May the Force be with you (if you have a licence to use the Force …)

October 21, 2016, By

The Star Wars brand was born in 1977 with the release of the first film in the series: simply, “Star Wars”. It’s almost 40 years later and if you’re not aware that Star Wars has since become a worldwide pop culture phenomenon, you have probably been living on an abandoned Death Star.

One of the factors that has contributed to the success of the Star Wars franchise is the extent to which the maker of Star Wars, George Lucas, has sought to aggressively protect and enforce the Star Wars intellectual property (IP).

In the past, Lucasfilm has filed a complaint against Motorola for selling a mobile phone that used the word “Droid” and has even filed a complaint against the Reagan administration for using “Star Wars” as the name for its missile defence system. Lucasfilm also filed an IP complaint over the design of replica Stormtrooper costumes which went all the way to the Supreme Court.

The latest Star Wars IP battle started earlier this month in the United States District Court in San Francisco where Lucasfilm filed a lawsuit against the New York Jedi and Lightsaber Academy. The Academy offers classes on Jedi combat and describes itself as “a consortium of lightsaber practitioners with a culmination of 50 years’ experience of teaching various swordplay techniques.”

Lucasfilm has alleged in its lawsuit that the Academy’s use of the words “Jedi” and “lightsaber”, and its use of the Jedi Order logo, constitute infringement of Lucasfilm’s trade mark rights. Lucasfilm is seeking up to $2 million in damages for each trade mark infringement.

It is worth noting that Michael Brown, the man behind the Academy, had in the past sought permission from Lucasfilm to license the use of various Star Wars elements, but permission was denied.

Comment

There are a few points to take away from the Star Wars Academy saga –

First, look beyond the headline brand. Most people know that it is a good idea to protect their headline brand name or logo if they want to prevent copycat competitors from using their brand (or a very similar brand) to unfairly benefit from the goodwill and reputation that they have built up. However, this case shows that secondary brand names and logos (e.g. words like “Jedi” and “lightsaber” which are not the headline brand name, but which still uniquely identify the brand) may also be worth protecting.

Second, be on the look-out for infringement. IP infringement is extremely common now and brand owners should expect infringement and carry out regular searches on Google, news websites, social media platforms, company registers, trade mark registers etc. for unauthorised use of their brand. Where a party requests a licence to use IP rights, and the request is refused, the IP owner should monitor the activities of the party requesting the licence and be alive to the possibility that they may use the IP without authorisation (as was the case here).

Third, respond to infringement. Lucasfilm (and its new owner, the Walt Disney Company) have a well-earned reputation for jealously guarding IP rights. This reputation, in itself, is valuable because it disincentivises infringement. Brand owners who wish to protect the integrity of their brand should always respond when they discover that their IP rights have been infringed. This may not prevent IP infringement completely, but it may prevent escalation of the problem by disincentivising future infringement.

Briffa are intellectual property law specialists and advice on all aspects of contentious and non-contentious trade mark law and practice. If you have any queries about the protection of your brand, please do not hesitate to get in touch.

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