By Julie Triedman, From The Am Law Daily

The Walt Disney Co. is working overtime to ensure that digital pirates and counterfeiters don’t steal its profits ahead of the Dec. 18 release of “Star Wars: The Force Awakens,” the seventh movie in the storied space saga.

Disney, which acquired the Star Wars franchise through its $4 billion acquisition of Lucasfilm Ltd. in 2012, is mounting the “greatest anti piracy effort in the history of cinema,” according to The Independent, to ensure that trademarked images and copyrighted scenes from the new film don’t fall into the wrong hands. The British newspaper reported that the media giant’s global antipiracy efforts involve state-of-the-art use of encrypted files, digital keys and even movie theater patrols wearing night vision goggles.

The newest Star Wars film also hasn’t been circulated among voting members of the Academy of Motion Pictures and Sciences, which presents the Oscars each year, and The Independent reports that copies delivered to cinema chains have been distributed on encrypted files that require a special electronic key.

And as the intergalactic battle between good and evil is beamed onto the big screen, the litigation salvos have already begun. Earlier this year, Lucasfilm tapped litigation heavies at Latham & Watkins, including former global litigation vice chair Daniel Schecter, to press for a subpoena against ImageShack—a website that hosted a screenshot of a Sith lord in the upcoming film—in an attempt to flush out the identity of an alleged copyright infringer. The screenshot was quickly taken down, according to court documents. (Latham, which is organizing a special screening for its employees of “The Force Awakens,” also advised Lucasfilm three years ago on its sale to Disney.)

In September, Disney and Lucasfilm tapped regular outside IP counsel J. Andrew Coombs, who has his own firm in Glendale, California, to go after the Michigan-based owner of cake maker Wilson’s Wild Cake Creations for incorporating unauthorized images of “Darth Vader and Son.” In addition to a demand that the cake shop stop selling its infringing frosting, both companies are calling for the seizure of “any molds, screens, patterns, plates, negatives, machinery or equipment used for making” the offending images. (Coombs is also spearheading a case filed in August against Maryland cufflink company Cuff-Daddy over Star Wars designs.)

Things got even weirder in early December. Disney went after a fan last week that posted an image of a “Rey” action figure he had legally bought at Walmart for $6.94—the store had sold the figurine too early—by issuing a Digital Millennium Copyright Act takedown notice against Facebook. The social networking giant promptly took down a Facebook Star Wars fan page with the photo, according to Ars Technica. Lucasfilm’s legal team even issued DMCA notices to Twitter accounts tweeting and re-tweeting the image.

Mitch Stolz, a senior staff attorney with the nonprofit Electronic Frontier Foundation quoted in Ars Technica’s story, told the publication that a photo on a fan blog of a legally purchased product has an extremely strong claim to the “fair use” exception under the DMCA.

Disney’s efforts to go after individual copyright infringers—and the lengths to which the Burbank, California-based media conglomerate goes to protect its IP generally—is in keeping with its litigious history. This is, after all, the same company that successfully pushed Congress to keep Mickey Mouse out of the public domain in 1998, after the official Disney mascot was poised to escape the mouse house after 70 years of protection.

A generation ago, the now-defunct Spy magazine wrote that two characters that best represented Disney’s ethos were “Attorney,” the dwarf who thrives on litigation, and “Picky,” the executive who browbeats writers, directors, producers and actors. In 1991, Newsweek famously wrote: “Disney writes the book on being tough. They’ll sue anybody and anything.” At the time, Disney was initiating some 800 suits a year, about a quarter of which were copyright- or trademark-related.

But Lucasfilm and its creator, George Lucas, long had a different approach. Despite the MPAA referring to Star Wars as “the most infringed film in the history of the industry,” Lucas harbored a grudging tolerance for fans who spoofed or bootlegged his films. The company only occasionally took action, “usually rattling its sword with a large scale effort rather than searching for every inappropriate fan video,” wrote Peter Decherney in the 2012 book “Hollywood’s Copyright Wars.” Bootlegging was viewed almost as a sign of success.

There are signs that Disney may be loosening up its traditional aversion to fan use of its trademarked characters. Jennifer LaFortune, a self-professed geek and IP lawyer in suburban Phoenix, spoke with the ABA Journal this month about her involvement in the 501st Legion, a national Star Wars fan group devoted to characters from the Dark Side. Since 2006, LaFortune has appeared as a Storm Trooper at sci-fi conventions, parades and other venues. More recently she has avoided legal trouble by getting her various Star Wars-related gigs pre-approved by Disney.

“Because it’s all trademarked, our costumes have to represent the [Disney] brand, and everything has to be family-friendly,” LaFortune told the ABA Journal, adding that the relationship “has changed a bit” since the company bought the Star Wars franchise.

The Am Law Daily reached out to Lance Griffin, a former senior attorney at White & Case and Disney’s principal antipiracy counsel, for more information on the company’s efforts against pirates but didn’t hear back. Lucasfilm chief production counsel Andrew DeFrancis, a former Latham and Kelley Drye & Warren associate listed as working on the new Star Wars film, also did not return a request seeking comment, nor did Barbara Quinn, a Disney assistant general counsel named on Star Wars trademark filings. Calls and emails to Disney general counsel Alan Braverman also went unreturned. (In April, Lucasfilm’s longtime general counsel David Anderman joined Jaunt Studios, a virtual reality startup that has received funding from Disney.)

Meanwhile, copyright protection apparently does not extend to a personal name. An assistant prosecutor in Wayne County, Michigan, legally changed his name from Gary Peters to Luke Skywalker back in 1977. Skywalker is still on staff. One of his cases led to a suit against police involved in an arrest and ended up at the U.S. Court of Appeals for the Sixth Circuit in 2013. Apparently the defendants did not use the Chewbacca defense.

IMAGE: Film still from Star Wars: The Force Awakens. Courtesy of Walt Disney Studios Motion Pictures

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