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Can Lucasfilm sue me for using their trademarked word "Droid" in my sci fi novel?
Anonymous2 views4 answers
You have a number of misconceptions.
"In 2009 Lucasfilm trademarked "droid"" Off by about 25 years. Lucas coined the term "Droid" in the very first star wars film - remember the "droids R2D2 and C3PO"? And there was probably a billion dollars of toys made bearing that trademark. So 2009 won't be near early enough for you. Lucas filed for registration in 1984. See reg. no. 1362141 and now has over 20 registrations. They are continually opposing all manner of attempts to use the term by a variety of trademark applicants. Nearly all registrations containing the word "Droid" are owned by Lucasfilm, Ltd. If you don't think you are treading on sacred ground and don't think they go after minor infringers, their slogan provides the answer "Droid Does".
"The screenplay was registered with the Writers Guild of America a number of years prior to 2009." Unless that number is higher than 25 you won't win on priority. Your WGA reg is pretty much irrelevant to the trademark issue on "droid".
Does the "prior" use of your screenplay (never published or produced) "protect it to be copyrighted this year?" You need to see an IP lawyer. You are not prior to 1984. If it was not published or produced, you have not used the trademark. You cannot "use" a trademark in you imagination, use must be in commerce. So, not only do you not have "fair usage", you have NO usage as a trademark. Copyright is automatic under 17 USC 102, so it was "copyrighted" in "a number of years prior to 2009" if your facts are right. What you must mean is registration. Obtaining a copyright does not "protect it to be registered" whatever that means in your mind. You have to actually apply for a registration to get one, and you may have already lost some valuable rights by not registering it earlier, such as perhaps statutory damages.
I take it you have "Droid" in the title of your screenplay. You are surely headed for trouble with that. When the Lucasfilm lawyers do the next Google check for Droid, this posting may well come up. You may have just tipped your hand and tipped them off.
You need to see that attorney right away. I think the FORCE is not with you and the EMPIRE may be striking back at you soon, so best get your rebel alliance in order before the Death Star gets there.
The answer to your question is simply, "yes," because anyone can sue anyone for anything in America. The better question is what is the likelihood that Lucasfilm would prevail in such a lawsuit against you. I agree with the prior attorney's excellent analysis of the trademark and copyright issues, and believe you would be fighting a real uphill battle to try and retain the name DROID for your screenplay and its title. That said, if you have a boatload of money to spend on legal fees, and are prepared to lose if you are wrong, it may be worth your while to explore if your use of the Droid term would fit within the First Amendment or Fair Use.
For instance, there is a well known Disney case where they were sued by Caterpillar for using the Caterpillar trademark in a somewhat defamatory manner in one of their movies (the link to Caterpillar v. Disney, is below). From what I remember, the Caterpillar vehicles came to life and were wreaking havoc as "bad guys" in the movie. I believe there was a decision in favor of Disney that its use of the Caterpillar tractors, logos, and trademarks were protected by the First Amendment and/or Fair Use, and Caterpillar's legal action to enjoin the movie was dismissed. (Please read the case yourself to see what was actually held). Bear in mind, though, that Disney has a fortune and an armada of lawyers to defend its position in court. Do you? Also, the Caterpillar v. Disney case may not be applicable to the facts of your case. But perhaps an argument can always be made that the Caterpillar case should apply to your facts. (Compare Caterpillar with another case where a company that sold kitchen sink trash compactors sued NBC because they used their trademark and compactor in a comedy skit to injure somebody's hand. NBC settled out of court probably because they thought they were facing liability)
Working in your favor may be that the word "droid" had a merely generic or descriptive meaning before it was used and trademarked by Lucas. Is it possible that Lucas's own trademark is merely descriptive or generic for the product, and not entitled to trademark protection? While this is kind of doubtful, it is not out of the question and would require factual research on, among other things, the earliest usage of the word droid, and whether it was already anywhere in the English lexicon before Lucas first used it.
It may also be significant that Lucas did not use the word "droid" to name any specific character in Star Wars, but as an invented word of the future to describe a robot. Would such a word be entitled to trademark protection? Certainly this is an interesting legal issue that is perhaps worthy of further research. Maybe some very learned entertainment attorney will have the answer at the tip of his tongue, but such immediate knowledge is beyond my own pay grade, and I would certainly need to re-read all the legal precedents to even begin to arrive at a conclusion as to whether you would have any possibility of success. This is assuming the facts are on your side, Lucas wants to stop you, and you can afford the time, effort, and possible delays caused by litigating the issue.
So, while I agree with my colleagues that you will probably face a very serious legal challenge if you use the name, I am not sure that mounting a successful defense would be utterly hopeless. You may need a Jedi mind trick to prevail.
You have a number of misconceptions.
"In 2009 Lucasfilm trademarked "droid"" Off by about 25 years. Lucas coined the term "Droid" in the very first star wars film - remember the "droids R2D2 and C3PO"? And there was probably a billion dollars of toys made bearing that trademark. So 2009 won't be near early enough for you. Lucas filed for registration in 1984. See reg. no. 1362141 and now has over 20 registrations. They are continually opposing all manner of attempts to use the term by a variety of trademark applicants. Nearly all registrations containing the word "Droid" are owned by Lucasfilm, Ltd. If you don't think you are treading on sacred ground and don't think they go after minor infringers, their slogan provides the answer "Droid Does".
"The screenplay was registered with the Writers Guild of America a number of years prior to 2009." Unless that number is higher than 25 you won't win on priority. Your WGA reg is pretty much irrelevant to the trademark issue on "droid".
Does the "prior" use of your screenplay (never published or produced) "protect it to be copyrighted this year?" You need to see an IP lawyer. You are not prior to 1984. If it was not published or produced, you have not used the trademark. You cannot "use" a trademark in you imagination, use must be in commerce. So, not only do you not have "fair usage", you have NO usage as a trademark. Copyright is automatic under 17 USC 102, so it was "copyrighted" in "a number of years prior to 2009" if your facts are right. What you must mean is registration. Obtaining a copyright does not "protect it to be registered" whatever that means in your mind. You have to actually apply for a registration to get one, and you may have already lost some valuable rights by not registering it earlier, such as perhaps statutory damages.
I take it you have "Droid" in the title of your screenplay. You are surely headed for trouble with that. When the Lucasfilm lawyers do the next Google check for Droid, this posting may well come up. You may have just tipped your hand and tipped them off.
You need to see that attorney right away. I think the FORCE is not with you and the EMPIRE may be striking back at you soon, so best get your rebel alliance in order before the Death Star gets there.
Yes (depending on how you use it) and you can bet that they will sue you if your novel is successful. No matter how you slice and dice it, the term "droid" was an ingenuous creation associated with the Star Wars franchise from its earliest stages. The purpose of trademark law is to avoid consumer confusion for the benefit of both the consumers and the companies that sell to them. If there is a possibility that your use of the term "droids" would create some degree of consumer infringement, then you face a very substantial risk of being sued for trademark infringement.
In addition, I can tell by your question that you are hopelessly confused about intellectual property law concepts and, in particular, the distinction between trademark law and copyright law. Trademarks identify the source of goods or services---"droid" is a trademark associated with numerous products licensed by LucasFilm. such as toys.
Copyrights, on the other hand, protect works of original art, music, film, or authorship (such as your novel). Copyright protections extends to characters developed by authors of fiction (whether books, plays, musicals etc). In addition to the trademark problems. if the "droid" characters in your novel resemble characters in Star Wars films. you could be sued for copyright infringement. Lucasfilm has made almost as much money licensing its characters as it has licensing its trademarks. Thus, even if you do not use the word "droid" in the title of your novel, your use of "droids" or "destroyer droid" characters in your novel his highly problematic. Unless your novel qualifies as a parody (and I see no indication that it does), you cannot use "droid" or "destroyer droid" characters without a license. Even if your story lines are completely distinct from those of Star Wars, your use of these characters could constitute copyright infringement.
All of which leads me to the more important point. Anyone who writes novels needs to work with (a) a literary agent and (b) an intellectual property counsel. Often your literary agent will work with the same intellectual property counsel on a regular basis for many of her clients The successful actors, artists, writers, and musicians with whom I work all have one thing in common---they recognize at an early stage of their careers the necessity of building a team of close advisers---including intellectual property counsel. Most of my clients have my telephone number on speed dial (yes I answer the phone and yes I bill for it even after a martini). The investment you make in legal counsel will pay dividends big time in the future.
This is a complex question. In fact, I believe that Motorola entered a licensee agreement with Lucas for their cell phone brand with the same name. You should consult with an entertainment attorney.
