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Intellectual Property, Charity and Not-For-Profit

Lucasfilm uses the force to stop TO lightsabre battles

The transformation of a Star Wars-themed lightsaber battle shows charitable motivations won't insulate organizers from trademark enforcement, says Toronto intellectual property lawyer Taras Kulish.

According to a recent Toronto Star report, Toronto-based Nevermindspace Inc. has agreed to drop all references to the popular sci-fi movie behemoth from its events after receiving a cease-and-desist letter from lawyers representing the film's rights holders, Lucasfilm.

Nevermindspace claims to have raised more than $2,500 for the Make-A-Wish Foundation by donating $1 from each reservation to its lightsaber battles and other events, held in six cities across North America, the Star reports. But that didn't stop Lucasfilm from stepping in when it caught wind of its operations.

Kulish, who also practises charity and not-for-profit law at Steinberg Title Hope & Israel LLP, says large companies must always balance the public relations risk when threatening legal action against smaller or less-powerful organizations.

“Just because there's a charity involved doesn't mean you get any special sort of leeway,” he tells AdvocateDaily.com. “There will always be a certain amount of sympathy for them, but the fact of the matter is that if a company like Lucasfilm wants to control its brand, they are going to control it.”

Some IP rights holders are more open to negotiation than others when it comes to licensing use of their trademarks, but in the case of Lucasfilm and its Star Wars brand, Kulish says they have a strong enough hand to play tough.

“There have been instances where you get such a public outcry that people start a boycott and a deal has been worked out,” he says. “With Star Wars, they're the only game in town. Like it or not, you have to play by their rules. Just because the chattering classes on social media think it's a good idea for Lucasfilm to co-operate in some way doesn't mean they have to.

“They may have very good business reasons for not doing so,” he adds.

Kulish says a more permissive approach carries its own risks for companies such as Lucasfilm when it comes to defending rights in the future. According to the Star, Lucasfilm holds 127 active trademarks registered at the Canadian Intellectual Property Office. Some of the marks — such as “Lando Calrissian” — are more distinctive than others (“rogue leader” or “hyperspace”).  

“You can see how some of those words could easily fall into common usage,” Kulish says. “If you think about brands such as Escalator or Kleenex, these are words that have fallen into common use. That is something companies have to fight hard against to ensure doesn't happen. Sometimes companies can appear aggressive, but on the other hand, they have to protect their marks.”

As part of its settlement with Lucasfilm, Nevermindspace has also agreed not to use other terms that might suggest a Star Wars link, such as “Light Sword” or “Light Battle,” states the Star. They have instead changed the name of the battles to the “Cats in Space Tour.”  

“Our goal was to make something that was very fun, very silly, and very obviously not related to Star Wars,” Nevermindspace co-founder Kevin Bracken told the newspaper, explaining the settlement had allowed him to sleep easier at night by removing the threat of legal action.

“A lawsuit from anyone can really ruin your life,” he added.

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