Recently, Academy of Motion Picture Arts and Sciences, the company responsible for presenting the “Academy Awards” or “Oscars,” filed a lawsuit against a company providing allegedly unauthorized “Oscars” gift bags. The Defendant is Lash Fary, d/b/a Distinctive Assets and Distinctive Assets LLC, who the Complaint alleges is a marketing business that “specializes in ‘celebrity placement’ by promoting the products of third parties through high-profile ‘gift bags’ to celebrities who attend or are nominated for award shows.” The Complaint alleges state and federal claims for trademark infringement, false advertising, and trademark dilution against Defendant. The Complaint also seeks monetary damages and injunctive relief.
The Plaintiff complains that Defendant has been using its trademarks, including OSCAR®, OSCARS®, ACADEMY AWARD®, and ACADEMY AWARDS® to promote its gift bags, such as by allegedly referring to its gift bags as “‘Everyone Wins at the Oscars®! Nominee Gift Bags,’ and Everyone Wins Nominee Gift Bags in Honor of the Oscars®.’” According to the Complaint, Defendant’s gift bags and other activities in social media have falsely create the impression that Defendant and its products are associated with or endorsed by the Academy Awards and there is already evidence of consumer confusion. Plaintiff argues that the Defendant’s gift bags not only infringe its trademarks, but also dilute the distinctiveness of its trademarks by providing “less-than-wholesome” products such as a vaporizer, sex toys and high value trips. Further, Defendant’s allegedly unauthorized activities are claimed to be willful since the Plaintiff alleges that it notified Defendant that its use of Plaintiff’s trademarks was unauthorized last year.
Based upon the allegations of the Complaint, it appears that Plaintiff’s claim for trademark dilution has merit. Trademark dilution and trademark infringement are completely different theories of liability and may often be confused. One of the most substantial differences between the two theories is that trademark infringement requires likelihood of consumer confusion, whereas trademark dilution does not. Further, trademark dilution requires proof of a famous mark whereas trademark infringement does not. For example, the use of the mark TIFFANY in connection with a movie theater is likely to dilute the goodwill associated with the mark TIFFANY because even though they do not compete with each other, the public’s association with the mark TIFFANY for jewelry products is likely to be affected. Thus, dilution focuses on preventing others from using a famous mark on dissimilar products which lessens the capacity of the mark to identify and distinguish its own products.
The elements of a trademark dilution claim are that: 1) the mark is famous; 2) the alleged infringer adopted the mark after the mark became famous; 3) the infringer diluted the mark; and 4) the defendant’s use is commercial and in commerce. Dilution is also usually broken down into either dilution by blurring or dilution by tarnishment. It appears that the Defendant would have difficulty contesting that the Plaintiff’s marks are famous. Further, the Plaintiff appears to state a claim for at least dilution by tarnishment, which focuses on the use of a famous mark to promote products which are unwholesome and otherwise reduce the reputation of the mark holder.
Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.
 See, Academy of Motion Picture Arts and Sciences v. Lash Fary, Case No. 16-cv-1061 (C.D. Cal. Feb. 16, 2016).
 See, 15 U.S.C. § 1125(c); Portionpac Chemical Corp. v. Sanitech Sys., Inc., 217 F. Supp. 2d 1238, 1250, 1250-51 (M.D. Fla. 2002).