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judge_ageofhobbits_posterLast year, the Global Asylum, Inc . (Asylum) announced plans to release Age of the Hobbits just a few days before New Line’s The Hobbit: An Unexpected Journey  was set to hit theatres. Age of Hobbits deals with a species discovered by archaeologists in 2003.  Scientists initially considered naming the new species “homo hobbitus”,” but settled on “homo floresiensis.”  In Age of Hobbits, the homo  floresiensis face off against komodo dragon worshipping cannibals.

Nerds in Court reported the issuance of a temporary restraining order against Asylum last December, and a preliminary injunction was later ordered January 29, 2013.  Asylum appealed this ruling, but on October 30th, the Ninth Circuit Court of appeals affirmed the District Court’s injunction restraining the mockbuster from being named “Age of the Hobbits.”

On appeal, Asylum argued that the Plaintiffs Warner Brothers Entertainment Inc., New Line Productions Inc., Metro-Goldwyn-Mayer Studios, Inc., Saul Zentz Company, and New Line Cinema, LLC’s (the Studios) were unlikely to succeed on their trademark infringement claim regarding the term “Hobbit.”  Asylum claimed that it was entitled to nominative fair use to the term because scientists nicknamed members of the species homo floresciensis “Hobbits.”

In support of its argument, Asylum tried to invoke an exception to the nominative use factors set forth in New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992).  Once upon a time, the New Kids on the Block sued The Star for offering fans a paid poll to vote which New Kid was “the sexiest.”  The New Kids’ suit failed because The Star did not name the group to imply endorsement or false advertisement.  For the nominative fair use defense to apply (1) the Defendant’s product or service must be “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he sponsorship or endorsement by the trademark holder.

Later courts held that a district court may order Defendants to modify their use of a trademark to satisfy the New Kids requirements for nominative fair use rather than joining nominative uses altogether. Toyata Motor Sales, USA, Inc. V. Tabari, 610 F.3d 1171, 1176 (9th Cir. Cal. 2010).

In refusing to modify the injunction to allow nominative use of the “Hobbit” trademark, the appellate Court noted that Asylum did not offer any specific language regarding “how the injunction should be modified to allow nominative uses of the protective trademarks while prohibiting Asylum’s infringing uses.”  The Ninth Circuit held that since no suggestion was offered by Asylum, there was no “abuse of discretion” by the District Court issuing the injunction.

Read the Ninth Circuit’s reasoning here.

About Nerds in Court

John G. Nowakowski, Esq. (LLMT), is a graduate of the University of San Diego School of Law, and is licensed to practice law in California and Nevada. Christina R. Evola, Esq. is a recent graduate of the University of San Diego School of Law where her studies focused on intellectual property, antitrust, and media law. She is a lifelong gamer and avid cosplayer. DISCLAIMER: ‘Nerds in Court’ is for entertainment purposes only. Nothing should be construed as legal advice, or any advice for that matter, and no attorney-client relationship is formed by reading these posts. Do not consider information provided here as a substitute for obtaining legal advice from a qualified, licensed attorney in your state.


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