Star Wars suing
On December 16, 2016 Disney is releasing a new Star Wars film titled “Rogue One: A Star Wars Story.”   While this movie is not part of the three trilogies, it takes place in the Star Wars universe in between the first and second trilogies.  There will be different characters and different stories, but it is still part of the Star Wars Universe.  So,  if  you’re feeling inspired about the new film coming out soon, this article will give you  a glimpse into Lucasfilm’s litigious, yet fascinating, history.

If you ever wanted  to create a product or service that has an affiliation with any characters in a Star Wars film, may the force be with you–given Lucasfilm’s litigious history.  

Lucasfilm was founded by Star Wars filmmaker George Lucas in 1971, and was acquired by The Walt Disney Company  in 2012 for $4 billion.  Disney’s ownership of Lucasfilm permits Disney to license the Star Wars franchise including all related intellectual property rights.  This means that those who would like to sell a product or service related or even similar to the Star Wars brand must seek permission from Disney before doing so.

Disney does have a notable history of being very protective of their intellectual property, yet their protectiveness is very warranted.  Disney’s major assets are IP.  And there are thousands of Disney’s trademarked characters that are tremendously valuable to Disney (which now includes the Star Wars brand of characters).   Technically,  if Disney failed to protect their IP it would be a breach of the directors’ fiduciary duty to not only the corporation,  but also the shareholders. So, Disney definitely has very good reasons for protecting their intellectual property.

Lucasfilm has quite a litigious history of aggressively litigating its intellectual property, even before they were acquired by Disney.  They are especially litigious against those who do not seek authorized use of the Star Wars brand for their products and services.  So much so that it has become a joke that if you even make any reference to Star Wars you better be prepared for a lawsuit from Disney/ Lucasfilm.

That being said, people paying homage to Star Wars is very common.  Star Wars has inspired fans for decades, which  Includes everything from street art, to fan art, to tattoos, to costumes, to food, and even short films.  After all, the film’s loyal fan base is what helped Star Wars creator, George Lucas, turn a space opera into a cultural phenomenon.  However, since Lucasfilm is so protective of their Star Wars intellectual property, sometimes their loyal Star Wars fan base has found themselves on the dark side of Lucasfilm’s force.  Lucasfilm has sued everything from major corporations to even very small businesses.  

In Yoda verbiage, “read on, you must” to learn more of the Lucasfilm’s litigious history.   

Lightsaber Academy

On October 14, 2016,  Lucasfilm sued Lightsaber Academy.  Lucasfilm stated in their complaint that, “Defendants [Lightsaber Academy] regularly used the Lucasfilm Trademarks without authorization in connection with their businesses.  Among other infringing activities, Defendants used a logo that is nearly identical, and confusingly similar, to Lucasfilm trademark  Jedi Order logo […] round in shape, with six wing-like shapes curving upward.”  

Lightsaber Academy is an enterprise that describes itself as the home for “Art of Lightsaber Combat and Stage Combat.”  Essentially, Lucasfilm sued an an enterprise that touts itself as an academy that teaches people how to use lightsabers.   In the complaint Lucasfilm demands a permanent injunction, actual damages and profits, or alternatively, up to $2 million in statutory damages for each trademark infringed upon.

Empire Beer

In 2014, Lucasfilm filed an opposition trademark dispute against New York based Empire Brewing Company for the company’s beer named “Empire Strikes Bock.”  (“Bock” is a style of strong lager originating in Germany.)  Lucasfilm contended that the beer’s name was too similar to the title of the 1980 Star Wars film, “The Empire Strikes Back” and could lead consumers to believe that the lager was actually a Star Wars licensed product.

In the filing Lucasfilm states, “EMPIRE STRIKES BOCK mark is virtually identical in sound, appearance, and connotation to Lucasfilm’s THE EMPIRE STRIKES BACK mark, differing by only one letter in the respective last words ‘BOCK’ and ‘BACK,’ and the initial word ‘THE.’”  (At first blush, it does not appear that Lucasfilm has much to do with the drink industry.   However, upon closer inspection Lucasfilm does indeed own Skywalker Vineyards that  produce a Star-Wars themed wine.)   The Empire Brewing Company rebutted the allegation, while also stating that its company name had been inspired by the Empire State Building not the Star Wars franchise.  

Eventually, Empire Brewing Company withdrew their initial “Empire Strikes Bock” registration, and rather decided to apply for another trademark, this time for “Strikes Bock.”  The second time around they were successful with their trademark registration.  (Check out their cheeky video that they made in response to their experience with Lucasfilm.)

Droids

Did you know that Verizon Wireless pays Lucasfilm an undisclosed amount to use the term “DROID” to advertise their phones?  This is because in 2008 Lucasfilm registered their trademark for “DROID” which was eventually granted in May 2009.  Lucasfilm even registered their trademark after Verizon Wireless launched a line of Android phones named “DROID.”

Lucasfilm is diligent in protecting their “DROID” trademark.  And they will file complaints and send cease and desist letters to companies that they think are infringing on their terms. Addroid, a company that helps users make ad banners, received a cease and desist letter in 2010.   They demanded that Addroid’s CEO, Matt Cooper,  immediately change Addroid’s name or face legal action.  Eventually Cooper and and Lucasfilm negotiated an agreement that if Cooper agreed not to make a video game or anything that is customer facing, then he would  not have to rename the  Addroid company.   

Dr. Dre

The THX “Deep Note” sound was the first ever “sound” to be trademarked.  And yep, you guessed it, it is owned by Lucasfilm.  The sound is very distinguishable and was an “audio logo” for the audio-visual company THX—who was a division of Lucasfilm until 2001.

And in 2000, rapper Dr. Dre decided to use the sound on one of its tracks.  Well, Lucasfilm sued Dr. Dre for infringement.  And Dr. Dre ended up paying a settlement.  (In true irony, Lucasfilm filed a complaint against Dr. Dre for infringement the day after Dr. Dre  had issued a warning to Napster to remove all of his songs from their service for stealing his music.)

StarBallz

Starballz, is a parody pornographic anime cartoon movie released in 2001.  Lucasfilm thought that consumers could be confused and would associate Star Wars with the movie.  And possibly even think that Lucasfilm actually produced the pornographic film.

So Lucasfilm sued Media Market Group Ltd, the company behind the film, for trademark infringement.  However, the judge ruled in favor of Starballz, stating that, “The Star Wars films are so famous that it is extremely unlikely that consumers would believe that Starballz is associated with Star Wars or Lucasfilm.”

President Ronald Reagan’s “Star Wars” Defense Program

Not even Presidents have been safe from Lucasfilm lawsuits.   In 1983 President Ronald Reagan worked with Lieutenant General Daniel O. Graham to launch the Strategic Defense Initiative.  Which was a program aimed to fund and research space-based battle stations and missiles.  Given that the initiative was space-based, the public and media associated the term “Star Wars” to the project. The only thing that kept Ronald Reagan safe from the trademark lawsuit was governmental immunity.  But Lucasfilm definitely sued two lobbying groups who were using the term “Star Wars” in their television advertisements about the initiative.  However, Lucasfilm lost the suit.  The judge held “that ‘Star Wars’ had entered the public lexicon and could be used for social criticism.”

Conclusion

“Fear is the path to the dark side. Fear leads to anger. Anger leads to hate. Hate leads to suffering.” – Yoda

Lucasfilm has a history of being litigious.  Listen to Yoda.  If you have a product or service that you think could even be remotely related to the Star Wars brand, no reason to fear potential litigation from Lucasfilm.  Instead be proactive and educate yourself and minimize your chances for legal action.   Consult with a licensed attorney and  receive an expert opinion, if you even think there is a slight chance that your business could wind up on Lucasfilm’s “dark side.”

Print Friendly
SHARE
Previous articleHow to Choose a Trademark
Next articleCopyright Law and Fanfiction…Not Always OTP: Legal Issues with Fanfiction
CHELSEA WOLD, is a law clerk for LegalForce RAPC. She received her Juris Doctor degree from Sandra Day O'Connor College of Law, Arizona State University in May 2016. On the personal side, Chelsea has her own blog that she started as a journalism major in college.