PASADENA, Calif. (CN) – A panel of the 9th Circuit seemed unlikely Monday to let a producer of blockbuster knockoffs use the title “Age of the Hobbits” for a new movie.
Last year, Warner Bros. Entertainment, New Line Cinema, New Line Productions, Metro-Goldwyn-Mayer Studios and The Saul Zaentz Co. sued Global Asylum aka The Asylum of Burbank for trademark infringement in Federal Court.
The subject of the studios’ ire was the straight-to-DVD movie, “Age of the Hobbits,” featuring cover art that the studios said had the look and feel of the imagery and typography used to promote its multibillion “Lord of the Rings” franchise.
Asylum attempted to take advantage of the blockbuster’s marketing and publicity by releasing its $2 million movie three days before Peter Jackson’s “The Hobbit: An Unexpected Journey” opened in the United States late last year, the studios said.
In its defense, Asylum claimed that its movie was about an extinct subspecies of humans called homo floresiensis. They were small enough to earn the nickname “hobbit” by some in the scientific community. Nine skeletal remains of this species were found in 2003 on the island of Flores in Indonesia.
The studios pointed out, however, Asylum’s penchant for making “mockbusters,” having previously tried to cash ins on Hollywood hits “Transformers,” “High School Musical,” “The Da Vinci Code,” and “Sherlock Holmes.”
In January, U.S. District Judge Phillip Gutierrez enjoined Asylum from distributing its film with the title the “Age of the Hobbits” or any other “confusingly similar” title.
Asylum is likewise forbidden from using “The Hobbit” marks on the DVD disc, packaging or marketing materials.
On Monday, Asylum’s attorney Scott Meehan argued that nominative fair use shields the company under trademark law. Under the legal doctrine, Asylum is allowed to use the studios’ trademark because its movie would not be “readily identifiable” without it, Meehan said.
The attorney appeared to be fighting an uphill battle.
“If you look at this record as a whole, I think the district judge was entitled to conclude that this was an attempt to piggyback onto an existing work and an existing movie that was coming out,” Judge Andrew Hurwitz said. “I don’t think there’s any denial of that in the record.”
Meehan insisted, though, that the company’s intention in making the movie has no bearing in determining whether to uphold the preliminary injunction under nominative use.
“Every plaintiff that attacks a defendant’s nominative fair use is going to say ‘Hey, they’re riding our coattails,'” Meehan said. “That’s the argument that every plaintiff makes against a nominative fair use defendant.”
Warner Bros. attorney Andrew Thomas with Los Angeles firm Jenner and Block said that there was nothing in Asylum’s movie that could protect it against the injunction. Calling the film a “vehicle for consumer confusion,” he said that the company had to show that it was commenting on the “The Hobbit” trademark.
“There’s nothing about this film that refers to or comments on the Warner Brothers’ movie or any trademarked product,” Thomas said. “It’s not a documentary, it’s not a parody, it’s not commenting on the trademark in anyway.”
Judge Richard Paez asked the attorney if Asylum had attempted to market the film under a different title.
Thomas told the court that the movie has since been sold under two titles: “Clash of the Empires” and “Lord of Elves.”
The latter title could confuse consumers, Thomas warned, and may lead to more litigation “at some point.”
New Line owns the rights to “The Lord of the Rings” film trilogy, based upon J.R.R. Tolkien’s bestselling novels. The next installment in “The Hobbit” trilogy, “The Desolation of Smaug,” is due out later this year.
Judge Ferdinand Francis Fernandez joined Judge Paez and Judge Hurwitz on the panel.
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