George Lucas’s company has declared war on a rival wielder of the lightsaber, and is suing the creator of a series of “Jedi schools” for using his brand and logo without permission. With a new “Star Wars” film set to debut in a few months, The Walt Disney Co.’s Lucasfilm Ltd. LLC filed a trademark lawsuit on Friday against an Oakland, California, man offering “Lightsaber” classes and “Jedi” training.The studio says that Michael Brown is infringing the company’s trademark rights with his businesses “New York Jedi” and “Lightsaber Academy,” which advertise themselves as a place to learn to use the fictional weapon of the franchise’s mythical Jedi knights.

Michael Brown is an individual who resides in California and who does business under the names “New York Jedi”, “Lightsaber Academy”, and under various websites. For instance, as explained on LightsaberAcademy.com, this “is the home of finding you the finest sources of knowledge in learning the Art of Lightsaber Combat and Stage Combat” In other words, Mr. Brown is realizing the dream of every Star Wars fans by selling Lightsaber classes and teaching people how to use them and perform as Jedi. “Plaintiffs file this action to protect against infringement of their intellectual property rights, including but not limited to their ownership of the trademarks ‘Jedi’ and  ‘lightsaber,’” Lucasfilm wrote in its complaint.“Defendants are in the business of promoting, producing, offering for sale and selling unauthorized ‘lightsaber’ classes, which purport to teach students how to use ‘lightsabers’ and/or perform as ‘Jedi,’” the studio wrote. “Defendants are also in the business of promoting, producing, offering for sale and selling instructor certifications and director certifications that purport to license others to offer additional ‘lightsaber’ classes.” The suit came during a busy time for the 40-year-old blockbuster sci-fi franchise. “The Force Awakens” launched a new trilogy of films last December and grossed more than $2 billion; “Rogue One,” the first stand-alone “Star Wars” film, will hit theaters in December. According to the lawsuit, Brown has “repeatedly sought license or authority” from Lucasfilm to legally offer his lightsaber and Jedi classes, but has consistently been refused. He used the names anyway, the suit claims, and has been warned with repeated cease-and-desist letters to stop doing so. Brown has also attempted to get his own trademark registrations, including on “New York Jedi” and a logo that allegedly mimics the logo used by the Jedi in the Star Wars films.

But Lucasfilm is not really happy with it…

Just like the set of rules that governed the behavior of the Jedi Order, known as the Jedi Code, the U.S Lanham Trademark Act regulates the use of trademarks in commercial activity and protects consumers from confusion over the source of goods and services. If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement. A distinct trademark of longstanding and proper use/marketing is granted almost absolute legal protection. Let’s take an example : if Lucasfilm and/or Star Wars are the first things you think about  when I tell you “Lightsaber” or “Jedi”, then yes, the Lucasfilm trademarks have acquired a distinctive meaning among the consuming public. The production company filed the suit on October 14, 2016 at the US District Court for the Northern District of California. In 2010, the studio sued a company called Jedi Mind Inc. for using the name to sell software that allegedly lets users control their computers with their thoughts. The firm eventually changed its name to “Mind Technologies.”

KEYWORDS: trademark infringement, US Lanham Trademark Act.