Q: Why are Some People Sued over ‘Hobbit’ While Others are Not?
ANSWER: The intellectual property rights disputes over the characters and names devised by J.R.R. Tolkien are (or should be) the stuff of legend. You can be driving along the road and see a small shop or restaurant that uses the word “hobbit” or “rivendell” or “middle-earth” in its name and think, “Oh, that’s nice.” Or you can browse a book store and come across all sorts of books NOT written by J.R.R. Tolkien that are about Middle-earth or which even use characters from his stories.
And then once in a while you see a news story about someone being sued over the use of “Tolkien” names. So what gets people into trouble with all these rights, and why do some people seem to get by?
So there are basically two kinds of intellectual property rights involved in these matters: copyright and trademark. Copyright protects the expression of an idea such as a written work (short story, poem, or book for example), a performance (a play or a movie, for example), or art. There may be other things that can be copyrighted but what makes a thing copyrightable is that it is a UNIQUE and previously UNUSED form of expression. This is why titles, names, and short groups of words (such as mottos, sayings, aphorisms, and other expressions) CAN NOT be copyrighted.
However, trademark law protects the use of a special mark (a practice established by craftsmen thousands of years ago), a unique name, or a special expression (such as a motto) with respect to doing business. In other words, trademarks identify the products and services of specific companies or individuals. In doing business you establish ownership of a trademark simply by using it — you generally do NOT need to register the trademark. For example, I own a trademark in “Xenite.Org” and “Xenite-dot-Org” because I have done business under this name (through the sale of merchandise and some services through the years). You cannot simply legally create merchandise that uses my trademark without my permission.
Trademark and copyright owners may choose to register their respective properties in order to obtain additional legal rights and protection under specific laws. For example, the unauthorized reproduction of a copyrighted work that has been registered may be punishable by substantial fines and prison time, whereas the unauthorized reproduction of an UNregistered copyright is typically only punishable by compensating the copyright owner for financial damages (all the income you obtained through sale of the illegal copies and/or what would have constituted fair license fees).
J.R.R. Tolkien first tangled with copyright law in the mid-1960s when ACE Books discovered that the copyrights for The Lord of the Rings and The Hobbit had not been properly secured in the United States by his American publisher. ACE Books opportunistically published unauthorized paperback editions of those books in the United States. Until that time Tolkien’s books had only been available in hardback. Tolkien and his publishers reacted quickly by publishing their own authorized paperback editions, but in order to secure copyright in the United States again Tolkien was forced to revise both stories (thus confusing the issue of what is canonical in Middle-earth for his readers).
There remained a question over the status of the ACE Books edition until several years ago, when a long-running complaint by the Tolkien Estate was finally settled with payment to the author’s heirs. Until that time some people in the entertainment and publishing industry argued that there was still a copyright “hole” pertaining to Tolkien’s works in the United States. To be honest, I don’t know enough about intellectual property rights law to know how legitimate such a “hole” was or when it was finally plugged, as there have been several changes to American copyright law over the past few decades.
So who owns all these rights? Are they the same people? Many fans are by now aware that J.R.R. Tolkien sold the film and merchandising rights to The Lord of the Rings and The Hobbit in the 1960s. These rights changed hands at least twice and perhaps more than I have heard. Saul Zaentz finally purchased the rights and he set up Tolkien Enterprises as a division of the Saul Zaentz Company. Until Peter Jackson’s “Lord of the Rings” movies were released and subsequent lawsuits filed, most of us had assumed that J.R.R. Tolkien and his heirs had no remaining interest in those rights, but now we know that they do have a small percentage interest.
The heirs of J.R.R. Tolkien (his children and their children and grand-children) constitute the Tolkien Estate and they set up the Tolkien Trust to administer the intellectual property rights that remain in their possession. But who owns which rights? That is not entirely clear to me, although Tolkien Enterprises (now renamed as Middle-earth Enterprises) used to publish a list of trademarked names from the Tolkien books for which it claimed ownership. Their Website now provides information on whom to contact and how to begin negotiations for rights to use the trademarks they defend.
But not all the trademarks belong to Middle-earth Enterprises (and Saul Zaentz). The Tolkien Trust (in the name of the Tolkien Estate) has occasionally asserted some of its own trademark protections. Similarly, not all copyrights belong to the Tolkien Estate. For example, many derivative works have been created under license to Tolkien/Middle-earth Enterprises — which now owns the copyrights to THOSE works.
And yet, many books (and some films) have been created through the years which use the Tolkien characters and essentially retell the Tolkien stories without owing any licensing fees to either Middle-earth Enterprises or the Tolkien Trust. These works are essentially protected under “fair use” doctrine which allows non-competitive use of trademarks or partial use of copyrighted materials that are accompanied by sufficient commentary, annotation, and/or critical analysis or which incorporate the copyrighted materials into a sufficiently new form of expression such that the original composition is not being reproduced.
And yet some of these productions have entailed licenses with one or both of the Tolkien IPR owning entities. For example, Wayne Hammond and Christina Scull had to work with the Tolkien Trust in order to produce books that focus on J.R.R. Tolkien’s artwork. And on the one hand they were able to publish J.R.R. Tolkien: Artist & Illustrator under their names but on the other hand The Art of the Hobbit is credited to Tolkien. There is a fine line between critical commentary and editorial process in books like this, and frankly I won’t pretend to understand all the nuances.
Some of the businesses that use the Middle-earth names may, in fact, have obtained licenses to do so. I haven’t asked any of them about that. So one should not simply assume that the local “Hobbit Cafe” is operating outside the established legal framework. On the other hand, trademarks can only be claimed or defended if there is a potential for consumer confusion. For example, how many people think of restaurants when reading The Lord of the Rings or talking about J.R.R. Tolkien? It’s not like Tolkien launched a chain of pubs in the 1960s with Hobbit and Middle-earth themes. The recent brouhaha in England may seem trivial to most people but apparently someone’s legal experience led to the conclusion that consumers might feel there was a legitimate connection between the business operator and some Tolkien IPR.
You can write stories about Hobbits all day long, and publish them, and make money from them, if it’s clear to your readers that you’re not writing about J.R.R. Tolkien’s hobbits. Now, any good editor will tell you that’s no easy task but recent archaeological history has stepped into the muddy fields of IPR warfare and introduced a new wrinkle in time: the discovery of Homo floresienses, the “hobbit”-like extinct species of humans whose remains were discovered on the island of Flores in Indonesia, might serve as fodder for a whole new range of “hobbit” books — although it is well-established that the nickname of “hobbit” was applied solely because of the Tolkien books.
Recent scholarship has also established that J.R.R. Tolkien did not wholly contrive the name “hobbit” himself for diminutive creatures of fairy-tale. Use of the word has been attested in a list of fairy creatures from the 1800s. Assuming you give a wholly new definition to this old word, you could probably publish a “hobbit” story that looks nothing like Tolkien’s hobbit. But you have to understand that few if any publishers would touch such a book simply because the public now mostly associates “hobbit” either with Tolkien or Flores Man. Technically you should be free to do this — practically it may prove to be impossible. Publishers are funny like that. They’ll freeze dead if you use the wrong title for a book (as in “Ahem! No, no! Can’t use ‘Lord of the Spies’ because it sounds too much like ‘Lord of the Flies’ and ‘Lord of the Rings'”).
So where does all this leave a confused, bemused, and bewildered fan of Middle-earth who may possibly want to use the name “middle-earth”? You got me. I clearly used the name “Middle-earth” for this blog but it is obviously publishing original research related to Tolkien’s Middle-earth. That said, there are innumerable bands who have taken names from Tolkien’s stories and are using them. Did they pay license fees? I have no idea. But then, I doubt many consumers would confuse a heavy metal band for being associated with either Middle-earth Enterprises or the Tolkien Trust.
This type of legal confusion arises more often than most people realize. In fact, it is precisely this kind of uber-complexity of intellectual property rights that has pitted companies like Google against intellectual property rights law. Google recently helped lead the fight against SOPA, the Stop Online Piracy Act. Google did this for its own selfish purposes, not because SOPA threatens freedom of expression (that is a lie which many anti-SOPA activists have now backed away from). In fact, nearly all the provisions of SOPA are already in force under U.S. Law anyway — as people found out on January 19, the day after the SOPA protest, when the IPR-violating Website MegaUpload was seized by U.S. authorities and its owners and officers indicted on felony charges.
I think everyone agrees that IPR laws are really confusing and consumer-unfriendly. These laws were created to protect artists and authors from the exploitation that wealthy patrons engaged in for centuries. Up until the establishment of copyright the only way for a serious artist or writer to make a living was to find a wealthy benefactor who paid for all the work and essentially OWNED IT. This was a form of economic slavery that we may face again if we allow companies like Google to destroy intellectual property rights. What we need are IPR laws that can work with the Internet and allow at least some freedom of adaptation.
It is adaptation that is threatening intellectual property rights these days. Because we can now use portions of copyrighted works and reuse established trademarks in ways their inventors and owners did not foresee, it’s no longer completely clear where such new use is appropriate without a license and where it requires a license. And companies like Google are threatened by so-called “patent trolls” (patents being another form of IPR) who buy up old patents and then begin suing companies that have developed adaptive technologies. So when I say that Google opposed SOPA for selfish reasons, I don’t mean they wanted to go around stealing copyrighted works and depriving honest originators of their hard-earned value — that’s not at all what companies like Google feel is at stake. Google and other companies adapt things to their use and the law is not clear on who owns a full stake in that adaptive use. For example, the Fair Search organization (representing — at this time — 17 companies) is challenging the way Google obtains information from Websites and republishes that information for its own benefit without compensating Websites.
The reason why Saul Zaentz has pursued some infringement claims so aggressively is the same reason why other IPR owners have defended them aggressively: you defend it or you lose it. Last year I, myself, threatened someone with a $19 million IPR lawsuit. Only last week I threatened someone else with a $200 million lawsuit. Whether I would actually receive such damages if I were to file and win is completely speculative and irrelevant. The point is that the law requires me to defend my rights or I lose them. And that is, presumably, why some people are sued over use of Tolkien-related names and other people are not — some uses are deemed threatening to the legal claim of rights and other uses are not.
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