In a small twist of irony, last December’s release of the second Hobbit movie was marked by a digital outdoor campaign which ran on Ocean Outdoor’s Two Towers but that didn’t stop Hollywood rights company The Saul Zaentz Company earlier accusing Ocean of trade mark infringement.Today we heard that the Saul Zaentz Company has lost its quest (geddit?) to stop Ocean using the name, which the former had claimed ownership of – the Saul Zaentz Company owns the intellectual property rights to the JRR Tolkien epic fantasies, The Lord of the Rings and The Hobbit.
Lawyers representing SZC claimed that Ocean Outdoor’s two sets of iconic digital outdoor advertising towers, which are called The Two Towers West and The Two Towers East, infringed its rights.
SZC claimed to have used Community trade marks in the UK and the EU, which had since acquired “a reputation and enhanced distinctiveness”. Tolkien’s two towers of course refer to the fictional middle earth towers of Minas Morgul and Orthanc, the black tower of Isengard.
But SZC’s claims have failed following a ruling by the Trade Marks Registry. Ocean marketing director Richard Malton, a self confessed Tolkien fan, is somewhat bemused by the whole rigmarole.
“We took on Hollywood and we won,” he says. “We have never tried to pass off our two towers as either Orthanc or Minus Morgul – I’m not sure it would have helped us attract the type of brands that we look to engage with.
“We vigorously defended our right to use the Two Towers as a name for our iconic locations and luckily, common sense has prevailed. The irony wasn’t lost on us – the small being pushed around by the big. But as we all know, Frodo wins in the end!”
Following a hearing in October and further challenge from Zaentz, the intellectual property office has rejected claims by SZC that Ocean was guilty of trademark infringement. Claims that Ocean was guilty of passing off and using the name detrimentally to the “distinctive character” of the film company’s marks were also dismissed.
“Two Towers West and Two Towers East are appropriate names for the digital structures and have become well established in the advertising world, so we were astonished to receive a letter telling us to remove all reference to The Two Towers from our website and marketing materials,” says Malton.
Ocean now owns the trade mark to the Two Towers in the digital out of home advertising sector (but not in the fantasy fictional world of Middle Earth), and is claiming costs against SZC for the time and effort spent defending its action.
Says Malton “It was, in every sense of the Tolkien name, a foolhardy quest.”
“There is some good in this world, and it’s worth fighting for.”
― J.R.R. Tolkien, The Two Towers