Beer Advocate, the Godzilla of beer reviewers, gave Mechahopzilla, the newest IPA entry from the New Orleans Lager & Ale Brewing Company (NOLA) a score of 89 percent and an overall rating of “very good.” But there was at least one company that was not overjoyed with the summer success of a beer known as Mechahopzilla and, as a result, NOLA appears to have gotten itself in some hop-filled, boiling water. This week, the popular brewer was dragged into federal court, in the Eastern District of Louisiana, by Toho Co., Ltd. (Toho), a Japanese corporation and motion picture studio, which alleged claims of copyright infringement, trademark infringement, a violation of Section 43(a) of the Lanham Act, as well as violations of several state unfair trade practice statutes.
So what does a Japanese motion picture studio have against a relatively small Louisiana brewery, previously best known for its seasonal summer Belgian-style ale, Hurricane Saison (a Sports Law Insider favorite)? For starters, Toho isn’t your average Japanese motion picture studio.
In 1954, Toho created a fictional, “giant, pre-historic monster brought to life in the modern world.” Not just any monster, though. This particular monster was the one which you and I know as Godzilla. The iconic beast first graced American cinema screens in 1956 in Godzilla, King of the Monsters. As the star of one of the biggest and most successful franchises of all-time, Godzilla has, of course, been the subject of many sequels (more than 25, actually). Many have served to prove the old adage “let sleeping dogs lie” including, of course, Godzilla, 1998’s unforgivable, Matthew Broderick-starring “reboot.” Yet the financial fascination with the character remains a great weakness for Hollywood executives: Breaking Bad’s Bryan Cranston will soon leave “Heisenberg” and the blue meth and blood-stained desert of fictional Albuquerque behind and top-line yet another reboot in 2014.
It was another one of those sequels, 1974’s Godzilla vs. Mechagodzilla, which gives rise to the lawsuit. In that film, and in four others that followed, Toho introduced Mechagodzilla, “a large, two-footed reptilian creature with a powerful swooping tail and a robot-like appearance,” a character which Toho describes in its complaint as “Godzilla’s mechanical doppelganger.” Of course, all of Mechagodzilla’s films were registered by Toho with the U.S. Copyright Office (including the classic Godzilla X Mothra X Mechagodzilla Tokyo S.O.S.), and the Mechagodzilla character (at least the word mark MECHAGODZILLA and the character’s design) has also been registered as a trademark with the United States Patent and Trademark Office (USPTO). Toho has also used the Mechagodzilla mark and design on merchandise and has licensed it in connection with toys, clothing, and video games.
If Toho is to be believed, there seem to be some serious Godzilla fans at the NOLA brewery. According to the Complaint, since its launch, NOLA’s Mechahopzilla brew has used a “large, two-footed reptilian creature with a powerful swooping tail and a robot-like appearance” on its cans and taps, and this appears to have caused quite a bit of consternation in the Toho boardroom. Despite the sending of cease and desist letters, NOLA appears to have continued to sell its robo-reptilian ale, unabated. While the lawsuit also seeks a preliminary and permanent injunction from advertising, promoting, and distributing the Mechahopzilla beer, as well as statutory damages and a disgorgement of profits, Toho waits until the end of the Complaint to unleash the true beast: Toho wants the court to direct the USPTO to refuse registration of NOLA’s “MECHAHOPZILLA” trademark application. This, of course, would take any season (not just summer) out of Mechahopzilla’s seasonal status at NOLA, and would ensure the beer monster’s death.
So what cards does NOLA have to play here? In terms of copyright infringement, perhaps a fair use/parody argument is appropriate. Assuming that the character of Mechagodzilla would pass the test for the copyrightability of a fictional character (which we think it would), the test for fair use, set out in Section 107 of the Copyright act, could, if argued correctly, favor the defendant. Obviously, it cuts against NOLA that it is using the copyrighted work for commercial purposes, that the nature of the copyrighted work is creative (or fictional) and thus is entitled to stronger protection, and that the amount and substantiality of the portion of the copyrighted work being used is high (indeed, almost total). But two things could certainly aid NOLA’s argument. The first is that the Insider believes this use is arguably a parody and therefore “transformative” — “parody needs to mimic the original to make its point.” Campbell v., Acuff-Rose, 510 U.S. 569, 580-81 (1994). Taken in this context (beer) NOLA’s “work” arguably has a new meaning — whereas Mechagodzilla is a robotic, mechanical Godzilla, Mechahopzilla is a beer which, according to its packaging, has an “attack of half-pound per barrel dry aroma” and “powerful flavor,” each a byproduct of the brewing process, and the use of the name/character is simply an original way of expressing this. There is certainly a good argument here, then, that the parody gives the work transformative value. Second, the fourth factor in the test, i.e., the effect of Mechahopzilla on the potential market for Toho, significantly favors NOLA. The market is one that Toho almost certainly never intended or intends to occupy (unless it can show that its licensing program might extend there), and there remains little chance that the product in question would serve as a market substitute for any use of the work Toho might make. The argument, then, would be “our work is beer and your copyrighted work is a movie character, so our markets will never converge”.
Regarding the claim for trademark infringement, in the U.S. generally, and the Fifth Circuit especially, while parody is not an outright affirmative defense to trademark infringement, courts have stated that “a parody should be treated differently from other uses that infringe on a trademark.” Lyons Pshp. v. Giannoulas, 179 F.3d 384, 389-390 (5th Cir. 1999). “Parody is relevant to a determination of a likelihood of confusion and can even weigh heavily enough to overcome a majority of the digits of confusion weighing in favor of a likelihood of confusion.” Elvis Presley Enters. v. Capece, 141 F.3d 188, 199 (5th Cir. 1998). Further, when “a parody makes a specific, ubiquitous trademark the brunt of its joke, the use of the trademark for satirical purposes affects our analysis of the factors to consider when determining whether the use is likely to result in consumer confusion.” Id. Parodies of trademarks necessarily incorporate the original mark’s likeness in order for consumers to get the joke, and the “expression, and not commercial exploitation of another’s trademark, is the primary intent…in which there is a need to evoke the original work being parodied.” Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490, 495 (2d Cir. 1989). “In such cases, the parodist is not trading on the good will of the trademark owner to market its own goods; rather, the parodist’s sole purpose for using the mark is the parody itself, and precisely for that reason, the risk of consumer confusion is at its lowest.” Id. Indeed, “a non-infringing parody is merely amusing, not confusing.” Elvis Presley Enters, 141 F.3d at 199.
The Insider would vehemently argue that it’s the former (amusing), not the latter (confusing). Further, it’s pretty obvious that fans of the movie would not be confused and think that the sponsors of one of the many villains fought by Godzilla have anything to do with a beer sold mainly in the Southeastern United States. In fact, it is so obvious that there would be no confusion that Toho has “allowed” (we’re not sure it knows) the term “hopzilla” to be used in at least one other beer, without pursuing a claim. This selective defense of their rights may also constitute a waiver or acquiescence on their part. Or maybe they just don’t get the joke.
But, as it stands now, it looks like it would be best to stock up on Mechahopzilla while you still can. The seasonal creation, not to mention its trademark, has already been removed from NOLA’s website, perhaps an ominous sign of things to come. Either that or maybe the brewery’s webmaster simply had a few too many Hurricane Saisons, and took it down by mistake.
SOURCE: ECF Docket, Toho Co. Ltd. v. New Orleans Lager & Ale Brewing Co., LLC, No. 13-cv-05750, Eastern District of Louisiana