Through a new lawsuit, Lucasfilm, the Disney-owned production company behind the Star Wars franchise, wants to make sure The Force is never with three training programs that teach fans how to use lightsabers, the famous laser swords from the Star Wars films. The claims are federal trademark infringement, unfair competition, dilution, cybersquatting, state law unfair competition, and state law dilution.
In association with its movies and television shows, Lucasfilm merchandises products based on characters and story elements. The company owns several trademarks related to Star Wars, which includes JEDI, the name of the members of an order that uses mystical energy (The Force) to keep peace in the universe, LIGHTSABER, and the logo for the Jedi Order. “As a result of widespread advertising and sales by Lucasfilm and their licensees, together with longstanding consumer recognition, the Lucasfilm Trademarks are widely recognized as source-identifiers of, and for, authorized Lucasfilm products and services. The Lucasfilm Trademarks are each inherently distinctive and/or have acquired secondary meaning in the mind of consumers,” says the complaint, which was filed in the United States District Court for the Northern District of California on October 14th.
Defendant Michael Brown runs New York Jedi and Lightsaber Academy. These businesses offer or advertise lightsaber/Jedi classes and teaching certifications, as well as sell associated patches, apparel, products, and services. According to the New York Jedi website, the program is celebrating ten years this year and holds weekly classes. The Lightsaber Academy has also been operating for a decade. In the complaint, Brown is described as “the moving and conscious force behind the infringing activities” because he controls the usage and benefits financially. Lucasfilm claims that Brown regularly uses a logo that is almost identical and confusingly similar to the Jedi Order logo. The infringing logo “like Lucasfilm’s trademark Jedi Order logo, is round in shape, with six wing-like shapes curving upward, and an eight-pointed star featuring elongated top and bottom points stretched into a vertical line.”
Unlike a lot of the trademark lawsuits we discuss, Brown did attempt to get a license from Lucasfilm for authorized uses of the company’s trademarks, but Lucasfilm always denied the request. According to the complaint, Lucasfilm sent several cease-and-desist letters instead, which never received responses. Brown filed a trademark application for the allegedly infringing logo in March of this year. In April, he filed an application for the design and words of NEW YORK JEDI.
Lucasfilm is hoping to permanently enjoin Brown from using the trademarks, making false statements or representations that suggest affiliation with Lucasfilm, and registering infringing domains. It also wants Brown to withdraw infringing trademark applications. The company is seeking damages and profits.
Due it the popularity of the Star Wars films, Lucasfilm has to frequently police its intellectual property. Earlier this year, it sued a company for sales of unauthorized character costumes and the people behind a popular event called Lightsaber Battles.
The case discussed is Lucasfilm Ltd, LLC et al v. Brown, 3:16-cv-05968, Northern District of California.
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