This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
Recently, Warner Brothers Entertainment ("Warner Brothers") released in theaters its highly anticipated film, The Hobbit: An Unexpected Journey, based on J.R.R. Tolkien's first Middle-earth fantasy novel, The Hobbit. Days before the release, Judge Philip S. Gutierrez of the United States District Court for the Central District of California enjoined another production company, Global Asylum, from releasing its film entitled Age of Hobbits, finding a "substantial likelihood that consumers will be confused by Age of Hobbits and mistakenly purchase the film intending to purchase The Hobbit: An Unexpected Journey."
Global Asylum ("Asylum") is a production company that creates "mockbusters" – low-budget parodies of major films that often have titles similar to the major releases. Asylum's film Age of Hobbits is about a recently discovered species of pre-historic humans that lived in Indonesia. Asylum planned to release its film directly to DVD, Blu-ray, and internet sources days before Warner Brothers' theatrical release of The Hobbit: An Unexpected Journey until Judge Guttierez issued his restraining order.
Warner Brothers, New Line Cinema, LLC, Metro-Goldwyn-Mayer Studios, Inc., and The Saul Zaentz Company ("Plaintiffs") claim that Asylum's production of the mockbuster and use of the word "Hobbit" in the title violate their exclusive rights to produce and distribute films based on Tolkien's novels, including "The Hobbit," and their trademarks in various uses of the word "Hobbit."
When Plaintiffs initially issued a cease and desist letter targeted at the Age of Hobbits film, Asylum responded by changing the design of its promotional material to avoid using the gold, stylized font in the title, similar to that used in the promotion materials for The Hobbit: An Unexpected Journey. But Asylum refused to remove the word "Hobbit" from the film title, asserting that the word "Hobbit" refers to the human sub-species Homo Floresiensis, which was nicknamed "hobbits" by the scientists who discovered it.
On November 7, 2012, Plaintiffs sued Asylum for trademark infringement, false designation of origin, trademark dilution, false advertising, and violation of state laws governing unfair competition. Later that month, Plaintiffs filed an ex parte application for a temporary restraining order to enjoin the scheduled December 11, 2012 release of Asylum's film.
The Court found that the majority of factors weighed in favor of enjoining the release of Asylum's "Age of Hobbits," including the strength of the Hobbit Mark, the similarity of the products, the similarity of the titles, the low degree of care consumers use when purchasing low-cost items like a DVD, and Asylum's intent to deceive the public and free-ride on advertising and promotion for The Hobbit: An Unexpected Journey film by releasing Age of Hobbits within days of Plaintiffs' work. In fact, Nielsen National Research Group survey results showed a 16 to 24 percent confusion rate associated with use of the Hobbit Mark in the Age of Hobbits title. On the basis of all of these factors, the Court found a strong likelihood that the public would confuse the works and enjoined Asylum from releasing its film.
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