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Home / Entertainment

Star Wars lawsuits: Who has Lucasfilm sued and why?

By Rebecca Hawkes
Daily Telegraph UK·
19 Oct, 2016 02:00 AM10 mins to read

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Source: YouTube: Science Vs Cinema. Every Star Wars Rogue One trailer, teaser and sizzle reel cut into one long epic clip

Lucasfilm - now of course, a part of Disney - are famously protective of their intellectual property. Whether it's droids, AT-ATs, or Jedi mind tricks, if it appears anywhere in a Star Wars film, then it's probably trademarked it. Even US presidents and their defence programmes aren't safe.

The owner of a "Lightsaber Academy" is the latest to fall foul of the strict rule... but here are 10 more instances in which Lucasfilm has panicked at the threat posed by a rebel business, called in its stormtroopers (aka, lawyers) and launched a star system destroying super weapon (or at least a lawsuit).

1. President Reagan's Star Wars defence programme

A long time ago,in a galaxy far far away - well in America in 1983 - President Reagan collaborated with the US military's Lieutenant General Daniel O Graham to launch the Strategic Defense Initiative, a programme whose aim was to research and fund space-based laser missiles and battle-stations (things like this made sense during the Cold War).

Unsurprisingly, given the space-based, futuristic nature of the initiative, the media and public were quick to apply the term Star Wars to the project. Graham's High Frontier soon began using Star Wars as shorthand for the initiative too, and began employing the term in its broadcasts and public communications.

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George Lucas wasn't too happy about this, and in 1985 Lucasfilm sued High Frontier for their use of the phrase, claiming trademark infringement. But the courts didn't rule in the film company's favour, stating "when politicians, newspapers and the public generally use the phrase Star Wars for convenience, in parody or descriptively to further a communication of their views on SDI," then, however unfortunate Lucasfilm might find the situation, there was little they could do to stop it.

2. Droids

Forget about "these aren't the droids you're looking for". Unless you're specifically referring to a robot within the Star Wars Universe, you're also not allowed to use the term "droid" in a creative project or business venture: it's a registered trademark of LucasFilm.

Isn't "droid" just the second half of the word "android"? And isn't this therefore a bit ridiculous? While the answer is yes on both counts, this makes little difference to the legal situation.

Lucasfilm registered their trademark in 2009, after the communications company Verizon Wireless launched a line of Android phones named "DROID". The company has since had to pay Lucasfilm an undisclosed sum to continue to use the name. An unexpected upshot of this is that the Steve Jobs Trust is one of Disney's largest shareholders, meaning the creator of the iPhone pockets money every time a rival's phone is sold.

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The silliest aspect of all this? The term "droid" wasn't even invented by Lucas, or the Star Wars franchise. Instead, it was apparently first used in 1952, in a science fiction short story by Mari Wolf, titled Robots of the World! Arise!

3. Empire Beer

In late 2014, Lucasfilm, now owned by Disney, decided to sue a small New York-based brewing company, Empire, claiming trademark infringement over an Empire beer named "Strikes Bock". ("Bock", in case you're wondering, is the name for a type of traditional German lager; the brewery name itself wa s inspired by the Empire State Building.)

Lucasfilm claimed that the beer, which the company had in fact been brewing without incident for seven years, could potentially "cause confusion among consumers," who might mistake it for a Star Wars-endorsed product.

While the case may seem somewhat tenuous, given that Lucasfilm, at first glance, don't really have much to do with the drinks industry, it's worth noting that the company does in fact own Skywalker Vineyards, who produce Star Wars-themed wine.

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Empire responded with a tongue-in-cheek Vimeo video, during which owner David Katleski defends his product name, while a Stormtrooper can be seen working at the brewery in the background, and the famous Cantina music from A New Hope plays.

Empire Strikes Bock from Daylight Blue Media on Vimeo.

4. Jedi Mind technology

Jedi Mind was the name of a company manufacturing , among other products, wireless headsets, which apparently "detected brainwaves", and allowed users to "control computer technology with their minds". (We've got no idea whether or not the head-sets actually worked - it sounds as if the technology was probably still in a pretty rudimentary stage.)

Predictably enough, Lucasfilm weren't all that happy about the company's use of the trademarked term "Jedi" (LucasFilm has apparently also claimed ownership over "all characteristics associated with the Jedi knights not memorialised in a registered trademark ... [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.")

In 2009, the film company sent a cease and desist letter, asking Jedi Mind to refrain from using the name - and in 2010 they launched a lawsuit for damages of $5 million, claiming that claiming that the company had failed to comply.

Jedi Mind later agreed to change their named to Mind Technologies. The company no longer appears to have a website, while its Facebook page hasn't been active since 2013.

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5. Dr Dre

In 2000, rapper Dr Dre decided that he wanted to precede one of his tracks with something called the THX Deep Note.

You might not know it by name, but the Deep Note is something you'd very likely recognise if you heard it: it's basically a distinctive, deep sound effect, used as an "audio logo" for the audio-visual standards company THX (who were a division of LucasFilm until 2001), and played ahead of the film in any THX-certified cinemas. It was also the first ever "sound" to be trademarked.

After being refused permission to use the note, Dre (real name Andre Young) decided to go ahead and use it anyway - and promptly found himself with a lawsuit from Lucasfilm on his hands.

6. Starballz

Starballz , in case you've never encountered it, is an animated, hentai-inspired Star Wars parody porn movie, released in 2001, and featuring characters such as "Wank Solo" and "Chewhowie".

It's a fairly safe bet that nobody has ever mistaken the film for an official Star Wars product - but this didn't stop LucasFilm from suing Media Market Group Ltd (MMG), the New York-based company behind the film, for trademark infringement.

Luckily for the porn parody market, the court ruled in favour of Starballz, with San Francisco judge Claudia Wilken opining that: "The Star Wars films are so famous that it is extremely unlikely that consumers would believe that Starballz is associated with Star Wars or LucasFilm."

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Just to make things even more fun, the Starballz team went on to sue Lucasfilm for libel, after a spokesperson for the Star Wars company, publicist Lynne Hale, issued a statement saying: "We feel strongly that the law does not allow for parody to be a defense to a pornographic use of someone else's intellectual property, especially when that use is directed to children."

MMG objected to Hale's assertion that their film was aimed at children.

7. Stormtrooper helmets

Lucasfilm was involved in a long legal dispute with Brit Andrew Ainsworth, who helped mould the sStormtrooper helmets for the very first Star Wars film in 1977.

Years later, Ainsworth went on to sell replica stormtroooper outfits, based on the original moulds, online. In 2006, a Californian court found that the propmaker was guilty of copyright infringement, and owed LucasFilm $20 million.

However, the case eventually went to the British Supreme Court. Intriguingly, it hinged on whether or not the stormtrooper helmet could be considered a functional prop (covered under design right legislation) or a sculpture (covered under copyright law).

The British court ruled in 2011 that the helmets were indeed functional props, meaning that that Ainsworth was free to continue manufacturing the replica outfits.

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You can find out more about the propmaker and his company (and, if you feel like annoying Disney/Lucasfilm, pick up some stormtrooper helmets) on his website, originalstormtrooper.com.

8. Lightsabers

Yes, there are already quite a few official, Star Wars-licensed replica lightsabers on the market. Yes, they're quite fun. No, they can't actually slice through stuff and kill people.

If that last point left you feeling a little sad (life is hard for aspiring Sith Lords) then the Spyder II Pro-Arctic laser, manufactured by the delightfully named Hong-King-based company Wicked Lasers, might be right up your street.

The product, which hit the market a few years back, is basically a super-powerful (and genuinely quite dangerous, and strictly not-for-kids) blue laser.

While the company never related their creation to the famous Star Wars weapons in any marketing materials, it wasn't long before reviewers were dubbing the Pro-Arctic laser "the real-life lightsaber".

LucasFilm then noticed that the laser's handle looked a little bit too much like that of the sabers featured in the Star Wars films, and - surprise surprise - decided to sue for copyright infringement.

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They promptly sent Wicked Lasers a cease and desist letter, claiming that the laser mimicked the design of the Star Wars items, and was a "a highly dangerous product with the potential to cause blindness, burns, and other damage to people and/or property".

In their defence, Wicked Lasers pointed out, rather brilliantly, that their product is "real while the lightsaber is imaginary". However, the company eventually agreed to add in some additional safety features, and put a statement on their website making it clear that the laser is not a lightsaber toy.

9. AT-AT for America

In one of the saddest cases in this list, Lucasfilm intervened to stop a man building a life-size AT-AT Walker from The Empire Strikes Back.

In 2011, US-based Star Wars fan Michael Koehler announced his plans to build the giant Walker, and began crowd-funding his project, which he called AT-AT for America.

Donations poured in (why wouldn't they?), and it looked as if the Walker dream could become a reality - until LucasfIlm stepped in to point out that, as the Walkers were the company's intellectual property, Koehler would not be able to go ahead.

In a statement on his blog, poor Koehler said: ""Long story short, I can no longer solicit any kind of support for the AT-AT for America project in its current form. Seeking financial donations to build a piece of Lucasfilm intellectual property goes far beyond what is considered proper."

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10. Leia holograms

"Help me, Obi Wan Kenobi. You're my only hope." The scene in which Carrie Fisher's Leia appears in hologram form, courtesy of R2D2, and essentially kickstarts the events of Star Wars is one of the most oft-quoted in film history. It's therefore not that surprising that, in 2014, a young tech company specialising in producing holographic images that can "float above the screen" of mobile devices decided to name themesleves LEIA Inc.

Equally unsurprising is the fact that Disney really didn't like this very much. In February 2015, the movie giant (who now own LucasFilm) opposed the hologram company's request to register LEIA as a trademark, claiming that consumers might erroneously believe that LEIA Inc is affiliated with Star Wars and Disney.

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