Intellectual property owners are well advised to police their intellectual property rights and put third parties on notice regarding unauthorized usage. With regard to trademarks, for example, owners have an affirmative obligation to police the relevant marketplace for infringement. Failure to do so may result in a loss of rights. At the very least, unauthorized third party usage will result in a diminution in value of the trademarks. Enforcement efforts may include sending cease and desist letters, coordinating with law enforcement officers to seize counterfeit merchandise and commencing litigation to obtain injunctions preventing continued use. Such enforcement efforts are effective tools for strengthening a brand and the underlying intellectual property rights.
As reported by AOL.com, Toho Co. Ltd. (“Toho”) has effectively utilized these tools in order to protect and strengthen its “GODZILLA” brand over the past six decades. “GODZILLA” first appeared in Japan in 1954 as a fire-breathing monster in the hit film “Gojira”. Since that time, a team of intellectual property attorneys has worked to keep infringers at bay. The brand is protected in the United States by trademarks, which protect the “GODZILLA” name, and copyrights, which protect the appearance of the character.
Toho’s U.S. intellectual property attorneys have sent out countless cease and desist letters over the years, and have commenced more than thirty copyright and trademark litigations since 1991. By way of example, Honda Motor Company was sued over the unauthorized use of the “GODZILLA” character on a Rose Bowl parade float, and a winemaker was forced to stop using “CABZILLA” as a name for its Cabernet Sauvignon. Typically, such disputes are resolved by way of a settlement agreement under which the infringing products are removed from the marketplace.
Often, infringers will contend that they are merely using the image of a dinosaur, and not the image of “GODZILLA”. Cutting against this defense is that the “dinosaur” in question will often be displayed with a similar “spiky spine,” or be placed in a cityscape where “GODZILLA” often appears. U.S. Copyright Law prohibits third parties from using a design that is “substantially similar” to a copyrighted design.
The result of these enforcement measures is a thriving licensing program for the “GODZILLA” brand, which continues with the May 2014 release of the feature film “GODZILLA” and associated merchandising efforts. In addition, the “GODZILLA” brand has been licensed in the U.S. for use in ads for Snickers candy bars, Nike shoes and Doritos chips. Due to an aggressive enforcement program, licensees can rest assured that their licensed use of “GODZILLA” will not be devalued by rampant unauthorized third party usage. This assurance only adds to the value of the brand.
