2024-cv-12430

COMPLAINT filed by Toho Co., Ltd.; Jury Demand. Filing fee $ 405, receipt number AILNDC-22796460.

Exhibit 1

(Exhibit 2)

CIVIL Cover Sheet

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by Michael A. Hierl

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by William Benjamin Kalbac

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by Robert Payton Mcmurray

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by John Wilson

MOTION by Plaintiff Toho Co., Ltd. to seal document Plaintiff's Motion for Leave to File Under Seal

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Sealed Schedule A

NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by Toho Co., Ltd.

CASE ASSIGNED to the Honorable Jeremy C. Daniel. Designated as Magistrate Judge the Honorable Young B. Kim. Case assignment: Random assignment. (Civil Category 2). (dec,)

CLERK'S NOTICE: Pursuant to Local Rule 73.1(b), a United States Magistrate Judge of this court is available to conduct all proceedings in this civil action. If all parties consent to have the currently assigned United States Magistrate Judge conduct all proceedings in this case, including trial, the entry of final judgment, and all post-trial proceedings, all parties must sign their names on the attached Consent To form. This consent form is eligible for filing only if executed by all parties. The parties can also express their consent to jurisdiction by a magistrate judge in any joint filing, including the Joint Initial Status Report or proposed Case Management Order. (dec,)

MINUTE entry before the Honorable Jeremy C. Daniel: The plaintiff has filed a complaint alleging infringement by 253 defendants. (R. 1 and R. 8.) This case follows a pattern common to "Schedule A" cases where plaintiffs allege that defendants employ similar methods and "work in active concert" to infringe plaintiffs' intellectual property. But experience has shown that not all defendants named in a Schedule A case work together. More importantly, experience has shown that joinder under Fed. R. Civ. P. 20 is rarely appropriate in Schedule A cases. Accordingly, the Court raises the propriety of joinder and requires the plaintiff to file a supplemental memorandum addressing the propriety of joinder on or before December 17, 2024. Alternatively, by the same date, the plaintiff may file an amended complaint naming one or more defendants; however, if the plaintiff names multiple defendants, the plaintiff must show that joinder of those defendants is proper. Mailed notice.

AMENDED complaint by Toho Co., Ltd. against The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Amended Schedule A Hereto

Exhibit 1

(Exhibit 2)

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Amended Schedule A

MEMORANDUM by Toho Co., Ltd. Plaintiff's Memorandum in Support of Joinder

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Exhibit AA

MAILED trademark report to Patent Trademark Office, Alexandria VA

MINUTE entry before the Honorable Jeremy C. Daniel: The plaintiff may proceed against the two defendants named in the amended Schedule A 12. Mailed notice.

ANNUAL REMINDER: Pursuant to Local Rule 3.2 (Notification of Affiliates), any nongovernmental party, other than an individual or sole proprietorship, must file a statement identifying all its affiliates known to the party after diligent review or, if the party has identified no affiliates, then a statement reflecting that fact must be filed. An affiliate is defined as follows: any entity or individual owning, directly or indirectly (through ownership of one or more other entities), 5% or more of a party. The statement is to be electronically filed as a PDF in conjunction with entering the affiliates in CM/ECF as prompted. As a reminder to counsel, parties must supplement their statements of affiliates within thirty (30) days of any change in the information previously reported. This minute order is being issued to all counsel of record to remind counsel of their obligation to provide updated information as to additional affiliates if such updating is necessary. If counsel has any questions regarding this process, this LINK will provide additional information. Signed by the Honorable Virginia M. Kendall on 12/20/2024: Mailed notice.

MINUTE entry before the Honorable Jeremy C. Daniel: Status report due on or before 2/7/2025. Mailed notice.

STATUS Report by Toho Co., Ltd.

MINUTE entry before the Honorable Jeremy C. Daniel: Status report due on or before 3/20/2025. Mailed notice.

MOTION by Plaintiff Toho Co., Ltd. Plaintiff's Motion for Electronic Service of Process Pursuant to Fed. R. Civ. P. 4(f)(3)

MOTION by Plaintiff Toho Co., Ltd. to expedite Plaintiff's Motion for Expedited Discovery

DECLARATION of Koji Ueda

SEALED DOCUMENT by Plaintiff Toho Co., Ltd. Exhibit 3 to Ueda Declaration

NOTICE of Motion by Michael A. Hierl for presentment of motion for miscellaneous relief 21, motion to expedite 22 before Honorable Jeremy C. Daniel on 4/1/2025 at 09:30 AM.

STATUS Report by Toho Co., Ltd.

ORDER. Signed by the Honorable Jeremy C. Daniel on 4/1/2025. Motions 21 and 22 are granted. The motion hearing is stricken.Mailed notice.

MINUTE entry before the Honorable Jeremy C. Daniel: Plaintiff's motion for leave to file under seal 7 is granted. Mailed notice.

MINUTE entry before the Honorable Jeremy C. Daniel: Status hearing set for 6/25/2025 at 9:30 a.m. Mailed notice.

SUMMONS Issued (Court Participant) as to Defendant GUYUIIEI and all other Defendants identified in the Amended Complaint

ATTORNEY Appearance for Plaintiff Toho Co., Ltd. by Elizabeth Aubree Miller

SUMMONS Returned Executed by Toho Co., Ltd. as to The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Amended Schedule A Hereto on 6/25/2025, answer due 7/16/2025.

CERTIFICATE of Service by Elizabeth Aubree Miller on behalf of Toho Co., Ltd.

MINUTE entry before the Honorable Jeremy C. Daniel: Status hearing held. The plaintiff's oral motion for extension of time to serve defendants on or before 7/9/2025 is granted. Mailed notice.

MINUTE entry before the Honorable Jeremy C. Daniel: Status hearing set for 8/13/2025 at 9:30 a.m. Mailed notice.

CERTIFICATE of Service by Elizabeth Aubree Miller on behalf of Toho Co., Ltd.

MOTION by Plaintiff Toho Co., Ltd. for default judgment as to Plaintiff's Motion for Entry of Default and Default Judgment Against Defendants Identified on Amended Schedule A

Exhibit A

(Exhibit B)

MEMORANDUM by Toho Co., Ltd. in support of motion for default judgment, 39

Exhibit 1

(Exhibit 2)

DECLARATION of Michael A. Hierl regarding motion for default judgment, 39

(Exhibit Hierl Exhibit 1)

DECLARATION of Koji Ueda regarding motion for default judgment, 39

Exhibit 1

(Exhibit 2)

EXHIBIT by Plaintiff Toho Co., Ltd. Exhibit 3 to Ueda Declaration regarding declaration 42

NOTICE of Motion by Michael A. Hierl for presentment of motion for default judgment, 39 before Honorable Jeremy C. Daniel on 7/29/2025 at 09:30 AM.

MINUTE entry before the Honorable Jeremy C. Daniel: The motion hearing set for 7/29/2025 is reset to 7/30/2025 at 9:30 a.m. Mailed notice.

MINUTE entry before the Honorable Jeremy C. Daniel: Motion hearing held. Plaintiff's motion for entry of default judgment 39 is taken under advisement. Plaintiff's supplement to the motion for default judgment is due on or before 8/6/2025. Plaintiff shall file the proposed order as an attachment to its supplement. Mailed notice.

MOTION by Plaintiff Toho Co., Ltd. for extension of time Plaintiff's Motion for an Extension of Time to File its Supplemental Memorandum in Support of Default Judgment

NOTICE of Motion by Michael A. Hierl for presentment of extension of time 47 before Honorable Jeremy C. Daniel on 8/13/2025 at 09:30 AM.

MEMORANDUM by Toho Co., Ltd. Plaintiff's Supplemental Memorandum in Support of Default and Default Judgment

EXHIBIT by Plaintiff Toho Co., Ltd. Proposed Judgment Order regarding memorandum 49

MINUTE entry before the Honorable Jeremy C. Daniel: The plaintiff's motion for an extension of time 47 is granted. The status hearing set for 8/13/2025 is stricken. Mailed notice.

MINUTE entry before the Honorable Jeremy C. Daniel: Any party to this action has until October 21, 2025, to justify the continued need to seal any documents in this case. The Court intends to unseal all documents in this case after that date. Mailed notice.

STATUS Report by Toho Co., Ltd.

DEFAULT JUDGMENT. Signed by the Honorable Jeremy C. Daniel on 10/9/2025. The plaintiff's motion for default judgment 39 is granted in part. The accused product is a t-shirt with a drawn image of Godzilla. The website listing for the accused product describes it as "Unique Blue Godzilla Ocean Wave Design." This clearly uses the plaintiff's GODZILLA word mark in connection with the sale of clothing, which infringes the plaintiff's registered trademarks U.S. Reg. Nos. 2,211,328 and 2,360,489. But there is no evidence that the defendants used the word mark in conjunction with any other class of goods or services, which precludes the relief the plaintiff seeks with respect to its other registered marks. Therefore, the Court enters default judgment only on the '328 and '489 registrations. Further, the plaintiff asserts that the defendants have infringed thirty-one registered copyrights. The plaintiff argues that it owns the copyright to Godzilla, and that the accused product constitutes an unauthorized derivative work. That appears to be the case, at least where the copyright registrations submitted by the plaintiff indicate that the work features Godzilla. It is easy to infer that the film "Godzilla X MechaGodzilla," which has Copyright Registration No. PA0001372864, includes Godzilla. It is not as easy to infer that the film "King Kong Escapes," which has Copyright Registration No. LP0000037134, includes Godzilla. This leads to two points. First, the Court will not do the work for the plaintiff. The plaintiff's conclusory assertion that each of the asserted copyrighted works features Godzilla does not show that to be the case. And the Court will not research each asserted work to confirm whether that is the case. The plaintiff needs to, copyright by copyright, confirm that the asserted work features Godzilla. Second, to the extent that an asserted work does not feature Godzilla, the plaintiff needs to show cause why the plaintiff did not violate Rule 11(b)(2) and (3). For instance, a hasty internet search indicates that "King Kong Escapes" does not include Godzilla; rather, it includes Gorosaurus. The Court acknowledges that its hasty internet is not evidence as far as this case is concerned. But it is sufficient to raise concern. Accordingly, with respect to Rule 11(b)(2), the plaintiff claimed that the accused product infringed each of the Godzilla-related asserted works. If an asserted work did not include Godzilla, then there is no basis for the infringement claim. As for Rule 11(b)(3), the plaintiff contended that the asserted work involved Godzilla. If the work did not, in fact, concern Godzilla, then there is no evidentiary support for that contention. The plaintiff shall respond in writing to the rule to show cause order on or before October 17, 2025. Rule to show cause hearing set for October 23, 2025, at 9:30 a.m. Mailed notice.