May the 4th be with you! IP Protection, Boba Fett style!

In case you were thinking of using anything slightly related to Star Wars to promote your business or its goods or services, may the force be with you.

It’s no secret that Lucasfilm Limited, which was purchased by Disney in 2012 for a reported $US4.05bn, protects its IP like the Mandalorian protects Grogu (or is it Grogu that protects Mando?!). Here are some of our favourite Lucasfilm actions taken over the years:

  • In October 2016, Lucasfilm sued the owner of the New York Jedi and Lightsaber Academy, a fitness establishment that taught young Padawans and Sith-hopefuls the art of lightsaber combat. Apparently they had previously sought a licence from Lucasfilm to use the name and when their request was rejected, they carried on anyway.

  • In 2014, a New York-based brewing company applied to register the trade mark ‘Empire Strikes Bock’. Bock being a German strong lager. Lucasfilm (which owns Skywalker Vineyards that produces Star Wars-themed wine) jumped up and down. Eventually the brewing company withdrew their trade mark application and replaced it with an application for ‘Strikes Bock’, which is successfully registered.

  • In 2010, Lucas sued a small US tech company, Jedi Mind technology, asserting that Lucas owned “all characteristics associated with the Jedi knights not memorialised in a registered trade mark (including) Jedi robes, the lightsaber weapon, the power to levitate objects, a telepathic oneness with other Jedi and the universe, and the ability to shoot energy beams called ‘Force Lightning’ from the fingertips.” The Company eventually agreed to change its name to put an end to the dispute.

  • In 2009, Verizon Wireless was caught out. Shortly before Verizon launched their DROID line of mobile devices, Lucasfilm filed a trade mark for ‘Droid’ for, you guessed it, wireless communication devices. A few sleepless nights followed for Verizon’s marketing team and it ended up paying Lucasfilm an undisclosed sum for the rights to use name to enable the launch to proceed.

  • In 2001, Lucas (unsuccessfully) sued the makers of Starballz, a pornographic anime cartoon Star Wars parody movie, alleging that consumers could be confused into thinking that Lucasfilm sponsored or produced the X-rated film. The producers of Starballz were so outraged by the assertion that they filed a $140 million countersuit against Lucasfilms for defamation.

  • In 2000, rapper Dr Dre created a track that included something called the ‘THX Deep Note’, which is an ‘audio logo for the audio visual company THX (who was a division of Lucasfilm). So, one day after Dr Dre demanded that Napster remove his songs from their platform because it infringed his copyright, THX sued Dre for copyright infringement. Dre settled the action for an undisclosed sum.

  • Finally, and most disappointingly, Lucasfilm gave its best Yoda frown to a number of fans who initiated crowd-funding activities in the hope to build a life size AT-AT walker, the Death Star and a fleet of X-wing fighters. We thought ‘Epic’ but Lucasfilm said much to learn you still have IP infringers!

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

A little bit of creative appropriation (a much nicer term than IP infringement, we think) is not such a bad thing, but there are some empires you really don’t want to annoy. Lucasfilm has a history of being litigious.  Listen to Yoda.  If you’re thinking of trading off the Star Wars brand, expect to hear from Lucasfilm.  

If you even think there is a slight chance that your business could wind up on Lucasfilm’s “dark side”, speak to our trade mark attorneys

70 thoughts on “May the 4th be with you! IP Protection, Boba Fett style!”

Leave a Comment

Your email address will not be published. Required fields are marked *