In August of this year, Warner Brothers finally announced the release of Age of the Hobbits, Peter Jackson’s long-awaited follow-up to his Lord of the Rings trilogy, based on J.R.R. Tolkien’s famous fantasy novels. Age of the Hobbits tells the tale of a clever group of diminutive Indonesian tribesmen who convince Chinese actress Bai Ling to save them from a hoard of cannibals mounted on flying Komodo dragons.
Wait a second. Does that sound right? Actually, the Warner Brothers film is called The Hobbit: An Unexpected Journey, scheduled to be released in theaters on December 14, 2012. Age of the Hobbits, on the other hand, has nothing to do with Warner Brothers. Or with Peter Jackson. Or even with J.R.R. Tolkien, if you believe Global Asylum, Inc. (aka The Asylum), the company that produced Age of the Hobbits and is planning its straight-to-video release at the same time the Warner Brothers film comes out.
This past Wednesday, Warner Brothers and several other companies associated with Jackson’s films brought suit against the Asylum in the Central District of California for trademark infringement. According to the plaintiffs, the Asylum’s business model is to produce low-budget knockoffs, which it calls “mockbusters,” that are confusingly similar to studio blockbusters. It then diverts publicity and sales from the blockbuster to the mockbuster by releasing it around the same time. For example, the complaint alleges that the Asylum’s release of Abraham Lincoln v. Zombies confused consumers into thinking they were purchasing Abraham Lincoln, Vampire Hunter, a 20th Century Fox release.
Warner Brothers further alleges that, despite the “mockbuster” moniker, Age of the Hobbits does not actually mock or criticize either the Jackson or the Tolkien works, and therefore does not deserve protection as a trademark parody. Although the Asylum has not yet answered the complaint, early indications are indeed that it will not employ a parody defense. According to the Hollywood Reporter, the Asylum has stated that:
Age of Hobbits is about the real-life human subspecies, Homo Floresiensis, discovered in 2003 in Indonesia, which have been uniformly referred to as ‘Hobbits’ in the scientific community . . . As such, the use of the term ‘Hobbits’ is protected under the legal doctrines of nominal and traditional fair use. Indeed, a simple Google search of Hobbits and archaeology reveals dozens of articles containing the term “Hobbit(s)” in the title.”
“Traditional” fair use is when a “defendant has used the plaintiff’s mark only to describe his own product, and not at all to describe the plaintiff’s product.” Mattel Inv. v. Walking Mountain Productions, 353 F. 3d 792 (9th Cir. 2003). For example, the use of the term “burger” is permissible to advertise a hamburger stand, even when another hamburger stand is already using that word. “Burger” simply describes a type of product, not a specific business.
Nominative fair use, on the other hand, is where the use of a mark is “grounded in the defendant’s desire to refer to the plaintiff’s product as a point of reference for defendant’s own work.” Id. For example, an automobile repair shop may, within reason, use of the term Volkswagen to advertise that it fixes Volkswagens. See Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969). The repair shop is certainly using the mark to refer to a specific company, but not in such a way that consumers are confused into thinking that the repair shop actually makes the cars or is affiliated with that company.
The Asylum’s public statements appear to indicate that it will proceed principally on the traditional fair use tack, arguing that the term “hobbit” is descriptive of a subject matter far exceeding its association with Tolkien, such that Age of the Hobbits really has nothing to do with the Peter Jackson films. However, some advertising for the film explicitly refers to Tolkien. For example, posters for the film announce:
They’re Not Tolkien’s Hobbits. . . They’re Real.
So, will the Asylum rely on nominative fair use, arguing that the poster refers to Tolkien as a point of reference and is not confusing to consumers? Or, rather, will the Asylum stick to the defense of traditional fair use, asserting that the term “hobbit” is simply descriptive of a pre-historic subspecies of humans, and the poster is only confirming that fact? And is it permissible, or logically consistent, to try to argue both at the same time?
Hobbits famously get two breakfasts. It remains to be seen whether “mockbusters” get two fair use defenses.