Intellectual Property Attorney


Episode II: Overlapping Intellectual Property Protection – It’s a Trap for Infringers

One of the hallmarks of the STAR WARS® brand’s intellectual property portfolio is the creative use of overlapping layers of protection.

As illustrated by the figure below, patents, copyrights and trademarks are not necessarily separate and distinct forms of intellectual property as many mistakenly suppose. For example, the same computer source code may be eligible for both copyright protection (vis-à-vis the expression of the ideas in the code) and patent protection (vis-à-vis the functionality implemented by such code). Similarly, a product’s packaging design may be eligible for both copyright and trademark registration protection.

When building an intellectual property portfolio, the careful practitioner will look for as many forms of intellectual property protection as possible. This is, in part, because of the different scopes of protection provided by patent, trademark and copyright registrations.

For example, while patent and trademark rights are territorial (i.e., only valid in a particular country) copyrights enjoy broad international enforcement under the Bern convention. The tradeoff, however, is that proof of actual copying needs to be submitted in a copyright infringement case. By contrast, patent infringement can occur with or without knowledge of the existence of a patent, i.e., there is no need to show that a person actually copied (or, indeed, even knew about) a patent in order for a patent owner to prevail in an infringement suit.

Similarly, each form of intellectual property protection has its own idiosyncratic legal tests (and myriad exceptions)—making it more likely that a rights holder can win an infringement claim when more than one form of protection has been obtained for a particular asset.

The STAR WARS® brand has been a creative user of building multiple, overlapping layers of protection, and presents a useful learning example of how a brand can successfully use a “progression” of intellectual property to protect an asset for decades.

There are simply too many illustrations of this “multi-layer” approach from the STAR WARS® intellectual property portfolio to completely catalogue. As but one illustrative example, the protection surrounding the TIE FIGHTER®, one of the most recognizable spaceships in the STAR WARS® universe, is the subject of creative intellectual property protection that will remain effective for decades.

Both the written description of this craft in George Lucas’ original screenplay and the sculptural depiction of the craft from the original film props qualify for copyright protection.

Next, in an effort to build broader intellectual property rights, Twentieth Century-Fox Film Corporation (the studio which produced the 1977 “Star Wars: Episode IV – A New Hope”) secured a U.S. design patent registration (Des. 254,081) over the ornamental design of TIE FIGHTER® toys as shown below:

Capitalizing on the commercial interest in this craft, Lucasfilm launched a videogame named “Star Wars: TIE Fighter” in 1994, and obtained a trademark registration for the word “TIE FIGHTER” in 1996 (U.S. Reg. No. 1989011) covering “interactive entertainment computer game software and documentation distributed as a unit.”

Most recently, in 2012, the brand expanded its trademark rights in the TIE FIGHTER® even further – securing a trademark registration (U.S. Reg. No. 4257819) over the three-dimensional configuration shown below:

Unlike the design patent rights – which expired years ago – this trademark registration can be renewed in perpetuity so long as the brand continues to meet the statutory requirements.

Click here to explore Episode III in this series: “The Circle is Now Complete: Using Overlapping Layers of Protection to Expand Rights”.

Click here to go back to Episode I: “The Force is Strong with Registration Segmentation”.

Share Button
Grimes LLC