It's a good time to be a Star Wars fan! Not only the first new epic Lucasfilm 's spinoff Star Wars soon arrives in theaters (“Rogue One: A Star Wars Story”) but a new case involving Lucasfilm’s trademarks has been filed in California. The production company filed this action to protect against infringement of their intellectual property (IP) rights, including but not limited to their ownership of “Star Wars”, “Jedi”, “Lightsaber” trademarks, and the logo of the Jedi Order.
Nearly 38 years after the original Star Wars movie hit the big screen, fans are still trying to use and feel the Force. Without success. In the meantime, Lucasfilm (owned by Disney) is engaged in the successful business of merchandising and licensing of distinctive characters and elements associated with their movies, and of course the protection of their IP rights.
What’s the case all about?
As you know, Lucasfilm owns several U.S trademarks, trade names, registrations, that incorporate and/or refer to the artwork, characters, and other distinctive elements associated with Lucasfilm’s movies and TV programs. Among others : “Jedi”, “Lightsaber”, the logo of the Jedi Order, “Star Wars”, “May the force be with you”, the 3D configuration of the lightsabre, etc. As a result, Lucasfilm holds the rights to develop, manufacture, market, license and sell products and services featuring the Lucasfilm Trademarks.
Michael Brown is an individual who resides in California and who does business under the names “New York Jedi”, “Lightsaber Academy”, and under various websites such as www.NewYorkJedi.com, www.NYJedi.com, www.LightsaberAcademy.com. For instance, as explained on LightsaberAcademy.com, this “is the home of finding you the finest sources of knowledge in learning the Art of Lightsaber Combat and Stage Combat” (You can even get a certification for that).
In other words, Mr. Brown is realizing the dream of every Star Wars fans by selling Lightsaber classes and teaching people how to use them and perform as Jedi.
But Lucasfilm is not really happy with it…
Just like the set of rules that governed the behavior of the Jedi Order, known as the Jedi Code, the U.S Lanham Trademark Act regulates the use of trademarks in commercial activity and protects consumers from confusion over the source of goods and services. If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement.
A distinct trademark of longstanding and proper use/marketing is granted almost absolute legal protection. Let’s take an example : if Lucasfilm and/or Star Wars are the first things you think about when I tell you “Lightsaber” or “Jedi”, then yes, the Lucasfilm trademarks have acquired a distinctive meaning among the consuming public. The production company filed the suit on October 14, 2016 at the US District Court for the Northern District of California.
What’s the matter? After all, we all want to become a Jedi!
“Patience you must have my young padawan” (Yoda). Well, it appears from the facts that Mr. Brown had no patience and used the Lucasfilm trademarks, without authorization, in connection with their businesses. For instance, in order to promote his academy, he used a logo that is nearly identical, and confusingly similar, to Lucasfilm’s trademark Jedi Order logo :
Mr. Brown sought license from Lucasfilm but the production company has always denied such requests and never licensed or authorized him to make any commercial use of the Lucasfilm trademarks. Moreover, Brown’s businesses used the famous “Jedi” and “Lightsaber” trademarks to market their classes and events.
What are the claims?
Lucasfilm wants to stop this trademark infringement with 6 claims:
- Trademark Infringement: that’s obviously the main argument. The complaint reads as follows: “Defendants have used and continue to use in commerce unauthorized reproductions, copies, and/or colorable imitations of the Lucasfilm Trademarks in connection with the sale, offering for sale, distribution and/or advertising of their services and products”. That’s pretty straightforward.
- False Designation of Origin: with this argument, Lucasfilm tried to convince the Court that the uses are likely to cause confusion, deception and mistake among the consuming public as to the source or sponsorship of the goods and services distributed, sold and offered for sale by Mr. Brown. As Lucasfilm has never been involved in any Jedi or Lightsaber classes (but one may wonder where the Star Wars’s Jedi are trained…), it seems however unlikely that the public and fans will be confused by the origin of the services;
- Federal Trademark Dilution: it occurs when the value of something (e.g. a trademark) is decreased. In our case, such dilution may have occurred as a direct result of Mr. Brown’ advertising and promotion of the well-known and recognizable Lucasfilm trademarks and caused dilution of the distinctive quality of the trademarks;
- Cybersquatting: Lucasfilm argued that by registering numerous domains (websites) identical to, confusingly similar to, famous Lucasfilm’s trademarks, Mr. Brown has established a pattern of infringement;
- For Unfair Competition Under California Unfair Business Practices Act and Common Law: here again, Lucasfilms argued that “Defendants’ appropriation, adoption and use of the Lucasfilm Trademarks in connection with the sale and offering for sale of unauthorized goods and services is deceptive, unfair, fraudulent, and likely to confuse or mislead consumers into believing that Defendants’ goods are authorized, licensed, or approved by Plaintiffs” (Complaint, §58).
- For Dilution Under California Law: this is a specific claim under the California Business and Professions Code that is quite equivalent to the Federal trademark dilution claim.
Lucasfilm is seeking injunctive relief (i.e. asking Mr. Brown to stop commercializing any Lucasfilm’s trademarks), destruction of all infringing merchandise, an order to withdraw all of the defendants’ pending trademark applications, to prevent the registration of new infringing domain names, and a jury trial. In the alternative to actual damages and profits, Lucasfilm wants statutory damages up to the maximum amount of $2 million for each infringed trademark, according to the complaint.
Rogue One arrives in theatres on December 16 while the date of trial is still unknown. Yoda said “To answer power with power, the Jedi way this is not. In this war, a danger there is, of losing who we are”. Hopefully this legal fight will end in a peaceful manner… Stay tuned!
Thomas Dubuisson
