A Handy List of Star Wars References that Might Get You Sued

by Winthrop & Weinstine, P.A.

With its purchase of Lucasfilms and the Star Wars franchise, Disney did not wait long to begin exploiting the works. Episode VII: The Force Awakens was released on Dec. 18, 2015 and grossed more than $2 billion at the box office. At the risk of stating the obvious, that’s a lot of money. More is on the way as the new Star Wars Rogue One is set for a December 16, 2016 release date and Episode VIII is (currently) scheduled for a December 15, 2017 release.

Even before Disney’s purchase, Lucasfilm was known to be very active with enforcement of its trademark rights in order to maintain the value of its various brands. Disney appears to be continuing this approach, as confirmed by a recent lawsuit filed by Lucasfilms against a lightsaber school. October 14, Lucasfilm sued Michael Brown, the owner and operator of New York Jedi Lightsaber Academy. The Lightsaber Academy is (probably) exactly what you think it is, a dojo for individuals to learn and perfect their lightsaber skills. The website offers a class schedule,  information or instructor certification, and t-shirts available for sale. The page also uses variations of the Rebel logo throughout the website, as shown in the website screenshot below:

Lightsaber Academy

Lucasfilms’ complaint (available here) alleges trademark infringement, false designation of origin, trademark dilution, cybersquatting, and related claims under state law. The defendant’s likely defense will be to claim that this is merely a “fair use” of the term lightsaber. However, in order to be a fair use the plaintiff’s mark must have a descriptive, non-trademark meaning and the defendant must be using the mark in the descriptive sense. While a “lightsaber” may have descriptive meaning within the “Star Wars” universe, it does not have any descriptive meaning in the “real world” (Merrian Webster online agrees). In fact, Lucasfilms has owned a registration for the LIGHTSABER trademark in connection with a “toy sword” since October 23, 1979.

If you’re surprised to learn that using “lightsaber” can get you sued, you’re probably not the only one. You may also be surprised to learn that this isn’t the only “word” from the Star Wars lexicon that could land you in a Great (Legal) Pit of Carkoon (you know, the pit from Return of the Jedi). Lucasfilms even has a registration for a mark somewhat similar to the LIGHTSABER ACADEMY, namely, JEDI TRAINING ACADEMY. In an effort to help avoid use of a Lucasfilm registered trademark, this mark, along with a number of other surprising trademarks owned and registered by Lucasfilm, are included in this handy list below:

  1. THE FORCE (link)
  2. DROIDS (link)
  3. JEDI (link)
  5. ROGUE LEADER (link)
  6. BOUNTY HUNTER (link)
  7. STARFIGHTER (link), X-WING (link), TINY DEATH STAR (link), and other vehicles
  8. EPISODE 1 (link)
  9. The names of numerous characters (Yoda, Princess Leia, Darth Vader, C-3PO, R2, D2, etc. – even the popularly maligned JAR JAR BINKS)
  10. Types of creatures (Tusken Raider, Ewok, Wookie, etc.

Please note that this is not a complete list. There are numerous other characters, items, and other words in the Star Wars lexicon that Lucasfilms may not want you to use. To be fair, its important for Lucasfilms to protect most of these marks, as it is far too easy for third-parties to capitalize on the significant investment and success of the Star Wars franchise. However, one other trademark that I could quibble with are the registrations for the MAY THE FOURTH BE WITH YOU (link) and MAY THE 4TH BE WITH YOU (link). In case you are unaware, this phrase is used as part of the originally un-official “Star Wars Day” on May 4th.  However Lucasfilms may have registered the mark as “defensive” measure, intended to prevent others from obtaining rights in the mark, as I am unaware of any enforcement actions taken by Lucasfilms.  For the sake of the fans, let’s hope it stays that way.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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