Don’t mess with the Academy when it comes to Oscar

KWIKA partner Jeremiah Reynolds was quoted by Law360 in Bill Donahue’s piece on the Academy of Motion Picture Arts and Sciences’ attack-dog style when it comes to infringement of any of its Oscar-related trademarks.  The Academy’s view is that its public image is almost entirely wrapped up in the prestige, integrity and exclusivity of the annual Academy Awards program.

“The Academy is, in a way, an intellectual property organization.  It doesn’t make a product.  Everything is based in the IP to the Academy Awards.  That’s how they make their money.  It makes sense,” said Jeremiah.

The courts have overwhelmingly sided with the Academy in the many lawsuits brought on behalf of Oscar.  Some highlights of past litigation:

  • February 2014:  The infringement:  After their cease-and-desist letter was ignored, the Academy sued Jaime De La Rosa for selling Oscar replicas for as much as $5,000. Result:  Several months later, the court ordered De La Rosa to pay $375,000 plus attorneys’ fees and costs.
  • March 2012:  The infringement:  After seven cease-and-desist letters, the Academy sued for selling and renting eight-foot Oscar replicas.  Result:  Defendant agreed to stop selling and renting the statues and paid the Academy’s legal expenses.
  • 1951:  The Academy instituted a requirement that if Oscar recipients wish to sell their statuette, they must first offer to sell it back to the Academy for $10.  The infringement: The daughter-in-law of 1953 Oscar winner cinematographer Robert Surtees, having inherited his statuette through her husband, auctioned off the award for $40,000.  Result: The Academy said the right of first refusal applies to heirs and other successors.  The case is pending in Los Angeles court.
  • July 2014:  The infringement:  Heirs of 1942 Oscar winner Joseph Wright sold his statuette at auction for nearly $80,000.  Result:  The heirs claimed that since the award was won before the Academy’s 1951 first-refusal policy was begun, they were not subject to the requirement.  The Academy countered that the heirs were subject to the policy since Wright had been a member of the Academy after 1951.  The case is pending in Los Angeles court.

In spite of its stellar track record, the Academy has not always come out on top in intellectual property lawsuits.  In 1989, after the Academy Awards show featured a Snow White lookalike in a song and dance number, the Walt Disney Company took notice and asked for an apology. The Academy refused, so Disney sued for copyright infringement.  Several months later a settlement was reached, which included a public apology from the Academy.