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Protecting “The Child”

Author: Blaire Farine 

Knowing when and how to enforce intellectual property rights, such as a trademark or copyright, can be just as important as obtaining them in the first place. Perhaps the most famous Star Wars character in the history of LucasFilm is Grogu, aka “The Child” or “Baby Yoda.” Made famous by the hit Disney+ series, “The Mandalorian,” Grogu has taken the world by storm through memes and GIFs on social media and mainstream media. Even the New York Times announced that “Baby Yoda is Your God Now.” With such widespread notoriety, you may wonder how Disney intends to protect the likeness, image, and namesake of “The Child.”

Disney is notorious for being a trademark dynasty with over 5,000 active trademark registrations and the protection of its intellectual property at the forefront of its operations. Strangely enough, Disney has yet to file for any trademarks related to “Baby Yoda.” They do however, own a trademark for “YODA,” one of the most famous jedi masters of the Star Wars franchise.

The only action Disney has taken seems to be counterproductive, in that they delayed production of official “The Child” merchandise to prevent spoilers to fans, which Star Wars has been notorious for in the past.[1] Even in the most recent season of “The Mandalorian,” Star Wars fans were alerted to the fact that Lucasfilm recently updated the “Boba Fett” trademark, giving them hope that he would indeed be reintroduced at some point in the new season. Additionally, on December 10, 2020, Disney+ posted on social media its upcoming plans to release several new Star Wars shows to be streamed on its platform in the upcoming years, such as “Ahsoka.” This highly anticipated new show will center around a fan favorite female jedi, Ahsoka Tano, who was introduced as her live action character in the most recent season of “The Mandalorian.” The same day the news was released, Lucasfilm applied for five new “Ahsoka” trademarks, extending its classes to include apparel and other merchandise.

Independent creators and manufacturing companies spared no time in capitalizing Disney’s delay in enforcing intellectual property rights for “Baby Yoda” by creating knock off fan art and merchandise on websites such as Etsy and Amazon, seemingly creating a black market for crazed fans. Disney finally stepped in and shut down several shops and retailers that they felt were infringing on their property and continue to regulate these websites to ensure that merchandise is properly licensed. It is estimated that Disney’s delay in releasing “Baby Yoda” merchandise costed them nearly 2.7 million dollars in revenue.[2] However, Disney may have been wise in allowing “The Child’s” image and likeness to take the internet and media by storm, resulting in free advertisement, awareness to the newly released Disney+ platform, and desperation in Mandalorian fans to stan “Baby Yoda” in their everyday lives.

Now, there are currently 28 trademark applications in the last month for various goods and services for “The Child” and “Mandalorian The Child.” Each application gives a preview into what Disney is scheming in its plans for mass merchandising of “Baby Yoda” including backpacks, jewelry, and most recently, cosmetics. Now, Disney has enforceable rights to “The Child’s” image and likeness as it relates to merchandise and branding through filing extensive intellectual property protections, only after months of free marketing from social and mainstream media.

Deciding where to tow the line between enforceable intellectual property rights and free advertisement is very difficult, and a decision not to be taken lightly.

Intellectual Property Protection

If you would like intellectual property protection, the first step is determining which type of protection you are entitled to. Intellectual property law provides many layers of protection using copyrights, trademarks, and patents.

Copyrights protect original art such as works of authorship, musical scores, novels, and songs. This protection can be extended to graphic and pictorial work, such as the famously designed Mandalorian armor, or the Star Wars films themselves. When Star Wars was first released by Twentieth Century Fox, Universal decided to release their own space show, Battlestar Galactica to keep interest in their productions. Twentieth Century Fox sued Universal for copyright infringement, alleging the show was encroaching on their created ideas and works of art. The case was settled, only after the Ninth Circuit held that there were many similarities between the two, and that the idea was indeed copied. [3] At the time of settlement, Battlestar Galactica had already been taken off air. Copyright protection is a legally recognized property right that will exclude others from using or copying your original works.

Trademarks protect words, symbols, phrases, and a brand’s likeness that is used to identify certain goods and services. Within the trademark realm are logos, which are arguably the most recognizable form of trademark by the public, sounds, and word trademarks, such as “The Mandalorian” and “Jar Jar Binks.”Additionally, a character’s likeness, such as “R2-D2“can also be protected by a trademark.

Finally, patents allow a holder the exclusive right to preclude others from using, making, or selling an idea or invention. A patent can either be a utility, design, or plant patent. A utility patent protects the process of an invention, such as the technology used to create the character BB-8. A design patent protects an ornamental design, such as the Boba Fett action figure, or the X-wing fighter.

Intellectual property protection is crucial to any business owner, inventor, and creator. Deciding which type of protection you require, and how to enforce your rights is one of the most important decisions you can make. The intellectual property attorneys here at Kearney, McWilliams & Davis are here to help you navigate the United States Patent and Trademark Office and Copyright Office. Nothing in this article is intended to be considered legal advice. Please do not hesitate to reach out to Kearney, McWilliams & Davis, PLLC with any questions.

 

[1] https://www.cbr.com/toys-that-spoiled-star-wars-movies/

[2] https://www.junglescout.com/blog/baby-yoda/

[3] https://scholar.google.com/scholar_case?case=17217847881299692282&hl=en&as_sdt=6&as_vis=1&oi=scholarr

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