The nation's popular culture is under attack, at least according to lawyers enforcing the Transformers and Diary of a Wimpy Kid trademarks in a pair of lawsuits filed on opposite ends of the country at the end of the year. According to Hasbro, Inc., its Transformers brand is recognized in "many facets of the country's popular culture" and The New York Times has described one of its leading characters, Optimus Prime, as the "toughest robot in the nerd universe." Greg Heffley is an indisputable member of the nerd universe, as the middle-school-aged hero of the Diary of a Wimpy Kid books. According to Wimpy Kid, Inc., he had his "status as cultural icon" confirmed when a licensed balloon in his likeness was flown in New York's Macy’s Thanksgiving Day Parade. In late December, both companies filed suit against companies they believe are damaging their iconic brands and putting consumers at risk of confusion in the marketplace.
Hasbro filed suit in California Federal court against a Taiwanese laptop and computer-related products maker, alleging that Asus Computer International and ASUSTeK Computer are threatening the Transformers brand. Hasbro asserts that its Transformers and Transformers Prime marks - - which relate to toy robots that convert into various vehicles and a television series that was developed based on a character named Optimus Prime - - are being infringed by Asus' "Transformer" laptop and its "Eee Pad Transformer" and "Transformer Prime" computer products, and that Asus has diluted its trademarks, engaged in unfair competition and violated various provisions of California state law.
But Asus fired back: not so fast. In court filings it has asserted that, while Hasbro has sought federal registration of the Transformers Prime mark, the application has not yet been granted. It also pointed out that both of the Hasbro marks were filed with the U.S. Patent and Trademark Office in international class 28, for “toy action figures, toy vehicles and toy robots convertible into other visual forms…” which are not what it sells. Asus asserts that consumers paying $400-500 for high-end tablet computers from ASUS will not be confused that they are buying Hasbro licensed toys. So far, the Court has sided with Asus in denying Hasbro's request for expedited discovery but it has not yet weighed in on the merits.
Meanwhile, Wimpy Kid, Inc., owned by Diary of a Wimpy Kid author Jeff Kinney, filed suit against the Texas company Antarctic Press, Inc., in Federal court in Massachusetts, for publishing, advertising, and distributing books entitled “Diary of a Zombie Kid.” The complaint alleges that Antarctic committed trademark and trade dress infringement, trademark dilution, false designation of origin, copyright infringement, and various violations of Massachusetts state law. So far, the Wimpy Kid publisher appears to be keeping the Zombie Kid's publisher at bay and Antarctic has agreed to be enjoined from publishing or further distributing its Zombie Kid books. Of course, if popular culture teaches anything, it is that one should never count a zombie out of the fight. The restraining order is only temporary and expires in early February. Antactcic may reanimate the battle at any moment.
The cases are, respectively, Hasbro Inc. v. Asus Computer International, et al., U.S. District Court, Central District of California, Case No. 11-10437 (2011); and Wimpy Kid, Inc. v. Antarctic Press, Inc., U.S. District Court, District of Massachusetts, Case No. 11-12265 (2011).
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