A California federal judge has granted Warner Bros.' motion for a temporary restraining order on Age of the Hobbits, a low-budget movie the studio contends is confusingly similar to its own Peter Jackson blockbuster The Hobbit: An Unexpected Journey, which opens Dec. 14.
The Hobbit studios Warner Bros., New Line Cinema, MGM and producer Saul Zaentz first objected to the so-called "mockbuster" from The Asylum in late August, contending that it infringed trademarks with respect to the title, design and promotional materials. A lawsuit was filed last month.
The Asylum defended itself by saying that it had fair use to use "Hobbits," saying the word referred to a real-life human subspecies, Homo Floresiensis, discovered in 2003 in Indonesia.
But on Monday, California federal Judge Philip Gutierrez agreed with the plaintiffs in a 32-page ruling.
"The majority of factors weigh in favor of a finding of likelihood of confusion, and no factor weighs against such a finding," he wrote. "Moreover, the finding is particularly strong on the three factors that courts have found to be the most important, especially in the context of the Internet: similarity of the marks, relatedness of the goods and use of similar marketing channels."
The Asylum is known for its low-budget films that often trade on the hoopla surrounding major Hollywood releases. Past films from the company include 2012 Doomsday, Transmorphers: Fall of Man, Battle of Los Angeles and American Warships -- which originally was titled American Battleship until Universal sued to have it changed shortly after that studio's Battleship hit theaters. The movies have gotten underneath Hollywood's skin over the years, but thanks in part to a 1993 court ruling over a rip-off of Disney's Aladdin, many believed there wasn't much legal recourse.
Age of the Hobbits was scheduled to be released Tuesday; The Hobbit hits theaters Friday.
In his decision, Gutierrez pointed to a trademark registration from the plaintiffs on "Hobbit," covering "printed matter, namely posters, art prints, postcards" and says that it covers Asylum's use of the term in its posters promoting its own movie. The word "Hobbit," however, isn't covered in any trademark registration as a movie title, leading the judge to consider whether the mark is distinctive and has developed a secondary meaning in the marketplace.
The judge was impressed with the evidence of consumer association on "Hobbit," including a survey conducted by plaintiffs of randomly selected respondents. "The survey results showing that nearly 50 percent of respondents associated the term 'Hobbit' with the trademark holder is thus persuasive evidence that the Hobbit Marks have acquired secondary meaning," he wrote.
After determining that, Gutierrez moved on to the issue of likelihood of confusion. The Hobbit's makers can't claim exclusive rights to fantastical images of swords, mythical creatures and the like, but the judge saw the imagery in the posters in connection with the use of the term "Hobbit" and said that "one is immediately struck by the similarity." Even the slight difference in titles isn't enough to avoid confusion, he added.
As for Asylum's contention that "Hobbit" is separate from the J.R.R. Tolkien universe, the judge didn't buy it.
"Asylum's argument appears to ignore the connection between the term used to describe Homo Floresiensis and Tolkien's hobbits," the judge writes. "Asylum treats the use of the two terms as completely unrelated, but the terms are in fact closely related: Scientists gave Homo Floresiensis the nickname 'Hobbit' because its appearance resembled Tolkien's hobbits, as described in his novels. … Given that Homo Floresiensis received the nickname 'Hobbit' specifically because of its resemblance to Tolkien's fictional hobbits, the Court finds Asylum's argument that its movie is wholly unrelated to Tolkien's work because it is about Homo Floresiensis to be disingenuous."
The judge also went into the so-called Rogers defense, which emanates from a famous case where Ginger Rogers objected to the Frederico Fellini film, Ginger and Fred. The case established some form of right to use a trademark in an expressive work of speech so long as there is artistic relevance. But in order to use the Rogers defense, the judge noted that Asylum would have to show that its use of "Hobbit" relates to or references the trademarked term. "Asylum has made no such showing," he ruled. "In fact, Asylum asserts just the opposite: that the film title in no way relates to Tolkien's hobbits."
Finally, the judge determines that the Age of the Hobbits title is explicitly misleading.
Warner Bros. tells The Hollywood Reporter in a statement, "This victory underscores the importance of protecting the unique work of our industry's creative community from companies like Asylum, whose cynical business model is designed to profit from the work of others. Their intent to create confusion in the marketplace on the eve of release of 'The Hobbit,' one of the most anticipated films of the year, has met with defeat."
Gutierrez has set a Jan. 28 hearing date to consider whether the TRO should become a preliminary injunction. The full ruling is below.
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