Case 2:12-cv-09547-PSG-CW Document 60
Filed 01/29/13 Page 1 of 23 Page ID #:1280
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
Present:
Date
January 29, 2013
The Honorable Philip S. Gutierrez, United States District Judge
Wendy K. Hernandez
Deputy Clerk
Not Reported
Court Reporter
Attorneys Present for Plaintiff(s):
n/a
Tape No.
Attorneys Present for Defendant(s):
Not Present
Not Present
Proceedings: (In Chambers): Order GRANTING Preliminary Injunction
Before the Court is this Court’s Order to Show Cause why the temporary restraining order
(“TRO”) issued on December 10, 2012, enjoining the release of the film “Age of Hobbits”
should not become a preliminary injunction. The Court heard oral arguments on the matter on
January 28, 2013. After considering the evidence submitted, the moving and opposing papers,
and the arguments offered at the hearing, the Court ISSUES a preliminary injunction.
I.
Background
On November 7, 2012,1 Plaintiffs Warner Brothers Entertainment, Inc. (“Warner
Brothers”), New Line Cinema, LLC (“New Line”), Metro-Goldwyn-Mayer Studios, Inc.
(“MGM”), and The Saul Zaentz Company (“SZC” and, collectively, “Plaintiffs”) brought this
action against Defendant The Global Asylum (“Asylum”) requesting that the Court enjoin the
planned release of Asylum’s film “Age of Hobbits.” See Dkt. # 1. On December 10, the Court
issued a TRO enjoining the film’s release under the title “Age of Hobbits” or otherwise using
Plaintiffs’ trademarks in the film promotion, advertising, or distribution. See Dkt. # 36. The
Court ordered Asylum to show cause why the temporary restraining order should not become a
preliminary injunction. Id.
The parties and the Court are familiar with the facts of this matter and, therefore, they will
be summarized here only briefly. Plaintiffs own the exclusive rights to produce and distribute
films based on J.R.R. Tolkien’s (“Tolkien”) novels “The Hobbit” and “The Lord of the Rings”
(collectively, “the Tolkien Works”). Drotos Decl. ¶¶ 7-17. SZC also owns various trademarks
in the Tolkien Works, which include trademarks in various uses of the word “Hobbit” (“the
1
All subsequent dates refer to 2012, unless otherwise specified.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
Hobbit Marks”). Id. ¶ 6. New Line owns licenses to produce films of the Tolkien Works and
produces such films in association with Warner Brothers and MGM (collectively with New Line,
“the Studios”). Id. ¶¶ 17-18. On December 14, the Studios released the first in a series of three
new films to be released over the next three years: “The Hobbit: An Unexpected Journey.”
Asylum is also a film production company. Thomas Decl. ¶¶ 11-13. Asylum produced a
film entitled “Age of Hobbits,” which was scheduled for release to DVD, Blu-ray, and internet
sources on December 11. According to Asylum, “Age of Hobbits” is about a recentlydiscovered species of pre-historic humans that lived in Indonesia and was nicknamed “hobbits”
by scientists. Bales Suppl. Decl. ¶ 3. The December 11 release date was three days before the
Studios’ release of “The Hobbit: An Unexpected Journey.”
Plaintiffs contend that “Age of Hobbits” infringes on their trademark rights in the Hobbit
Marks in violation of the Lanham Act, 15 U.S.C. §§ 1051, et seq. Plaintiffs contend that
Asylum is liable both for trademark infringement pursuant to 15 U.S.C. § 1114 and trademark
dilution pursuant to 15 U.S.C. § 1125. On December 10, the Court issued an order concluding
that Plaintiffs were likely to succeed on the merits of their claim. The Court dedicated the
majority of its analysis to Plaintiffs’ claim for trademark infringement. However, because
Asylum had failed to address the merits of Plaintiffs’ trademark dilution claim, the Court also
concluded that Plaintiffs were likely to succeed on that claim as well. Accordingly, the Court
issued a TRO enjoining the scheduled release of “Age of Hobbits” (“TRO Order”). See Dkt. #
36. The Court now considers the parties’ arguments regarding why the TRO should not become
a preliminary injunction.
II.
Legal Standard
A preliminary injunction is an “extraordinary and drastic remedy.” Munaf v. Geren, 553
U.S. 674, 689 (2008) (quotation marks and citation omitted); see also Winter v. Natural Res.
Def. Council, 555 U.S. 7, 24 (2008). A party seeking a preliminary injunction must make a
“clear showing” of each of the following elements: (1) a likelihood of success on the merits, (2)
a likelihood of irreparable injury to the plaintiff if injunctive relief is not granted, (3) a balance
of hardships favoring the plaintiff, and (4) an advancement of the public interest. See id. at 20,
22. A preliminary injunction may also be appropriate “when a plaintiff demonstrates that serious
questions going to the merits were raised and the balance of hardships tips sharply in the
plaintiff's favor,” so long as the other Winter factors are met. See Alliance for the Wild Rockies
v. Cottrell, 632 F.3d 1127, 1131-32 (9th Cir. 2011) (citation and modification omitted) (allowing
for a post-Winter “sliding scale” analysis in preliminary injunction inquiries where “the elements
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
of the preliminary injunction test are balanced, so that a stronger showing of one element may
offset a weaker showing of another”).
III.
Discussion
Asylum’s response to the Court’s OSC why the TRO should not become a preliminary
injunction addresses only the first element of the standard for a preliminary injunction: whether
Plaintiffs have demonstrated a likelihood of success on the merits. Asylum does not address
whether there is a likelihood of irreparable injury to Plaintiffs if injunctive relief is not granted,
whether the balance of hardships favors Plaintiffs, or whether a preliminary injunction would
advance the public interest. Because the Court found in Plaintiffs’ favor on these three prongs in
the TRO Order and Asylum does not contest the Court’s conclusions, the Court does not address
these elements again. The Court incorporates its earlier conclusions regarding these three
elements and finds in Plaintiffs’ favor on each of them. Accordingly, the Court only addresses
likelihood of success on the merits.
Furthermore, the Court only addresses Plaintiffs’ likelihood of success on the merits of
their trademark infringement claim and does not address whether Plaintiffs are also likely to
succeed on their claim for trademark dilution. At the TRO stage, Asylum appeared to concede
that Plaintiffs were likely to succeed on the merits of their trademark dilution claim because they
did not address any of the elements of trademark dilution and merely asserted a defense to
trademark dilution, which the Court found inapplicable. TRO Order at 4, n. 2. Again, Asylum
appears to concede that Plaintiffs can establish the four elements of trademark dilution, because
they do not address the merits of the claim but merely assert that their use of the trademarked
term falls within an exception to trademark dilution. Opp. 14:20-16:17. The Court does not find
it appropriate at this time to address the merits of Plaintiffs’ trademark dilution claim because the
issue has not been fully briefed by both parties. Further, because the trademark infringement
claim is dispositive as to the present motion for a preliminary injunction, it is not necessary to
additionally address whether Plaintiffs’ have also demonstrated a likelihood of success on their
trademark dilution claim. Accordingly, the Court now addresses whether Plaintiffs have
demonstrated a likelihood of success on their trademark infringement claim.
A.
Likelihood of Success on the Merits
To prevail on a claim of trademark infringement under the Lanham Act, a party “must
prove: (1) that it has a protectable ownership interest in the mark; and (2) that the defendant’s
use of the mark is likely to cause consumer confusion.” Dep’t of Parks & Rec. v. Bazaar Del
Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006).
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
i.
Date
January 29, 2013
Protectable Interest in the Mark
A trademark is a “word, phrase or symbol that is used to identify a manufacturer or
sponsor of a good or the provider of a service.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d
894, 900 (9th Cir. 2002). In the TRO Order, the Court concluded that Plaintiffs had a
protectable interest in the mark. TRO Order at 4-6. Asylum does not contest that Plaintiffs have
a protectable interest in the Hobbit Marks and there is nothing on the record that would
otherwise persuade the Court that Plaintiffs do not have a protectable interest in the mark.
Accordingly, the Court concludes that this prong is satisfied.
ii.
Likelihood of Confusion
“Likelihood of confusion exists when consumers viewing the mark would probably
assume that the goods it represents are associated with the source of a different product
identified by a similar mark.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408
F.3d 596, 608 (9th Cir. 2005). The Ninth Circuit employs an eight-factor test in determining
whether a likelihood of confusion exists. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49
(9th Cir. 1979). These Sleekcraft factors are: (1) the strength of the mark; (2) the proximity or
relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the
marketing channels used; (6) the type of goods and the degree of care customers are likely to
exercise in purchasing the goods; (7) the defendant’s intent in selecting the mark; and (8) the
likelihood of expansion into other markets. Id. Although the above factors are all appropriate
for consideration in determining whether likelihood of confusion exists, not all of the factors are
of equal importance or applicable in every case. See Downing v. Abercrombie & Fitch, 265 F.3d
994, 1008 (9th Cir. 2001). Specifically, the Ninth Circuit has stated that the three factors most
probative of confusion are the similarity of the marks, the relatedness of the goods, and the
marketing channels used. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir.
2000); Brookfield Commc’n, Inc. v. W. Coast Entm’t Corp, 174 F.3d 1036, 1054 (9th Cir. 1999).
In applying the Sleekcraft factors, the Ninth Circuit has admonished courts to be
“[m]indful that the sine qua non of trademark infringement is consumer confusion, and that the
Sleekcraft factors are but a nonexhaustive list of factors relevant to determining the likelihood of
consumer confusion.” See Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d
1137, 1142 (9th Cir. 2011). The factors, “not surprisingly, tend to overlap and interact.”
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002). For example, if a
finding on one element is weak, courts may require a stronger showing on other factors. Id. The
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
assessment of likelihood of confusion is predominately factual in nature. E&J Gallo Winery v.
Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992).
a.
Strength of the Mark
The strength of a trademark is evaluated in terms of its conceptual strength and its
commercial strength. See GoTo.com, 202 F.3d at 1207. Trademarks may be classified as
generic, descriptive, suggestive, arbitrary, or fanciful. See Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992). “The strongest marks—that is, those which receive the maximum
trademark protection—are ‘arbitrary’ or ‘fanciful.’” Entrepreneur Media, 279 F.3d at 1141.
“The weakest marks, entitled to no trademark protection, are ‘generic.’” Id. In between lie
“suggestive” and “descriptive” marks. Id. Fanciful marks are “made-up words with no
discernible meaning—such as Kodak film and Sony electronics.” Fortune Dynamic, Inc. v.
Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1033 (9th Cir. 2010). Arbitrary
words are “actual words with no connection to the product.” Id.
In the TRO Order, the Court concluded that the Hobbit Marks were either fanciful or
arbitrary, and so were entitled to the strongest trademark protection, especially given that
Plaintiffs had presented evidence that the mark has achieved actual marketplace recognition.
TRO Order at 7-9. The Court fully incorporates the analysis from the TRO Order and discusses
the strength of the mark only to the extent that there is new evidence before the Court that was
not available in connection with the TRO.
In its opposition to the preliminary injunction, Asylum contends that the Hobbit Mark is
neither arbitrary nor fanciful because the word “hobbit” appears in a list of supernatural
creatures in “The Denham Tracts,” an obscure publication released in 1895. Opp. 7:3-19;
Meehan Decl., Ex. 1 at 3; Second Suppl. Thomas Decl. ¶ 23, Ex. S. at 57. The word appears
buried deep within a list of supernatural creatures. Id. The text provides no description of the
“hobbit” to which it refers and the only indication that the word is meant to refer to a
supernatural creature is that it is included in a long list of other supernatural creatures of various
kinds, such as ghosts, centaurs, giants, demons, and spirits. Id.
This single example of the use of the term in a publication released decades before
Tolkien introduced the hobbit characters to the world of popular fantasy fiction does not change
the Court’s conclusion that the mark is fanciful. Fanciful marks are “‘coined phrases’ that . . .
have no commonly known connection with the product at hand.” Surfvivor Media, Inc. v.
Survivor Prods., 406 F.3d 625, 632 (9th Cir. 2005); Dreamwerks Prod. Grp. V. SKG Studio, 142
F.3d 1127, 1131 n.7, 1132 (9th Cir. 1998); Stark v. Diageo Chateau & Estate Wines Co., No. 12CV-90 (06/04)
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
CV-4385 YGR, 2012 WL 5388799, *13 (N.D. Cal. Nov. 1, 2012) (defining fanciful marks as
“words that are unknown or out of common usage at the time”); Rexel, Inc. v. Rexel Int’l
Trading Co., 540 F. Supp. 2d 1154, 1164 (C.D. Cal. Mar. 13, 2008) (“‘Fanciful’ marks consist
of ‘coined phrases’ that have no commonly known connection with the product at hand, while
“arbitrary” marks are “common words” that also have no connection with the actual product.).
“Such marks comprise words that are either totally unknown in the language or are completely
out of common usage at the time, as with obsolete or scientific terms. The fact that
lexicographers or devotees of antiquity may recognize the word is irrelevant to the fact that the
word is totally unfamiliar to the ordinary consumer.” 2 J. Thomas McCarthy, McCarthy on
Trademarks & Unfair Competition § 11:5.
Other federal courts that have addressed a question similar to the one at hand—whether
evidence of a rare, historic use of a term identical or similar to the trademarked term prevents a
finding that the term at issue is fanciful—have consistently concluded that such evidence does
not preclude a finding that a term is fanciful or decrease the strength of the mark. See, e.g.,
Pastificio Spiga Societa Per Azioni v. De Martini Macaroni Co., 200 F.2d 325, 326-27 (2d Cir.
1952) (finding that evidence that the word “spiga” had been used on a package of spaghetti in
Italy at an unidentified date did not establish that the word was anything other than fanciful); Le
Blume Import Co. v. Coty, 293 F. 344, 353-54 (2d Cir. 1923) (finding that the term “Origan” or
“L’Origan” as applied to perfume was “entirely fanciful” even though there was evidence that
“origan” was an ancient, rare English word meaning “wild marjoram”); Rexel, 540 F. Supp. 2d at
1165 (finding a term to be fanciful or arbitrary even though it was derived from Greek, and so
not entirely made up, because the mark was “not comprised of readily recognizable, common
words” (internal quotation marks omitted)); Gen. Cigar Co.. Inc. v. G.D.M. Inc., 988 F. Supp.
647, 650, 663-64 (S.D.N.Y. 1997) (finding that the strength of the mark “COHIBA” for a cigar
was high and weighed in favor of a finding of likelihood of confusion even though it was “a term
for tobacco in an ancient and forgotten tongue”). In accordance with these courts, the Court
concludes that evidence of a single, historic usage of the term “hobbit,” with no evidence that the
word was commonly known by anyone at the time Tolkien published his novel, does not
diminish the strength of the Hobbit Mark. This conclusion is buttressed by the complete lack of
any evidence relating to the meaning of the word “hobbit” as it was used in the Denham Tracts.
The term is included among a random assortment of over 190 fantastical creatures of all sorts. It
is no more likely that the term was used to describe a small person than that the term was meant
to evoke an image of a monstrous dragon, a wraithlike ghost, or any other manner of fantastical
creature that in no way resembles Tolkien’s hobbits. Without any evidence of the type of
creature that the word “hobbit” was used to describe, the Court cannot conclude that it has any
relation to Tolkien’s hobbits. Accordingly, the Court reaches the same conclusion that it did in
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
the TRO order: the strength of the mark is high and this factor weighs in favor of a finding of
likelihood of confusion.
b.
Proximity & Relatedness of Goods
Marks are related when they are used to offer similar products to a similar group of
consumers. Brookfield, 174 F.3d at 1056. Asylum concedes that the proximity and relatedness
of the goods is high and the Court concluded such in the TRO Order. Opp. 24:14-22; TRO
Order at 9. Asylum contends, however, that the proximity of the goods may prevent confusion:
Because awareness of “The Hobbit: An Unexpected Journey” is high, it would be immediately
apparent to any consumer aware of the movies’ theatrical release that “Age of Hobbits” is not
related to Plaintiffs’ product. Opp. 24:16-19. However, controlling Ninth Circuit precedent
clearly holds that this factor favors a finding of likelihood of confusion in situations in which
companies “compete for the patronage of an overlapping audience,” as the parties do in this
case. See Brookfield, 174 F.3d at 1057. In the absence of any authority holding that the close
proximity of goods may weigh against a finding of confusion, the Court declines to further
entertain this argument. Accordingly, the Court remains persuaded that this factor favors
Plaintiffs.
c.
Similarity of the Marks
“[T]he greater the similarity between the two marks at issue, the greater the likelihood of
confusion.” GoTo.com, 202 F.3d at 1206. There are three axioms that apply to the “similarity”
analysis: (1) marks should be considered in their entirety and as they appear in the marketplace;
(2) similarity is best adjudged by appearance, sound, and meaning; and (3) similarities weigh
more heavily than differences. Id. Here, the mark at issue is the word “Hobbit.” “Hobbit” is a
trademarked word that Asylum uses in its movie title. The marks are therefore not only similar
but identical.
Asylum’s only argument on this element is that the film titles are not identical: Plaintiffs’
film is “The Hobbit: An Unexpected Journey” while Asylum’s film is “Age of Hobbits.” The
Court has already rejected this argument, given that numerous courts have found titles to be
confusingly similar even when they were not actually identical. See TRO Order at 11. The
Court reiterates the following examples of cases in which other courts have found similarity
between titles: any use of the term “River Kwai” was confusingly similar to the movie title
“Bridge Over River Kwai,” Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 358-59
(S.D.N.Y. 1998); any the use of the words “Tarz” or “Tarzan,” even when used in conjunction
with other words, was confusingly similar to the trademarked term “Tarzan,” Edgar Rice
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
Burroughs, Inc. v. Manns Theatres, No. 76-3612-RMT, 1976 WL 20994, at *1, 3 (C.D. Cal.
Dec. 20, 1976); the record title “Pitbull Starring in Rebelution” was confusingly similar to the
band name “Rebelution,” Rebelution, LLC v. Perez, 732 F. Supp. 2d 883, 886, 888 (N.D. Cal.
2010); the book titles “The Children’s Audiobook of Virtues” and “The Children’s Book of
Virtues” were confusingly similar to the title “The Book of Virtues,” Simon & Schuster v. Dove
Audio, Inc., 970 F. Supp. 279, 301 (S.D.N.Y. 1997). Accordingly, the Court reiterates its
conclusion that “Hobbit” in the title of Asylum’s film may be confusingly similar to Plaintiffs’
use of the trademark in its movie title even though the titles are not identical. Because Asylum
uses a term in its title that is identical to Plaintiffs’ trademarked term and the use is analogous to
other titles that courts have found to be confusingly similar, this factor too weighs in favor of
Plaintiffs.
d.
Evidence of Actual Confusion
“[A] showing of actual confusion among significant numbers of consumers provides
strong support for the likelihood of confusion,” but is not necessary to a finding of likelihood of
confusion under the Lanham Act. Network Automation, 638 F.3d at 1151 (quoting Playboy
Enter., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1026 (9th Cir. 2004) (edits in
original). Evidence of actual confusion “constitutes persuasive proof that future confusion is
likely.” Thane Int’l v. Trek Bicycle Corp., 305 F.3d 894, 902 (9th Cir. 2002) (internal quotation
marks omitted). Actual confusion may be shown by testimony of consumers who were actually
confused or by survey evidence. Id.
When the Court issued the TRO, the only evidence on the record regarding confusion was
a weekly tracking survey conducted by Nielsen National Research Group (“Nielsen”) on behalf
of Plaintiffs (“Nielson Survey”). TRO Order at 12-13. The Nielson Survey showed a 16 to 24
percent confusion rate associated with the use of the Hobbit Mark in Asylum’s movie. Id.;
Alemi Decl. ¶ 12. The Court found that this level of confusion was neutral. It was below the
percentage range that provides strong support for a finding of likelihood of confusion, so the
factor did not strongly favor Plaintiffs. TRO Order at 13; see also McCarthy on Trademarks §
32:188 (noting that confusion levels over 50 percent are treated as “persuasive evidence” of
likely confusion, figures in the 25 to 50 percent range are “solid support” for such a finding, and
figures below 20 percent may only be viewed in connection with other evidence showing a
likelihood of confusion). The showing was not, however, so low as to support a finding that
confusion was not likely. See id. § 32:189 (“When the percentage results of a confusion survey
dip below 10 [percent], they can become evidence which will indicate that confusion is not
likely.”).
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
At the time the Court was reviewing the TRO application, Asylum did not seriously
contest the methodology or results of the Nielson Survey, nor did Asylum present any of its own
evidence regarding confusion. TRO Order at 13. Now, Asylum has presented the Court with
several objections to the Nielson Survey and submitted evidence of its own survey, which
purportedly shows that there is no consumer confusion between “The Hobbit: An Unexpected
Journey” and “Age of Hobbits” (“Keegan Survey”).
Asylum hired Mark Keegan (“Keegan”), the principal of Keegan & Donato Consulting,
LLC (“Keegan & Donato”), to analyze the Nielson Survey. Keegan Decl. ¶¶ 1-3. Keegan &
Donato is a research firm specializing in consumer surveys. Id. ¶ 2. Keegan submitted a report
in which he presents the results of the survey he designed and critiques the Nielson Survey.
Plaintiffs oppose the introduction of the Keegan Survey and Keegan’s critique of the Nielson
Survey on the basis that Asylum has not established that Keegan is qualified as an expert on
consumer surveys.
A witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will
help the trier of fact to understand the evidence or to determine a fact in
issue; (b) the testimony is based on sufficient facts or data; (c) the testimony
is the product of reliable principles and methods; and (d) the expert has
reliably applied the principles and methods to the facts of the case.
Fed. R. Evid. 702.
The Federal Rules of Evidence impose a “gatekeeping” duty on district courts to ensure
that testimony based on scientific, technical, or other specialized knowledge rests on a reliable
foundation. Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 148 (1999); Daubert v. Merrel
Dow Pharm., Inc., 509 U.S. 579, 597 (1993). As a threshold matter, the district court must
determine whether the individual whose testimony is being proffered is an expert on the relevant
topic. Daubert v. Merrel Down Pharms., Inc., 43 F.3d 1311, 1315 (9th Cir. 1995) (Daubert II);
In re Silicone Gel Breast Implants Prods. Liab. Litig., 318 F. Supp. 2d 879, 889 (C.D. Cal.
2004). Pursuant to the Federal Rules of Evidence, “a witness can qualify as an expert on the
basis of ‘knowledge, skill, experience, training, or education.’” Id. (quoting Fed. R. Civ. P.
702). In order to find that a witness is qualified to testify as an expert on a particular matter,
“[t]he evidence must show that the expert witness possesses the appropriate expertise.” In re
Canvas Specialty, Inc., 261 B.R. 12, 18 (C.D. Cal. 2001); see also U.S. v. Morales, 108 F.3d
1031, 1038 (9th Cir. 1997).
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
Here, Asylum has not submitted evidence of Keegan’s “knowledge, skills, training, or
education” that would qualify him as an expert on consumer perception surveys. See Fed. R.
Civ. P. 702. The only evidence that has been submitted to the Court regarding Keegan’s
expertise is a statement in his declaration attesting to his firm’s experience in consumer survey
research; a three-paragraph biography of Keegan on the firm’s website; and Keegan’s
testimonial experience, which includes testimony in two depositions. See Keegan Decl. ¶ 2, Ex.
1 at 93-94. Keegan’s biography states that he has experience formulating case strategies in
complex litigation and has acted as a consultant “on a variety of litigation issues ranging from
marketing and international business to consumer research for Lanham Act claims.” The
biography further states that he has experience as a market strategist and operations manager.
Finally, Keegan received a law degree from Brooklyn Law School, is licensed to practice law in
New York and Connecticut, and received a Bachelor of Arts in history at Pacer University. Id.,
Ex. 1 at 93.
The education and experience outlined in Keegan’s biography is insufficient to establish
that he is an expert in the field of consumer surveys. The biography provides no indication that
he has any special training or experience in crafting or analyzing consumer perception surveys;
in fact, the biography does not suggest that he has any experience or training in crafting surveys
of any kind. Though Keegan has testified in litigation before, the Court has been presented with
no indication of the topic about which he testified on those occasions. In the absence of any
evidence showing that Keegan has specific experience or training in the field of consumer
survey analysis, the Court cannot find that he is qualified to testify as an expert on the topic. See
Silicone Gel, 318 F. Supp. 2d at 901-02 (concluding that proffered expert was not qualified to
testify about testing standards on implantable medical devices because there was no evidence
that the witness had any experience developing implantable devices or with medical device
testing, though he was qualified to testify on other topics); Lopez v. Allstate Ins. Co., 282 F.
Supp. 2d 1095, 1104 (D. Ariz. 2003) (excluding expert testimony when there was no information
about the proffered witness’s qualifications as an expert); Canvas Specialty, 261 B.R. at 18
(declining to find expert qualified when he did “not state where he received his education, what
type of experience he has, or what kind of knowledge of training he has in the field of
architecture”). Moreover, the information regarding the firm Keegan & Donato’s experience
does not establish that Keegan himself is qualified to testify on consumer perception surveys, as
the evidence must show that the witness himself is qualified to testify. See Canvas Specialty,
Inc., 261 B.R. at 18. The Court concludes that Asylum has not established Keegan’s
qualifications such that it would be appropriate to consider his expert testimony on the topic of
consumer perception surveys. In accordance with the Court’s gatekeeping role as articulated in
Daubert and Kuhmo, the Court may not consider Keegan’s testimony because his expertise has
not been established.
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CIVIL MINUTES - GENERAL
Case No.
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Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
Moreover, even if the Court were to accept Keegan’s testimony and consider his
consumer confusion survey and his critique of the Nielson Survey, doing so would in no way
affect the outcome of the case. See GoTo.com, 202 F.3d at 1208 (“Here, the two sides have
conducted studies that purport to show or refute actual confusion. We decline to evaluate these
dueling studies, for even if Disney could show GoTo’s study was pure fantasy and that no one
was actually confused, it would by no means refute a likelihood of confusion.”); CytoSport, Inc.
v. Vital Pharm., Inc., 617 F. Supp. 2d 1051, 1075 (E.D. Cal. 2009) (declining to resolve disputes
between the parties regarding studies relevant to confusion because doing so was not necessary
at the preliminary injunction stage); Simon & Schuster, 970 F. Supp. at 299 (finding consumer
survey evidence neutral when there were two competing surveys showing different levels of
confusion). Accordingly, this factor remains neutral.
e.
Marketing Channels
The likelihood of confusion is exacerbated when the parties promote their products
through the same marketing channels. See Brookfield, 174 F.3d at 1057. Asylum concedes that
the marketing channels are similar and the Court concluded such in the TRO Order. Opp. 25:7;
TRO Order at 14. Therefore, this factor favors Plaintiffs.
f.
Degree of Care Used
The degree of care refers to the amount of thought consumers put into the purchase of the
goods or services in question. “When goods are expensive, it is assumed that buyers will
exercise greater care in their purchases.” Gallo Winery, 967 F.2d at 1293. “On the other hand,
when dealing with inexpensive products, customers are likely to exercise less care, thus making
confusion more likely.” Brookfield, 174 F.3d 1060; Gallo Winery, 967 F.2d at 1293 (affirming
district court’s conclusion that wine and cheese are low cost items for which purchasers exercise
little care).
In the TRO Order, the Court concluded that this factor favored Plaintiffs because the cost
of a movie ticket or a DVD are both relatively cheat—approximately $10 to $15. TRO Order at
14. Though Asylum concedes that the cost of the products is low, Asylum contends that the
degree of care used to purchase a DVD is high because “customers do not go to the store to buy
the cheapest DVD. Instead, the[y] go to find the DVD they want to watch.” Asylum does not
submit to the Court any evidence regarding how DVD purchasers make their decisions to
support the assertion that DVD purchasers go to the store to find the DVD they want to watch.
However, assuming for the sake of argument that this characterization accurately describes DVD
purchasing habits, it does not change the Court’s conclusion. The applicable test is not whether
customers set out to purchase the cheapest version of a given item, but whether the price of the
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
item encourages customers to use care in making decisions. See Brookfield, 174 F.3d 1060. The
Court is not persuaded that a DVD purchase is of such expense and import that customers
exercise a high level of care. See Tri-Star, 14 F. Supp. 2d at 358 (“Movie picture tickets, video
rentals and television viewing are relatively inexpensive and thus consumers of such are likely to
pay less care and attention when purchasing these products and therefore are inclined to be less
sophisticated buyers. As such, it is more likely that the similarities in the marks at issue will
cause confusion among consumers as to the source of the marks.”); McCarthy on Trademarks §
23:97 (compiling a list of items deemed to be expensive, all of which cost hundreds to thousands
of dollars and are purchases that buyers make on a relatively infrequent basis, such as residential
homes, vehicles, and mattresses). Accordingly, this factor favors Plaintiffs.
g.
Asylum’s Intent
When a mark is adopted with “the intent to deceive the public,” courts may presume that
use of the mark will cause confusion. Brookfield, 174 F.3d at 1059. “This factor favors the
plaintiff where the alleged infringer adopted his mark with knowledge, actual or constructive,
that it was another’s trademark.” Id.; see also Entrepreneur Media, 279 F.3d at 1148.
In the TRO Order, the Court concluded that this factor weighed strongly in favor of
Plaintiffs. TRO Order at 18. The Court concluded that several aspects of the film’s marketing
and release indicated that Asylum intended to deceive the public and capitalize on confusion
between Asylum’s movie and Plaintiffs’ film. Specifically, the Court found the following
circumstances indicative of Asylum’s intent to deceive customers: the description and promotion
of the film included phrases and images that were evocative of the Tolkien universe; the media
coverage directly connected “Age of Hobbits” with Plaintiffs’ film and Asylum had presented no
evidence that it ever tried to disassociate itself with the Tolkien universe; and the film’s release
date three days before the release of Plaintiffs’ film indicated intent to capitalize on the extensive
attention that the Hobbit Marks would receive leading up to the release of “The Hobbit: An
Unexpected Journey.” TRO Order at 16-18. For the reasons discussed in more detail in the
TRO Order, the Court found all of these circumstances indicative that Asylum adopted the
Hobbit Mark with intent to deceive customers.
The Court now finds additional evidence on the record further establishing that Asylum
acted in bad faith with the intent to deceive customers. The Court finds two new pieces of
evidence particularly relevant. First, Plaintiffs submitted the DVD cover into evidence. See
Second Suppl. Thomas Decl., Exs. —N. The top center of the back DVD cover contains the
following words: “An epic fantasy adventure in the tradition of Clash of the Titans and 300.”
Id. The phrase is displayed in quotes, though it is not clear who is being quoted as making this
comparison. The two movie titles—“Clash of the Titans” and “300”—are printed in larger font
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CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
than the rest of the phrase and are in a different color (“Clash of Titans” is in green; “300” is in
orange; the rest of the phrase is in red). Id. Both of these films are Warner Brothers
productions. Reply 7:3. The reference to two other Warner Brothers productions on the
packaging of “Age of Hobbits” is further evidence that Asylum intended to deceive viewers by
associating its film with Plaintiffs’ productions. At oral argument, counsel for Asylum
contended that the reference to two Warner Brothers movies on the back cover of the “Age of
Hobbits” DVD was merely a coincidence. However, when viewed in conjunction with all the
other “coincidences”—such as the release date three days before the release of “Age of Hobbits”
and the similarity in the appearance of the posters and lettering for the two films—there are too
many coincidences and the Court is not persuaded that these similarities are in fact coincidences.
A second piece of new evidence is the movie itself: the film does not contain a single
reference to hobbits or use the term “hobbit” at any point other than in the title. Second Suppl.
Thomas Decl., ¶ 16, Ex. N. The absence of a single reference to hobbits or use of the term
“hobbit” in the movie itself persuades the Court that Asylum’s claims that the film is “really”
about the Indonesian sub-species dubbed hobbits is disingenuous. Accordingly, the Court is
even more persuaded of Asylum’s bad faith now than it was when it granted the TRO in favor of
Plaintiffs.
In opposition to the preliminary injunction, Paul Bales (“Bales”), an officer and director
of Asylum, submits a declaration in which he states that “Asylum does not intend to confuse the
public with the release of Age of Hobbits.” Bales Decl. ¶ 8. Bales states that Asylum is an
established company, which could not survive if it relied on consumer confusion. Id. ¶¶ 8-9.
However, as the Court noted in the TRO order, the Court does not need to find that Asylum
acted with the specific intent to deceive in order to find that this factor favors Plaintiffs. See
TRO Order at 18 (quoting Brookfield, 174 F.3d at 1059). This factor favors a finding of
likelihood of confusion “when the alleged infringer knowingly adopts a mark similar to
another’s,” even when the mark was not used with the specific intent to deceive. Au-Tomotive
Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1076 (9th Cir. 2006). When a
defendant knowingly uses a trademarked term, “courts presume that the defendant can
accomplish his purpose: that is, that the public will be deceived.” Id. There is evidence before
the Court that Asylum had actual knowledge that “hobbit” was Plaintiffs’ trademark at the latest
on August 31, when Plaintiffs sent Asylum a cease and desist letter, and continued with the
distribution of the movie despite this knowledge. See id (citing Nelson Decl., Ex. 1). Thus, even
if Asylum did not acted with intent to deceive, this factor favors Plaintiffs because Asylum acted
at least with knowledge that it was using Plaintiffs’ trademarked term.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
Moreover, even a contrary finding would do little to tip the balance in Asylum’s factor
because the lack of an intent to deceive is “largely irrelevant in determining if customers likely
will be confused as to source.” Brookfield, 174 F.3d at 1069 (quoting Daddy’s Junky Music
Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 287 (6th Cir. 1997)). Accordingly,
even if the Court were persuaded that Asylum did not act in bad faith, it would merely find this
factor neutral. However, for the reasons discussed above, the Court does not find this factor
neutral and instead finds that it weighs heavily in Plaintiffs’ favor—even more heavily now than
when it granted the TRO.
h.
Likelihood of Expansion
This factor is relatively unimportant in the present case, as the parties are already
marketing products in the same field. See Brookfield, 174 F.3d at 1060. To the extent that
Asylum targets a different audience than the Studios because it does not produce films for
theatrical release, there is no evidence that it is “exceedingly likely nor unlikely that [Asylum]
will enter more directly into [Plaintiffs’] principal market, or vice versa.” Id. Accordingly, this
factor is neutral.
i.
Balancing
The balancing of the Sleekcraft factors has changed little from when the Court addressed
the likelihood of confusion in the TRO Order. The three most important factors—the similarity
of the marks, the relatedness of the goods, and the marketing channels used—still all favor
Plaintiffs and no factor favors Asylum. See GoTo.com, 202 F.3d at 1205; Brookfield, 174 F.3d
at 1054. Accordingly, after balancing of the Sleekcraft factors, the Court concludes that
Plaintiffs have demonstrated a likelihood of confusion between “Age of Hobbits” and “The
Hobbit: An Unexpected Journey.”
iii.
Defenses
Because the Court concludes that Plaintiffs have shown a likelihood of success on both
elements of trademark infringement, the Court next addresses whether Asylum is likely to
succeed on any defenses, thus defeating Plaintiffs’ claim. Asylum renews the two defenses that
it asserted in opposition to Plaintiffs’ ex parte TRO application: that it is entitled to use the
trademarked term in the title of its film pursuant to the test articulated in Rogers v. Grimaldi, 875
F.2d 994 (2d Cir. 1989), Opp. 26:4-28:27, and that the use of the term is protected as nominative
fair use, Opp. 16:19-21:7.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
a.
Date
January 29, 2013
Rogers v. Grimaldi
In the Ninth Circuit, a defendant may invoke the Rogers defense to use a trademarked
term in the title of an artistic work if the following circumstances are met: (1) the mark at issue
has been “imbue[d] . . . with a meaning beyond its source-identifying function;” (2) the use of
the trade title has artistic relevance to the underlying work; and (3) the title does not explicitly
mislead as to the source or content of the work. Mattel, 296 F.3d at 902; Rogers, 875 F.2d at
902; Rebelution, 732 F. Supp. 2d at 888 (stating that the Rogers test was not applicable because
there was no evidence that the word “rebelution” had “entered the public discourse, . . . become
an integral part of our vocabulary[, or] been imbued by the public with an alternate meaning”).
1.
Whether the Mark Has Acquired Meaning Beyond Its SourceIdentifying Function
In the TRO Order, the Court found sufficient evidence upon which to conclude that the
term “hobbit” had taken “an expressive meaning apart from its source-identifying function.”
TRO Order at 21 (quoting Mattel, 296 F.3d at 900). Though the Court conceded that the term
may not be as integral to the public’s vocabulary as other examples used by the Ninth
Circuit—such as “Band-Aid,” “Rolls Royce,” “Barbie,” and “aspirin,”—there was sufficient
evidence on the record to establish that it has gained some measure of use as a term to refer to
small creatures, such as the small human sub-species discovered in Indonesia. See Thomas
Decl., Exs. 21-22. In response to the OSC, the parties present no evidence or arguments that
alter this conclusion. Accordingly, the Court concludes that this element is satisfied and moves
on to prongs two and three of the Rogers test.
2.
Whether the Mark Has Artistic Relevance to the Underlying
Work
The second prong of the Rogers test requires the use of the mark in the title to have at
least some artistic relevance to the underlying work, though the relevance may be minimal.
E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1097 (9th Cir. 2008) (“[O]nly
the use of a trademark with no artistic relevance to the underlying work whatsoever does not
merit first Amendment protection.” (internal quotation marks omitted); Mattel, 296 F.3d at 901;
Rogers, 875 F.2d 994. Courts within the Ninth Circuit applying this defense have generally
required that the “artistic work targets the original and does not merely borrow another’s
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CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
property to get attention,” as in such cases “First Amendment interests weigh more heavily in the
balance.” Mattel, 296 F.2d at 901; Rebelution, 732 F. Supp. 2d at 889 (“In every federal court of
appeals case addressing the artistic adoption of plaintiff’s non-generic mark, the artistic
relevance of defendant’s use of the mark related to the meaning associated with plaintiff’s
mark.”); see also Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996 F.2d 1366, 1370, 1379 (2d
Cir. 1993) (finding the relevance prong of the Rogers test satisfied when the defendants had used
the trademarked television show title “Twin Peaks” in the title of a book about the show);
Rogers, 875 F.2d at 996-97, 1001 (articulating the defense in the context of a movie that used
Ginger Rogers’s name in the title to refer to a pair of dancers who were nicknamed “Ginger and
Fred” after the dancers Ginger Rogers and Fred Astaire); Cliffs Notes, Inc. v. Bantam Doubleday
Dell Publ’g Grp., Inc., 886 F.2d 490, 491 (2d Cir. 1989) (applying the Rogers test to a work
satirizing Cliffs’ Notes after concluding that “the expressive element of parodies requires more
protection than the labeling of ordinary commercial products . . . [because] parody is entitled at
least to conjure up the original” (internal quotations omitted)); ETW Corp. v. Jireh Publ’g, Inc.,
332 F.3d 915, 920-21 (6th Cir. 2003) (finding trademark infringement claim barred pursuant to
Rogers because the artist had used Tiger Woods’s name in the title of his painting in order to
refer to Tiger Woods himself, the subject of the painting).
In the TRO Order, the Court concluded that Asylum failed on this prong because the use
of the Hobbit Mark in the title was used merely to get attention and was not intended to target
the original. TRO Order at 21-22. In reaching this conclusion, the Court found highly relevant
Asylum’s vehement attestations in its papers and at oral argument that the film was not about
Tolkien’s hobbits and in no way intended to refer to Tolkien’s fantasy characters. See id. at 22.
Now, Asylum argues that Rogers is applicable because the characters in “Age of Hobbits”
were nicknamed “hobbits” because of their diminutive size and in direct comparison to Tolkien’s
hobbits. Opp. 28:1-3. Accordingly, Asylum argues that the case at hand is analogous to Rogers
because Rogers, too, dealt with a movie in which the title characters were nicknamed Ginger and
Fred after the famous dancing duo—just as here, the title characters in “Age of Hobbits” are
nicknamed “hobbits” after the Tolkien fantasy characters. Id. 27:28-28:3. Asylum asserts that
“Plaintiffs cannot dispute that the diminutive characters in the film are referenced as ‘hobbits.’”
Id. 28:4-6.
To the contrary, however, Plaintiffs do in fact dispute that the diminutive characters in the
film are referenced as “hobbits,” and do so persuasively. See Reply 10:2-3. Far from featuring
characters that are nicknamed “hobbits,” “Age of Hobbits” does not once refer to the diminutive
title characters as “hobbits.” Second Suppl. Thomas Decl. ¶ 16, Ex. N. The Court’s review of
portions of the film revealed that the small characters in “Age of Hobbits” are referred to, for
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
example, as “half-men” and “tree people,” but did not provide a single example of the characters
being referred to as “hobbits.” See id., Ex. N. In all the Rogers cases dealing the titles of artistic
works to which the parties have cited and which the Court has independently found, the
trademarked term was actually used or directly referenced in the content of the underlying work.
See Mattel, 296 at 894, 909 (applying Rogers to the use of “Barbie” in the title of a song whose
lyrics contained numerous references to Barbie and her trademarked companion, Ken); ETW
Corp., 332 F.3d at 920-21 (permitting the use of Tiger Woods’ name in the title of a painting
that actually depicted Tiger Woods); Rogers, 875 F.2d at 996-7 (articulating the defense in the
context of a movie in which the characters were actually referred to as “Ginger and Fred”).
Given that there is not a single reference to the term “hobbit” in the film itself, and that the title
characters are identified by various other diminutive nicknames, the Court cannot find that the
term has any artistic relevance to the underlying work. See Rock Star Videos, 547 F.3d at 1097;
Mattel, 296 F.3d at 901.
None of Asylum’s other arguments are any more persuasive. Asylum attempts to
analogize the present case to Rock Star Videos, in which the Ninth Circuit permitted a video
game producer to use an image similar to the trademarked logo of a strip club named “Play Pen
Gentleman’s Club” in the scenery of its video game. Opp. 27:21-26. In Rock Star Videos, the
defendant had produced a video game titled “Grand Theft Auto: San Andreas.” Rock Star
Videos, 547 F.3d at 1096. The video game takes place, in part, in the fictional city of “Los
Santos,” which was based on Los Angeles, and sought to allow the player to experience the
“ganger” culture of the West Coast. Id. at 1097. Defendant included the strip club, along with
other businesses and buildings evocative of Los Angeles, in order to recreate the look and feel of
the city. Id. at 1100. Given that the goal of the game was to recreate a neighborhood in such a
way that players could “experience” the culture of Los Angeles and that the inclusion of images
similar to businesses and buildings of Los Angeles was crucial to that goal, the Ninth Circuit
concluded that the inclusion of the image similar to the logo of the plaintiff’s strip club had at
least some artistic relevance to the video game. Id.
Asylum contends that the Court’s reasoning in Rock Star Videos supports the application
of the Rogers test in the represent case. The Court is not persuaded by this analogy. The
dissimilarities between Rock Star Videos and the present case are evident. First, Rock Star
Videos did not deal with the title of a creative work, so its relevance to the present case is
minimal, especially given that there are numerous title cases on which the Court may rely before
turning to a case not decided in the context of the title of an artistic work. Further, the defendant
in Rock Star Videos used an image that was similar but not identical to the plaintiff’s trademark:
the real strip club was called “Play Pen” while the video game version was called “Pig Pen.” Id.
1097-98. In our case, in contrast, the precise term that is trademarked is used in Asylum’s film
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
title. Finally and most significantly, the strip club in Rock Star Videos was used, in conjunction
with other images, to create a neighborhood that was evocative of Los Angeles in order to
provide players with a digital recreation of the city. Id. The goal of the video game was to allow
players to “experience” Los Angeles, so it was necessary to actually include images similar to
images of Los Angeles. Id. Accordingly, the use of the trademarked image furthered the goal of
the video game and so was of artistic relevance to the work. Id. The same cannot be said of the
present case: “Age of Hobbits” makes no attempt to create a world similar to any fictional world
inhabited by hobbits. For these reasons, the reasoning of Rock Star Videos simply does not
apply to the present case. Moreover, even if the Court found the reasoning of Rock Star Videos
relevant to the present case, it would find the cases to be factually distinguishable because the
term “hobbit” has no apparent connection to the underlying work, given that the fictional species
are not actually ever referred to as hobbits in the film.
In sum, the Court finds that the use of the trademarked term has no artistic relevance to
the underlying work both because the term does not appear to refer to Plaintiffs’ hobbits and
because the film does not contain any reference to hobbits, but in fact refers to the diminutive
creatures in the film by various other names. Accordingly, this prong is not satisfied.
3.
Whether the Use of the Mark Is Explicitly Misleading
Though the Court has already concluded the Rogers defense fails, the Court reiterates the
conclusion it drew in the TRO Order: the Rogers defense would also fail because the title is
explicitly misleading. TRO Order at 22. In determining whether the title explicitly misleads
consumers, courts apply the Sleekcraft likelihood of confusion factors discussed above.
Rebelution, 732 F. Supp. 2d at 888; Toho Co., Ltd. v. William Morrow & Co., Inc., 33 F. Supp.
2d 1206, 1212 n.1 (C.D. Cal. 1998). To support a finding that a title explicitly misleads
consumers, the finding of confusion based on the Sleekcraft factors must be “particularly
compelling.”2 See Twin Peaks, 996 F.2d at 1379; Films of Distinction, Inc. v. Allegro Film
Prods., Inc., 12 F. Supp. 2d 1068, 1077 (C.D. Cal. 1998); Toho, 33 F. Supp. 2d at 1212 (finding
2
Plaintiffs argue that the Ninth Circuit does not require a “particularly compelling”
showing that the title is misleading. Reply 10:13-28. Though Plaintiffs appear to be correct that
the Ninth Circuit has not explicitly adopted this language in its Rogers cases, several courts in
this district have adopted the Second Circuit’s “particularly compelling” language. See, e.g.,
Toho Co., Ltd. v. William Morrow & Co., Inc., 33 F. Supp. 2d at 1212; Films of Distinction, Inc.
v. Allegro Film Prods., Inc., 12 F. Supp. 2d 1068, 1077 (C.D. Cal. 1998); No Fear, Inc. v.
Imagine Films, Inc., 980 F. Supp. 1381, 1383 (C.D. Cal. 1995). Accordingly, the Court applies
the “particularly compelling” standard, in accord with the standard applied by other courts in this
district and other circuits.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
that the defendant was not entitled to a Rogers defense when the showing of the likelihood of
confusion was “strong”). For the reasons discussed in Section III, A, ii above, the showing of
likelihood of confusion based on the Sleekcraft factors is strong, as all of the factors either are
neutral or weigh in favor of Plaintiffs.
The showing on this prong is even stronger than it was when the Court issued the TRO
Order, as new evidence before the Court provides additional evidence that the title explicitly
misleads viewers. As discussed above, the film does not appear to actually be about hobbits of
any kind, either Tolkien’s fantasy creatures or the pre-historic Indonesian sub-species, as the
characters in the film are not actually called hobbits at any point in the film. Second Suppl.
Thomas Decl. ¶ 16, Ex. N. Including the term “Hobbits” in the title is misleading, as it suggests
that the movie is about hobbits while that does not appear to be the case. Another new piece of
evidence that further supports the Court’s conclusion is the DVD cover. See id., Exs. M-N. As
noted above, the back of the DVD cover contains bold lettering stating that the film is “in the
tradition of Clash of Titans and 300,” two films produced by Warner Brothers. Id. The
reference to two other Warner Brothers productions on the packaging of “Age of Hobbits”
further associates the films with Plaintiffs and persuades the Court that the use of the mark is
explicitly misleading.
4.
Conclusion
In sum, Asylum is not entitled to the Rogers defense because it has failed to show that the
use of the trademarked term in the title refers to Plaintiffs’ trademarked term, the use of the
trademarked term in the title has no artistic relevance to the underlying work, and the title is
explicitly misleading based on the application of the Sleekcraft factors.
b.
Nominative Fair Use
Asylum also asserts a nominative fair use defense. Opp. 16:22-21:7. The nominative fair
use defense is available “where the defendant uses a trademark to describe the plaintiff’s
product, rather than its own [product]” and applies to situations in which “the product or service
in question [is] not readily identifiable without the use of the trademark.” New Kids on the Block
v. News Am. Publ’g, Inc., 971 F.2d 302, 306, 308 (9th Cir. 1992); see also Volkswagenwerk
Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969) (permitting an auto repair shop
to use the trademarked name “Volkswagen” in its advertising because using the trademarked
word was the only way that the repair shop could inform the public that it serviced
Volkswagens). Cf. Rock Star Videos, 547 F.3d at 1097 (finding that the defense did not apply
because the use of the term did not refer to the plaintiff’s product). Thus, New Kids applies to a
defendant’s use of a trademarked term to describe the plaintiff’s product when it would be
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Case 2:12-cv-09547-PSG-CW Document 60
Filed 01/29/13 Page 20 of 23 Page ID #:1299
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
impossible, or at least exceedingly difficult, to describe the product by other means. New Kids,
971 F.2d at 306. In addition, under New Kids, the defendant must establish that it only used so
much of the mark as reasonably necessary to identify the product or service and that it did
nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the
trademark holder. Id. at 308.
For the reasons discussed at length in the TRO Order, which do not require repetition, the
Court concludes that the nominative fair use defense of New Kids does not apply because there is
no evidence that Asylum intended to refer to Plaintiffs’ product—Tolkien’s fantasy hobbit
characters. Further, new evidence before the Court that was unavailable when the Court issued
the TRO provides additional support for the conclusion that the nominative fair use defense
would fail. The nominative fair use defense applies only to situations in which it would be
impossible or exceedingly difficult to refer to something without using a trademarked term—for
example, it would be impossible or exceedingly difficult to refer to the band “New Kids on the
Block” without using the band’s trademarked name. New Kids, 971 F.2d at 308. A brief review
of Asylum’s film negates any potential argument that it would be impossible or exceedingly
difficult to refer to the characters in the film without using the trademarked term, as the film
repeatedly refers to the characters by other names. In the film, the diminutive title characters are
repeatedly referred to as “half-men” and “tree people.” Second Suppl. Thomas Decl., Ex. N.
Given that the film actually uses terms other than the trademarked term to refer to the characters
at issue, the Court finds it striking that Asylum also argues that it is entitled to a defense based
on the premise that it would be impossible or exceedingly difficult to refer to the characters as
anything other than “hobbits.” Because Asylum’s own film provides evidence that it would not
be impossible or exceedingly difficult to refer to the movie characters without using the
trademarked term, the Court is even more persuaded now than it was when it issued the TRO
that the nominative fair use defense does not apply.3
3
Asylum contends that even if the Court finds that Asylum has not established all the
elements of the nominative use defense, it should not completely enjoin Asylum’s use of the
term “hobbits” in the title but rather fashion a narrower remedy. Opp. 20:6-11. In Toyota
Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010), the Court stated that when a
defendant raises a nominative fair use defense but the “use does not satisfy all of the New Kids
factors, the district court may order defendants to modify their use of the mark so that all three
factors are satisfied.” Id. at 1176 (citing New Kids on the Block v. News Am. Publ’g, Inc., 971
F.3d 302 (9th Cir. 1992). In such cases, the court “may not enjoin nominative fair use
altogether.” Id. However, for the same reasons that Asylum is not entitled to invoke a
nominative fair use defense, the principle articulated in Tabari does not apply to Asylum’s use
of the trademarked term. In Tabari, as in other cases applying the nominative fair use defense,
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Case 2:12-cv-09547-PSG-CW Document 60
Filed 01/29/13 Page 21 of 23 Page ID #:1300
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
IV.
Date
January 29, 2013
Bond
When the Court issued the TRO, it ordered Plaintiffs to post bond in the amount of
$50,000, pursuant to Federal Rule of Civil Procedure 65(c). TRO Order at 32. Plaintiffs posted
bond on December 11. See Dkt. # 38. Now, Plaintiffs request that the Court dispense with the
bond requirement or set the bond amount at $10,000 because Asylum has not presented evidence
of the harm it will suffer due to the preliminary injunction. Reply 12:8-28.
Federal Rule of Civil Procedure 65(c) requires the Court to order the movant to provide
“security in an amount that the court considers proper to pay the costs and damages by any party
found to have been wrongfully enjoined or restrained.” Fed. R. Civ. P. 65(c). When issuing a
preliminary injunction, the court considers “the potential financial ramifications of issuing a
preliminary injunction.” Walczak v. EPL Prolong, Inc., 198 F.3d 725, 733 (9th Cir. 1999). “The
court is afforded wide discretion in setting the amount of bond, and the bond amount may be
zero if there is no evidence the party will suffer damages from the injunction. Conn. Gen. Life
Ins. Co. v. New Images of Beverly Hills, 321 F.3d 878, 882 (9th Cir. 2003) (internal citations
omitted); Gorbach v. Reno, 219 F.3d 1087, 1092 (9th Cir. 2000) (upholding the district court’s
decision not to require bond in connection with a preliminary injunction because the purpose of
the bond was to cover any costs or damages suffered due to a wrongful injunction and the
defendant had failed to demonstrate that there would be any).
Here, the burden is on Asylum to estimate the costs and damages it would suffer if the
preliminary injunction is wrongfully granted. Am. Trucking Ass’n v. Los Angeles, No. 08-4920
CAS (CTx), 2009 WL 1808451, at *2 (C.D. Cal. June 23, 2009), vacated on other grounds,
2009 WL 2412578 (C.D. Cal. Aug. 4, 2009); Oakley, Inc. v. Sunglass Hut Int’l, No. SACV 011065 AHS, at *12 (C.D. Cal. Dec. 7, 2001). Because Asylum has not provided evidence of the
costs and damages it would suffer due to the injunction, the Court cannot consider the potential
financial ramifications the injunction may cause. The only evidence on the record relating to the
financial ramifications of the injunction is the reported budget of $500,000 for “Age of Hobbits,”
the defendant had used the trademarked term in the marketplace for the specific purpose of
identifying the plaintiff’s product. Id. at 1174-75 (addressing a case in which Toyota brought an
action against auto brokers who had used the term “Lexus” in order to advertise that they sold
Lexuses). Here, Asylum did not use the term “hobbit” in its title to refer to Plaintiffs’ product
and honestly communicate with consumers in the marketplace, so the concerns articulated in
Tabari do not apply. Id. at 1177 (emphasizing the importance of permitting some use of
trademarked terms in order to permit honest communication in the marketplace). Asylum is
neither entitled to a nominative fair use defense nor has it established that the Court should
modify rather than enjoin its use of the trademarked term in the title its film.
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Case 2:12-cv-09547-PSG-CW Document 60
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Date
January 29, 2013
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
which is cited in a news article provided by Plaintiffs. Thomas Decl., Ex. 16, at 97. Based on
this figure, the Court ordered Plaintiffs to post bond in the amount of $50,000 and instructed the
parties to address the issue of bond in their briefs on the OSC why the TRO should not become a
preliminary injunction. TRO Order at 32. Asylum did not address the issue of bond in its brief
in opposition to the TRO becoming a preliminary injunction. See Opp. In similar situations, in
which defendants have failed to proffer evidence of the financial ramifications of a wrongful
injunction, district courts in the Ninth Circuit have set the amount of bond at $10,000. See, e.g.,
Herb Reed Enters. v. Florida Entm’t Mgmt, Inc., No. 12-cv-0560-MMD-GWF, 2012 WL
3020039, at *18 (D. Nev. July 24, 2012); Masters Software, Inc. v. Discovery Comms., Inc., 725
F. Supp. 2d 1294, 1309 (W.D. Wash. 2010). In accordance with these courts, the Court sets
bond at $10,000.
V.
Language of the Injunction
Federal Rule of Civil Procedure 65(d) requires that “[e]very order granting an injunction
and every restraining order must: (A) state the reason why it issued; (B) state its terms
specifically; and (C) describe in reasonable detail—and not by referring to the complaint or other
document—the act or acts restrained or required.” Thus, the Court must clearly state the specific
terms of the injunction in order to “prevent uncertainty and confusion on the part of those faced
with injunctive orders, and to avoid the possible founding of a contempt citation on a decree too
vague to be understood.” Schmidr v. Lessard, 414 U.S. 473, 473 (1974). Moreover, in crafting
the language of the injunction, the Court is cognizant that a preliminary injunction is an
“extraordinary and drastic remedy.” See Munaf, 553 U.S. at 689. Accordingly, the Court will
narrowly tailor the preliminary injunction so that it only prohibits the use of the trademarked
term “hobbit” by Asylum in the title of its film. The preliminary injunction that the Court issues
in accordance with this Order in no way limits the content of the film, nor does it prevent
Asylum from distributing the film “Age of Hobbits,” as already produced, by a different title.
The present preliminary injunction merely prevents Asylum from using the term “hobbit” in the
film title.
The Court finds that the following language satisfactorily complies with Rule 65’s
requirements:
Asylum and its subsidiaries, officers, agents, servants, directors, employees,
partners, representatives, assigns, successors, related companies, and attorneys and all
persons in active concert or participation with Asylum or with any of the foregoing are
enjoined from doing any of the following:
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Case 2:12-cv-09547-PSG-CW Document 60
Filed 01/29/13 Page 23 of 23 Page ID #:1302
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.
CV 12 - 9547 PSG (CWx)
Title
Warner Brothers Entertainment, et al. v. The Global Asylum, Inc.
VI.
Date
January 29, 2013
1.
Advertising, selling, or otherwise distributing any film with the title “Age
of Hobbits” or using any other title, name, or mark that is confusingly
similar to the trademarks “The Hobbit” and “Hobbit” or to the title of
Plaintiffs’ film “The Hobbit: An Unexpected Journey;”
2.
Using the Hobbit Marks, or any term confusingly similar to the Hobbit
Marks, in the film itself or on the disc, DVD sleeve, DVD cover, or other
packaging, or in the advertising or promotion of the film in any media.
Conclusion
Based on the foregoing, Plaintiffs have shown a likelihood of success on the
merits. For the reasons discussed in the TRO Order, which do not require repetition in
the present order, Plaintiffs have also demonstrated that they are likely to suffer
irreparable harm in the absence of preliminary relief, that the balance of equities tip in
their favor and that an injunction is in the public interest. Accordingly, the Court
ISSUES a PRELIMINARY INJUNCTION.
IT IS SO ORDERED.
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