WARNER BROS ENTERTAINMENT, INC., a Delaware corporation; v. THE GLOBAL ASYLUM, INC., a California corporation, DBA The Asylum

NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
WARNER BROS ENTERTAINMENT,
INC., a Delaware corporation; et al.,
Plaintiffs - Appellees,
v.
THE GLOBAL ASYLUM, INC., a
California corporation, DBA The Asylum,
Defendant - Appellant.
No. 13-55352
D.C. No. 2:12-cv-09547-PSG-CW
MEMORANDUM*
Appeal from the United States District Court
for the Central District of California
Philip S. Gutierrez, District Judge, Presiding
Argued and Submitted October 7, 2013
Pasadena, California
Before: FERNANDEZ, PAEZ, and HURWITZ, Circuit Judges.
Defendant The Global Asylum, Inc. (“Asylum”) appeals the district court’s
order granting Plaintiffs Warner Brothers Entertainment, Inc., New Line
Productions, Inc., Metro-Goldwyn-Mayer Studios, Inc., Saul Zaentz Company, and
FILED
OCT 30 2013
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
* This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.

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New Line Cinema, LLC’s (collectively “Studios”) motion for a preliminary
injunction.
1. “A plaintiff seeking a preliminary injunction must establish that he is
likely to succeed on the merits, that he is likely to suffer irreparable harm in the
absence of preliminary relief, that the balance of equities tips in his favor, and that
an injunction is in the public interest.” Winter v. Natural Res. Def. Council, Inc.,
555 U.S. 7, 20 (2008). The district court found that all four Winter elements were
met.
2. On appeal, Asylum challenges only the district court’s ruling that the
Studios are likely to succeed on their trademark infringement claim under 15
U.S.C. § 1114. Specifically, Asylum argues that the district court applied an
erroneous legal standard in rejecting Asylum’s nominative fair use defense.
Asylum also argues that the district court’s injunction is overbroad and that,
instead of granting a prohibitory injunction, the district court should have ordered
Asylum to modify its use of the protected marks so that Asylum’s uses would
qualify as lawful fair uses.
3. The district court did not apply an erroneous legal standard in
rejecting Asylum’s nominative fair use defense. Asylum argues that the characters
in its movie are based on members of the real species homo floresiensis, and that
its characters are not Tolkien’s fantasy hobbit characters, the Studios’ product.

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Asylum contends that members of the species homo floresiensis were nicknamed
“Hobbits” by scientists and journalists in reference to Tolkien’s characters. The
district court properly recognized that a nominative fair use defense is not available
because Asylum used the “Hobbit” mark in the title Age of the Hobbits to refer to
Asylum’s product and not the Studios’ product. See E.S.S. Entertainment 2000,
Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008) (holding that
“[s]ince [defendant] did not use the trademarked logo to describe [plaintiff’s] strip
club, . . . the nominative fair use defense does not apply in this case” (citation
omitted))); New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th
Cir. 1992) (“If the defendant’s use of the plaintiff’s trademark refers to something
other than the plaintiff’s product, the traditional fair use inquiry will continue to
govern.”).
4. Asylum’s argument that the district court’s injunction is overbroad
and that the court should have crafted the injunction to allow Asylum to use the
Studios’ marks in such a manner so that they would qualify as lawful fair uses also
fails. Asylum cites Toyota Motor Sales, U.S.A., Inc. v. Tabari for the proposition
that: “If [a] nominative use does not satisfy all the New Kids factors, the district
court may order defendants to modify their use of the mark so that all three factors
are satisfied; it may not enjoin nominative use of the mark altogether.” 610 F.3d
3

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1171, 1176 (9th Cir. 2010). Here, however, Asylum did not propose to the district
court or this court specific language or suggestions regarding how the injunction
should be modified to allow nominative use of the protected trademarks while
prohibiting Asylum’s infringing uses. Accordingly, the district court did not abuse
its discretion in granting the preliminary injunction as requested by the Studios
instead of tailoring it to authorize permissible nominative fair use of the protected
marks.
AFFIRMED.
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