Warner Bros Entertainment Inc et al v. The Global Asylum Inc

Filing 103

JUDGMENT FOR PERMANENT INJUNCTION filed by Judge Philip S. Gutierrez: against Defendant Global Asylum Inc.. re: Stipulation for Entry of Judgment of Permanent Injunction entered into and filed by plaintiffs and defendant, The Global Asylum ("As ylum"), 102 THE COURT HEREBY ORDERS, ADJUDGES AND DECREES THAT: Pursuant to Rule 65 of the Federal Rules of Civil Procedure, Asylum, its respective parent, subsidiary and affiliated companies, together with its respective officers, directors , principals, owners, partners, managers, shareholders, agents, attorneys, employees, representatives, successors, assigns, transferees, and all persons acting in concert or participation with them, or at their direction, or within their control, shall be permanently enjoined and restrained from engaging in any of the following: 1. Manufacturing, producing, labeling, selling, distributing,licensing, sub-licensing, assigning, marketing, promoting, or advertising theAsylum Motion Picture in any manner that...All claims, counterclaims, and defenses in this action are hereby resolved by this Permanent Injunction Judgment. Plaintiffs and Asylum shall each bear their own attorneys' fees and costs of suit in the Action. Plaintiffs and A sylum have consented to, and the Court shall retain, continuing jurisdiction for purposes of enforcement of the Permanent Injunction Judgment. Violation of the Permanent Injunction Judgment shall expose Asylum and all other persons bound by the Judgment to all applicable penalties, including contempt of Court. (PLEASE REVIEW DOCUMENT FOR FULL AND COMPLETE DETAILS : (MD JS-6. Case Terminated) (lw)

1
2

E-FILED 02/06/14
JS-6
cc: FISCAL

3
4
5
6
7
8
9
10

UNITED STATES DISTRICT COURT

11

CENTRAL DISTRICT OF CALIFORNIA

12
13
14
15
16
17
18
19
20
21
22

WARNER BROS.
ENTERTAINMENT INC., a Delaware
corporation; NEW LINE CINEMA
LLC, a Delaware limited liability
company; NEW LINE
PRODUCTIONS, INC., a California
corporation; METRO-GOLDWYNMAYER STUDIOS INC., a Delaware
corporation; and THE SAUL ZAENTZ
COMPANY, a Delaware corporation,
v.

Case No. 2:12-cv-09547-PSG-CW
[PROPOSED] JUDGMENT FOR
PERMANENT INJUNCTION

Plaintiffs,

THE GLOBAL ASYLUM INC. (aka
The Asylum), a California corporation,
Defendant.

23
24
25
26
27
28

[Proposed] Judgment For Permanent Injunction

1

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD, PLEASE

2

TAKE NOTICE THAT, in accordance with the Stipulation for Entry of Judgment

3

of Permanent Injunction entered into and filed herewith by plaintiffs Warner Bros.

4

Entertainment Inc., New Line Cinema LLC, New Line Productions, Inc. (together

5

with New Line Cinema LLC, “New Line”), Metro-Goldwyn-Mayer Studios Inc.,

6

and The Saul Zaentz Company (collectively, “Plaintiffs”), and defendant The

7

Global Asylum Inc. (“Asylum”), through their respective undersigned counsel of

8

record in this action, the Court HEREBY FINDS THAT:

9
10

1.

Subject to various agreements among them, Plaintiffs own exclusive

11

rights to produce and distribute motion pictures based on the classic literary works

12

of Professor J.R.R. Tolkien entitled The Lord of the Rings, The Two Towers, and

13

The Return of the King (known as the “Lord of the Rings trilogy”), and The Hobbit,

14

fantasy stories that follow the adventures of fictional creatures called “hobbits.”

15
16

2.

New Line created, released and distributed three motion pictures

based on the Lord of the Rings trilogy in 2001, 2002, and 2003, respectively (the

17 “Lord of the Rings Films”).
18

3.

Plaintiffs have developed, produced, and distributed in the United

19 States and in other territories worldwide the motion picture The Hobbit: An
20 Unexpected Journey, which is the first of three films to be released by Plaintiffs
21 based on the novel The Hobbit by J.R.R. Tolkien (the “Hobbit Films”). The other
22 two Hobbit Films are entitled The Hobbit: The Desolation of Smaug (released
23 theatrically in December 2013) and The Hobbit: There and Back Again (scheduled
24 for theatrical release in December 2014).
25

4.

Defendant The Global Asylum, Inc. has represented that it has acted

26 as exclusive sales agent for a motion picture starring Christopher Judge and Bai
27 Ling entitled Age of the Hobbits, which was developed, produced, and distributed
28 by The Institution LLC (the “Asylum Motion Picture”). The Asylum Motion
-1[Proposed] Judgment For Permanent Injunction

1

Picture was scheduled for release on December 11, 2012, was distributed to

2

retailers under that title, and also has been distributed under the titles Lord of the

3

Elves and Clash of the Empires.

4

5.

On November 7, 2012, Plaintiffs filed this Action alleging, among

5

other things, that they own exclusive trademark rights in the terms “Hobbit” and

6

“Hobbits” (the “Hobbit Marks”) and in the titles of the Hobbit Films, and that

7

Asylum’s sale, marketing, packaging, and promotion of the Asylum Motion

8

Picture constitute trademark infringement, false designation of origin, unfair

9

competition, and false advertising under the federal Lanham Act, and unfair

10
11

competition and false advertising under California law.
6.

On November 28, 2012, Asylum filed a counterclaim against

12

Plaintiffs in the Action for a declaration of trademark non-infringement, and on

13

December 3, 2012, Asylum filed an answer to Plaintiffs’ complaint in the Action.

14

Plaintiffs filed an answer to Asylum’s counterclaim on December 18, 2012.

15

7.

On December 10, 2012, the Court entered an order that temporarily

16

restrained the advertising, sale, and distribution by Asylum of any motion picture

17

under the title Age of the Hobbits or any other title confusingly similar to the

18

Hobbit Marks, pending a hearing on an order to show cause why a preliminary

19

injunction should not issue. On January 29, 2013, the district court issued a

20

preliminary injunction prohibiting Asylum’s use of the Hobbit Marks in

21

conjunction with the Asylum Motion Picture. The Ninth Circuit affirmed the grant

22

of a preliminary injunction on October 20, 2013.

23

8.

Plaintiffs and Asylum have entered into a confidential settlement

24

agreement and have stipulated to the entry by the Court of this Judgment for

25

Permanent Injunction on the terms set forth below (the “Permanent Injunction”).

26
27
28
-2[Proposed] Judgment For Permanent Injunction

1
2
3

NOW, THEREFORE, THE COURT HEREBY ORDERS, ADJUDGES
AND DECREES THAT:
A.

Pursuant to Rule 65 of the Federal Rules of Civil Procedure, Asylum,

4

its respective parent, subsidiary and affiliated companies, together with its

5

respective officers, directors, principals, owners, partners, managers, shareholders,

6

agents, attorneys, employees, representatives, successors, assigns, transferees, and

7

all persons acting in concert or participation with them, or at their direction, or

8

within their control, shall be permanently enjoined and restrained from engaging in

9

any of the following:

10

1.

Manufacturing, producing, labeling, selling, distributing,

11

licensing, sub-licensing, assigning, marketing, promoting, or advertising the

12

Asylum Motion Picture in any manner that:
a.

13

uses the titles Age of the Hobbits, Lord of the Elves, or

14

any other title that includes the words “Hobbit,” “Hobbits,” “Tolkien” or any

15

variation of those words or the titles of any of the Lord of the Rings Films or

16

Hobbit Films (or any similar variations thereof), or the proper name of any of the

17

characters, places, items, or events in the Lord of the Rings novels or films or in the

18

Hobbit novel or Hobbit Films (in each case, whether or not capitalized); or
b.

19

uses in or on any front or back DVD cover, front or back

20

Blu-ray cover, or other packaging the words “Hobbit, “Hobbits,” “Tolkien” or any

21

variation of those words or the titles of any of the Lord of the Rings Films or

22

Hobbit Films (or any similar variations thereof), or the proper name of any of the

23

characters, places, items, or events in the Lord of the Rings novels or films or in the

24

Hobbit novel or Hobbit Films (in each case, whether or not capitalized).

25

2.

Manufacturing, producing, labeling, selling, distributing,

26

licensing, sub-licensing, assigning, marketing, promoting, or advertising any other

27

motion picture that:

28
-3[Proposed] Judgment For Permanent Injunction

a.

1

uses the titles Age of the Hobbits, Lord of the Elves, or

2

any other title that includes the words “Hobbit,” “Hobbits,” “Tolkien” or any

3

variation of those words or the titles of any of the Lord of the Rings Films or

4

Hobbit Films (or any similar variations thereof), or the proper name of any of the

5

characters, places, items, or events in the Lord of the Rings novels or films or in the

6

Hobbit novel or Hobbit Films (in each case, whether or not capitalized); or
b.

7

uses in or on any front or back DVD cover, front or back

8

Blu-ray cover, or other packaging the words “Hobbit, “Hobbits,” “Tolkien” or any

9

variation of those words or the titles of any of the Lord of the Rings Films or

10

Hobbit Films (or any similar variations thereof), or the proper name of any of the

11

characters, places, items, or events in the Lord of the Rings novels or films or in the

12

Hobbit novel or Hobbit Films (in each case, whether or not capitalized).
3.

13

Distributing, advertising, marketing, promoting, selling,

14

renting, licensing, sublicensing, assigning, or participating in any other exploitation

15

of the Asylum Motion Picture using the titles Age of the Hobbits or Lord of the

16

Elves (or any similar similar variations thereof) in connection with any television

17

broadcast, streaming, Internet download, or video-on-demand services.

18
19

B.

Asylum shall make good faith requests in writing to all of its domestic

20

distributors, wholesalers, brokers, licensees, sublicensees, assignees, and retailers

21

that it knows or has reason to believe received the Asylum Motion Picture under

22

the title Age of the Hobbits or Lord of the Elves (or any similar variations thereof)

23

(1) to cease all distribution, sale, rental, licensing, sublicensing, assigning,

24

advertising, marketing, promotion, or other exploitation of the Asylum Motion

25

Picture under the titles Age of the Hobbits or Lord of the Elves (or any similar

26

variations thereof), including in connection with any DVD or Blu-ray discs and/or

27

any television broadcast, streaming, Internet download, or video-on-demand

28

services, (2) to remove all copies of the Asylum Motion Picture that use the titles
-4[Proposed] Judgment For Permanent Injunction

1

Age of the Hobbits or Lord of the Elves (or any similar variations thereof) from any

2

method or manner of distribution and return such copies to Asylum, which shall

3

then deliver them to Plaintiffs for destruction, and (3) to request in writing that

4

their respective sublicensees, assignees, retailers, and other downstream recipients

5

of the Asylum Motion Picture comply with the requirements of parts (1) and (2) of

6

this Section B.

7
8

C.

Asylum shall provide written notice of this Permanent Injunction

9

Judgment (1) to each of its respective officers, directors, principals, owners,

10

partners, shareholders, agents, attorneys, representatives, successors, assigns,

11

affiliated entities, and all entities under their control, and (2) to all distributors,

12

brokers, wholesalers, licensees, sublicensees, assignees, retailers, and all other

13

persons or entities in privity with Asylum that it knows or has reason to believe

14

received the Asylum Motion Picture under the title Age of the Hobbits or Lord of

15

the Elves (or any similar variations thereof), as well as to all domestic retailers and

16

other distributors that Plaintiffs request in writing that Asylum so notify. Asylum

17

shall provide a copy of the Permanent Injunction Judgment as part of any such

18

notice, which may be transmitted by email.

19
20

D.

Within thirty (30) days of the date of entry of this Permanent

21

Injunction Judgment, Asylum shall serve Plaintiffs with a report in writing and

22

under oath setting forth the manner in which it has complied with Sections B and C

23

this Permanent Injunction Judgment, by providing (1) a copy of any notice or

24

communication sent to anyone by Asylum regarding the Permanent Injunction

25

Judgment, and (2) a list of all persons and entities to whom such notice or

26

communication was sent.

27
28
-5[Proposed] Judgment For Permanent Injunction

1

E.

All claims, counterclaims, and defenses in this action are hereby

2 resolved by this Permanent Injunction Judgment. Plaintiffs and Asylum shall each
3 bear their own attorneys’ fees and costs of suit in the Action.
4
5
6
7
8
9

F.

Plaintiffs and Asylum have consented to, and the Court shall retain,

continuing jurisdiction for purposes of enforcement of the Permanent Injunction
Judgment. Violation of the Permanent Injunction Judgment shall expose Asylum
and all other persons bound by the Judgment to all applicable penalties, including
contempt of Court.

10
11
12

Dated: _________, 2014
02/5
The Honorable Philip S. Gutierrez
United States District Court Judge

13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-6[Proposed] Judgment For Permanent Injunction

1

Submitted by:

2
3
4
5

JENNER & BLOCK LLP
s/Andrew J. Thomas
Andrew J. Thomas

6

Attorneys for Plaintiffs Warner Bros.
Entertainment Inc., New Line Cinema
8 LLC, New Line Productions, Inc.,
Metro-Goldwyn-Mayer Studios Inc.,
9 and The Saul Zaentz Company
7

10
11

LAW OFFICES OF
SCOTT A. MEEHAN

12
13

s/Scott A. Meehan
Scott A. Meehan

14
15

Attorney for The Global Asylum Inc.

16
17
18
19
20
21
22
23
24
25
26
27
28
-7[Proposed] Judgment For Permanent Injunction