Toho Co., Ltd. v. William Morrow and Co., Inc.
1998 U.S. Dist. LEXIS 12337, 46 U.S.P.Q. 2d (BNA) 1801, 33 F.Supp. 2d 1206 (1998)
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Rule of Law:
The nominative fair use defense does not protect the use of a trademark in a product's title and cover if the use is more than is reasonably necessary for identification and creates a likelihood of consumer confusion regarding sponsorship or endorsement, particularly when any disclaimers are deemed ineffective.
Facts:
- In 1954, Toho Co., Ltd. (Toho) created the fictional character 'Godzilla' and produced a feature-length motion picture based on it.
- Toho subsequently produced a series of motion pictures based on Godzilla and engaged in extensive merchandising of the character.
- Beginning in 1981, Toho registered 'Godzilla' as a service mark and trademark under the Lanham Act.
- Toho granted Random House, Inc. the exclusive right to publish books concerning Godzilla, including an official compendium book, in conjunction with an authorized TriStar Pictures movie release.
- William Morrow and Company, Inc. (Morrow) began advertising and publishing an unauthorized 227-page Godzilla compendium book titled 'Godzilla!'.
- The cover of Morrow's book featured an illustration of Godzilla, used a distinctive lettering style similar to Toho's, and contained over ninety photographs from Toho's films.
- Morrow did not seek or obtain permission from Toho to write, publish, or distribute its book.
Procedural Posture:
- On February 6, 1998, Toho filed a complaint against Morrow in the U.S. District Court, alleging ten causes of action including trademark and copyright infringement.
- On February 27, 1998, Toho filed a Motion for a Preliminary Injunction to stop Morrow from publishing and distributing its book.
- The U.S. District Court is now ruling on Toho's Motion for Preliminary Injunction.
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Issue:
Does an unauthorized compendium book that uses a trademarked character's name in its title and likeness on its cover create a likelihood of consumer confusion sufficient to constitute trademark and copyright infringement, thereby warranting a preliminary injunction?
Opinions:
Majority - Tevrizian, District Judge
Yes, the publication of the unauthorized compendium creates a likelihood of confusion and constitutes infringement, warranting a preliminary injunction. Morrow's use of the 'Godzilla' trademark is not protected by the nominative fair use defense because it uses more of the mark than is reasonably necessary and suggests sponsorship by Toho. The court applied the three-part 'New Kids on the Block' test and found that while the character is not readily identifiable without the mark, Morrow's prominent use of the name and likeness on the cover was excessive. Furthermore, the court determined Morrow's disclaimers were ineffective due to their small size, poor placement, and inability to cure the consumer confusion created by the cover design. Applying the eight-factor 'Sleekcraft' test, the court found a strong likelihood of confusion based on the strength of the 'Godzilla' mark, the identical nature of the products and marketing channels, and the defendant's intent to capitalize on the film's release. The court also found Toho was likely to succeed on its copyright claim, as Morrow's book was a commercial work that used extensive, detailed plot summaries and images from Toho's films, which did not qualify as fair use.
Analysis:
This decision reinforces the limits of the nominative fair use doctrine, clarifying that using a trademark to identify the subject of a work is impermissible if the presentation creates a likelihood of confusion about sponsorship. It serves as a strong precedent for creators and trademark holders seeking to protect their derivative markets, such as official companion books and merchandise, from unauthorized competitors. The court's detailed analysis of disclaimer ineffectiveness provides a practical guide for future cases, emphasizing that disclaimers must be prominent and unambiguous to be legally sufficient. The ruling highlights that even works containing commentary and criticism can be found infringing if they exploit another's intellectual property without sufficient transformation.
