Lucasfilm Sues ‘Lightsaber Academy’ and ‘Jedi Club’ Over Trademark Infringement

https://torrentfreak.com/lucasfilm-sues-lightsaber-academy-and-jedi-club-over-trademark-infringement-161017/

https://consumerist.com/2016/10/17/lucasfilm-sues-operator-of-new-york-jedi-lightsaber-academy-programs/

Anticipating a most likely question; The Order has never attempted to contact LucasFilm and has never been contacted by LucasFilm.

I saw this earlier! Thank you for sharing it on my Facebook, I can't post until 5 tomorrow- one of my pictures got flagged by Facebook. lol.

This is a very difficult time for us. I'd like to say that we could probably get away with this because they have not copyrighted the term for religious education purposes. That's mostly how we've been able to keep ourselves from freaking out over whether or not Lucas would end up getting over the top.

What happens will be interesting. But as I've said in the past, I don't hold the copyright to the term "Force Realist", I've toyed the idea of copyrighting it for the explicit purpose of allowing all to use it without a corporate entity breathing down our backs over it and so they can't take it from anyone (though I've been using it for so long, I'm -pretty- sure, at this point, they couldn't very well get away with taking it from us). And I still stand by the idea that we can latterly move over to it in the event of a legal issue arising from our use of the term. Dividing the schools into "Light", "Dark" and "Shadow" across the board.

Alethea Thompson wrote: This is a very difficult time for us. I'd like to say that we could probably get away with this because they have not copyrighted the term for religious education purposes. That's mostly how we've been able to keep ourselves from freaking out over whether or not Lucas would end up getting over the top.

(n.b., terms are trademarked, not copyright protected.)

Have they trademarked it for lightsaber choreography classes outside their filming sessions? Because if they haven't, then we fall under the same kind of general umbrella. Especially since we use a trademarked term to promote ourselves.

I'm interested to see how this shakes out.

The word 'Jedi' is trademarked. But a trademark has to be for specific purpose or purposes. Jedi is not registered for religious services. We are not infringing on anyone's trademark. The only way that to prove that or to be certain beyond a shadow of a doubt would be for us to get sued by LucasFilms and for us to win. Otherwise there's always some doubt.

THANK YOU JESUS has a trademark. Look at the specifics.

Word Mark THANK YOU JESUS
Goods and Services IC 014. US 002 027 028 050. G & S: Jewelry, namely, bracelets, necklaces, earrings and key chains. FIRST USE: 20110331. FIRST USE IN COMMERCE: 20110331
IC 021. US 002 013 023 029 030 033 040 050. G & S: housewares, namely, coffee mugs, mugs, ceramic bowls, plates, vases and pots, trays for domestic purpose, serving platters, piggy banks. FIRST USE: 20110331. FIRST USE IN COMMERCE: 20110331

Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 87084645
Filing Date June 27, 2016
Current Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) Sharon Lynn Campbell, LLC LIMITED LIABILITY COMPANY VIRGINIA 4390 Shelby Road Rochelle VIRGINIA 22738
Attorney of Record Sheldon H. Parker
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

LucasFilms has four trademarks on 'Jedi'. If anyone finds anything about religious purposes, real non fiction philosophical purposes, a church or ministry or religious services please let me know. If someone wanted to write a book on the impact of Star Wars on society they certainly could and they could use the words Star Wars in the title and or Jedi. People have done so - legally. The rights to the use of the word are not absolute or for every conceivable reason by a long shot.

If you read through all this (I've bolded the purposes so they stand out) you'll see why we cannot sell many items with the word Jedi on them though.

Here are all the registered purposes:

http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:et1hhq.4.9
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:et1hhq.4.11
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:et1hhq.4.12
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:et1hhq.4.13

Word Mark JEDI
Goods and Services IC 016. US 002 005 022 023 029 037 038 050. G & S: Children's activity books; novels for adults; [ book covers; ] book marks; books containing puzzles and games; books featuring photographs; books for role-playing; children's books; [ children's books combined with toys and sold as a unit; ] children's story books; coffee table books; comic books; comic magazines; [ printed instructional manuals and strategy guides in the field of computer games and science fiction;] juvenile books featuring science fiction; magazines in the field of science fiction entertainment; novels for juveniles; posters; puzzle books; read-along children's books; series of fiction books; sticker albums; sticker books; stickers; story books; temporary tattoos; trading cards; art prints; animation cels; collectible trading cards; lithographic prints. original works of art created from paper, photographic prints; printed art reproductions; posters featuring printed replicas of characters from movies. FIRST USE: 19931000. FIRST USE IN COMMERCE: 19931000
IC 025. US 022 039. G & S: Clothing, namely, caps; children's footwear; [ coats; ] costume accessories, namely, headwear and belts; [ crop tops; dresses;] fitness tops; footwear;[ gloves;] hats; head wear; jackets; knit caps; masquerade costumes and masks sold in connection therewith; pajamas; shirts; sleepwear; slippers; sweatshirts; T-shirts; underwear[ ; visors ]. FIRST USE: 20050500. FIRST USE IN COMMERCE: 20050500

Word Mark JEDI
Goods and Services IC 009. US 021 023 026 036 038. G & S: interactive entertainment software, namely, interactive video game programs and interactive multimedia computer game programs; and compact discs and CD-ROMs featuring science fiction games and music. FIRST USE: 20020319. FIRST USE IN COMMERCE: 20020319

Word Mark JEDI
Goods and Services IC 028. US 022 023 038 050. G & S: [ Balloons, card games, skateboards, ] toy action figures and role-playing toys. FIRST USE: 19990531. FIRST USE IN COMMERCE: 19990531

Word Mark JEDI
Goods and Services IC 041. US 100 101 107. G & S: Entertainment services, namely, providing audiovisual entertainment in the field of science fiction via a global computer network or other electronic computer networks; providing news and information programming in the field of education, entertainment, entertainment relating to motion picture films, television shows and computer games via a global computer information network and other electronic computer networks. FIRST USE: 20030627. FIRST USE IN COMMERCE: 20030627

If none of us, singly or as a group, nor the Temple as an entity, attempts (whether with any success or not) to make any monies for *whatever* purpose, but with any connection to the term "Jedi", then we've not overstepped any bounds, right? I mean, no-one can (legally... or hey, even morally) sue me use for my calling myself a "Jedi", unless, doing so had in some way directly harmed or hindered any generating of revenues by the holders of the copyright/trademark, or caused any defamatory damage. Am I wrong?

I *think*, so long as we keep our noses clean, never try to make a buck off the term "Jedi", directly, indirectly, or even by any vague association, it seems we'd be forever in the clear...

Thank you for the correction, Steam

Terran, that's not exactly accurate. Back in the 90s or earlier this century, Lucas sued a guy for posting Star Wars merchandise reviews on the guy's personal webpage. He wasn't making money doing it, he just wanted to share his hobby with people. Lucas won the case.

Was it wrong? Yes, and frankly I don't know why he did it- free publicity is free publicity. But he did .

Tarran wrote: If none of us, singly or as a group, nor the Temple as an entity, attempts (whether with any success or not) to make any monies for *whatever* purpose, but with any connection to the term "Jedi", then we've not overstepped any bounds, right? I mean, no-one can (legally... or hey, even morally) sue me use for my calling myself a "Jedi", unless, doing so had in some way directly harmed or hindered any generating of revenues by the holders of the copyright/trademark, or caused any defamatory damage. Am I wrong?

I *think*, so long as we keep our noses clean, never try to make a buck off the term "Jedi", directly, indirectly, or even by any vague association, it seems we'd be forever in the clear...

The only accurate answer is this and it's as short as possible. If we are not doing any of these things with the term Jedi we are not infringing.

Children's activity books; novels for adults; [ book covers; ] book marks; books containing puzzles and games; books featuring photographs; books for role-playing; children's books; [ children's books combined with toys and sold as a unit; ] children's story books; coffee table books; comic books; comic magazines; [ printed instructional manuals and strategy guides in the field of computer games and science fiction;] juvenile books featuring science fiction; magazines in the field of science fiction entertainment; novels for juveniles; posters; puzzle books; read-along children's books; series of fiction books; sticker albums; sticker books; stickers; story books; temporary tattoos; trading cards; art prints; animation cels; collectible trading cards; lithographic prints. original works of art created from paper, photographic prints; printed art reproductions; posters featuring printed replicas of characters from movies.

Clothing, namely, caps; children's footwear; [ coats; ] costume accessories, namely, headwear and belts; [ crop tops; dresses;] fitness tops; footwear;[ gloves;] hats; head wear; jackets; knit caps; masquerade costumes and masks sold in connection therewith; pajamas; shirts; sleepwear; slippers; sweatshirts; T-shirts; underwear[ ; visors ].

[ Balloons, card games, skateboards, ] toy action figures and role-playing toys.

Entertainment services, namely, providing audiovisual entertainment in the field of science fiction via a global computer network or other electronic computer networks; providing news and information programming in the field of education, entertainment, entertainment relating to motion picture films, television shows and computer games via a global computer information network and other electronic computer networks.

Alethea Thompson wrote: Terran, that's not exactly accurate. Back in the 90s or earlier this century, Lucas sued a guy for posting Star Wars merchandise reviews on the guy's personal webpage. He wasn't making money doing it, he just wanted to share his hobby with people. Lucas won the case.

I really hope you forgive this, because I'm certain it's a simple oversight... but just out of fear of it sticking (as such has actually happened to me irl offline), I should first clear up my name - not "Terran", as in "Earthling", but Tarran, as in the name from the Welsh, Celtic and Old Norse. No stress... I realize this makes me look fanatically nitpicky, and I'm sure it was probably an autocorrect thing, but again... only out of fear of it sticking (please do forgive me) LOL

Anyway, I can see how that suit would have held... as far as how laws reach and sprawl through things internet-ish - their beef was quite most likely that he was using the pull of "StarWars-ness" to draw traffic to his site. To whatever extent that may or may not have been actually factual in deed, that would be how they'd term things to be able to hold in court. It's kind of like how there's still an old law in Massachusetts outlawing black magic, and people have gotten harassed due to it... though, while "using spells" wouldn't hold up in court, or in a police report, "psychological hazing" does. It's all in how you present things.

Now, to anyone out there, am I correct in assuming this? That... while rights are reserved by Lucasfilm Ltd. for the term "Jedi", I would think it not necessarily so for the term "Jediism" - though still, never making a buck (or other prosperity) off the term Jediism would still, for many obvious reasons, be nonetheless prudent lol

Yes? Any data/thoughts on this?

Alethea Thompson wrote: Thank you for the correction, Steam

Terran, that's not exactly accurate. Back in the 90s or earlier this century, Lucas sued a guy for posting Star Wars merchandise reviews on the guy's personal webpage. He wasn't making money doing it, he just wanted to share his hobby with people. Lucas won the case.

Was it wrong? Yes, and frankly I don't know why he did it- free publicity is free publicity. But he did .

Please post the citation of the lawsuit if possible. I'd like to research that.

Tarran wrote: If none of us, singly or as a group, nor the Temple as an entity, attempts (whether with any success or not) to make any monies for *whatever* purpose, but with any connection to the term "Jedi", then we've not overstepped any bounds, right?

This is false. Trademark and copyright infringement are still infringement even if you make no money.

steamboat28 wrote:

Tarran wrote: If none of us, singly or as a group, nor the Temple as an entity, attempts (whether with any success or not) to make any monies for *whatever* purpose, but with any connection to the term "Jedi", then we've not overstepped any bounds, right?

This is false. Trademark and copyright infringement are still infringement even if you make no money.

True.

steamboat28 wrote:

Tarran wrote: If none of us, singly or as a group, nor the Temple as an entity, attempts (whether with any success or not) to make any monies for *whatever* purpose, but with any connection to the term "Jedi", then we've not overstepped any bounds, right?

This is false. Trademark and copyright infringement are still infringement even if you make no money.

Thanks, Steam!

But uhm... I'm trying to understand the *how*... (on "Jediism" as well as on "Jedi", though it may make no difference)... is it because... damnit, I thought I had a thought for a second (LOL)... no, seriously - I mean, what you're saying seems to tell me that it is copyright infringement even for using "Jedi" in the name of a simple Facebook fan page! Isn't that a correct assessment? I mean, what are we to do? Are we not then, even now, actually-factually infringing upon copyright law even as I type/we read this??

We MUST be law-abiding... so what are we to do??

I find this very unnerving, very unsettling, and very-very-very uncool

P.S. ~ Lucasfilm Ltd. is still owned by George Lucas, yes? So it is HE who is doing the suing mentioned in this thread's title, not Disney, right?

EDIT; It seems that it *IS* Disney - TIME Magazine's website has this article; http://time.com/4536044/lucasfilm-sues-lightsaber-jedi-school/ , in which it states that "Disney’s Lucasfilm has sued a company that gives lessons in wielding lightsabers, arguing that it infringes on trademarks."

Well, pfpfthth

We MUST be law-abiding... so what are we to do??

To which Laws?

Trademarks can vary by country, which is why sometimes the same thing is called something else in a different market - the Trademark was already taken and they could not be bothered buying it. (So, and I have not looked these up, so I'm just giving a wild example - I could start James's Home Millinery Company, and call it Stetson in my country, but if I did the same in the USA I'd face legal action)

I mean, what you're saying seems to tell me that it is copyright infringement even for using "Jedi" in the name of a simple Facebook fan page!

You're only doing something "wrong" (and I use the term "wrong" loosely here) if you use the same terminology in the fields they have it protected for - the lists brother John provided)

It's not so much about the Intellectual Property of the concept, as use of the trademark in the fields they wish to do business... (as far as I can tell from the wording)

So, we can't have TotJO Skateboards. I'm not sure it's a huge issue :silly:

The use of it in fiction and prints is potentially more of an issue...



Swings and Roundabouts though - Lucasarts relies on its fans and consumers. Outside of any legitimate competition, it may be wary of frivolous litigation in order to avoid backlash and unpopular image.

P.S. ~ Lucasfilm Ltd. is still owned by George Lucas, yes? So it is HE who is doing the suing mentioned in this thread's title, not Disney, right?

I'm not sure what the intricacies of their arrangement are, but I believe he gave up the IP for everything Star Wars related wholesale, so he wouldn't really have a horse in the race when it comes to trademarks etc.

Well, I accidentally hit backspace and lost the rest of my post because the internet thought I wanted to go "back"

Thanks, computer.


This gist of it was "Disney are not necessarily the Bad Guys here - Old mate is making money by trading on their brand, and selling products that do the same.

Getting him to Stop is perfectly fair and reasonable.

Of course, you can never just "get someone to stop" in a legal case, you have to go the whole hog - So they're also making claim to any profit he has made through his business of trading on their name, and damages to their reputation that his businesses have caused - Slightly more of a dick move.

(Considering how much lawfully licensed disney, umm, crap, you can buy - I don't know if their claim of the defendant not meeting the "high standards" of their brand is legitimate....

But, you don't become a ninety-billion dollar company by being soft with how you manage your IP and trademarks....

JamesSand wrote:

We MUST be law-abiding... so what are we to do??

To which Laws?

Trademarks can vary by country, which is why sometimes the same thing is called something else in a different market - the Trademark was already taken and they could not be bothered buying it. (So, and I have not looked these up, so I'm just giving a wild example - I could start James's Home Millinery Company, and call it Stetson in my country, but if I did the same in the USA I'd face legal action)

To which? I'd argue that we shouldn't break any - but as far as copyright, I believe this particular case would be one of international copyright - so at least it would be an easier thing to nail down, I hope.

So, we can't have TotJO Skateboards. I'm not sure it's a huge issue :silly:

I dunno... I think we *could*, perhaps, if it was spelled just so ("TotJO")...
...or no, rather, if we just had our star emblem on it

Swings and Roundabouts though - Lucasarts relies on its fans and consumers. Outside of any legitimate competition, it may be wary of frivolous litigation in order to avoid backlash and unpopular image.

True...

JamesSand wrote:

P.S. ~ Lucasfilm Ltd. is still owned by George Lucas, yes? So it is HE who is doing the suing mentioned in this thread's title, not Disney, right?

I'm not sure what the intricacies of their arrangement are, but I believe he gave up the IP for everything Star Wars related wholesale, so he wouldn't really have a horse in the race when it comes to trademarks etc.

Well, he sold the Star Wars stuffs... I didn't think he'd sell his personal brand to make more films along with it all.

Well, I accidentally hit backspace and lost the rest of my post because the internet thought I wanted to go "back"

Thanks, computer.

Oh, I HATE it when that happens!! LOL

This gist of it was "Disney are not necessarily the Bad Guys here - Old mate is making money by trading on their brand, and selling products that do the same.

Shyeah! He was even trying to acquire a trademark on something which included an already trademarked term! The sodding gobshite... lol

Getting him to Stop is perfectly fair and reasonable.

Agreed.

Of course, you can never just "get someone to stop" in a legal case, you have to go the whole hog - So they're also making claim to any profit he has made through his business of trading on their name, and damages to their reputation that his businesses have caused - Slightly more of a dick move.

Myais...

(Considering how much lawfully licensed disney, umm, crap, you can buy - I don't know if their claim of the defendant not meeting the "high standards" of their brand is legitimate....

But, you don't become a ninety-billion dollar company by being soft with how you manage your IP and trademarks....

Right? Sheesh lol

Normally, in situations like this, the organization received a Cease and Desist letter. In the case of New York Jedi, I can attest that the proprietor has received several and has blithely ignored them all.

I am certain that if we had received such a notice, the discussion would be headed in a different direction.

Archon wrote: Normally, in situations like this, the organization received a Cease and Desist letter. In the case of New York Jedi, I can attest that the proprietor has received several and has blithely ignored them all.

I am certain that if we had received such a notice, the discussion would be headed in a different direction.

True, but - at great risk of jynxing things here - I'm fearful that it's just a matter of time.

I love our Temple.

May the Force be with us all

My apologies Tarran, I had not caught the difference. Thank you for pointing it out.

Br. John, I'll have to track it down, LucasFilms has a lot of information on the internet about them, lol.

Tarran wrote: ]

True, but - at great risk of jynxing things here - I'm fearful that it's just a matter of time.

I love our Temple.

May the Force be with us all

As do I, my friend. We can only change the moment, and fortunately at this moment we are not under fire.