May the force be with you

Stuart Fuller

Last weekend I saw the trailer for the new Star Wars spin-off Rogue One, one of many planned films that will focus on the characters from the main story which is due to hit the cinemas in the week before Christmas. Whilst I’m not the biggest Star Wars film, there are plenty of people who are, snapping up anything to do with the brand. With the release so near to Christmas, some of the must have toys and gifts this year could well be related to the film.

Judging by the hype around the last film, The Force Awakens, it is estimated that Disney, who bought the rights to the franchise from Lucas for over $4bn in 2012, would have made a cool $1bn from merchandise sales, meaning it could be another bumper year for them again this year.

George Lucas originally based his business model for increasing the value of the Star Wars brand by controlling the licencing for all merchandise or affiliation from the launch of the first film in 1977 to the sale of the rights in 2012. Back in the 70s counterfeiting was still a major issue but nothing like the headaches it causes the likes of Disney today.

Intellectual Property infringement is unfortunately a growing problem on the Internet. Many individuals and organizations look to profit from exploiting the digital assets of others, whether it be by selling counterfeit items, misuse of a logo or registering domain names with the intent of profiting from another’s trademark or brand name. That practice is often known as domain hijacking, or cybersquatting. Last year there were a number of cases which involved the Star Wars brand. 

A Berkshire-based (UK) fancy-dress retailer found themselves going toe-to-toe with Disney over the use of the domain name The company who owned the domain name, Abscissa, were not using the domain name in any harmful way to the Star Wars brand. In fact they were using to strengthen it by selling legitimate official merchandise. The company had owned the domain name for 12 years without any issues or complaints from LucasFilms.

The compelling event seemed to be the launch in 2014 of the new dotUK Top Level Domain by Nominet. Under their grandfathering rules, the holder of the existing domain has the right to the corresponding dotUK domain. "If the new Star Wars films by Disney were not being released, we wouldn't be having this discussion," Mark Lewis, Abscissa's chief executive, told the BBC.

After being contacted by Disney's legal team, the retailer offered to transfer the domain to them if they were able to continue to use the and However, Disney refused and the matter was referred to Nominet for their ruling.

Under Nominet’s dispute procedure, they required two facts to be proven for it to rule in favour of Disney, namely: The complainant has rights in respect of the name involved and the current registration is judged to be "abusive".

Nominet’s spokesman Steve Ormand explained why the domain names were handed to Disney. "Star Wars cannot sensibly refer to anyone else other than the complainant. It is highly likely in my view that any user searching for Star Wars and arriving at the respondent's website will have suffered initial interest, confusion and falsely inferred a commercial connection with the complainant.” The fact that prior use of the domain names for over 10 years had occurred was considered immaterial.

The case should also be a reminder to any organization on the perils of using trademarked terms in domain names that they have no right to. Whilst some may claim possession is nine tenths of the law, intellectual property is that one tenth that doesn’t always conform.

Another instance late in 2015 saw a company called Wholesale Clearance UK buy a bulk of Star Wars figures that rather than being related to The Force Awakens, were from the 1999 The Phantom Menace film. Not that the title was the major disappointment. Some of the characters names had somehow become lost in translation such as R2-3P0, Toby-One Kenobi and Dennis, when it should have been Darth Maul.

With a $4bn investment in the brand to protect and another potential $1bn in merchandising from the Rogue One title later this year, the threat of intellectual property infringement is likely to be a hot topic for the brand owner. May the Fourth be with you? Absolutely, just make sure it is the genuine product.