For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Tuesday, 13 March 2012

Giant hobbit threat to student drinkers

Until today the IPKat had little idea how many IP practitioners and enthusiasts, irrespective of their professional calling, nationality, age, race and sex, were devoted to hobbits. He has however been deluged with texts, tweets, emails, indeed practically everything except messages via carrier pigeon [you don't put a pigeon among the Kats, says Merpel] over the news, reported on the BBC among other places, that a popular Portswood (Southampton) pub and music venue by the name of The Hobbit has been threatened with legal action by US movie lawyers representing the Saul Zaentz Company (SZC) in California. The article states, in relevant part:

"The company owns the worldwide rights to several brands associated with author JRR Tolkien, including The Hobbit and The Lord of The Rings.

Landlady Stella Mary Roberts said: "I can't fight Hollywood."

The pub..., which is popular with students [that's not news: there aren't many affordable pubs which aren't], has traded with the name for more than 20 years [now that's news -- 20 years nec vi, nec clam, nec precario -- isn't that enough to give the pub owner a prescriptive right to use the name, mutters Merpel ...].

It features characters from Tolkien's stories on its signs, has "Frodo" and "Gandalf" cocktails on the menu, and the face of Lord of the Rings film star Elijah Wood on its loyalty card.  
A letter from SZC asked it to remove all references to the characters. The company asserts it has "exclusive worldwide rights to motion picture, merchandising, stage and other rights in certain literary works of JRR Tolkien including The Lord of the Rings and The Hobbit". ...

Landlady Ms Roberts said: "We were absolutely stunned. It was completely unexpected, we never intended to infringe anyone's copyright [or, er, trade mark ...?]. "Are we doing any harm? I don't think so. We're bringing people to the books and the stories who haven't heard of JRR Tolkien.  "We don't have the financial resources to fight it - I can't fight Hollywood." She said that changing the name and rebranding the pub would "cost thousands".

Student Heather Cartwright, who set up a "Save the Hobbit" Facebook page which has more than 3,000 likes, said: "I was completely shocked by it. It's great to see so many people showing support. "How long do we need to protect works for? Do we protect the works of Mozart and Shakespeare?" she added.

Punch Taverns, which owns the freehold to the building, said: "We are aware of the situation and are currently consulting with our legal advisors"".
A huge collective katpat goes to all those readers who sent links to this and other sites.

The IPKat, out of curiosity, did a little digging. He notes that The Saul Zaentz Company owns UK Trade Mark 2462911, THE HOBBIT, registered in Class 43 for
"services for providing food and drink; temporary accommodation, services for providing food and drink; temporary accommodations; bar services; cafés; cafeterias; tavern services; tea rooms; wine bars; tourist inns; resort hotels; retirement homes; pubs; hotels; motels; providing campground facilities; restaurants; rental of tents; rental of meeting rooms; serving food and drinks; providing facilities for concerts, convention fairs and exhibitions; boarding for animals; catering of food and drink; brew-pub services; child care; providing reviews of restaurants".
This registration (and its Community trade mark counterpart here) would seem to cover pubs trading as The Hobbit, but for the issue of the pub's apparently longstanding local reputation, which antedates the registration by a decade and a half.

Merpel notes that the same company is also the proud owner of Community Trade Mark E3759231, HOBBIT, registered for a large number of items in Classes 3 and 29 (including "yucca chips", as well as the following products in Class 32:
"Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; aerated fruit juices, aerated water, ale, aloe vera drinks, beer, colas (soft drink), drinking water, flavored waters, fruit drinks, fruit flavored soft drinks, fruit juice concentrates, fruit juices, fruit-flavored drinks, isotonic drinks, lemonade, malt liquor (beer or ale); mineral water, non-alcoholic malt beverage, non-alcoholic beer, non-alcoholic cocktail mixes, non-alcoholic fruit extracts used in the preparation of beverages, non-alcoholized wines, quinine water, seltzer water, smoothies (beverages), soft drinks in carbonated, low calories and/or non-carbonated form; soft drinks flavored with tea, sports drinks, spring water, stout, sweet cider, tomato juice (beverage), vegetable juice (beverage)".
This was filed on 23 December 2003, published on 26 September 2005 and registered on 8 June 2005, and all the goods concerned are the sort of things one might not be surprised to find on sale at any pub, whether named The Hobbit or not.  Have any readers encountered any of these products bearing the mark anywhere in the territory of the European Union, or is registration vulnerable to an embarrassing application for revocation based on five years' non-use?

British South Coast pubs have done quite well in the courts lately -- and they are doughty fighters. There's also a lot of local rivalry between Portsmouth and Southampton. If Portsmouth's Karen Murphy can come out smiling after a heavy bout of IP litigation (here and here), can Southampton's Stella Roberts do likewise?

How to make Hobbit juice here
Making Muesli: the Hobbit Trail Mix here

5 comments:

Francis Davey said...

It is curious that 20 years is enough to establish a right over someone else's land, and 12 years could extinguish a right to unregistered land, but there doesn't seem (as far as I know) to be an analogous position with respect to intellectual property rights, particularly of the unregistered kind.

Has anyone tried to run a "lost modern grant" argument?

Steven M. Getzoff said...

Hi Jeremy--if memory there was a similar TM case Stateside some years ago here.

BROOKLYN DODGERS Bar & Restaurant was sued by Major League Baseball in US federal court for trademark infringement but their registered trademark rights for the pertinent services and products had a time gap which gave the bar constructive priority/senior common law rights. The Bar ultimately prevailed, I believe, as i believe might the pub. on that issue. However, the current case's media coverage is unclear that the IP issues raised are only only trademark--copyright is cited also and I am not sure that helps the pub. If true and not merely media inaccuracies it was clever of the claimant attorneys who must have correctly anticipated the reputation argument as making the TM claim weak. On the other hand--forgive my ignorance--the pub's been doing this for a long time--in the States I believe there would be a laches defense.

It would have been much wiser to give the pub a license and use THAT as proof of policing at least as far as the trademarks' goodwill is concerned. i always thought policing trademarks which are symbols of goodwill in a manner that hurts that goodwill was counterproductive.

Anonymous said...

According to Wikipedia the word "hobbit" itself was not created by Tolkien himself, so that would preclude a copyright claim. Also several names (like Gandalf) are not created by Tolkien but originate from Nordic sources.

Invalidity of the TMs due to non-use would be nice, at least emotionally.

Anonymous said...

It really doesn't help that they seem to be using the likeness of the characters from the films in their advertising... http://www.thehobbitpub.co.uk/

Anonymous said...

Could we see a decision much like BUDWEISER - that in light of the use there is no damage to the origin function?

If they have been trading that long then they probably had passing off rights as at the time of the CTM for THE HOBBIT... invalidity action time?

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