Toho Co., Ltd. v. William Morrow and Co., Inc.

• Decision Date: 06 April 1998
• Docket Number: No. CV 98-0925 DT (VAPx).,CV 98-0925 DT (VAPx).
• Citation: 33 F.Supp.2d 1206
• Court: U.S. District Court — Central District of California
• Parties: TOHO CO., LTD., Plaintiff, v. WILLIAM MORROW AND COMPANY, INC., Defendant.

33 F.Supp.2d 1206

TOHO CO., LTD., Plaintiff, v. WILLIAM MORROW AND COMPANY, INC., Defendant.

No. CV 98-0925 DT (VAPx).

United States District Court, C.D. California.

April 6, 1998.

COPYRIGHT MATERIAL OMITTED

Charles N. Shephard, Sheri E. Porath, Greenberg Glusker Fields Claman & Machtinger LLP, Los Angeles, CA, for Toho Co., Ltd.

Bradley H. Ellis, Stephen G. Contopulos, Steven A. Ellis, Sidley & Austin, Los Angeles, CA, for William Morrow & Company Inc.

ORDER

GRANTING

PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

TEVRIZIAN, District Judge.

Background

Plaintiff Toho Co., Ltd. ("Toho" or "Plaintiff") brings this action against Defendant William Morrow and Company, Inc. ("Morrow" or "Defendant") alleging various causes of action for alleged infringement of Toho's intellectual property rights in the fictional character "Godzilla," and subsequent derivative works based thereon.

Toho is a Japanese corporation and motion picture studio with its principal place of business in Tokyo, Japan. Complaint, ¶ 2. William Morrow is alleged to be a New York corporation with its principal place of business in New York. Id., ¶ 3.

In or about 1954, Toho alleges that it created the fictional character "Godzilla", a giant prehistoric monster brought to life in the modern world. Id., ¶ 5. At the same time, Toho produced and distributed a feature-length motion picture entitled Godzilla, based upon the reawakening of Godzilla by the detonation of an atomic bomb. The film was allegedly released in the United States in or about 1956 under the title Godzilla, King of the Monsters. Id. Toho alleges that it has subsequently produced and distributed throughout the world a series of motion pictures based upon the further adventures of Godzilla, including such purported "classics" as Godzilla vs. Mothra, and Son of Godzilla. Id. Toho contends that it is the owner of the exclusive rights and privileges in and to the copyright in its original motion picture Godzilla and in the subsequent Godzilla motion pictures. Id., ¶ 6.

Toho alleges that as a result of its success and popularity, it has continuously engaged in the business of merchandising the Godzilla character. Id., ¶ 8. Toho alleges that it licenses others to use the name and likeness of Godzilla on and in the connection with toys, clothing, books, games, records, posters and various other types of merchandise. Id.

Beginning in about 1981, Toho alleges that it duly registered the name "Godzilla" as a service mark and trademark under the Lanham Act, 15 U.S.C. § 1051, and that Toho remains to this date the owner of said trademark and service mark. Id., ¶ 9.

On May 20, 1998, Toho contends that Tri-Star pictures plans to release a big-budget style motion picture featuring the Godzilla character. The motion picture is entitled Godzilla and is being produced with Toho's permission. Toho avers that in connection with the impending release of the Godzilla motion picture, Toho and its authorized merchandising agent are engaged in an extensive licensing and merchandising campaign. Id., 12. Among the licensees are Random House, Inc. ("Random House"), who was allegedly granted the exclusive right to publish a wide variety of books concerning Godzilla, including compendium books. Id., ¶ 13. Pursuant to this license, Toho alleges that Random House is publishing a compendium book of Toho's Godzilla films entitled "The Official Godzilla Compendium" (hereinafter the "Random House Book"). Id., ¶ 14.

Toho alleges that Morrow is currently advertising and publishing, and plans to make available to the public beginning on April 1, 1998, a 227-page Godzilla compendium book entitled "Godzilla!" (hereinafter the "Morrow Book"). Id., ¶ 15. Toho contends that the cover of the Morrow Book features an illustration of Toho's copyrighted Godzilla character, and the title is written in the distinctive lettering style used by Toho and its licensees in their merchandising activities. Id. Toho asserts that the Morrow Book will contain more than ninety (90) photographs from or concerning Toho's copyrighted films, and that several of these photographs will comprise full pages in said Book. Id. Toho alleges that Morrow's unauthorized Book is substantially similar to the Toho authorized Random House Book. Id., ¶ 16

Toho contends that neither Morrow nor the author of the Morrow Book ever sought or obtained permission from Toho to write, publish, or distribute the Morrow Book. Id., ¶ 17. Because of Morrow's alleged failure to cease and desist from its unauthorized publication and planned distribution of the Morrow Book, the instant lawsuit was commenced. Id.

Procedural History

On February 6, 1998, Toho filed its Complaint alleging causes of action for:

(1) Violation of the Lanham Act, Section 43(a);

(2) Statutory Trademark Infringement;

(3) Common Law Trademark Infringement (4) Violation of Federal Anti-Dilution Law, 15 U.S.C. § 1125(c);

(5) Injunction for Violation of California's Anti-Dilution Law, California Business and Professions Code § 14330;

(6) Common Law Unfair Competition;

(7) Unjust Enrichment;

(8) Copyright Infringement;

(9) Injunctive Relief; and

(10) Injunction and Restitution under California Unfair Competition Statute, California Business and Professions Code § 17200.

On February 27, 1998, Toho filed a Motion for Preliminary Injunction, which is before this Court today.

Discussion

A. Standard

To prevail on a motion for preliminary injunction, the plaintiff is required to show that it will suffer irreparable injury and that it is likely to prevail on the merits, or serious questions regarding the merits exist and the balance of hardships tips sharply in Plaintiff's favor. Chalk v. U.S. District Court, 840 F.2d 701, 704 (9th Cir.1988); California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir.1985). A showing of a reasonable likelihood of success on the merits raises a presumption of irreparable harm. Apple Computer, Inc. v. Formula International Inc., 725 F.2d 521, 525 (9th Cir.1984), citing Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984). A showing of harm varies inversely with the required showing of meritoriousness. Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir.1987). In patent infringement cases, a strong showing of likelihood on the merits coupled with continuing infringement raises a presumption of irreparable harm to the patentee. Reebok Int'l, Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1556 (Fed.Cir. 1994); see Eli Lilly & Co. v. American Cyanamid Co., 82 F.3d 1568, 1578 (Fed.Cir. 1996) — no presumption without strong showing of infringement.

B. Analysis

1. Toho Has Demonstrated a Likelihood of Success on the Merits of Its Trademark Claim.

Toho has brought trademark and unfair competition claims against Morrow under 15 U.S.C. § 1114(a) and 1125(a). When trademark and unfair competition claims are based on the same infringing conduct, courts apply the same analysis to both claims. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1288 n. 2 (9th Cir.1992). To succeed on a claim for trademark infringement or unfair competition, the moving party must establish:

(1) ownership of the trademark at issue;

(2) use by defendant, without authorization, of a copy, reproduction, counterfeit or colorable imitation of the moving party's mark in connection with the sale, distribution or advertising of goods or services; and

(3) that defendant's use of the mark is likely to cause confusion, or to cause mistake or to deceive.

15 U.S.C. § 1114(a); Gallo, 967 F.2d at 1288 n. 2. The Court notes also that for preliminary injunctive relief, the Court need only find a probability that necessary facts will be established, not that such facts actually exist. Sierra On-Line, Inc. v. Phoenix Software, 739 F.2d 1415, 1423 (9th Cir.1984).

a. Nominative Fair Use by Defendant.

Defendant asserts that its use of the Godzilla trademark is protected by the nominative fair use defense. In New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir.1992), the Ninth Circuit laid out a three part test for determining whether a use will qualify for the non-statutory "nominative fair use defense." The New Kids case involved the use of plaintiff's trademark by two newspapers to conduct popularity polls between members of the "rock" group "New Kids on the Block." Because the defendant newspapers only used the trademark to describe the plaintiffs, the court acknowledged it as such remarking, "this is not the classic fair use case where the defendant has used plaintiff's mark to describe the defendant's own product." Id. at 308. If the Defendant's use of the plaintiff's trademark refers to something other than the plaintiff's product, the traditional fair use inquiry governs. But where the defendant uses a trademark to describe the plaintiff's product, the Ninth Circuit has held that the defendant is entitled to a nominative fair use defense provided it meets the three requirements. Id. Like the New Kids case, because Morrow is alleged to be using Toho's trademark to describe Godzilla [him/her/it]self, this appears to be a case "involving a non-trademark use of a mark — a use to which the infringement laws simply do not apply." New Kids, 971 F.2d at 307. Therefore, to be entitled to the non-statutory nominative fair use defense, Defendant must satisfy the three part test:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids on the Block v. News America Publishing Inc., 971 F.2d 302 (9th Cir.1992).

Plaintiff initially argues...