17 October 2016Trademarks

Lucasfilm fights infringers in lightsaber battle

US film and television production company Lucasfilm has taken up arms against a number of alleged trademark infringers.

The company filed the suit on Friday, October 14, at the US District Court for the Northern District of California, San Francisco Division.

Lucasfilm alleged that a number of defendants had infringed some of its trademarks from the “Star Wars” franchise. The trademarks include ‘Jedi, ‘Lightsaber’ and the logo of the Jedi Order.

The production company is also claiming unfair competition, dilution and cybersquatting.

According to the suit, the defendants own and operate businesses that advertise and sell lightsaber classes and teaching certifications, as well as patches, apparel and other products.

Lucasfilm alleged that Michael Brown, an individual who does business under the names New York Jedi, Lightsaber Academy, and Thrills and Skills, has infringed its trademarks.

Brown also does business under various websites including newyorkjedi.com, nyjedi.com, lightsaberacademy.com, lightsaberguild.club, and lightsaberguild.com, according to the suit.

The production company also claimed a number of other defendants had infringed its trademarks, although their identities are unknown to Lucasfilm at this time.

“Defendants have repeatedly sought licence or authority from Lucasfilm to engage in the infringing activities,” said the suit.

But Lucasfilm said it had “consistently denied” these requests and served the defendants with multiple written notices to stop their unauthorised activities.

One such notice was served on March 1 this year. The next day, Brown, doing business as Lightsaber Academy, filed a trademark application with the US Patent and Trademark Office for the allegedly infringing logo.

“Defendant Brown filed this application with full knowledge of the design’s confusing similarity to Lucasfilm’s trademark Jedi Order logo,” said the suit.

Lucasfilm is seeking injunctive relief, destruction of infringing merchandise, an order to withdraw all of the defendants’ pending trademark applications, and a jury trial.

It is also seeking an order that the registries for the domains prevent the registration of new infringing domains and renewal or transfer of the existing domains, “so they may no longer be used for illegal purposes”.

In the alternative to actual damages and profits, Lucasfilm wants statutory damages up to the maximum amount of $2 million for each infringed trademark, according to the suit.

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