With the impending release of Star Wars: The Force Awakens, designers are looking to the iconic film series for inspiration. It started several seasons ago with Preen (pictured above) and Rodarte, which utilized Star Wars imagery on their garments. Skip forward to the Spring/Summer 2016 menswear collections, which saw Bobby Abley and others' use the film franchise’s intellectual property. And now, a month away from the debut of The Force Awakens, even more are joining in. Bloomingdales commissioned 10 designers to create their own interpretations of new and old characters from movie, and in a certainly unlicensed (read: illegal) move, H&M is offering sweatshirts, t-shirts, shorts, and socks emblazoned with “Star Wars.” So, we look back at our analysis of the topic (which we were prompted to examine on the heels of the Fall/Winter 2014 women's ready-to-wear collections) …
Lucasfilm, the film company founded by Star Wars director George Lucas, has recently filed a notice of opposition to Empire Brewing Company’s trademark application for its “Empire Strike Bock” brand of beer. For those who don’t follow Star Wars movies, The Empire Strikes Back was the second movie released in the series. For those who don’t follow Star Wars litigation, Lucasfilm is nothing if not vigilant about protecting its intellectual property. In its opposition, Lucasfilm points out that “Applicant’s EMPIRE STRIKES BOCK mark is virtually identical in sound, appearance, and connotation to Lucasfilm’s THE EMPIRE STRIKES BACK mark, differing by only one letter in the respective last words ‘BOCK’ and ‘BACK,’ and the initial word ‘THE.’”
Why do we at TFL care that Lucasfilm is going after Empire Brewing Company? Because it reminds us just how litigious and protective the film and production company is when it comes to its intellectual property, which makes us wonder about the Rodarte and Preen Fall 2014 collections. Are these two at risk of being sued?
You might recall that the Preen collection in question (seen above) featured none other than Darth Vader on some of the garments, satisfying any need you might have to wear a ready-to-wear (RTW) blouse with the masked villain on it. Similarly, the Rodarte Fall 2014 collection (seen below) included formal gowns donning Luke Skywalker, Yoda, and C-3PO, among others. Maybe you like the whole Star Wars meets your clothes thing and maybe you don’t. No matter what, though, there are some legal considerations to be had.
Not surprisingly, Lucasfilm holds numerous copyrights and trademarks related to the Star Wars franchise.
A trademark is a logo, symbol, word, or phrase that is used distinguish one product from another. Trademarks make it easier for a consumer to identify the source from which an item comes. So, for instance, trademark law would protect the Star Wars logo or the name of a particular film. This means that unless you have permission, you can’t sell goods with Star Wars trademarks without the possibility of an infringement lawsuit. Lucasfilm would just have to show that there is a likelihood of consumer confusion to be successful in such a suit, meaning that consumers are confused as to the source of the goods or think that Lucasfilm has approved of or sponsored the use of its marks.
And copyright law covers literary works, musical works, dramatic works, pictorial, graphic and sculptural works, sound recordings, and architectural works. A copyright owner has the exclusive right to publish, copy or otherwise reproduce the work; to distribute the work publicly; and to perform or display the work. Owning a copyright also gives you the exclusive right to prepare derivative works. In order to prove infringement, Lucasfilm would have to prove that your use of a Star Wars copyright is substantially similar to the original. So, for example, if you use a copyrighted photo of a Star Wars character without permission and place it on a sweatshirt, you’re more likely than not guilty of copyright infringement.
A basic search on the United States Patent and Trademark Office reveals that Lucasfilm owns many trademarks related to the franchise and according to the U.S. Copyright Office, it owns hundreds of copyrights. In essence, when you consider the vastness of the intellectual property rights that Lucasfilm has secured related to the Star Wars films, you’d be safe in assuming that, without permission, you’re infringing in some way.
That is, unless you can successfully make a fair use claim, which might be the case for both Preen and Rodarte. The fair use defense can be used in response to either a trademark or copyright infringement claim. And while there are some differences depending on which type of intellectual property you are accused of infringing, the basic gist for both is that you can use the copyright and/or trademark of another for such purposes as news reporting, comment, or criticism.
Maybe the designers wanted to make a comment on the relationship between space fashion and RTW fashion? Or, maybe they wanted to allow you to connect RTW designs to the films of your childhood. Rodarte designer Laura Mulleavy said of the Fall 2014 collection, "We wanted to do a collection based off this very ethereal idea of what is childhood nostalgia and thinking about who you were and what you loved, and what you dreamed about….”
Word on the street (which is Law360 for us) is that Rodarte obtained licenses for its use of Star Wars images. The same cannot be confirmed for Preen. Perhaps a lawsuit is in the future.
JENNIFER WILLIAMS is a law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is admitted to practice law in the state of New York.