Lucasfilm, US-based maker of the phenomenally lucrative “Star Wars” movie franchise, are no strangers to taking action to protect their intellectual property, as seen in their recent (and unsuccessful) copyright infringement case against Andrew Ainsworth, a maker of replicas of the iconic “Stormtrooper” helmets who worked on the original 1977 film.
Over the last thirty years Lucasfilm has taken action against a number of other alleged infringers of their intellectual property for producing unlicensed merchandise relating to the Star Wars Saga against the backdrop of a changing technological landscape that has seen some of its more spectacular ideas become reality.
Enter Wicked Lasers, manufacturers of the S3 Spyder Pro Arctic Laser. Far from being what you might expect – a laser pointer or something equally harmless, the S3 is referred to on the company’s website as “the most dangerous laser ever created”, and capable of causing “immediate and irreversible retinal damage”. It’s also a laser built into a silver cylindrical handle which Star Wars fans may find a little familiar.
Lucasfilm certainly did, and issued a “cease and desist” letter to S3 stating that “it is apparent from the design of the Pro Arctic Laser that it was intended to resemble the hilts of our light saber swords, which are protected by copyright”. Wicked Lasers’ response to the letter, which also demanded that production on the product be halted immediately, was – “the light saber doesn’t exist and is currently impossible to make according to the laws of physics…There are no connections to be made between the famous Star Wars product and our lasers”. Whilst Wicked Lasers never used the word “Lightsaber” to describe or market the S3 product this didn’t stop the media from reaching their own conclusions and referring to it in those terms and suggesting that the Jedi’s weapon of choice may only be $300 away.
Lucasfilm’s letter of claim referred to the design of the lightsaber hilt being protected by Copyright. This may be the case in the United States, but in the EU the correct cause of action would be for unregistered or registered design right infringement.
Design rights protect the appearance of functional products without aesthetic appeal and are heavily relied upon in the manufacturing and retail industry to prevent the manufacture of “lookalike” products, but are occasionally hard to enforce in practice due to the fact that the test for infringement is whether or not the allegedly infringing product creates a different “overall impression” in the eyes of the “informed user” – those differences do not necessarily need to be substantial although they do need to be genuine. Add to that the fact that an unjustified threat of design right infringements can lead to a claim against the maker of those threats and it’s easy to see how “cease and desist” letters need to be drafted very carefully.
Another option in the UK would be a claim for passing-off, but although one of the leading cases in recent passing-off law centres around the appearance of a product and the manufacture of a similar and competing alternative (Reckitt & Colman v Borden – 1990: The “Jif Lemon” Case), this is also a difficult case to win hands down.
Even though there are no threats actions available in a passing-off claim, Lucasfilm would need to show that they were the owners of goodwill in the shape of the Lightsaber and then a misrepresentation by Wicked Lasers leading to confusion in the eyes of the public and damage to Lucasfilm’s business as a result. Given that Wicked Lasers have been clever enough to avoid the obvious parallels with the lightsaber in their marketing material, they would have a good chance of defending such a claim.
So, around a month after threatening proceedings against Wicked Lasers, Lucasfilm have confirmed that they will withdraw any potential claim provided that the S3 is labelled in a way which states clearly that there is no connection between Wicked Lasers and Lucasfilm because “the media and public has come to realize that Lucasfilm would never endorse or license a highly dangerous product such as your Arctic Pro Laser.”
The point to all this? As much as Lucasfilm would want to distance themselves in the eyes of a customer base made up mainly of children (and adults who should know better) from a very dangerous weapon, their actions have apparently led to a 300% sales surge for the S3 as a result of the publicity generated by the dispute. Although reputation management is an important issue for Lucasfilm and its brand, it seems in this case the law was not entirely on their side and that their potential cases not as straightforward as they would first appear, leading to the Empire striking out.
If this case were fought in the UK, then although it would almost certainly have settled before trial, Wicked Lasers would at least have a (new) hope of a defence and make life much more difficult for Lucasfilm than they are used to, just as Andrew Ainsworth did. A good lawyer should never be afraid to point out the downsides of a case to their client, or to put it another way, that they have “a bad feeling about this”.