according to the Washington Post, there is some controversy about the proper binge-watching order. Should you watch them in narrative order (I through VI) or in film release date order (IV-VI and then I-III)? Apparently, the preferred order is: IV, V, I, II, III and then VI.
Well, I couldn’t bear to sit through I, II and III again in any order so, instead of binge-watching six films, I binge-researched copyright and trademark opinions involving the Star Wars franchise and picked the six I found most interesting. Here they are in chronological order:
Star Wars v. Star Team
Before the first Star Wars film came out, the Ideal Toy company turned down a chance to make officially licensed products associated with the film. Ideal felt that “science fiction films were chancy,” and that “Star Wars itself was a rather ordinary property.”
After the film smashed all box office records, Ideal “reexamined its opinion” and created a line of STAR TEAM-branded action figures, including the evil “Knight of Darkness” and the inseparable android buddies, “Zem-21 and Zeroid” (the Ideal catalogue advised that the purchase of additional Zeroids would increase the likelihood of defeating Darth V… I mean the Knight of Darkness). Kenner Products, the official licensee for STAR WARS-branded toy figurines, sought a preliminary injunction against Ideal, alleging both copyright and trademark infringement. As to the trademark claim, Ideal admitted that it was capitalizing on the popularity of science fiction created by the Star Wars phenomenon, and survey evidence demonstrated that 65% of children who were shown the toys “made an ‘association’ between them and the film.”
Nevertheless, the Court held that “a finding of general ‘association’ — that the toys ‘look like’ the movie or remind someone of the movie — does not mean that the prospective purchaser thinks that the toys are derived from the movie or ‘sponsored’ by the movie.” The Court also found that Kenner was unlikely to succeed on its copyright claims. Ideal Toy Corp. v. Kenner Products, 443 F.Supp. 291 (S.D.N.Y. 1977).
Star Wars v. Battlestar Galactica
The success of the first Star Wars film convinced Universal to quickly green-light its own sci-fi property, Battlestar Galactica. Twentieth Century Fox felt that the new show was veering too closely to the Star Wars universe, and filed suit for copyright infringement.
Universal moved for summary judgment on the ground that works were simply so dissimilar that no reasonable jury could find infringement. The Central District of California agreed and granted summary judgment, reasoning that the works were only similar on the most general level of intellectual abstraction, i.e., both were “a struggle between good and evil in space.” But the Ninth Circuit did not agree and held that there were many similarities between the works that “do in fact raise genuine issues of material fact as to whether only the Star Wars idea or the expression of that idea was copied.” Among the similarities cited by the Ninth Circuit were:
- A war between “the galaxy’s democratic and totalitarian forces,” which are depicted in alternating sequences between the two camps, and which culminate in an air attack on the totalitarian headquarters, followed by an awards ceremony;
- A friendly robot who is severely injured or destroyed by the totalitarian forces;
- A “romance between the hero’s friend (the cynical fighter pilot) and the daughter of one of the leaders of the democratic forces;”
- The destruction of “an entire planet, central to the existence of the democratic forces;”
- A scene in a cantina or casino “in which musical entertainment is offered by bizarre, non-human creatures;” and
- “Space vehicles, although futuristic, are made to look used and old, contrary to the stereo-typical sleek, new appearance of space age equipment.”
The case was remanded and then reportedly settled before further proceedings took place. By that time, Battlestar Galactica had already been canceled. Twentieth Century Fox Film Corp. v. MCA Inc., 715 F.2d 1327 (9th Cir. 1983).
Star Wars v. Star Trek
In 1980, Clarks of England, makers of TREK shoes, obtained the license to produce STAR WARS-branded sneakers for children. Around the same time, the Glen Shoe Company announced its own line of licensed STAR TREK-branded shoes for children.
This was doubly troubling to Clarks: not only was Glen Shoe competing in the sci-fi footwear space, but it was incorporating the word “trek” to do it. Clarks brought suit in the Southern District of New York and sought to enjoin the sale of STAR TREK shoes. The Court denied the motion, holding that Clark’s TREK shoes (which were made for adults) and Glen Shoe’s STAR TREK shoes (made for kids and sold in association with images of Mr. Spock and the Starship Enterprise) did not compete with each other, and therefore there was no likelihood of confusion. Clarks of England, Inc. v. Glen Shoe Co., 485 F.Supp. 375 (S.D.N.Y. 1980).
Imperial Walkers v. Garthian Striders
In 1983, artist Lee Seiler came forward and claimed that the Imperial Walkers from the 1980 film,Empire Strikes Back, were copied from his own 1976 drawings of “Garthian Striders.” Seiler claimed that his original drawings had been destroyed in a flood just before the movie came out, so he created a “reconstruction” in order to register the work with the Copyright Office and bring a copyright infringement lawsuit.
Lucasfilm protested that the 1980 film could not possibly infringe a drawing that was not created until 1981. Seiler argued in response that whether the “reconstruction” was sufficient secondary evidence of the content of his destroyed originals was a jury question. The Court sided with Lucasfilm, and excluded the reconstruction pursuant to the “best evidence” rule. That rule requires that, when an original document is lost and secondary evidence is offered in its place, the original must not have been lost or destroyed in bad faith. The Court found that in this case, the opposite was true: Seiler had purposely destroyed the original, and his flood story was “inherently unbelievable and disturbingly contradictory” (you know you’re in trouble when the judge puts quotation marks around the word “facts” when discussing your testimony). The exclusion of the evidence was affirmed by the Ninth Circuit, and the Supreme Court denied certiorari. Seiler v. Lucasfilm, Ltd., 613 F.Supp. 1253 (N.D. Cal. 1984).
Star Wars v. Star Wars
By 1985, George Lucas was sick and tired of everyone referring to President Reagan’s controversialStrategic Defense Initiative (or “SDI”) as “Star Wars.” Lucasfilm filed suit in the District of Columbia against lobbying groups on both sides of the SDI controversy, alleging that they were infringing the STAR WARS mark by their use of the term in political advertisements, and seeking an injunction against further such use. The Court refused to grant an injunction, finding that the lobbying groups had not affixed the mark to any product, and that the plaintiff and defendants were not in competition with each other.
The Court held that it “obviously cannot regulate the type of descriptive, non-trade use involved here without becoming the monitor of the spoken or written English language.” Lucasfilm, Ltd. v. High Frontier, 622 F.Supp. 931 (D.D.C. 1985).
Star Wars v. Starballz
In 2001, Lucasfilm alleged copyright and trademark infringement against the makers of Starballz, a pornographic hentai-style animation based on Star Wars, replete with anatomically correct spaceships, jack-booted “Sperm Troopers,” and a confusing cameo by Mulder and Scully.
Oh, and you don’t want to know where Princess Leia hides the “Help me Obi Wan” message. Lucasfilm sought an injunction against the release of the allegedly offending work, but the Northern District of California denied the request. The Court held that the work was a parody, that it was rarely sold in the same marketing channels as Star Wars, and that “the Star Wars films are so famous that it is extremely unlikely that consumers would believe that Starballz is associated with Star Wars or Lucasfilm.” The matter was voluntarily dismissed a few weeks later. Lucasfilm Ltd. v. Media Market Group, Ltd., 182 F.Supp.2d 897 (N.D. Cal. 2002). Expurgated versions of Starballz are available on YouTube. It’s offensive, unintelligible and only slightly more entertaining than The Phantom Menace.
*David Kluft is a partner in Foley Hoag’s Intellectual Property practice and a member of the firm’s Trademark, Copyright and Unfair Competition Group.