September 21, 2020

Protecting a little fellow named Oscar

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Oscar Statuettes On Display At Chicago Museum Of Science & IndustryBy Amanda Bronstad, From The National Law Journal

Oscar statuettes are displayed during an unveiling of the 50 Oscar statuettes to be awarded at the 76th Academy Awards ceremony January 23, 2004 at the Museum of Science and Industry in Chicago, Illinois.

Oscar statuettes are displayed during an unveiling of the 50 Oscar statuettes to be awarded at the 76th Academy Awards ceremony January 23, 2004 at the Museum of Science and Industry in Chicago, Illinois.

Photo: Tim Boyle/EdStock/iStockphoto.com

It’s that time of year again: The red carpet rolls out in Hollywood, celebrities dress in their finest attire—and intellectual property lawyers scour the country to protect the Oscars brand.

The Academy of Motion Picture Arts and Sciences, which hosts the annual Oscars awards on Feb. 22, is famous for pursuing alleged violators of its copyrighted gold statuettes using cease-and-desist letters with a team of lawyers at Quinn Emanuel Urquhart & Sullivan. When that fails, they sue.

“The Academy Awards is one of the biggest events of the year,” said Christopher Tayback, a partner at Los Angeles-based Quinn Emanuel “There’s certainly, leading up to it, greater use of the Academy’s name, and we have to filter through that.”

Academy lawyers say they’re only protecting a brand that, 86 years after it was created, has been threatened by increasing commercialization of the iconic image. The Academy’s latest actions have been against those who want to sell their family members’ actual awards, although Oscar look-a-likes are always targets.

“They have an incredibly valuable and important brand,” Tayback said. “If it was something that was not protected, as they’re entitled to protect it, I don’t think it would be worth what it’s worth.”

But just what infringes the Oscar copyrights isn’t exactly clear.

Rod Berman, who heads the intellectual property department at Los Angeles-based Jeffer Mangels Butler & Mitchell, has represented retailers targeted by the Academy. He said statuettes probably aren’t infringing if the arms stick out as if holding someone’s hand. But size and materials don’t seem to matter.

“If someone was to sell one that’s chocolate—a gold leaf chocolate one—they’d go after it,” he said.

Most cases settle, Berman said, primarily because it isn’t cost-efficient to fight. “Someone who sold $50,000 in merchandise is out in the cold and has to settle,” he said. “They have no choice because they can’t afford a defense against the budget of the Academy.”

Quinn Emanuel has been the Academy’s trademark and copyright infringement firm since soon after the firm was founded in 1986. The origin of that relationship began with a private investigator, according to David Quinto, one of the first attorneys at Quinn Emanuel to represent the Academy. Someone was stealing secretaries’ handbags during lunch hour at the Academy, so it hired a private investigator to catch a thief. The investigator noticed that a lot of “fake Oscars” were sold in Hollywood, and referred the Academy to Quinn Emanuel to handle the infringement work.

Since 1987, partner John Quinn has been the Academy’s general counsel, and several of the firm’s attorneys, including Tayback and Margret Caruso, co-chairwoman of the firm’s trademark and copyright practice group, handle Oscar matters on a regular basis. Quinto, now at Kupferstein Manuel & Quinto after more than 25 years representing the Academy at Quinn Emanuel, said one of the most significant cases ended in 1991, when the U.S. Court of Appeals for the Ninth Circuit held in Academy of Motion Picture v. Creative House that the Oscars trademark “should be given the strongest possible protection against infringement.”

“That line from the Ninth Circuit been used in just about every cease-and-desist letter since,” Quinto said.

Many of the recent cases have involved sales of genuine Oscar statuettes, typically by family members or estates of those who won the awards. Under a 1951 provision of their contract, Oscar holders must agree to offer the Academy the right of first refusal to purchase their award for $1 before putting it on the public market.

Last year, the Academy sued an auction house that sold an Oscar awarded in 1942 to Joseph Wright, art director of the musical My Gal Sal. The Academy also has sued the auction house that purchased the Oscar, and Wright’s nephew, who inherited the award.

Brian Grossman, a partner at Tesser Ruttenberg & Grossman in Los Angeles, who represents the buyer, said the contract provision doesn’t apply in this case.

“The issue litigating in the court right now is whether the enactment of subsequent bylaws years after the Oscar was awarded is binding on somebody who received it,” he said.

The suit seeks compensatory damages of $79,200—the sale price of the Oscar. But the case isn’t about the money, Grossman said.

“They don’t want the Oscars to become a commodity,” he said. “The Academy prides itself in being above mere commerce, and I guess they just want their Oscar back.”

For more on this story go to: http://www.nationallawjournal.com/id=1202718338219/Protecting-a-Little-Fellow-Named-Oscar#ixzz3SKY4iUjL

 

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