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Star Wars Prequels The Courts Your Rights Online

LucasFilm Sues Jedi Mind Over 'Jedi' 212

Posted by timothy
from the but-it's-my-religion-man dept.
An anonymous reader writes "Apparently the force is strong with LucasFilm's legal department, as they've sued the company Jedi Mind for trademark infringement and breach of contract, among other things. While LucasFilm doesn't actually own a trademark on 'Jedi,' it claims that its related marks are close enough, and that Jedi Mind had agreed last year to phase out the use of 'Jedi' in its name and product names."
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LucasFilm Sues Jedi Mind Over 'Jedi'

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  • No brainer (Score:5, Insightful)

    by Sockatume (732728) on Wednesday August 25, 2010 @04:06AM (#33366590)

    He's using Lucas' neologism to specifically call attention to the similarities between his products and the abilities of the characters that the neologism belongs to. Is there any way in which this is not a textbook correct application of trademarks?

    • Re: (Score:3, Insightful)

      by afaik_ianal (918433) *

      Is there any way in which this is not a textbook correct application of trademarks?

      Don't trademarks needed to be registered to be enforced?

      • Re:No brainer (Score:5, Informative)

        by magnus.ahlberg (1211924) on Wednesday August 25, 2010 @04:32AM (#33366694)

        Don't trademarks needed to be registered to be enforced?

        Actually no they do not. There are (at least) two ways to gain a trademark:

        • Registration, which is the safest one, since you know whether you have a trademark or not. This is usually marked with the (R)-symbol
        • Usage/Establishment (the legal term in Sweden is "inarbetad", I actually don't know the english equivalent), by consequently using a brand name in a certain way to market a product, service etc. you may gain trademark rights if the brand becomes part of the public awareness. Usually the TM-symbol is used to show that a company intends to use this as a trademark but it is not registered.

        Trademark law varies a little from country to country and please consider this a simplified explanation. IANALBIHADIL (I Am Not a Lawyer But I Hold a Degree in Law, there must be a shorter one for this - any suggestions?)

    • by shentino (1139071) on Wednesday August 25, 2010 @04:19AM (#33366646)

      Yeah, the part where LucasFilm's 800-lb gorilla run legal department says "I have altered the situation, pray that I do not alter it further."

      • by MRe_nl (306212) on Wednesday August 25, 2010 @04:45AM (#33366748)

        These are not the trademarks you are looking for.
        There is no Jedi.
        The Jedi is a lie.

      • by Moraelin (679338) on Wednesday August 25, 2010 @04:55AM (#33366778) Journal

        How did they alter anything? I'm pretty sure the same basic trademark law was in effect all the way back to Episode 4.

        And it's no different from any other trademark. Just as you don't just use Apple's trademarks to sell, say, "iPod tyres" (pun on the iPod wheel, see?), or Nintendo's to sell a "Wii exercise machine" (that actually doesn't connect to a Wii), or Kraft Foods' trademark to sell something like "Cadbury chocolate flavoured condoms", or IBM's to sell something like "PowerPC dildo deluxe", you don't get to use Lucas's trademark to sell your gimmick input controller either. It's that simple.

        And Lucas even invented the word. It's not as if I trademarked Pencil and started suing pencil makers. There is pretty much no way to accidentally name your product Jedi, you know, totally without trying to piggyback on Lucas's mindshare.

        Honestly, it looks to me like textbook application of trademark law, as it was intended to work all along. You know, since the Trade Mark Registration Act of 1875 in the UK. Unless you want to tell me that Lucas invented a time machine to alter _that_ one, I seriously don't see how they altered any situation.

        • Re: (Score:2, Interesting)

          Just as you don't just use Apple's trademarks to sell, say, "iPod tyres" (pun on the iPod wheel, see?)

          Fun fact: A German designer tried to sell an eggcup under the name of eiPott (German pronouncation is almost equal to iPod, but literally translates to egg cup) and got sued by Apple. While the judge found the name to be slightly funny, he ruled it was a trademark infringement. At first the decision was met with surprise, because trademarks in Germany are bound to the field of trade they are registered for, but then it was revealed that Apple did indeed register the mark iPod for electronical entertainment

        • by Pharmboy (216950) on Wednesday August 25, 2010 @08:27AM (#33367968) Journal

          Technically, trademarks apply to specific product types only, ie: there are many companies that use the same trademarked name for completely different products. I know because I work for one of them. There are several different companies that use the same trademarked names for different products, and there isn't anything the others can do. Oh, they can SUE but technically, as long as you aren't trying to confuse the public on the ownership it is acceptable. In this instance, they ARE trying to confuse the public (in the legal sense), so it is likely infringing.

          Nissan Computers and Nissan Motors is one example. Go to www.nissan.com and read about the most fucked up court battle you can imagine on this.

          Other examples would be Chunky Soup® vs. Chunky® candy bars, SunMaster® grow lamps vs. SunMaster® tomato seeds vs. SunMaster® tanning beds. All are legally registered trademarks for their particular industries. Technically, you could have IBM® brand breakfast cereal as long as it wasn't marketed to confuse the customer to think that International Business Machines, Inc. wasn't the parent company. Obviously, this wouldn't stop them from trying to sue you, but the way that trademark law is setup, it is considered perfectly legitimate.

          • by Pharmboy (216950)

            should say "as it wasn't marketed to confuse the customer to think that International Business Machines, Inc. was the parent company." Early in the AM.

        • by radtea (464814)

          And Lucas even invented the word

          For a certain value of "invented". A number of people have made this claim in this discussion, but it is pretty marginal. The Jedac (possibly spelt "Jeddack" or "Jedack", I don't recall) were Martian warriors in Edgar Rice Burroughs' Barsoom stories, ultimately based on Islamic (Suffi) mystic/warrior/assassins of the same name (whose apprentices were called "palawans" or something similar.

          Google around a bit: Episode IV is basically a tale of Islamic liberation: an independence movement represented by a

          • by idontgno (624372)

            Google around a bit: Episode IV is basically a tale of Islamic liberation: an independence movement represented by a small peripheral desert planet whose inhabitants apparently 'hate the Empire' use mystical powers to fight against overwhelming technological and military superiority.

            So... Episode IV is Dune, retold poorly and with Jar-jar added for further teeth-gritting annoyance value? Thanks, George.

          • The Jedac (possibly spelt "Jeddack" or "Jedack", I don't recall) were Martian warriors in Edgar Rice Burroughs' Barsoom stories

            Well, no.

            Actually, on Barsoom, "jeddak" was a word more or less synonymous with "king", and had nothing at all to do with any fighting style. Or even with being a warrior - in general jeddaks were warriors, but there were exceptions.

            Note that this doesn't mean that Jedi weren't based on Sufi mystics. But it's unlikely in the extreme that they drew any inspiration from Barsoom.

          • by elrous0 (869638) *
            I always though of Episode 4 as purely Arthurian. Merlin hides Arthur with an adopted family and eventually returns to reveal his true destiny. Owen even refers to Kenodbi as a wizard in the dialog. Luke even gets his Excalibur and has to assemble his knights (with Han Solo as an unlikely Lancelot and Leia as his Guinevere).
        • "PowerPC dildo deluxe"

          I'll take 3, please.
    • Re: (Score:3, Insightful)

      by arose (644256)
      Not the classical view of trademarks, where the purpose is product identification. Maybe in the new view, where every idea is to be milked to death, no matter if the company has a product to confuse with or not.
      • Re: (Score:3, Interesting)

        by Sockatume (732728)

        Given Lucas' rampant brand-whoring, I would've thought it was a reasonable argument that anyone seeing a product marked "Jedi X" would assume it came out of the Lucas stable.

        • by arose (644256)

          A moron in a hurry [wikimedia.org] might indeed believe that "Jedi X" is somehow about Star Wars, but given the lack of any and all Star Wars imagery, not to mention actually registered or specifically used Star Wars related trademarks (like Star Wars, that starts just about every game title, the most likely candidates, for confusion, LucasFilms or similar) and the rather straightforward description of what it does (let's you control computers in conjunction with a special input device, no implications of anything Star War

          • Re: (Score:3, Insightful)

            by Sockatume (732728)

            A brand of devices that let you control objects with the power of your mind, called Jedi, has "no implications of anything Star Wars related"? It's pretty obvious what allusions to the movies he's trying to make.

            • by arose (644256)

              A brand of devices that let you control objects with the power of your mind, called Jedi, has "no implications of anything Star Wars related"?

              Can you show me something besides the word Jedi that implies a connection?

              It's pretty obvious what allusions to the movies he's trying to make.

              Yes, as discussed in my post, to the general application of the word Jedi, to things that are perceived as having Jedi-like attributes without being otherwise related to Star Wars, if you have a beef with that conclusion, then

              • by Sockatume (732728)

                If you want something more substantiative, there's Mattel's licenced Star Wars mind-controlled "Force Trainer" toy [cnet.com]. Clearly Lucasfilm thinks there's enough of a connection between moving objects with thoughts and Jedis' use of the Force to manipulate objects with thoughts, for them to put out an official licenced product on that premise.

                • by arose (644256)

                  Ok, you have a product that doesn't even have the word Jedi on it! Clearly LucasFilm doesn't consider Jedi to be a trademark even in this particular case. What it does have is the Star Wars logo, and a lot of related imagery. Things that are notably absent from anything that I've seen in Jedi Mind promotional materials.

                  I still don't see any evidence of LucasFilm using Jedi as a trademark in the classical sense. And even under modern interpretation it would probably take a bit to spin it in their favor.

                  • by Sockatume (732728)

                    "I still don't see any evidence of LucasFilm using Jedi as a trademark in the classical sense"

                    Their repeated use of the word "Jedi" in naming products is the use of a trademark in the classical (by which I assume you mean common law) sense. I think what you mean is "I still don't see any evidence of LucasFilm using Jedi as a trademark in the sense that I have defined to allow me to win this argument".

                    • by Sockatume (732728)

                      "Passing off" doesn't require a strict demonstration of confusion where the mark is distinctive enough, and sufficiently strongly associated with a particular maker that there's no good-faith reason for anyone else to be using it. And your requirement that the products bear no other trademark has no legal basis either.

                    • Wait.. if I want to buy the official Star Wars "mind control" toy, I have to buy the one without the word Jedi in it?

                      Yeah, that's not confusing at all.

                    • by arose (644256)

                      "Passing off" doesn't require a strict demonstration of confusion where the mark is distinctive enough, and sufficiently strongly associated with a particular maker that there's no good-faith reason for anyone else to be using it.

                      You are talking about dilution, which is distinct from traditional trademark laws. Furthermore I repeatedly gave a good-faith reason of a cultural reference whose scope has outgrown the source. Lastly, common law trademarks are indicated by the superscript TM, indicating intent t

                    • by arose (644256)

                      Wait.. if I want to buy the official Star Wars "mind control" toy, I have to buy the one without the word Jedi in it?

                      Strangely enough you have to buy the one that has a huge Star Wars logo, Yoda and a kid with Jedi effects on it. Clearly, that only suggests that it might be an official Star Wars product... As you said yourself, official Star Wars toy, not official Jedi toy.

                      Yeah, that's not confusing at all.

                      The only confusing thing is that LucasFilm doesn't consider Jedi to be an effective trademark. If yo

                    • by Sockatume (732728)

                      No, I'm talking about "passing off". Google it.

                    • by Sockatume (732728)

                      LucasFilm has fifty registered trademarks containing the word "Jedi", many of which are just the word "Jedi", most of which are still live.

                    • by Sockatume (732728)

                      The use of "TM" is not required, it's a courtesy. If you actually knew anything about the law on this issue you'd be aware of that. Reducing the likelihood of confusion is nice, but it's not going to make much of a different in a case as clear-cut as this, any more than releasing a Buzz Lightyear grill set without "Toy Story" on it would be.

                    • Re:No brainer (Score:5, Insightful)

                      by daveime (1253762) on Wednesday August 25, 2010 @07:39AM (#33367518)

                      So it would be perfectly okay for me to write a suite of novels entitled :-

                      Angus Pigsnot and the Philosopher's Stone
                      Angus Pigsnot and the Chamber of Secrets
                      Angus Pigsnot and the Prisoner of Azkaban
                      Angus Pigsnot and the Goblet of Fire
                      Angus Pigsnot and the Order of the Phoenix
                      Angus Pigsnot and the Half-Blood Prince
                      Angus Pigsnot and the Deathly Hallows

                      And J.K.Rowling cannot get even the slightest bit upset ? After all, the "main" trademark is not being abused.

                      Now perhaps, you see how silly your argument sounds ?

                    • by idontgno (624372)

                      I think the point being made is that the word "Jedi" is, by itself, a prominent Star Wars logo/identifier. By your logic, trademarks wouldn't be valid unless they go out in herds.

                      "Jedi" is not "Windows". It had no common meaning--no meaning in English at all, since it didn't exist--until Lucas conjured it up entirely in association with his media milieu. So, the word "Jedi" isn't a bad trademark because it's unsupported. "Mercedes" is a trademark, entirely self-supported, in the trade realm of cars and truc

                    • Re: (Score:3, Insightful)

                      by VJ42 (860241) *

                      So it would be perfectly okay for me to write a suite of novels entitled :-

                      Angus Pigsnot and the Philosopher's Stone Angus Pigsnot and the Chamber of Secrets Angus Pigsnot and the Prisoner of Azkaban Angus Pigsnot and the Goblet of Fire Angus Pigsnot and the Order of the Phoenix Angus Pigsnot and the Half-Blood Prince Angus Pigsnot and the Deathly Hallows

                      And J.K.Rowling cannot get even the slightest bit upset ? After all, the "main" trademark is not being abused.

                      Now perhaps, you see how silly your argument sounds ?

                      bad example, as long as you wrote your own material (i.e your story wasn't about a teen Wizard - unless it's a parody), you'd be fine; book titles fall into copyright law and usually cannot be copyrighted [copyrightservice.co.uk]. Furthermore, the Philosopher's Stone [wikipedia.org] existed long before JK Rowling used it, and "chamber of secrets", "goblet of fire", "Order of the Phoenix" etc. are really quite generic concepts so can't be TMed - about the only one that isn't is the Prisoner of Azkaban, as Azkaban is a fictional place. If you don't

                    • by arose (644256)
                      And you can't be bothered to link? Alive? Meaning products out there using it, or registration has not lapsed not lapsed?
                    • by arose (644256)
                      Passing off, also doesn't happen to be about trademarks, what we were talking about...
              • Yep it's a No brainer because of what's known as "Brand Awareness". That's what Lucasfilms is protecting and it's what Xerox Lost in the Early-mid 70's in regards to photocopiers. In that case, it was "Trademark Dilution" that Xerox Suffered because xerox become the common usage term meaning to photocopy something. Once that happened, they lost the "Brand Awareness" aspect of the Trademark that they'd had on Xerox.

                In this case, LucasFilm's is pursuing the only legal avenue to prevent "Trademark Dilution", w

                • by arose (644256)

                  Trademark dilution isn't what trademarks are traditionally about. Why does everyone keeps missing this point, go back to what this started with, it was as much of a comment on the ever-increasing scope of trademark laws as anything else...

                  Besides that, it is still not a no brainer. Jedi is not a trademark used by LucasFilm explicitly or implicitly (not, part of a title of a creative works is not an automatic trademark, no, making up a word is not an automatic trademark). Yes, LucasFilm can with a high proba

    • by yyxx (1812612)

      He's using Lucas' neologism to specifically call attention to the similarities between his products and the abilities of the characters that the neologism belongs to. Is there any way in which this is not a textbook correct application of trademarks?

      Where can I buy a "Jedi"? Does "Jedi Mind" make the same category of product? If not, there should be no trademark infringement.

      The sole purpose of trademarks is to protect buyers; it is not to give companies additional revenue sources.

      • Re: (Score:3, Insightful)

        by Sockatume (732728)

        "Passing off" can occur without there needing to be a strict overlap of product type. All that's required is the implication that the product comes from a particular source. This is especially the case where the trademark is unique and only appears in language in connection to, as is the case with "Jedi", or would be the case with "Optimus Prime". Neither Lucas nor Hasbro needs to put out a branded range of snow shovels with that name for me to infringe on their trademark with my own line of spades, and it'

      • by bws111 (1216812)

        The sole purpose of trademarks is to protect buyers; it is not to give companies additional revenue sources.

        Says who? Not the SCOTUS, which summed it up as:

        "[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost's of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that the item with this mark is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the fina

    • Yes, there is a way that this is not a textbook application of trademarks. Does LucasFilms sell a product similar to the defendant in this case using the "Jedi" trademark? If they do not, then there is no trademark infringement.
      In this case, I think that LucasFilms does actually sell products in a close enough market segment that there is a possibility of confusion. However, I have recently noticed a tendency of entertainment companies (and some others) to try and prevent people in unrelated industries fro
      • Yes, you would be. And rightly so. Because by calling it an "ewok shelter" you are clearly creating a connection to the brand that you do not have a legal right to. They sell a range of products with the word "ewok" in it and they can't risk brand dillution. Not to mention it's dishonest to consumers as it is entirely reasonable that someone would mistake your products for official star wars merchandise based on the name and product description.
  • by Tar-Alcarin (1325441) on Wednesday August 25, 2010 @04:17AM (#33366640)

    There is no trial.

  • by Rogerborg (306625) on Wednesday August 25, 2010 @04:20AM (#33366652) Homepage
    Jedi is a word that they made up, and which they clearly use and continue to use as a trademark (irrespective of whether it's registered as such).

    Further, trademarks are use-them-or-lose-them: if they don't defend it from "Jedi Mind", then they'll lose the ability to stop OfficialJediJailbailSlutsInYourZipCode.com from appropriating it too.

    I'm sure "Jedi Mind's" products are really neat, but if so, they can survive on their own merits, with their own original name, rather than piggybacking on Lucas' creation. Trademarks are not patents, and you don't break Wheaton's Law [wikipedia.org] by having and defending them.

    • Re: (Score:2, Insightful)

      by arose (644256)
      Where is LucasFilm's mind control software, that is named, or includes the word, Jedi to be confused with this?
      • by Rogerborg (306625)
        Good point, and if LucalFilm don't intent to pimp underage Star Wars themed hookers, then OfficialJediJailbailSlutsInYourZipCode.com doesn't infringe either.
      • by gman003 (1693318)

        It doesn't have to be something they actually produce, as long as a reasonable person could confuse it with properly-licensed merchandise. I, as a reasonable person, would not be too surprised to find an actual Jedi-branded "mind control" system. Actually, I think I saw one is ToysRUs once.

        Were it a "Jedi-brand Lawnmower" or "Jedi-brand Golf Club (aka Golfsaber)", it might be different, but for something Lucas could reasonably make, and which a reasonable person might think is actually related to Star Wars,

    • by martin-boundary (547041) on Wednesday August 25, 2010 @04:39AM (#33366720)
      Welcome®to® the® 21st® century,® where® using® words® as® a® trademark® is® just® like® owning® a® trademark,® only® cheaper®!

      Thanks®, Rogerborg®!

      P.S. Please pick a new /. login, it looks like someone registered yours.

    • Re: (Score:2, Interesting)

      by Anonymous Coward

      No the word Jedi is not made up, it was borrowed from Japanese.

      Lucas said in an interview that he was inspired by a Jidai Geki (samurai-era soap opera) on TV during a visit to Japan.

      You have failed me for the last time!

      • by delinear (991444)
        Well unless this company is called Jidai Mind, they're certainly using the word that he modified for his own purposes. In fact, if they used the alternate spelling that seems like it would be a perfectly valid defence, the only reason to use Lucas' spelling is to associate their product with his fictional universe - even if Lucas isn't in a competing market, it's still more than likely going to fall foul of trademark dillution.
    • by yyxx (1812612)

      If there is no reasonable possibility of confusion of a "Jedi" product from Lucas Film and the "Jedi Mind" product, there should be no trademark protection, nor a need to defend the trademark.

      • Re: (Score:3, Informative)

        by Sockatume (732728)

        Well, there's the licenced Star Wars brand mind-controlled toy [cnet.com], for a start.

        • by delinear (991444)
          There's also dillution to consider. Just because Disney don't currently sell Mickey Mouse smartphones, it doesn't mean they'd never intend to or that they'd be happy for a phone vendor to use the name in such a way. And it's still suggesting an endorsement of the product by Lucas which simply doesn't exist, so even though there's no product to be confused about, there is nevertheless plenty of opportunity for consumers to be confused.
  • Is now an enemy of my intellectual property!

    Do what must be done!

  • I am guessing this what George felt when he typed Jedi and into Google and Star Wars or George Lucas we're not the first results to come up! Then he summoned all the power of the force ( herein known as George's legal team ) ( He tried to rally the Sand People as they are always willing to fight , but they said they couldn't help due to being written out of the last 5 of George's movies ) to help battle back against those that would rebel against the good of the force ( also known as George's profit margin
  • by Roblimo (357) on Wednesday August 25, 2010 @05:29AM (#33366888) Homepage Journal

    George Lucas reputedly loves all those fan films and Lego Star Wars characters. At the same time, the Lucas companies must sue trademark infringers now and then if they want to retain their trademarks.

    But, as I learned some years ago while defusing a DMCA complaint against a SourceForge project that had some Lucas IP in it, if you *ask Lucasfilm politely* for permission to use their trademarks, they'll probably give it to you -- and probably won't want any money if you're a small-timer.

  • by erroneus (253617) on Wednesday August 25, 2010 @06:18AM (#33367108) Homepage

    It takes something of an imbecile to not realize that Lucas would go after him after using the word Jedi. Anyone who would use the word in that context knows exactly that they are referencing the Jedi depicted in Star Wars movies, books, comic books, video games, cartoons, TV series and probably breakfast cereals. (* Silly Sith! Mind tricks are for Jedis! *) There are plenty of other words he could have used that would have been just as good or even better. And when I went to the company's site, I saw a video that depicted a computer input system that, while seemingly impressive, cannot possibly do exactly what it says it does. Tracking head movement? Yeah, I'm down with that. Tracking eye movement and blinking? Pretty damned cool. "Think left, Think right?" I'm more than a little skeptical on that notion. Sounds like the early days of voice recognition 20 years ago and we STILL don't have that right.

    I usually side with the other guy on various issues when it comes to Darth Lucas, but in this case, no... not at all. The only thing that protected Foutch from the full wrath of Darth Lucas was the fact that this is a product for the disabled. Imagine the stink over claims like "hey, George Lucas hates disabled people!"

    Foutch is a huckster and a scam artist in my opinion. Everything about what I have seen so far just spells it out to me.

    • by Dunbal (464142) *

      Actually since Jedi represents a religion [wikipedia.org] with at least half a million followers according to census data, there may be an exception.

  • Just change the name to "Strong Force"... which should in one simple stroke protect them from litigation by picking a name generic enough to pass any reasonable muster, and at the same time tell Lucas films (and their legal dept.) to kiss their pink fuzzy butts.

    Apple went through a similar problem. After adding a new synthesizer to the machine, they placed a bunch of new sounds, and one, a chime sound ran afoul to the legal dept. because they had just resolved a standing lawsuit regarding the use of musical

  • Next, the Lucas Rebel Attorney Alliance turns their attention to Uncle Jed and sues the estate of Paul Henning.

  • by fair use (948368) on Wednesday August 25, 2010 @08:09AM (#33367766)

    The original post confuses trademark law.

    Under common law, all you have to do get trademark rights is to use a particular mark, although whether you can actually prevent any one else from using the mark depends on a lot of factors, e.g., your mark should be distinctive and you should be the first to use it for a particular type of product.

    In addition to any common law rights, you can also get a federal trademark registration, which gives you the right to use the circle R symbol (note that it is against the law to use the circle R symbol unless you have a federal registration). Having a federal registration gives you some advantages over a common law trademark: (1) you get a presumption that you use the mark nationwide (as opposed to a particular geographic region), and (2) you can sue in federal court if someone infringes your trademark.

    Even if you have a federal registration, you only have rights to a mark if you actually use it. If you get a federal registration on a mark, but stop using it, then that mark becomes available for someone else to use.

    Trademark law is very different from patent/copyright law and serves a much clearer purpose -- people need to know the real source of the products they buy.

  • Lucas just wants to "wet his beak."*

    *"Wet his beak"(TM) is a trademark of Francis Ford Coppola, all rights reserved.

  • But I just remembered that I filled out a Canadian census card a few years ago just to register my religion as Jedi.

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