Originally posted 2011-03-18 12:32:21. Republished by Blog Post Promoter

I am fascinated with IP disputes over costumes, and have written about a few of them.  I have also linked to this piece by Bill Patry, which would seem to be the definitive treatment.  It is, after all, by Bill Patry.

Now is six years later though and perhaps we live in a galaxy far, far away — so what say we about those copyright claims by George Lucas with respect to the Stormtrooper getups from Star Wars?

Oh no! He's wearing the same outfit!

Well, impressed LIKELIHOOD OF CONFUSION® is with this article from the Case Clothed law student blog from New York Law School.  It’s a nice bit of analysis about the copyright claims.  On the other hand, this part — hey, kids, you publish it, you get commentary from old meanies! — about trademark I found… troubling:

Even if the costumes are not protected by copyright, the STORMTROOPER is also protected by trademark. Many characters (like Mickey Mouse and Superman) are trademarked [ugh — RDC — see below!] to ensure that rights in the characters will still be protected even when the copyright protection ends and the stories end up as part of the public domain. The problem that Lucas will have enforcing the trademark is that only the word Supertrooper is trademark, not the actual character.

Well, okay.  The link in there is meant to get you to the trademark registration for STORMTROOPER, shown at right, and yes, it is just a registration for the word mark.  But, first things first.

Who says you can really extend copyright in a literary character through trademark?  Well, as I discussed briefly with respect to the case of Popeye, plenty of people do, but it’s not so clear they’re right.  Consider this scholarly law student treatment of the issue, which is thorough if a little unsatisfying in its conclusion (he likes the idea of judges making policy — which I don’t).  For lighter fare but perhaps even more filling, look at this analysis in a cleverly-titled blog post — also by a student (truly wonderful the mind of a child is!) — called “Trademark is soooo the new copyright”:

[C]opyright and trademark were established for very different reasons.  The purpose of copyright is to incentivize the production of creative and artistic works, while the purposes of trademark are “to aid the consumer in differentiating among competing products,” and “to protect the producer’s investment in reputation.” . . .

The case of Popeye reflects a troubling trend in intellectual property: companies invoking trademark as an unlimited extension of copyright.  The law clearly defines the purposes and extents of copyright and trademark, so it is unsettling to see when these intents are not followed through in practice.

Yes, unsettling.  But so is this from the first item at Case Clothed — again:

Many characters (like Mickey Mouse and Superman) are trademarked to ensure that rights in the characters will still be protected even when the copyright protection ends and the stories end up as part of the public domain. The problem that Lucas will have enforcing the trademark is that only the word Supertrooper is trademark, not the actual character.

See, Steve Baird?  This is just my point:  When even bright law students use the word “trademark” as a verb, you can be sure they are confusing having an enforceable trademark with obtaining a trademark registration. Getting one of them purty trademark registration certificates is exactly what people think “trademarking” is and why the hardly more learned but certainly more cranky among us do not verb it.

In fact, there are lots and lots of trademarks that are not registered.  (And lots of registrations for non-trademarks!)  Yes, there are differences in terms of what sort of relief you can get for a registered mark versus a common law mark, but the crown prince of trademark relief — the injunction — is available for non-registered marks as well.  Or, to put it differently, if you insist on talking about “trademarking,” then make sure that you are understood to mean “the process of earning trademark rights.”  Which is not the process of getting trademark registrations.

If you don’t do that, counselors, you are more than likely to confuse a lot of people — including many of your non-specialist colleagues, a perilously significant percentage of clients, journalists, and, it seems, even some pretty talented law students.

Now it turns out that whether or not there is a trademark in the Stormtrooper outfit is in fact an open legal one.  But woe to the legal professional, or possible infringer, who tries to answer that question by running a search on TESS.

That’s why there are lawyers and they need to go to law school.  And learn the law.  Traveling through hyperspace ain’t like dusting crops, boy.

By Ron Coleman

I write this blog.

8 thoughts on “The dark side clouds everything”
  1. The Noun-as-verb thing is a pet peeve of mine, too.

    Ones does not “copyright” a work, or trademark a brand, one “registers” these things.

    What about Patent? People have long used “patent” as a verb, and even the lawyers and Courts refer to an invention’s “patentability”. What gives?

    I’m considering compiling a list of these kinds of misuses of legal jargon for a blog post of my own. Educating consumers and professionals alike is the only way to address the situation… The key is to avoid coming off as a jerk in doing so.

    Ron, you’ve accomplished this admirably. Keep the great posts coming!

  2. A great post this is. Increasingly they are registered at USPTO: costumes, mascots and characters. On which side of the Force are they, dark or light?

  3. Gordon, thank you!

    Trademarks, like the Force, are merely tools, Erik. It is for us who master their use to determine if they will be used for good, or the other thing.

  4. There must be at least some uncertainty (or perhaps inadequacy) in the ability of trademarks to protect characters – for good or evil – hence the passing of the Sonny Bono (a.k.a. “Mickey Mouse”) Copyright Extension Act. And speaking of evil…hard to see how the addition of 20 years would make the difference between an incentive and lack thereof for the development of a new, creative work. But I digress. Good article!

  5. There are two main difference between copyright and trademark protection. Trademark infringement requires a showing of (a) a use in commerce and (b) likelihood of confusion.

    The private person who creates her own costume (e.g. for a costume party) is not using the “mark” in commerce and hence is not liable.

    Even if you sell copies (which is a use in commerce), one would have to argue that there is some confusion — perhaps confusion as to sponsorship. This would only work for really famous characters, not more obscure ones. And even then, a disclaimer might work to dispel confusion.

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