Honda Adds Fuel to Godzilla’s Fire

By Dawn Mikulastik

What’s got Godzilla all fired up? A thirty-second long commercial for a minivan, that’s what. And even if monsters don’t scare you, the giant reptile’s litigious parent company, Toho Co., Ltd., will.

Earlier this month, THR,esq reported on a lawsuit filed by Toho over a commercial that Honda aired for its Odyssey model during the NFL Playoffs. The complaint claims that the ad, which attempts to make minivans appealing to young dads through the use of fire, a puma, heavy metal, and an unlicensed three-second clip of Godzilla, infringes on Toho’s registered trademark and copyrights for the movie monster. But will its case stand up in court or will a judge say that Toho is full of hot air?

This isn’t the first time Toho has taken legal action against a potential infringer – sandwich artists, cable companies, wineries, authors and the city of Louisville have all felt the far-reaching claws of the movie house’s lawyers. Indeed, Honda was sued by Toho for a Godzilla float it made for the 2007 Rose Bowl Parade. But most of these cases never made it to trial and all settled out of court. It seems like nobody really wants to take on a fire-breathing lizard of epic proportions.

This time around, Toho will probably succeed on its copyright infringement claim. Copyright law protects authors of original works fixed in a tangible medium. Music, poetry, movies, books, and computer software are all works that are commonly copyrighted. Copyright owners have the exclusive rights to reproduce, distribute, perform and display their works, but make profits by granting licensing agreements that essentially lease those rights to others. Honda will probably try to claim fair use, an exception that allows certain uses of unlicensed copyrighted materials by others. This defense usually involves criticism, reporting or teaching, but is sometimes applied in cases of commercial use as well. In order to find fair use, a judge looks at four factors: (1) the purpose and character of the use (sometimes called the “transformative” factor; the more transformed the original work is, the more likely the use will be thought of as fair); (2) the nature of the work; (3) the amount and importance of the work used in relation to the whole; and (4) the effect of the use on the potential value of the work.

A LASIS article dealing with a similar issue last year cited a 1982 case involving a news station that used unlicensed footage from six Charlie Chaplin films for a video memorial to the silent-film icon. The Ninth Circuit Court of Appeals stated that the clips were not fair use because they were too substantial in length, not transformative, and went to the heart of the original films.

The court will likely come to the same conclusion regarding Honda’s ad. Although the Godzilla clip is only three seconds long, it is a quintessential illustration of what people picture when they think of Godzilla – a giant lizard-like monster with fire shooting out of his mouth. Despite Toho’s assertion that the clip was lifted from another movie and formatted to fit the ad, the commercial was not transformative in any way.  And although the clip was just three seconds long, within the context of a thirty-second advertisement, that’s a considerable chunk of time.

Toho’s claim of trademark infringement, however, may be more difficult to prove. A trademark is a word, phrase or symbol that is used to identify and distinguish the source of a good or a service to consumers. To remain valid, owners must actively use their trademarks and must not allow them to become generic through common use. Such marks are deemed abandoned and are fair game for anyone to use.

This idea of “policing your mark” is probably the reason that Toho has been so trigger-happy when it comes to lawsuits – if it doesn’t keep its mark distinctive and out of the public domain, it will lose its trademark rights and won’t be able to make any money off of its product.

But to prove trademark infringement, Toho will have to prove the “likelihood of confusion” as to the source of the goods in question. In other words, it will have to show that reasonable consumers could be confused about who was actually endorsing or selling the minivan in the Honda commercial.

The court looks to multiple factors (sometimes called the Polaroid factors) to determine confusion, including (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser and; (7) the defendant’s intent.

Looking to Toho’s previous legal track record for answers isn’t much help, because as noted earlier, its opponents typically settle before ever going to court. This could be because they think they have a weak case or it could simply because they don’t want to shell out the monster bucks it would cost to battle Godzilla.

One of the only parties to take it to trial was Sears, Roebuck and Co. in 1981, for its use of the name Bagzilla on a line of trash bags. Noting the obvious distinction between monster movies and garbage bags, as well as the different marketing channels for entertainment products and household supplies, the Ninth Circuit concluded that no reasonable consumer would be confused into thinking that the makers of Godzilla had anything to do with the garbage bags.

Similarly, although both Toho and Honda are Japanese companies, no court would find consumer confusion from the ad. There aren’t many similarities between a giant fire-breathing lizard and a souped-up minivan, and even though both products may, at times, appear on television, it doesn’t seem likely that consumers will think that Godzilla drives an Odyssey in his spare time.

Toho will have a hard time satisfying the factors for trademark infringement in court.

EDITOR’S NOTE:   MAY 5, 2011:  The suit has been settled.  Financial terms not disclosed, but commercial has been changed.



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