Legal Geek No. 88: Lucasfilm sues independent Jedi Academy

Welcome back to Legal Geek. This week, we review a trademark infringement lawsuit filed by Lucasfilm against an independent California man running a Jedi training academy.

https://archive.org/details/LegalGeekEp88

Obviously Star Wars is back in the spotlight again, with movies once again being brought out thanks to Disney, and the Disney parks and cruise ships fully incorporating the droids and all the rest for their guests. Indeed, most of us are likely thrilled at the prospect of seeing one of the best villains in movie history Darth Vader return in the upcoming Rogue One.

However, fandom does have its limits thanks to things like intellectual property. One California fan enthusiast Michael Brown may have gone a bit too far by opening a business working under the names New York Jedi and Lightsaber Academy. Yes, this business actually offers classes to teach you how to fight with a lightsaber, just like the Jedi of the Star Wars universe. If you complete the class, you even receive a fancy certificate with a class logo similar in appearance to the Jedi Order seal of the Star Wars films.

And that, as it turns out, is not copacetic with the owners of the various Star Wars trademarks. Lucasfilm filed a complaint this month against Brown alleging trademark infringement, cybersquatting, and unfair competition among other things. How will this play out, and why did Brown get singled out over others selling fan art and the like at conventions?

As to the merits of the lawsuit, Lucasfilm and Disney own a number of federal trademark registration on various Star Wars marks, including Jedi Training Academy, Jedi, Lightsaber, and even May the 4th Be With You. Yes, I mean the pun about a date in May, not the force line. Regardless, these registrations on the marks which this business is now using are covering goods and services including clothing and entertainment services. This is likely broad enough to cover the defendant's activities, as he apparently sells shirts and the classes could be broadly considered entertainment services.

Even if Disney does not offer the same type of training, the trademarks appear to still be broad enough in the abstract to cover this activity. As such, Lucasfilm appears to have a favorable chance to win this case. Lucasfilm won a similar case against a software company using a Jedi mark in 2010 for enabling controlling computers with their minds, and I expect a similar result and likely settlement here.

How did Brown's business get singled out for a lawsuit? For one, the business is apparently very popular and successful, which means money is effectively being diverted from Lucasfilm to Brown based on the ideas and names originally conceived for Star Wars. Likewise, he has asked for a license to use these marks numerous times and Lucasfilm has denied these requests. Thus, he knew he was likely going too far and refused to avoid Lucasfilm's rights even after they turned down requests for a license.

The Bottom Line is, Brown should have likely changed the names to something similar that gets the point across without using names and terms covered by the trademarks. That may be the end result here anyway. This is another example of why fans and other businesses need to be extra careful when using names in commerce which may be owned by other parties, as doing so can tank a successful business if a lawsuit happens like this one. And for goodness sake, always always always respect the rights of or design around an IP owner who refuses a license.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 87: Cards Against Humanity turns against counterfeiters

Welcome back to Legal Geek. This week, we look at a recent lawsuit filed by the makers of the Cards Against Humanity game and the incorrect original news stories about the conflict.

https://archive.org/details/LegalGeekEp87


News reports broke a couple weeks ago that the company that makes Cards Against Humanity, the party game for terrible people that has been a great selling sensation since 2009, sued a competitor in Missouri federal court for copyright and trademark infringement. The original news stories identified the non-authorized parody expansions sold under the name Crabs Adjust Humidity as the defendant, but it later turned out to be an entirely different company.

The real defendant is Skkye Enterprises, a business in Missouri which is allegedly selling knockoff counterfeit versions of the regular Cards Against Humanity game. This makes more sense than suing the makers of Crabs Adjust Humidity, although it makes the card game case a little less interesting that it would have been otherwise.

Crabs Adjust Humidity came up with their own cards and use their own type font, art styles, and collection of words, so the artistic, copyrightable protectable features covered by CAH's copyrights likely do not apply to those cards. But a pure copy of the same cards and fonts and styles like in these alleged counterfeits from Skkye Enterprises would more clearly be copyright infringement.

On the trademark side, Crabs Adjust Humidity is a clever change because it uses the same acronym initials as the CAH game while being substantially different. That, plus the different packaging with a lot of red coloring along with the traditional game's black and while coloring clearly distinguishes this product in the minds of consumers from CAH. However, the alleged counterfeits of Skkye Enterprises use the exact same packaging and product name in order to compete directly with genuine copies of Cards Against Humanity.

Thus, while CAH may have a good case against these counterfeiters, a similar lawsuit filed against the parody Crabs Adjust Humidity would not likely fare so well. Perhaps it's a good thing those initial news stories were wrong about the defendant in this case!

The Bottom Line is, when competing with or building on popular products or games, you need to be extra careful to avoid IP infringement. Even defending against such a lawsuit can make your business efforts not worth the fuss, if you do it wrong.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 86: The Walking Dead and Business Self-Dealings

Welcome back to Legal Geek. This week, we review the lawsuit that TV network AMC is facing from an original showrunner of The Walking Dead.

https://archive.org/details/LegalGeekEp86

But before we dive into the fate of Negan and Lucille's wrath, I wanted to let this audience know that if you like this segment, I appeared on a recent episode of The Geek All Stars podcast with Dan the board game man on TMS PM. In the second half of that show, we discuss some interesting cases affecting board game companies and designers in longer form than I can here, so check it out if you are nerds like us.

That Geek All Stars discussion includes the recent Yarrington-Schlashinger dispute over a business deal gone bad in the board game industry, allegedly due to one business partner using his companies to self-deal with one another and take all the profits to himself. Which is interesting because it is very similar to this case about...[TWD theme].

Indeed, the former showrunner of The Walking Dead alleges that at least $280 million dollars has been fleeced from him largely as a result of self-dealing among AMC affiliates. To this end, he argues to a New York court that one affiliate of AMC produced the show and then licensed it at cut rates to another AMC affiliate, which avoids having the profits from the licensing which he shares in go to him, while all the revenue generated from the popular show stays with AMC and its affiliate companies. AMC obviously disagrees with this position.

It will be some time before we see this play out in front of a jury, as the New York judge hearing this case apparently does not have any jury trial openings even available until 2018. However, just like the zombie walkers in the show, AMC will have to dodge this threat in order to keep the high amount of profits it has made off this ongoing show and property.

The Bottom Line is, a lesson that is always learned from business deals gone bad is to get the proper protections in writing when making contracts setting up companies and business deals. If a minimum license fee or some other oversight or protection were built into the deal for producing and distributing The Walking Dead, then this dispute may never have seen the light of day, let alone waste time and money in court. Great foresight is always key in doing business and making deals.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy