Repost from a bulletin from the Media & Sport Group at DLA Piper

FILM

Producers of The Hobbit movie bring claim against ‘Age of the Hobbits’ makers for trademark infringement.

The film studios behind The Hobbit films have filed a lawsuit in the U.S. District Court in Los Angeles against The Global Asylum Inc. (“The Asylum”), makers of ‘Age of Hobbits’.

Warner Bros. Entertainment Inc., New Line Cinema LLC, New Line Productions, Inc, Metro-Goldwyn-Mayer Studios Inc. and The Saul Zaentz Company d/b/a Middle-Earth Enterprises (the “Plaintiffs”) own the exclusive rights to produce and distribute films based on the classic literary works of Professor J.R.R. Tolkien, including The Lord of the Rings trilogy and The Hobbit, which follow the adventures of fictional creatures called “Hobbits”.

The Asylum is an American film studio which produces low budget films and ‘mockbusters’ as dubbed by the press due to their similarities to major film studios’ productions. The Asylum intends to premiere its ‘Age of the Hobbits’ on DVD/VOD in the United States on 11 December 2012, just three days prior to the Plaintiffs’ domestic theatrical release of ‘The Hobbit: An Unexpected Journey’.

In their complaint the Plaintiffs state that “The Asylum has been and is promoting and advertising its low-budget film using the confusingly similar and misleading title Age of the Hobbits, in an intentional and willful attempt (i) to trade on the popularity and goodwill associated with the Tolkien novels, the extraordinarily successful Lord of The Rings film trilogy, and the famous HOBBIT mark, (ii) to free-ride on the worldwide advertising campaign in connection with the forthcoming Hobbit Films, and (iii) to divert customers and potential customers away from the Hobbit Films.”

The Plaintiffs have started this civil action for trademark infringement, false designation of origin, false advertising and trademark dilution (among other claims) and are petitioning the court to:

(i) grant an injunction prohibiting The Asylum from committing further infringing acts;

(ii) order The Asylum to deliver up for destruction all DVDs, DVD covers, posters, trailers, advertisements, brochures and other materials in its possession that bear the ‘Age of the Hobbits’ title, use the HOBBIT Marks, the Hobbit Films’ titles or distinctive title design, or images from the Lord of the Rings or Hobbit films, advertisements, or merchandise, etc.;

(iii) order that The Asylum engage in corrective advertising to disclaim any association between Plaintiffs and The Asylum, to remedy the actual and potential customer confusion in the marketplace;

(iv) award compensatory damages and lost profits in an amount according to proof, and exemplary or punitive damages to the extent permitted by law;

(v) award actual damages for trademark infringement;

(vi) order that The Asylum account to and pay over to Plaintiffs all profits derived from its infringement;

(vii) make a costs award in favour of the Plaintiffs; and

(vii) order an asset freeze or constructive trust over all monies and profits in The Asylum’s possession which rightfully belong to Plaintiffs.

The Asylum defends its movie, stating it to be legally sound and claiming its hobbits are not based on the Tolkien creations. Prior to the action being filed by the Plaintiffs, The Asylum released a statement that “Age of the 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.” It added that the term is therefore “protected under the legal doctrines of nominal and traditional fair use”.