Monday, 19 March 2012

On Hobbits and vested rights

The Hobbit pub in Southampton has been attracting a lot of attention recently. Which is why someone chose to call it after the Tolkein character in the first place ... and that is the point of this posting. But before I get to the point I need to wander around a bit.

The pub has borne the name for 20 years, and the film company that now asserts its trade mark rights has owned them for rather less time. There must be a strong argument for the pub having an established use which would defeat a claim for trade mark infringement. The film company has reportedly offered it a licence at the princely rate of $100 per annum, which I reckon falls into the "offer you can't refuse" category, because the alternative would be to be tied up in expensive litigation for years - though it's backed up with something more than menaces: I would not like to rely on prior use if I had such a shaky right to use the sign in the first place. 20 years ago, even with character merchandising in a much less developed state, the Tolkein estate would surely have had a pretty strong claim that passing off was taking place.

And that brings me to the point. That superb resource,, reports the landlady of the pub (who, in one of those peculiarities of English language, is in fact the tenant, and who being 41 can have had little if anything to do with the naming of the establishment) protesting that "[i]t was never our intention to steal or profit from work written or created by someone else and we do not feel we have." Well, leaving aside the fact that the word "steal" is completely out of place there, consider the second part of this statement. It was never their intention to profit from the Hobbit? Then what did they think was going to happen? The thought process that led to the naming of the pub (which, incidentally, should not be confused with the Hobbit Hotel in Sowerby Bridge) must surely have included the idea that the name would bring in custom that might not be brought in were it to adopt a name like the Royal Oak or the King's Head (the pub apparently took over premises occupied by a hotel which closed in 1989, but history does not seem to record what it was called). That, however innocent the motive might have been, amounts to an intention to profit from the association, to take an admittedly short free ride on the reputation and, dare I say, goodwill, generated by JRR Tolkein in (inter alia) that character.

Oh, and let's think about the last few words of her statement. They might not think they have profited from Tolkein's work - but it's no defence to a trade mark infringement to argue that it didn't work. If in fact the pub has not profited from the association, that will only sound in damages.

Whether or not the film company is the evil bully it is cast as is another matter. Until the terms of the licence are publicly known it is impossible to say, but a royalty of $100 a year suggests, refreshingly, that it isn't.

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