II. Analysis

The U.S. District Court for the Central District of California awarded Lucasfilm the $20 million in damages.  [4]  Shepperton was found to have made and sold unlicensed copies of Stormtrooper and TIE fighter costumes and fraudulently said they were authentic items.  [5].  On top of the damages, a permanent injunction was granted against Shepperton  permanently barring them from "copying, reproducing, importing, licensing, marketing or displaying any of its unauthorized Star Wars products in the United States."  [6]. 

As far as the trademark and unfair competition part of this case the Lanham Act presumably played a big part.  The Lanham Act’s purpose is to “secur[e] to  a mark’s owner the goodwill of his business and protect[] consumers’ ability to distinguish among competing producers.”  [7].  Section 43 of the Lanham Act states:

"Any person who, on or in connection with any goods or services . . ., uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which (a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."  [8].

It is clear here that Shepperton violated this provision of the Lanham Act almost completely.  They used Lucasfilm’s trademarks of the Stormtrooper and TIE fighter when they replicated the helmets and costumes of the respective Star Wars characters.  By claiming that the items were authentic, Shepperton falsely represented an association with Lucasfilm.  By these facts, it is easy to see that a consumer looking to buy these items would be confused and deceived into believing there was an association between Shepperton and Lucasfilm.  Under these facts, it would be very difficult to show that Shepperton was acting properly under the law. 

III. Next Step

Lucasfilm's next move it so go after Shepperton to enjoin them from making and selling their Star Wars items in the U.K.  [9]. Howard Roffman, the president of Lucas Licensing, said “Infringers like Shepperton need to understand that we will pursue them anywhere in the world to shut them down and seek restitution.” [10]. This is not the first time Lucasfilm has gone after infringers. [11].

[1]  IPLaw360.com, $20M Award Reveals "Dark Side" of Costume Making, http://ip.law360.com/Members/ViewArticlePortion.aspx?Id=11594 (October 11, 2006).

[2] Id.

[3] TIE fighter pilots wear a flight helmet reminiscent of the stormtrooper design, with breather tubes affixed to provide necessary life support in the cramped quarters of their starfighters.  StarWars.com, TIE Figher Pilots, http://www.starwars.com/databank/organization/tiefighterpilots (last visited Oct. 26, 2006).

[4] StarWars.com, Lucasfilm Wins Lawsuit Against Stormtrooper Pirate, http://www.starwars.com/collecting/news/misc/news20061011.html (last visted Oct. 26, 2006).

[5] Id.

[6] ipnewsblog.com, Another Battle Over Star Wars, http://ipnewsblog.com/index.php/2006/10/11/another-battle-over-star-wars (Oct. 11, 2006).

[7] Two Pesos v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992).

[8] 15 U.S.C. § 1125(a)(1)(A) (2000).

[9] StarWars.com, Lucasfilm Wins Lawsuit Against Stormtrooper Pirate, http://www.starwars.com/collecting/news/misc/news20061011.html (last visted Oct. 26, 2006).

[10] Id.

[11] See e.g. Lucasfilm, Ltd. v. Media Market Group, Ltd., 182 F. Supp. 2d 897 (N.D. Cal. 2002); and Lucasfilm, Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985).