NEW YORK (AdAge.com) -- Goodby Silverstein & Partners and Comcast have a monster of a lawsuit on their hands: The Japanese movie house that owns the rights to Godzilla is claiming the ad agency and marketer illegally used the character in a national campaign earlier this year.
The complaint was filed Aug. 6 in a U.S. District Court in Los Angeles on behalf of Tokyo-based Toho. The motion picture studio argues the cable giant used its trademarked Godzilla character as part of a campaign dubbed "Comcast Town" without permission or paying licensing fees.
The ad push mentioned in the suit was created by San Francisco-based Goodby, the Omnicom Group shop that handles brand advertising duties for Comcast. It began around March and included a series of national TV spots featuring a monstrous, dinosaur-like creature. In one spot, the monster was shown battling a robot, and another featured a model toy of the creature.
"All together, the Godzilla character appears on the screen for approximately half the commercial," says Toho in its suit, which seeks compensation for Comcast's and Goodby's use of what it believes is unquestionably the Godzilla image. Toho also wants an injunction preventing the agency and marketer from "exploiting its valuable character in the future."
Charles N. Shephard, lawyer for Toho and partner at Los Angeles law firm Greenberg Glusker, said the studio wants to be paid for the "reasonable value of what [Comcast and Goodby] have taken," an amount he estimates at "certainly in the hundreds of thousands of dollars, if not more."
"Take any major iconic, copyrighted fictional character -- whether it be Mickey Mouse or Darth Vader. If you are going to use those figures as the centerpiece of a national advertising campaign, you have to pay the dollars to do so," Mr. Shephard said.
A spokeswoman for Goodby declined to comment. A spokeswoman for the marketer would say only: "Comcast does not believe there has been any copyright infringement."
In its suit, Toho claims that, as soon as it learned of the commercial in March, it wrote to Comcast and demanded the company pull the campaign. "When defendants finally responded, they denied that the campaign featured the Godzilla character but nevertheless promised that the commercial would stop airing on television and on the website after April 11, 2009." Toho claims the ad remained on the air "at least until May 2009."
Toho created the character in the early 1950s, and it released its first movie featuring the monster, "Godzilla King of the Monsters," in the U.S. in 1956. Since then, the company has produced some 27 sequels. It didn't trademark the name and character under the Lanham Act until 1981.
Not without precedent
According to Mr. Shephard, Toho frequently licenses its Godzilla character to marketers for advertising purposes, but marketers have occasionally used the monster without permission and, in those instances, Toho has filed suits.
"Most times we resolve these things with a cease-and-desist letter, but in this case it didn't work," Mr. Shephard said. "We found out about the advertising campaign in March and asked them immediately to stop running it. Eventually they did stop running it, but it took them quite a while to do so. We're not dealing with unsophisticated companies here. We've got a major advertiser in Comcast and a major ad agency in Goodby, and they should not have done it."
Comcast, despite the economic downturn, has posted improved profits and kept its sizable advertising budget pretty stable. According to TNS Media Intelligence, Comcast spent $516 million on domestic measured media in 2008, down from $533 million in 2007. Of that figure, nearly half was spent on brand advertising, and another $100 million or so was devoted to marketing Comcast's cable services.