Trademarks: Avoid confusion, you must. Our guide to avoiding the Force of the law when it comes to copyright infringement

By Daniel Thomas, Partner and Head of Litigation

Paying homage to the Star Wars franchise is nothing new, but business owners and marketing managers looking to get a slice of the action from the multi-billion dollar franchise can find it’s a hotbed for trademark issues.

Here at Primas, we’ve dealt with a huge range of trademark and copyright claims, acting on both sides. So, as we celebrate May the 4^th – International Star Wars Day – it seemed an appropriate time to consider some of the legal implications that come with copyright infringements.

Copyright law is there to protect creative output and strike a balance between the protection of creative assets and the freedom of others to create new works. Copyright arises automatically, so there isn’t a registration process but in most cases, it can last up to 70 years from the death of the creator.

There’s a great deal of harmonisation of copyright across the globe with international agreements such as the Berne Convention introduced to protect literary and artistic works.

However, there isn’t actually a UK ‘registry’ of copyright materials to provide guidance and so, during an age of unlimited access to information and imagery, so – just like Darth Vader’s Death Star – the danger is ever-present.

We’ve put together the most common trademark issues which are covered by the Copyright, Designs and Patents Act and how to avoid getting caught up in them yourself.

1. Music

John Williams penned the classic theme tune to Star Wars, and there’s a whole host of other music throughout the franchise series, but you need to be very careful about using these in any marketing efforts.

Put simply, there are two separate aspects of music trademarking; the lyrics and the music itself. The words of a song will hold literary copyright while the music will have a – you guessed it – musical copyright.

Once the music works have been recorded, copyright automatically exists on the recording. Copyright in music tends to be separately owned from the lyrics and therefore has a separate duration.

More rocket man, that Star Wars, I know, but a good example of this is Elton John’s famous partnership with Bernie Taupin; Elton owned the music, but Taupin owned the words.

2. Characters and Action Figures

We all know someone whose mum and dad sold their original Star Wars figures for £1 each in a car boot sale in the 80s or 90s – and those figures that would probably be worth a small fortune now. I, for one, am devastated that such a thing happened to my X-Wing!

However, they are also one of the most copied elements of the franchise too. It’s no secret that action figures from movie franchises like Star Wars are manufactured and sold across the globe without the proper legal copyright.

This type of trademark infringement is protected by an ‘irrespective of artistic quality’ clause, which even includes graphics, photographs, sculptures and collages.

The standard of effort required in this category is low, however this isn’t to say that a straight line or a circle wouldn’t be protected. Take Nike’s ‘swoosh’ logo for example.

It’s probably not something that affects most companies day to day, but something to be aware of, as most of the Star Wars characters are copyrighted today, which is recognisable when you see their names on official franchise figure boxes.

3. Clothing and accessories

I’m not sure many business owners will be dressing up as Darth Vader or Obi Wan Kenobi, or selling Star Wars style clothing, but again this is a hotbed for infringement.

Copyrighted clothing is a major issue and happens across the globe. You’ll no doubt see plenty during your summer holidays abroad this year. We’ve all seen fake Ray Ban sunglasses and counterfeit Levi jumpers, and in this case, the copyright lies in the designer’s design itself.

When it comes to high fashion, classic designs that are famously associated with a particular brand are further protected by a trademark. For example, Hermes’ prominent trademark is a rocking horse which is associated with their ‘H’ branding.

Big brands – Star Wars franchise rights holders, Disney included – are notoriously active in this area.

4. Names and phrases

Star Wars is famous for some really unusual names – Kylo Ren, Boba Fett, Jabba the Hutt and Chewbacca among them – so they are instantly recognisable and, as I’ve said previously, vigorously protected.

With names and phrases, unlike the other categories, there is no ‘original’ or ‘artistic’ element that can be used to protect them. In this case, they are only protected through actively trademarking a particular word or phrase.

In the UK, names cannot be trademarked i.e. Sarah, Adam or Simon. However, this isn’t necessarily the case in other countries.

One of the most recent examples includes the legal battle between Kylie Jenner and Kylie Minogue.

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At Primas, we deal with a range of trademark and copyright matters. Our team is well-versed in delivering the right results for our clients and we’ve acted on behalf of a variety of brands on both sides of the argument.

If you’d like to find out more information or are looking for some advice on any of the above issues, please get in touch with us on hello@primaslaw.co.uk.

But, if you choose to go alone…..the May the Force be with you.