Recently, Disney-owned Lucasfilm filed an opposition trademark dispute against New York-based Empire Brewing Company for the company’s latest bottled brew, named “Strikes Bock.” Obviously, it’s not difficult to see where this is going. It’s “Empire Strikes Bock” beer, which is similar to George Lucas’ wildly popular 1980 film, “The Empire Strikes Back.”
Now, Disney’s behemoth litigation team is pointing its Death Star directly at the small Syracuse-based brewery. Is there truly a dark side in this battle, or does Disney have the right to protect its empire from all trademark rebel forces?
The Intergalactic Battle of Brands
Image via Flickr
Disney and Lucasfilm contend that the name, Empire’s “Strikes Bock,” is too similar to the film’s name, which could confuse customers into believing that the golden German lager is actually a Stars Wars licensed product. Disney is opposing the filed trademark to stop the beer’s sale in bars, restaurants, and stores. Disney asserts that the beer’s full name infringes Disney’s and Lucasfilm’s trademark of “The Empire Strikes Back” movie title.
In the legal filing, Disney states, “Applicant’s EMPIRE STRIKES BOCK mark is virtually identical in sound, appearance, and connotation to Lucasfilm’s THE EMPIRE STRIKES BACK mark, differing by only one letter in the respective last words ‘BOCK’ and ‘BACK,’ and the initial word ‘THE.’”
However, the Empire Brewing Company has rebutted the allegation, asserting that the name is “Strikes Bock,” by Empire Brewing Company. In all fairness, the brewery pulls its company name, Empire Brewing Company, from New York (the Empire State) and not from the imperialistic dark forces of a galaxy far, far away. Empire Brewing Company had never filed a trademark prior to filing for its trademark of Strikes Bock beer. Although the brewery has been serving the beer for seven years on tap, the company sought to trademark the beer for bottling and selling Strikes Bock in stores.
Skywalking a Thin Line
Disney’s filing does not dispute the name of Empire Brewing Company, its packaging, or its logos. In the statement, the company only names “Empire Strikes Bock” as the grounds for infringement. However, the owner of Empire Brewing Company, David Katleski, denies the allegation. It’s important to note that the filing does not mention the use of “Empire’s Strikes Bock” as an infringement. In this instance, in which the phrase includes the company’s possession of the beer, the filing does not make a case. These are the murky areas and thin lines of trademark law.
However, Lucasfilm’s fight with Empire Brewing Company is not the first inter-branding war in which George Lucas has been involved. In the past, the company unsuccessfully sued an artist who constructed Stormtrooper outfits, and it also set its Jedi trial-tricks on a company who created videogame headsets that could, reportedly, control characters in the game with the game user’s mind.
Does “Strikes Bock” Deceive the Customer?
Further into Lucasfilm’s official complaint, the Stars Wars producers continue to explain that the Star Wars franchise has a long history of marketing in connection with food and beverages, among other products, for the benefit of its fans. For this reason, the argument states that customers of the brewery would be easily confused into believing that Empire’s Strikes Bock is an officially licensed Stars Wars beer. This idea of brand confusion is the crux and foundation of Lucasfilm’s claim of infringement.
It should be noted that the beer company makes constant homages to the Star Wars franchise through its packaging and advertisement of Strikes Bock beer. Marketing materials include the iconic, stylized crawl of the opening credits preceding all Star Wars movies, and the materials use phrases such as, “May the hops be with you.” Although the owner of Empire Brewing Company argues against the infringement, he does not deny paying homage to Star Wars, admitting his affinity for the franchise.
Lucasfilm Is Not in the Beer Business
Stars Wars is one of the most famous, iconic film franchises in history. As such, the franchise has a long history of trademarking a variety of goods. As the official trademark opposition notes, Lucasfilm has trademarks on “toys, games, apparel, video/computer games, personal-care products, paints, trading cards, confections, pre-recorded films and music, books, magazines, music, and entertainment services.” To date, Lucasfilm does not have any trademarks for beer. However, Lucasfilm did allude to licensing the name “Skywalker” to Skywalker Vineyards, which makes Skywalker wines. Beer is not found in the company’s statement.
Can the Disney Empire Strike Back with a Dilution Claim?
Since, currently, Lucasfilm does not sell beer, they may choose to pursue a dilution claim and not an infringement claim. Settling between “Empire Strikes Bock” and “Strikes Bock” by Empire Brewing Company may be a bit tricky. However, dilution may offer another opportunity for Disney litigation. Trademark dilution is a trademark law concept that refers to one company tarnishing another — always more iconic — company by using a similar mark on a non-competing product. As the argument states, the lesser-known company dilutes the uniqueness of the more widely known brand or trademark.
Dilution is also sometimes divided into two related concepts: blurring, which blurs a mark of one trademark to associate with other, dissimilar products, and tarnishment, which weakens a mark because of unflattering associations. In the case of Empire Brewing Company, does Strikes Bock blur the lines of dissimilar products with a common mark? Perhaps, but Lucasfilm is not currently in the beer business. In any case, dilution arguments are hard to prove and rarely won.
As the case progresses between Disney-owned Lucasfilm and Empire Brewing Company, who has also sought the assistance of legal counsel, it will be interesting to see how the legal proceedings move forward. Is it a case of the big guy pushing around the little guy? Or does Lucasfilm have the right to use the Death Star, which it built, in any way that it chooses?