By David Baker, Esq.
It is hard to say whether or not this would constitute an actual “disturbance” in The Force, but Lucasfilm Ltd., a subsidiary of The Walt Disney Co., has filed suit against a school teaching students how to use lightsabers, claiming that the school has infringed on several ‘Star Wars’ trademarks.
More specifically, Lucasfilm has named Michael Brown, who owns several martial arts schools, including Lightsaber Academy and New York Jedi, and who teaches Star Wars fans how to use lightsabers for “illuminated stage combat.” Apparently, Brown and others at the schools use concepts from the Star Wars films, television series, and toy lines as props and thematic elements in their instruction.
According to allegations in the complaint, Defendants regularly use the Lucasfilm Trademarks without authorization in connection with their businesses.” Further, the complaint alleges that Brown’s schools use a logo that is “nearly identical, and confusingly similar, to Lucasfilm’s trademark Jedi Order logo…It is round in shape, with six wing-like shapes curving upward (three per side), and an eight-pointed star featuring elongated top and bottom points stretched into a vertical line.”
Earlier this year, Lightsaber Academy, Inc. filed an application for registration of its logo in International Class 041 for “Martial arts instruction.” [USPTO Trademark Ser. No. 86927002]
But, as you can see, the Lightsaber Academy logo does bear similarities to the Lucasfilm logo.
Not surprisingly, Lucasfilm already owns an active federal trademark registration for “JEDI TRAINING ACADEMY” in International Class 025 for clothing and International Class 41 for “Entertainment services, namely, live theatrical performances and interactive live performances” which first was registered in 2008. [USPTO Trademark Reg. No. 3368034] It also holds an array of registrations for the various logos and designs that populate the Star Wars (fictional) universe. These registrations number more than a thousand in the U.S. alone.
As noted in the Complaint, Brown has sought a license from Lucasfilm, but the studio, protective of its intellectual property, has repeatedly denied these requests. “Lucasfilm has consistently denied Defendants’ requests. Lucasfilm has never licensed or authorized Defendants to make any commercial use of the Lucasfilm Trademarks or any other of Lucasfilm’s intellectual properties.”
This led Lucasfilm to send Brown multiple “cease and desist” demands in an effort to stop the ongoing infringement, but his only response was the aforementioned filing with the Trademark Office. Now, the film studio is seeking a permanent injunction against Brown and his company and has asserted claims for trademark infringement, cybersquatting, and unfair competition with claims for monetary damages exceeding $10 million.
Why It Matters. “Cease and desist” letters are commonly used by attorneys and corporate legal departments to assert claims against third parties in an effort to get them to stop some activity that the sender has determined to be detrimental to its business operations. The basis for such demands oftentimes involve trademark or copyright infringement, but can include any number of things, including misappropriation of trade secrets, patent infringement, unfair competition, or even deceptive advertising. They are intended to intimidate the receiving party and to leverage compliance.
However, generally speaking, the letters themselves have no legal effect even though they usually include an assertion of specific wrongdoing, citations to allegedly supporting case law or applicable statutes, and a litany of things the sender wants the recipient to do, such as stop the offending activity and turn over all profits derived from it. If there is an actual legal consequence to such letters it would be the fact that the recipient cannot deny knowing that claims were being asserted against it and this may impact such things as punitive damages. Nevertheless, the Lucasfilm fracas clearly illustrates the point that “Demand letters taken seriously they should be.”