Lecture Title Falls Short
They were short, stout and furry-toed, and their bones were discovered on the Indonesian island of Flores in 2003. Their full name is Homo floresiensis, or Flores Man, but you might know them better as hobbits.
Image: Jemimus
However, with the new film ‘The Hobbit’ now hitting cinemas, a recent incident in New Zealand has provided a warning to all those who refer to this extinct species as ‘hobbits’.
Dr Brett Alloway, of Victoria University, organized a free public lecture about Homo floresiensis alongside the two archaeologists who discovered the species, Professor Mike Morwood and Thomas Sutikna. The lecture, titled ‘The Other Hobbit’, was scheduled to coincide with the release of the movie ‘The Hobbit’.
Dr Alloway sought permission to use the lecture title from the Saul Zaentz Company/Middle-Earth Enterprises, which owns certain rights in The Hobbit. A law firm acting for the company banned Dr Alloway from calling his lecture ‘The Other Hobbit’, noting that ‘it is not possible for our client to allow generic use of the trade mark ‘Hobbit.’
A disappointed Dr Alloway changed the name of his lecture to the less catchy ‘A newly discovered species of Little People – unraveling the legend behind Homo floresiensis.’
Although Dr Alloway did not choose to fight the Saul Zaentz Company, it is arguable that Dr Alloway’s lecture title was not a breach of trade mark law. Under both Australian and New Zealand trade mark legislation (see section 120 of the Trade Marks Act 1995 (Cth) and section 89 of the Trade Marks Act 2002 (New Zealand)), to infringe a registered mark, a person must use the sign (in this case the word ‘hobbit’) as a trade mark. Dr Alloway may have been able to argue that his use of the word ‘hobbit’ was merely descriptive, and that the lecture title was therefore not infringing the Saul Zaentz Company’s trade mark. The more descriptive the registered trade mark, the more likely a defence of this kind may be available.
It appears that the Saul Zaentz Company is actively enforcing its trade mark to prevent the word ‘hobbit’ from becoming generic. Genericide is the process by which a trade mark which was originally distinctive becomes the colloquial or generic description for, or synonymous with, a particular category of goods and services. If a trade mark becomes known as the generic name for goods or services, it will cease to be recognized as a trade mark. Many well-known trade marks have passed into common language, such as Thermos and Escalator.
To maintain the distinctiveness of a trade mark, brands should:
- ensure ownership and registration notices are used where appropriate (E.G. ™ or ®);
- develop a style manual which sets out how the trade mark should be used;
- develop a detailed strategy for use of the mark and a proactive approach to enforcing such use;
- maintain control over all third party licences and provide detailed obligations regarding use of the mark under licence; and
- monitor and act against all unauthorized use.
It may be difficult for the Saul Zaentz Company to protect its rights in the word ‘hobbit’ in the long term, as the word ‘hobbit’ is already part of our English speaking vocabulary, being defined in the Oxford English Dictionary as ‘a member of an imaginary race similar to humans, of small size and with hairy feet, in stories by J. R. R. Tolkien’, and is frequently used in the written press and in scientific literature to describe Homo floresiensis.