Warner Brothers, New Line, and its
affiliates (“Plaintiffs”) recently achieved a rare courtroom victory by
obtaining a court order restraining distribution of a film they claimed
unfairly competed with one of its titles. The target of their ire was The
Global Asylum's ("Asylum") film The
Age of Hobbits. Asylum was set to release its film on December 11, 2012,
three days before New Line rolled out its film “The Hobbit: An Unexpected
Journey.” New Line's film revolves
around the Hobbit characters, which
first appeared in J.R.R. Tolkien's 1937 novel, The Hobbit, and were later in his The Lord of the Rings book
trilogy, and the basis for the hit movie trilogy Lord of the Rings, which earned $3 billion dollars at the box
office. New Line’s film is the first in a series of three films, all shot
in New Zealand by Sir Peter Jackson, produced at a reported cost of $500
million dollars, and set to be released over the next few years.
New Line’s film had its world premiere
in Wellington, New Zealand, on November 28, 2012 and has been the subject of
intense promotion and advertising. I was in Wellington right before the world premiere
and was surprised at the massive and ubiquitous nature of the promotion across the
city. Not only were Hobbit characters placed on buildings, but museum stores
and numerous other outlets carried movie merchandise. Tourism New Zealand spent
$10 million dollars promoting the trilogy. The promotion began when I boarded
my Air New Zealand flight to Wellington and was delighted to watch the most
entertaining in-flight safety video I have ever seen. It starred Tolkien elves,
dwarves, Hobbits, and a wizard. The video has become an online hit viewed by
millions http://www.youtube.com/watch?v=XCbPFHu3OOc.
The carrier has even rebranded itself the “Airline of Middle Earth,” and plastered
a plane with images from the film.
Asylum's film, on the other hand, is a low budget indie film
reportedly made for $2 million dollars. Asylum
claimed that the word "Hobbits” as used in its film did not refer to the
fictional Tolkien creatures, but to a human sub-species whose skeletons were discovered
in Indonesia in 2003. In Indonesia, archaeologists discovered a human
sub-species with the Latin name Homo Floresiensis, which they nicknamed “hobbits” because of their
small stature.
The legal dispute, in its simplest terms, comes down to
this. Asylum claimed it had the right, under the First Amendment, to make a
movie about ancient Indonesian people and refer to a name commonly used to
describe the short-statured ancients in its movie title. Plaintiffs, on the
other hand, asserted that Asylum infringed on their trademarks and tried to
ride on the coattails of its massive promotional campaign and trick moviegoers
to purchase the Asylum movie, thinking they are buying the Warner/New Line
film.
On August 31, 2012, Plaintiffs sent Asylum a
cease-and-desist letter demanding that it refrain from using the “Hobbit” Marks.
The parties then discussed Asylum’s asserted fair use defense and possible
changes to the title, design, and promotional materials. Asylum changed the
design of its promotional materials, but refused to remove the word “Hobbit”
from the film title for the domestic release of the picture.
On November 7, 2012, Plaintiffs
filed a complaint against Asylum for trademark infringement, false designation
of origin, trademark dilution, false advertising, and unfair competition. Then,
approximately three weeks before the scheduled release of the Asylum picture,
Plaintiffs filed an application seeking a temporary restraining order stopping
the release of the Asylum film.
As most movie aficionados know, there is
a long history of independent filmmakers trying to cash in on viewer interest in
topics made popular by the major studios. Roger Corman produced Black Scorpion, which imitated the Batman movies, Forbidden World, a knockoff of Alien,
and Piranha, which borrows liberally from
JAWS. Asylum has produced a number of
low- budget films that resemble major studio releases. The company made a low-budget version of H.G.
Wells' The War of the Worlds,
which was released the same year as Steven Spielberg's film based on the same 1898 public
domain book. Blockbuster reportedly ordered 100,000 copies of the Asylum film,
far more than it had for any of Asylum’s previous titles. Seeing
how profitable such films can be, Asylum produced several low-budget knockoffs,
sometimes called mockbusters, including Transmorphers,
Almighty Thor, Abraham Lincoln vs. Zombies, Snakes
on a Train, and Paranormal Entity.
The major studios were not amused, but it was
questionable whether they could legally stop Asylum. 20th Century Fox threatened
legal action over the release of The Day the Earth Stopped, a film
similar to The Day the Earth Stood Still. Last May, Universal Studios filed suit
against Asylum over their film American Battleship, claiming
infringement of their movie Battleship.
Asylum then changed the title to American
Warships.
For
the most part, Asylum has been successful in releasing its pictures and defending
them from legal assault. The company claims that it has released more than 150
films and has only been sued twice for trademark infringement. One case was
settled, and Asylum prevailed in the other.
Asylum's legal success involved the film
Haunting of Winchester House. Asylum
was sued by the owners of the
Winchester Mystery House, a popular tourist attraction in San Jose that consists
of a 160-room Victorian-style mansion as well as a museum, gift shop, and café.
The attraction is billed as the world's most haunted house. Sarah Winchester,
according to legend, created this mansion to fend off ghosts.
The owners objected to Asylum's plan to
produce and market its movie, which allegedly was based on a "terrifying
true story." When Asylum asked for permission to film at the Winchester
Mystery House, the owners informed Asylum that they had signed a contract with
another producer for exclusive rights to the Winchester story.
The Asylum movie begins with a shot of a
Victorian-style structure, but not the actual Winchester Mystery House. The
movie includes the ghost characters of Sarah Winchester, her adolescent
daughter, and her brother, who was deaf and could not speak. These characters,
as well as the ghosts of those killed by Winchester guns, haunt Sarah
Winchester’s home. However, the real Sarah Winchester did not have an
adolescent daughter or a brother who was deaf and unable to speak.
The trial court dismissed the case
against Asylum on summary judgment. On appeal, the appellate court agreed,
stating that in trademark infringement cases involving First Amendment
concerns, the finding of likelihood of confusion must be particularly
compelling to outweigh the First Amendment interests of filmmakers. The owner
of a trademark does not have the right to quash an unauthorized use of its mark
by another who is communicating ideas or expressing points of view.
However, with its Hobbit movie, Asylum
apparently crossed the line. So the question arises, where exactly is that
line? How closely can a filmmaker imitate another work or title without having a
judge halt its distribution?
It is rare for a court to restrain
distribution of a film especially when copies have already been shipped. Films,
like newspapers and books, are protected expression under the First Amendment. A
party seeking a preliminary injunction must show that it is likely to succeed
on the merits and will suffer irreparable harm if the relief is not granted.
A basic principle of copyright law is that
ideas, themes, facts, subject matter, and historical incidents cannot be
copyrighted. Anyone can write a book about George Washington, and they can even
borrow facts from prior books without infringing those authors’ copyrights. Moreover,
film titles generally cannot be registered as trademarks. Only a distinctive
title to a series of books, periodicals, newspapers, or television programs
like Bonanza could be registered. The
reason is that trademarks are used to identify the origin of goods or services.
Single books or films are one-offs. Their titles describe that particular work,
not a series of works. Courts can, however, protect titles from confusingly
similar uses, under the law of unfair competition, if the title has acquired a
secondary meaning. A secondary meaning is when the title is sufficiently well
known, that consumers associate it with a particular author’s work.
While courts are very protective of
filmmaker's First Amendment rights, the law is also concerned about protecting
consumers from being misled about the origin of products, which is what the
laws of unfair competition and trademark address.
There
have been a number of cases in which courts have wrestled with a conflict
between the freedom of expression of a filmmaker and the owners of trademarks
and other rights. A commonly cited case is Rogers
v. Grimaldi, which Asylum relied upon in its defense. In that case, Federico Fellini conceived, co‑wrote,
and directed a film entitled "Federico Fellini's `Ginger and Fred'."
The movie was a fictional work about two retired dancers. The dancers made a
living in Italian cabarets imitating Fred Astaire and Ginger Rogers, thus
earning the nickname "Ginger and Fred." The story was a satire about
the world of television. According to Fellini, the characters did not resemble
or portray Fred Astaire and Ginger Rogers. However, Ginger Rogers brought suit,
claiming that Fellini violated her rights of privacy and publicity. Her
complaint alleged that the defendants violated her rights by creating the false
impression that the film was about her or that she sponsored, endorsed, or was
involved in the film, and that it violated her right of publicity, and defamed
her by depicting her in a false light.
The district court decided that
Fellini’s movie was a work protected under the First Amendment, and that a
trademarked term could be used in the title of an artistic work if the use of
the term has some artistic relevance to the work and does not explicitly
mislead consumers as to the source and content of the work.
The Court of Appeals affirmed the
lower court, explaining that movies, plays, books, and songs are all works of
artistic expression and deserve protection, even though they are also sold in
the commercial marketplace and thus can be the subject of consumer deception. Consequently,
when the title of a movie or a book has acquired secondary meaning—that is, when
the title is sufficiently well-known, that consumers associate it with a
particular author’s work—the holder of the rights to that title can prevent the
use of the same or confusingly similar titles by other authors.
The court concluded that filmmakers
can use a celebrity’s name in the title of an artistic work where the title
does not explicitly denote authorship, sponsorship, or endorsement by the
celebrity or explicitly mislead as to its content. The court also
held that Oregon law on the right of publicity
does not bar the use of a celebrity’s name in a movie title, unless the title
was “wholly unrelated” to the movie or was “simply a disguised commercial
advertisement for the sale of goods or services.”
Other cases have given less weight
to the First Amendment rights of filmmakers. In American Dairy Queen Corp. v. New Line Productions, Inc., the defendant
produced and was preparing to release a film entitled Dairy Queens, which was described as a mockumentary satirizing
Minnesota beauty contests. The plaintiff was the Dairy Queen ice-cream chain, which
claimed trademark infringement and dilution of its trademark. The district
court found that the likelihood-of-confusion factors weighed in favor of the
plaintiff. Then, it considered whether the defendant’s First Amendment
interests were sufficient to outweigh the plaintiff’s trademark interests in
its Dairy Queen trademark. Ultimately, the court found that because other
alternative titles like Dairy Princesses
or Milk Maids were available, “the
balance between the public’s interest in free expression and its interest in
avoiding consumer confusion and trademark dilution tilts in favors [sic] of
avoiding confusion and dilution.” Dairy Queen Corp. won because the court distinguished
Rogers
v. Grimaldi on the grounds that the Rogers
case involved a title that directly referred to the content of the film –
performers known as Ginger and Fred. On the other hand, defendant’s film was
about beauty pageants in Minnesota, without any
connection to plaintiff's ice cream stores. The Dairy Queen decision has
been widely criticized. Moreover, there
are many cases that stand for the principle that filmmakers can refer to
trademarks in their film, provided they do not do so in such a manner as to
mislead moviegoers that the trademark owner is somehow affiliated or endorsing
the picture.
In Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., the defendant exhibited a pornographic
movie, "Debbie Does Dallas," which portrayed a "Texas
Cowgirl" engaged in sex acts. The character wears a uniform strikingly
similar to that worn by the Dallas Cowboys Cheerleaders. Ads for the movie
showed the character in the uniform, and included such captions as
"Starring Ex-Dallas Cowgirl Cheerleader Bambi Woods." In fact, Bambi
Woods had never been a Dallas Cowboys Cheerleader.
The Dallas Cowboy Cheerleaders
brought suit, alleging that they had a trademark in the particular combination
of colors and the design of their uniforms. The uniform in which they appear
and perform consists of a blue bolero blouse, a white vest decorated with three
blue five-pointed stars on each side of the front of the vest and white fringe
at the bottom of the vest, tight white shorts with a belt decorated with blue
stars, and white boots. The trademark was not registered at the time, although
Plaintiff contended that it was protected as a common law trademark.
The defendant contended that the
film was a parody or satire on female cheerleaders and was protected expression
under the First Amendment. Moreover, the defendant claimed that no one could rationally
believe that the film originated or was associated with the actual Dallas
Cowboy Cheerleaders.
The court disagreed and issued an
injunction against further distribution of the film. The court found that the
association with the Dallas Cowboy Cheerleaders, both in the film and in the
advertising, had the single purpose of exploiting the Dallas Cowboy Cheerleaders'
popularity in order to attract an audience to view sex acts in the movie.
Then there is the Agatha Christie case. Casablanca Records
produced a film titled “Agatha” about the famous mystery writer Agatha
Christie. The story is a fictionalized account of an 11-day disappearance of
Christie in 1926. Christie is portrayed as an emotionally unstable woman who
engaged in a sinister plot to murder her husband’s mistress. The heir to
Christie’s estate brought suit to enjoin Casablanca from distributing the movie,
alleging unfair competition and infringement of the right of publicity.
During her life, Agatha Christie agreed to have her name used in
connection with various motion pictures and plays based on her books. Her heir alleged
that Casablanca’s use of the name "Agatha" and "Agatha
Christie" would cause confusion in the minds of the public in general, and
Agatha Christie readers in particular, by creating the impression that the
movie and novel were authorized or even written by Ms. Christie. The court,
however, summarily dismissed this claim, without much explanation other than
finding that the heir "can prove no set of facts in support of [this]
claim which would entitle [them] to relief.”
These cases were decided by different judges, under different
state laws, and federal and state laws have evolved over time. Still, it is
difficult to distinguish how the use of the word “Agatha,” is not likely to
confuse moviegoers about the origin of the film about her, but the use of the
word “Hobbit” is likely to confuse moviegoers about the source of Asylum’s
movie.
The judge in the Asylum case seemed
to be greatly influenced by Plaintiffs’ data showing that Asylum's title was
likely to mislead moviegoers about its movie. Plaintiffs presented evidence
from a weekly tracking study conducted by Nielsen National Research Group
(“Nielsen”) in which 30 to 40 percent of survey respondents indicated confusion
about the source of “Age of Hobbits.” The survey included 1200 respondents
divided into two groups. The Test Group was shown an image of the “Age of
Hobbits” poster while the Control Group was shown the same poster with an
alternative title. Thirty percent of those in the Test Group who had an opinion
about the source of “Age of Hobbits” (about 200 respondents) said they believed
the movie was made or distributed by Plaintiffs. On the other hand, only 6 to
14 percent of the respondents in the Control Group, who were shown the movie
poster “Age of Java Men,” associated the film with Plaintiffs.
The court also mentioned that
Asylum's release of its film three days before the release of the Plaintiff's
film demonstrated intent to capitalize on the publicity surrounding Plaintiffs’
film, and its similar artwork and prominent use of the trademark showed intent
to deceive.
