Tuesday, December 18, 2012

The Hobbit: An Unexpected Journey in Trademark Disputes

The movie “The Hobbit: An Unexpected Journey” opened this last weekend, apparently setting a new attendance record for the month of December.

Only last week, the movie’s producers successfully stopped the release of the movie “Age of the Hobbits,” a “mockbuster” film produced by The Global Asylum, Inc. (producers of such other films as “Transmorphers,” “Snakes on a Train” and “Titanic 2”).  Warner Brothers Entertainment, New Line Cinema, Metro-Goldwyn-Mayer Studios and The Saul Zaentz Company, owners of the exclusive rights to produce and distribute films based on The Hobbit and The Lord of the Rings novels by J.R.R. Tolkien, sued Global Asylum for trademark infringement, false designation of origin, trademark dilution, false advertising and unfair competition.  (The Saul Zaentz Company also owns several trademark registrations for HOBBIT and the individual movie titles in the intended Hobbit series).

One could certainly understand the producer’s concern given the scheduled release of “Age of the Hobbits” only a few days before “The Hobbit” – except that the Global Asylum movie was being released straight to video, and the cover material stated “they’re not Tolkien’s hobbits…they’re real” and identified its stars as “Bai Ling” and “a guy from  Stargate SG-1.” 
I remember a friend telling of a “ruined” girls’ movie night when the participant responsible for the movies picked up the Charles Bronson action movie “Murphy’s Law” instead of the intended romantic film “Murphy’s Romance” with James Garner and Sally Field.  Yes, the person made a mistake based on the titles of the respective movies.  Being personally unfamiliar with the movie, she had requested help at the video store and accepted the clerk’s interpretation of her rather garbled description.  Those who had suggested the movie, however, knew immediately that the wrong movie had been selected, and even the person making the mistake acknowledged that she should have known by looking at the DVD cover.   While there was confusion in the selection of the movie, there was never any confusion about the movies themselves or their respective “sources”. 

If I sound a little annoyed with the plaintiffs in this matter, you should know that only a few years ago, my partner Norm Abramson also journeyed to “Middle Earth” in the defense of a trademark infringement claim by Saul Zaentz relating to the HOBBIT mark.

The lawsuit was brought in 2006 against Hobbit Travel, which at the time, had been in business for 30 years.  Hobbit Travel’s substantial business and significant marketing and promotion were strong evidence of constructive knowledge of the plaintiffs’ awareness of the company, and the plaintiffs’ own search reports showed actual knowledge of Hobbit Travels’ use of the mark since 1984.  The suit was eventually dismissed on the basis of laches, an equitable defense based on the plaintiff’s failure to timely object to Hobbit Travel’s use of its name.  In a more succinct explanation of laches, the trial judge asked Saul Zaentz in the oral argument if it had “been sleeping under a rock” with regard to Hobbit Travel.  Unfortunately, this result was achieved only after a lengthy and costly battle in response to the plaintiff’s scorched earth approach. 

Admittedly the current case is very different – it is, after all, about a film vs. a film.  There are, no doubt, many legitimate concerns in this instance.  In my view, however, the plaintiffs have hurt their credibility by having targeted anyone using “hobbit.”  Had they been more reasonable in their prior challenges regarding Hobbit Travel and others, it might be easier to take the current case more seriously.  As it is, I wonder about their faith in their own brand if they are that concerned that this low-budget film about cannibals (no, the hobbits are not the cannibals, they are the meal) will really be confused with the plaintiffs’ other productions.

Although a hearing is set for January 28, 2013 to determine whether the restraining order will be converted to a preliminary injunction, lots can happen in the meantime.  Already, there has been an announcement that “Age of the Hobbits” may have a theatrical release in Cambodia (where it was filmed) under a different title.  But don’t count out Global Asylum.  The mockbuster is its bread and butter, and they have successfully defended claims similar to those being leveled against them in connection with “Age of the Hobbits.”  It is possible that the action between Warner Bros. and Global Asylum may be more interesting than either movie.

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