Overlapping rights: the negative effects of trademarking creative works

Abstract

On 10 December 2012, Judge Gutierrez of the District Court for the Central District of California granted Warner Brothers Entertainment Inc. (‘Warner Bros.’), New Line Cinema LLC (‘New Line’), Metro-Goldwyn-Mayer Studios Inc. (MGM) and The Saul Zaentz Company (SZC) a motion for a temporary restraining order on the movie, Age of the Hobbit – Before There Was Man, which was scheduled to be released on home video format (direct-to-DVD) the following day. The movie was produced by Asylum, a company notoriously dedicated to releasing ‘mockbuster’ movies – low-budget movies piggy-backing on the fame of major films. According to the plaintiffs, Asylum was attempting to free-ride on the much-expected success of The Hobbit: An Unexpected Journey (‘The Hobbit’), one of the blockbuster movies of the season, which was set to open in the United States on 14 December 2012. In a thirty-two-page decision, Judge Gutierrez agreed that the movie from Asylum infringed upon the plaintiffs’ rights in The Hobbit movie. Contrary to what many would have thought, however, the complaint was not based on a claim of copyright infringement alleging that Asylum copied substantially similar features of The Hobbit movie. Instead, the plaintiffs claimed that Asylum had infringed upon their trademark rights in the mark The Hobbit, which was registered, inter alia, for posters and printed materials. In particular, the plaintiffs claimed that the use of the wording ‘the hobbit’ on the part of Asylum amounted to trademark infringement, false designation of origin, and trademark dilution. Most likely, the plaintiffs resorted to trademark law, instead of copyright law, to avoid Asylum’s counter-argument that its movie was not copyright infringement but was, instead, a parody of The Hobbit movie – parodies, by definition, must ‘conjure up’ enough of, and are necessarily similar to, the original work. Ultimately, the strategy adopted by the plaintiffs paid off. Judge Gutierrez agreed that Asylum’s use of the wording ‘the hobbit’ in the title of Asylum’s movie was trademark infringement because it could engender a likelihood of consumer confusion. A triumphant Warner Bros. told the Hollywood Reporter that ‘[t]his [legal] victory underscores the importance of protecting the unique work of our industry’s creative community from companies like Asylum’.

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