Lucasfilm has filed suit against a Chicago billboard advertising company that calls itself Skywalker Outdoor. The lawsuit alleges trademark infringement and breach of contract. The trademark component of the compliant alleges that Lucasfilm has been using the brand name SKYWALKER since 1977 and that the term has “acquired substantial secondary meaning and goodwill” as a result of “Lucasfilm’s extensive advertising and use of the SKYWALKER mark on products and services”. The complaint alleges that a third party’s use of such brand name will likely cause consumer confusion.
Since the registered trademark for SKYWALKER is for the limited category of motion picture sound effects and the like, and its other related trademarks, like Luke Skywalker and Anakin Skywalker, are limited to things like toys and clothing (none of which have anything to do with billboards or advertising), Lucasfilm is relying on the fame of the Skywalker brand name. In general, a mark that has achieved the elite “famous mark” status enjoys special protection under the anti-dilution provisions of the Lanham Act. However, proving fame can be difficult and is ultimately decided at the discretion of the court.
Luckily for Lucasfilm, it may have a much stronger and easier case in its breach of contract claim. According to the complaint, Lucasfilm claims that the parties entered into a contract whereby the billboard company acknowledged Lucasfilm’s prior exclusive rights in the brand names and agreed to stop using the Skywalker name after December 31, 2008. Apparently the billboard company, in its defense, is denying knowledge of the agreement and is claiming that the woman who is alleged to have signed it on behalf of the company as CEO was never actually CEO and had no authority to bind the company.
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