Lucasfilm brings trademark suit against operator of lightsaber training academies

By Steve Brachmann
November 1, 2016

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“Star Wars” by ben.hannis. Licensed under CC BY 2.0.

It’s been a busy few years for the Star Wars movie franchise since Lucasfilm, the George Lucas-owned production company that filmed the first six installments of the series, was purchased by The Walt Disney Company (NYSE:DIS) in October 2012 for $4 billion. Last December, Disney released Star Wars: The Force Awakens as the most recent installment of the immensely popular movie saga. Next December, the adventures of Rey, Poe Dameron and Finn will continue in Star Wars: Episode VIII as they work with the Resistance to undo both Kylo Ren and the First Order.

Star Wars continues to have a major impact on the popular culture of the time since the first trilogy was released in the late 1970s through the early 1980s. Iconic characters from the film, like Darth Vader, R2-D2 and Luke Skywalker, have attained an almost mythological status among fans of the franchise. The first movie in the series, Star Wars: A New Hope, is included in the first class of films inducted into the Library of Congress’ National Film Preservation Board and the entire original trilogy itself marked a major shift in Hollywood towards computer-based special effects and was one of the original “summer blockbusters” after 1975’s Jaws.

With popularity for the Star Wars saga soaring again, it’s not surprising to find people who would seek to profit from consumers interested in the brand. In the middle of October, Lucasfilm filed a complaint for trademark infringement in the U.S. District Court for the Northern District of California (N.D. Cal.) against a group of business and individuals operating a training academy for would-be Jedi Knights.

The lawsuit filed by Lucasfilm names a series of defendants including Michael Brown, also known as Flynn Michael, a resident of Oakland, CA, and the operator of a number of businesses including New York Jedi, Lightsaber Academy as well as Thrills and Skills. The complaint also lists a number of websites with similar names operated by the defendants. Lucasfilm notes that the defendants are in the business of offering lightsaber classes to students for improving their skills with lightsaber equipment and performance as a “Jedi.” For example, the website for New York Jedi offers a series of what it calls “light saber choreo classes” for teens and adults. As the about section of its website states, “while we are not specifically Star Wars-centric, we do rely heavily on many of the principles and training used by that of the Jedi Order.”

infringing-logoOne piece of evidence of the defendants infringing activity is a logo used by the Jedi training facilities on its apparel and merchandise which looks substantially similar to Lucasfilm’s own trademarked logo for the Jedi Order. Lucasfilm’s allegation notes that both logos are round in shape, having six wing-like shapes curving upward, three on either side of the the circular logo, and an eight-pointed star with elongated top and bottom points stretched into a vertical line.

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Enoch Liang, Partner at LTL Attorneys

“In trademark laws, the standard is likelihood of confusion,” said Enoch Liang, partner at LTL Attorneys. “The question is whether consumers would be likely to be confused between the Lucasfilm trademark for the Jedi logo and the infringing logo.” Liang added that, looking at the logos side-by-side, there was a good likelihood that most people would be confused between the two, especially given the fact that the infringing logo was being used in conjunction with a lightsaber academy. “If you look at the logos, they’re not 100 percent identical, but they’re similar enough that it would likely confuse customers,” Liang said.

Lucasfilm also alleges that the defendants have willfully continued infringing activities despite receiving cease and desist letters in a section of the complaint which Liang calls “the most damning for the defendant.” Lucasfilm notes that it sent a cease and desist letter which was served to the defendants on March 1st of this year. The next day, Lightsaber Academy filed an application for U.S. Trademark Serial No. 86927002, which would cover the use of the infringing logo on services related large-11to martial arts instruction. On April 4th, New York Jedi filed an application for U.S. Trademark Serial No. 86963651, an illustration with wording which consists of an image of the Statue of Liberty holding a lightsaber with the stylized wording “NEW YORK JEDI” surrounding the image in a semi-circle. All of this activity occurred after the defendants were repeatedly denied license or authority to engage in the infringing activities from Lucasfilm.

Attempts to obtain a trademark after a cease and desist letter has been served are not typically successful, according to Liang. Most likely, the mark would languish at the examiner phase of prosecution, especially the infringing Jedi order logo, because of similarities to the Lucasfilm marks. “The trademark office is most likely not going to approve these applications, they’re just going to show evidence of willful infringement,” Liang said. Should the application is approved, Lucasfilm has a period of time in which to oppose the marks. “Even if the examiner agrees, you can bet dollars to donuts that Lucasfilm is going to oppose, and they’re going to have really good evidence to show that the marks are sought in bad faith.

The Lucasfilm complaint includes six claims for relief including claims for trademark infringement, false designation of origin, federal trademark dilution and unfair competition under California state law. Lucasfilm seeks statutory damages up to $2 million per trademark which has been infringed upon by the defendant. Liang said it was interesting that the complaint included a claim of cybersquatting, which has a completely different set of damages aside from the trademark claims. Claims of cybersquatting were established as a cause for legal action in 1999 after passage of the Anticybersquatting Consumer Protection Act. “It’s completely separate and apart from the trademark claim, ACPA requires proof of bad faith intent to profit off of a famous trademark,” Liang said. Thus, such claims require a court to look directly at the defendant’s behavior whereas trademark infringement claims require proof of consumer confusion as a result of the defendant’s behavior.

Overall, Liang believes that Lucasfilm brought some strong arguments to its complaint in this case. He also indicated it was interesting that Lucasfilm did not bring a claim for copyright infringement on the infringing logo, although there were no clear conclusions to be drawn from that omission. “It could be that the differences noted between the allegedly infringing logo and the Jedi logo are enough that they’re not substantially similar,” Liang said. “Or maybe they felt that just bringing the trademark claim was enough, given the fact that the allegedly infringing logo is used with a lightsaber academy.”

The Author

Steve Brachmann

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

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There are currently 1 Comment comments.

  1. Andrei Mincov - Trademark Factory November 6, 2016 5:35 am

    The owner of the lightsaber training academy made a vital mistake. While he purportedly distanced himself away from Disney by adding a disclaimer to the effect that they “have no affiliation with Star Wars, Lucasfilm, or Disney”, he should not have adopted a logo that looks very similar to the one now owned by Disney. Disney would have a hard time preventing the academy’s owner from offering lightsaber training. But a lawsuit where the plaintiff has infinitely more money AND a very good chance of success could be the end of the business for the academy. Audacious, but not very wise…