## Facts

- Toho Co., Ltd. created the fictional character “Godzilla” in 1954 and produced and distributed multiple Godzilla films and licensed extensive merchandising.
- Toho asserted protectable rights in the “Godzilla” name, a stylized “Godzilla” logo, and associated character imagery used in films and licensed products.
- Toho granted Random House an exclusive right to publish an official Godzilla compendium timed with a new Tri-Star Godzilla film.
- William Morrow & Co., Inc., a book publisher, planned to publish a competing compendium-style book titled *Godzilla!* in connection with the Tri-Star film.
- The planned book cover used the word “Godzilla” and featured prominent Godzilla character artwork and lettering that Toho alleged mimicked its distinctive stylized logo.
- Toho sued under the Lanham Act and related theories, including false designation/trademark infringement, dilution, and California unfair competition, and sought a preliminary injunction to stop publication and distribution.
- William Morrow argued its use was permissible nominative fair use because the book’s subject was Godzilla.

## Issues

1. Whether Toho showed a likelihood of success on its trademark and unfair-competition claims, including whether William Morrow’s use qualified as nominative fair use.
2. Whether Toho established irreparable harm and entitlement to preliminary injunctive relief based on likely confusion, dilution, and loss of control over goodwill and licensing.

## Decision

- The court granted Toho’s motion for a preliminary injunction.
- The court found Toho showed a strong likelihood of success on its trademark and unfair-competition claims.
- The court held William Morrow’s presentation did not qualify as nominative fair use because it used more of Toho’s mark and indicia than necessary and risked implying authorization or endorsement.
- The court found irreparable harm from likely consumer confusion, dilution, and interference with Toho’s ability to control its marks and licensing program.
- The court enjoined publication and distribution of the book in its infringing form pending further proceedings.

## Legal Principles

- A well-known fictional character and associated word and visual identifiers can function as protectable trademarks when they identify source through long-standing commercial use and licensing.
- Likelihood of confusion includes confusion as to sponsorship, affiliation, or authorization, assessed in context, including proximity of products and similarity of presentation.
- Nominative fair use permits reference to a trademarked subject only when (1) use of the mark is necessary to identify the subject, (2) only so much of the mark is used as reasonably necessary, and (3) the use does not suggest sponsorship or endorsement by the mark owner.
- Using stylized logo-like lettering and character imagery beyond what is needed for reference can defeat nominative fair use, especially where overall packaging implies “official” status.
- A showing of likely success in trademark infringement and dilution supports preliminary injunctive relief where loss of control over goodwill, confusion, and dilution threaten non-compensable harm.

## Conclusion

The court preliminarily barred distribution of William Morrow’s competing Godzilla book because the title and cover presentation likely caused confusion and dilution and exceeded permissible nominative reference by borrowing logo-like styling and imagery that suggested Toho’s sponsorship.


Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206 (C.D. Cal. 1998)