UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA
#29CIVIL MINUTES - GENERAL
Case No.CV 11-10437 PSG (Ex)DateMarch 23, 2012TitleHasbro, Inc. v. Asus Computer International, Inc.,
et al.
Present: The Honorable Philip S. Gutierrez, United States District JudgeWendy K. HernandezNot Presentn/aDeputy ClerkCourt ReporterTape No.Attorneys Present for Plaintiff(s):Not PresentAttorneys Present for Defendant(s):Not Present
Proceedings: (In Chambers) Order DENYING Motion for Preliminary Injunction
Before the Court is Plaintiff Hasbro, Inc.’s motion for preliminary injunction. The Courtheard oral argument on the matter on March 19, 2012. Having read and considered the movingand opposing papers and the arguments made at the hearing, the motion is DENIED.I.BackgroundThis is a trademark infringement and dilution case. At issue are Defendants AsusComputer International, Inc. and AsusTek Computer, Inc.’s (collectively, “Asus”) marketing andsale of two tablets computers, known formally as the Asus
Eee Pad
Transformer TF 101 andAsus
Eee Pad
Transformer Prime TF 201, but also marketed simply as the “
Eee Pad
Transformer” and the “
Eee Pad
Transformer Prime.”
See Krumholz Reply Decl.
¶ 2;
Yang Decl.
¶ 2. Hasbro contends these products infringe and dilute its “Transformers” and “TransformersPrime” marks.A.The PartiesBeginning in 1984, Plaintiff Hasbro, Inc. (“Hasbro”), a toy manufacturing company,developed a line of toy robots that transformed into other forms.
Archer Decl.
¶ 4. Focusing ona multi-faceted approach to character development and storytelling, the product launch of the“Transformers” was accompanied by animated television and comic book series designed topromote the toys and introduce consumers to the Transformers universe.
Id.
The central and
CV-90 (06/04)
CIVIL MINUTES - GENERAL
Page 1 of 25
Case 2:11-cv-10437-PSG-E Document 66 Filed 03/23/12 Page 1 of 25 Page ID #:1352
UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA
#29CIVIL MINUTES - GENERAL
Case No.CV 11-10437 PSG (Ex)DateMarch 23, 2012TitleHasbro, Inc. v. Asus Computer International, Inc.,
et al.
consistent theme throughout the Transformers storyline is the struggle between good and evil, asplayed out in the conflict between “good” Transformers, known as Autobots, and “bad”Transformers, known as Decepticons.
Id.
¶ 5. The Autobots are led by the virtuous OptimusPrime character, while the Decepticons follow the powerful Megatron.
Id.
According toHasbro, Optimus Prime is intended to epitomize honor, duty, leadership, and freedom.
Id.
¶ 6.By 1986, Transformers had spawned its first full-length animated motion picture.
Id.
¶ 8.Although the property has been on the market continually since its 1984 debut, it reached newlevels of popularity in 2007, following the release of the first Transformers full-length actionmovie.
Id.
¶ 9. The movie grossed over $700 million in box office revenue, leading to two otherfull length major motion pictures. All in, the films have generated over $2.65 billion in revenueand launched an array of licensing and cross-promotional relationships, totaling over 800licensing deals and 11,000 “Transformers”-branded products.
Bouyer Decl.
¶ 4. Severalcompanies also placed products in the movies, including LG Electronics, whose productsappeared in both the second and third films.
Archer Decl.
¶ 9. In the third film, an Autobotcharacter known as “Brains” disguised itself as a Lenovo ThinkPad Edge Plus laptop.
Archer Decl.
¶ 10.According to Hasbro, the Transformers mark can be found on various “computer-related”products, including USB storage drives, computer mouses, skins for laptops, speaker heads andiPod docks.
See Bouyer Decl.
¶ 5, Exs. 1, 4. A Transformers-branded product which Hasbrorefers to as a children’s “educational laptop” has also been offered for sale in major retail chainsthroughout the United States, including Wal-Mart, Target, Kohl’s and Toys “R” Us.
Id.
¶ 6, Ex.2. Additionally, a cross-promotional LG commercial using Transformers characters was aired inconnection with the “Transformers: Revenge of the Fallen” film.
See id.
, Ex. 3. Thecommercial features a human holding an LG Versa smartphone, who is approached by OptimusPrime. Optimus Prime accuses the LG Versa smartphone of being a Decepticon, and hissuspicions appear to be confirmed when the smartphone “transforms,” in the distinctive mannerseen in the films, into a video camera, and then into a GPS device, and finally into a laptopcomputer.The Transformers characters receive unsolicited media attention, such as a Yahoo! Sportsblog which questioned “which players and coaches in the [NFL] would be the best fits with []robots from the popular action figures, TV series and movie franchise?” and a New York Times
CV-90 (06/04)
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Page 2 of 25
Case 2:11-cv-10437-PSG-E Document 66 Filed 03/23/12 Page 2 of 25 Page ID #:1353
UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA
#29CIVIL MINUTES - GENERAL
Case No.CV 11-10437 PSG (Ex)DateMarch 23, 2012TitleHasbro, Inc. v. Asus Computer International, Inc.,
et al.
feature crowning Optimus Prime as the “Toughest Robot in the Nerd Universe.”
See Archer Decl.
, Ex. 1, 4.B.The “Transformers” and “Transformers Prime” MarksIn 2000, Hasbro filed for registration of its Transformers mark in International Class 028,representing “toy action figures, toy vehicles, and toy robots convertible into other visualforms.”
See Vanasse Decl.
, Ex. 20. Hasbro also attaches a pending trademark registration(Serial No. 76690677) for a “T
RANSFORMERS
” mark registered in International Class 041,covering “entertainment services, namely, production and distribution of movies and on-goinganimated television series.”
See Vanasse Decl.
, Ex. 20. This application was filed on June 19,2008.
Id.
In late 2010, Hasbro joined with Discovery Communications to launch a children’stelevision channel called “The Hub.”
See Vogel Decl.
¶ 3. As a centerpiece for that network,Hasbro developed the “Transformers Prime” animated television series, which began airing inapproximately November 2010.
Vogel Decl.
¶ 4. The series focuses on the life and story of theOptimus Prime character.
Id.
“Prime” was added to the “Transformers” mark in the program’sname to emphasize this focus.
Id.
Thus far, the series has received several Emmy nominationsand awards and has been aired in 170 countries.
Id.
¶ 5. Hasbro filed an application for its“Transformers Prime” mark in International Classes 028 and 041, which is currently pending.
See Vanasse Decl.
, Ex. 20. A major marketing launch of “Transformers Prime” merchandise isplanned for March 2012.
Vogel Decl.
¶ 7.C.Asus and the “Transformer” and “Transformer Prime” TabletsDefendant Asus is a manufacturer of high-end electronics such as computers, laptops,tablet computers, server systems, and motherboards. Since Asus’s founding in 1990, thecompany has grown from a modest startup into a global technology leader.
Yang Decl.
¶ 2.Approximately 30% of all Personal Computers (PCs) sold in the United States come equippedwith an Asus motherboard.
Id.
¶ 3. Using the Google
Android
operating system, Asus competeswith companies such as Apple and Acer in the market for high-end electronics.
Id.
¶ 4. Asushas appeared in
BusinessWeek’s
“InfoTech 100” and “Asia’s Top 10 IT Companies” rankings.
Id.
The company has been recognized by the
Wall Street Journal Asia
as number one in quality
CV-90 (06/04)
CIVIL MINUTES - GENERAL
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Case 2:11-cv-10437-PSG-E Document 66 Filed 03/23/12 Page 3 of 25 Page ID #:1354
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