LucasFilm Sues Jedi Mind Over 'Jedi'

An anonymous reader writes "Apparently the force is strong with LucasFilm's legal department, as they've sued the company Jedi Mind for trademark infringement and breach of contract, among other things. While LucasFilm doesn't actually own a trademark on 'Jedi,' it claims that its related marks are close enough, and that Jedi Mind had agreed last year to phase out the use of 'Jedi' in its name and product names."

Comments

No brainer

[Sockatume]

He's using Lucas' neologism to specifically call attention to the similarities between his products and the abilities of the characters that the neologism belongs to. Is there any way in which this is not a textbook correct application of trademarks?

Re:No brainer

[afaik_ianal]

Is there any way in which this is not a textbook correct application of trademarks?

Don't trademarks needed to be registered to be enforced?

Re:No brainer

[arose]

Not the classical view of trademarks, where the purpose is product identification. Maybe in the new view, where every idea is to be milked to death, no matter if the company has a product to confuse with or not.

Re:No brainer

[Sockatume]

A brand of devices that let you control objects with the power of your mind, called Jedi, has "no implications of anything Star Wars related"? It's pretty obvious what allusions to the movies he's trying to make.

Re:No brainer

[Sockatume]

"Passing off" can occur without there needing to be a strict overlap of product type. All that's required is the implication that the product comes from a particular source. This is especially the case where the trademark is unique and only appears in language in connection to, as is the case with "Jedi", or would be the case with "Optimus Prime". Neither Lucas nor Hasbro needs to put out a branded range of snow shovels with that name for me to infringe on their trademark with my own line of spades, and it'd be pretty difficult for me to argue that I have a good faith reason to be using those names.

Re:No brainer

[daveime]

So it would be perfectly okay for me to write a suite of novels entitled :-

Angus Pigsnot and the Philosopher's Stone
Angus Pigsnot and the Chamber of Secrets
Angus Pigsnot and the Prisoner of Azkaban
Angus Pigsnot and the Goblet of Fire
Angus Pigsnot and the Order of the Phoenix
Angus Pigsnot and the Half-Blood Prince
Angus Pigsnot and the Deathly Hallows

And J.K.Rowling cannot get even the slightest bit upset ? After all, the "main" trademark is not being abused.

Now perhaps, you see how silly your argument sounds ?

Re:No brainer

[VJ42]

So it would be perfectly okay for me to write a suite of novels entitled :-

Angus Pigsnot and the Philosopher's Stone Angus Pigsnot and the Chamber of Secrets Angus Pigsnot and the Prisoner of Azkaban Angus Pigsnot and the Goblet of Fire Angus Pigsnot and the Order of the Phoenix Angus Pigsnot and the Half-Blood Prince Angus Pigsnot and the Deathly Hallows

And J.K.Rowling cannot get even the slightest bit upset ? After all, the "main" trademark is not being abused.

Now perhaps, you see how silly your argument sounds ?

bad example, as long as you wrote your own material (i.e your story wasn't about a teen Wizard - unless it's a parody), you'd be fine; book titles fall into copyright law and usually cannot be copyrighted. Furthermore, the Philosopher's Stone existed long before JK Rowling used it, and "chamber of secrets", "goblet of fire", "Order of the Phoenix" etc. are really quite generic concepts so can't be TMed - about the only one that isn't is the Prisoner of Azkaban, as Azkaban is a fictional place. If you don't believe me, just look at the number of Novels and films called Night Watch, for example.

That aside, I think that this is a classic case of Trademark law being applied correctly.

Gotta give this one to LucasFilm

[Rogerborg]

Jedi is a word that they made up, and which they clearly use and continue to use as a trademark (irrespective of whether it's registered as such).

Further, trademarks are use-them-or-lose-them: if they don't defend it from "Jedi Mind", then they'll lose the ability to stop OfficialJediJailbailSlutsInYourZipCode.com from appropriating it too.

I'm sure "Jedi Mind's" products are really neat, but if so, they can survive on their own merits, with their own original name, rather than piggybacking on Lucas' creation. Trademarks are not patents, and you don't break Wheaton's Law by having and defending them.

Re:Gotta give this one to LucasFilm

[arose]

Where is LucasFilm's mind control software, that is named, or includes the word, Jedi to be confused with this?

Re:Gotta give this one to LucasFilm

[Sockatume]

Honestly common-law trademarks are a lot less draconian than registered ones, because you have to prove your own use and likelihood of confusion.

I feel a great disturbance in the force

[Tootech]

I am guessing this what George felt when he typed Jedi and into Google and Star Wars or George Lucas we're not the first results to come up! Then he summoned all the power of the force ( herein known as George's legal team ) ( He tried to rally the Sand People as they are always willing to fight , but they said they couldn't help due to being written out of the last 5 of George's movies ) to help battle back against those that would rebel against the good of the force ( also known as George's profit margin ) But you can't blame the guy...it has been a great cash cow and one hell of a legacy he left behind from that first movie in the sci fi genre

How did they alter anything?

[Moraelin]

How did they alter anything? I'm pretty sure the same basic trademark law was in effect all the way back to Episode 4.

And it's no different from any other trademark. Just as you don't just use Apple's trademarks to sell, say, "iPod tyres" (pun on the iPod wheel, see?), or Nintendo's to sell a "Wii exercise machine" (that actually doesn't connect to a Wii), or Kraft Foods' trademark to sell something like "Cadbury chocolate flavoured condoms", or IBM's to sell something like "PowerPC dildo deluxe", you don't get to use Lucas's trademark to sell your gimmick input controller either. It's that simple.

And Lucas even invented the word. It's not as if I trademarked Pencil and started suing pencil makers. There is pretty much no way to accidentally name your product Jedi, you know, totally without trying to piggyback on Lucas's mindshare.

Honestly, it looks to me like textbook application of trademark law, as it was intended to work all along. You know, since the Trade Mark Registration Act of 1875 in the UK. Unless you want to tell me that Lucas invented a time machine to alter _that_ one, I seriously don't see how they altered any situation.

Re:How did they alter anything?

[Sockatume]

They'd already negotiated a deal (stop using the mark over the next year, and we'll say no more), which this guy has flaunted. It's hard to see much bad faith on Lucasfilm's side here.

Re:How did they alter anything?

[mike2R]

While that may be true, it just so happens that in this case both the law and common sense agrees with the 800lb gorilla.

This is not the abuse of power controversy you are looking for.

Re:More copyright trademark patent bullshit ....

[IRWolfie-]

I can understand Lucas wanting the name changed and enforcing it through the courts. But why the 5 million in damages (I suspect little damage) , is it really necessary to potentially put a small business that makes products targeted at the disabled out of business?

And it matters... why?

[Moraelin]

My point was that when juggernaut legal departments drag you into court it's often the case that what the law actually says isn't going to matter one iota, but that everything will depend on what it will take to stop them from grinding you down into submission.

And that matters... why? I'd see a point in that if there was indeed a frivolous exercise in who has the most money. But when that juggernaut legal department is actually in the right, and applying the law as it was intended all along, and the little guy opposing them is in the wrong and had acted in bad faith, then why does it matter that they're a juggernaut legal department? If you're right, you're right, and that's that. Being right and rich doesn't make one less right.

Exactly what is the fear factor here? That, god forbid, someone might do that "grinding into submission" to defend a legal right as they had it, and were using as intended?

Re:That's terrible

[foniksonik]

Jedi as a term is only as old as Starwars. Anyone can use the idea you describe - they just can't call it Jedi. Call it Age Old Wisdom Courage Mind or whatever (I like KoolaidLouDobbsBirdLegsNinjaMonkeyTail myself ) just not Jedi.