Godzilla Co. Settles with Brewery Over Mechahopzilla Beer - Law360

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Godzilla Co. Settles With Brewery Over MechaHopzilla Beer - Law360 http://www.law360.com/articles/544778/print?section=ip

By Bill Donahue

Law360, New York (June 04, 2014, 3:48 PM ET) -- Toho Co. Ltd., the owner of the intellectual property for Godzilla, reached a settlement Wednesday with a New Orleans brewery it sued for trademark infringement last year over a beer called MechaHopzilla.

Toho and the New Orleans Lager & Ale Brewing Co. LLC lodged a joint notice of the settlement, ending a lawsuit over an India Pale Ale that was clearly a play on Mechagodzilla, the name of the mechanized counterpart of the famed Japanese monster.

Under the terms of the settlement, NOLA Brewing will stop using the name and packaging at issue by the end of the year, according to attorneys for both sides. The case had been set for a jury trial in October.

Toho created the giant, prehistoric, radioactive monster for the debut “Godzilla” back in 1954, and introduced Mechagodzilla in the lucrative franchise's 14th film, “Godzilla vs. Mechagodzilla.” The latest version, again simply “Godzilla,” debuted last month and has thus far grossed $375 million worldwide.

The studio sued NOLA Brewing in September, saying MechaHopzilla was “virtually identical” to the trademark-protected name and that the image on the beer's cans was “substantially similar to Toho’s Mechagodzilla.”

NOLA Brewing was using the name and image “to attract public attention, to take advantage of the goodwill and public familiarity with the Mechagodzilla character, and to create an association in the minds of customers that its product is somehow affiliated with, or sponsored, endorsed or sanctioned by, Toho,” the complaint said.

On Wednesday, Chad A. Grand of Jones Walker LLP, counsel for NOLA Brewing, said he and his client were "pleased that the parties were able to find some mutually agreeable middle ground, which usually does not exist in suits of this nature."

The name of the beer will be shortened to "Mecha" and the graphics, though modified, will retain a "lizard-like creature," according to Grand.

The case over MechaHopzilla wasn't Toho's first IP rodeo. The studio has lodged numerous trademark and copyright suits over the years against unlicensed uses of Godzilla. In 2011, it was a commercial for Honda Motor Co. Ltd. that featured a brief clip of the monster; before that, it was for Subway doing the same thing.

Following Wednesday's settlement, Aaron J. Moss of Greenberg Glusker Fields Claman & Machtinger LLP, longtime counsel for Toho, said the case likely wouldn't be the company's last, either.

"It is unfortunate that so many seek to commercially exploit Toho's intellectual property without authorization," Moss said. "Toho will continue to take appropriate legal action against those who do so."

Faced with the current lawsuit, NOLA Brewing said the name was a parody of Godzilla, but Toho fired back in March that parody must have “some commentary or substantive sentiment expressed about the underlying protected work.”

“Here, there was none,” Toho said. “It is not permissible for a business to simply use someone else’s trademark to attract attention to its own product, regardless of how 'funny' or 'clever' it thinks the use may be.”

NOLA Brewing stuck with the argument though, citing a case back in 1981 in which the Ninth Circuit ruled that Sears Roebuck & Co. could sell garbage bags in boxes displaying the word “Bagzilla” with Sears' logo.

“NOLA, like Sears, created a “humorous caricature rather than an exact copy” and merely intended, among other things, to make a pun, not to confuse customers,” the brewery wrote in April. “Its MechaHopzilla beer is made with extra hops and it used the “Hopzilla” suffix to convey its beer was powerfully hoppy.”

NOLA was represented by Chad Andrew Grand, David Matthew Kerth, and Michael K. Leachman of Jones Walker LLP.

Toho is represented by Lesli D. Harris and Anne-Marie J. Mitchell of Stone Pigman Walther Wittmann LLC and by Charles N. Shephard and Aaron J. Moss of Greenberg Glusker Fields Claman & Machtinger LLP.

The case is Toho Co. Ltd. v. New Orleans Lager & Ale Brewing Co. LLC, case number 2:13-cv-05750, in the U.S. District Court for the Eastern District of Louisiana.

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