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).
The 87th Academy Awards are this Sunday, officially wrapping up award season for 2015. Neil Patrick Harris will host this year’s show, and hopefully deliver the same type of enthusiasm and enjoyment from his previous hosting gigs at the 2013 Emmys and Tonys. Red carpet coverage starts at 7:00pm and show time is 8:30 p.m. ETon ABC. If you want seven hours of pre-Oscar festivities, E! Network will start its Countdown to the Red Carpet at 1:30 p.m. For full list of nominees, a print off ballot and the winners, visit Oscars.org, the official site of the Academy of Motion Pictures Arts and Sciences.
The Grand Budapest Hotel
The Imitation Game
The Theory of Everything
Winner: Boyhood or Birdman? Boyhood. This years Oscars presents one of the most uncertain Best Picture races we’ve seen in years. Both movies have won at previous award shows, both are beloved by critics, and either one could easily win the nights biggest award. Boyhood tells the story of a family over the span of 12 years through the eyes of the youngest son. It took that long to film it and is a cinematic masterpiece. My vote is for Boyhood.
Wes Anderson, The Grand Budapest Hotel
Alejandro G. Iñárritu, Birdman
Richard Linklater, Boyhood
Bennett Miller, Foxcatcher
Morten Tyldum, The Imitation Game
Winner: Usually best director and best picture go hand in hand, but the last two years there’s been a split and it could easily happen again. Richard Linklater won the BAFTA, Golden Globe and Critics Choice award so all bets are on him, but Alejandro G. Iñárritu could easily win this award. Boyhood took 12 years to make and Birdman looks like it was filmed in one shot – so we’ll have to wait and see which feat the Academy deems worthy of the award.
Steve Carell, Foxcatcher
Bradley Cooper, American Sniper
Benedict Cumberbatch, The Imitation Game
Michael Keaton, Birdman
Eddie Redmayne, The Theory of Everything
Winner: Eddie Redmayne. Although it’s a toss up between Michael Keaton and Eddie Redmayne, Eddie won the SAG award and it’s been over a decade since the last time the SAG winner didn’t win the Oscar in this category. It is worth noting that all five of the nominees are worthy of the Oscar, so here’s to hoping for a Bradley Cooper upset.
Marion Cotillard, Two Days, One Night
Felicity Jones, The Theory of Everything
Julianne Moore, Still Alice
Rosamund Pike, Gone Girl
Reese Witherspoon, Wild
Winner: Even though it would be great to see Reese Witherspoon win this award, it is likely going to Julianne Moore for Still Alice. Her performance as a woman with early onset Alzheimer’s has garnered critical acclaim.
If anyone else wins this award, it would be an upset.
Robert Duvall, The Judge
Ethan Hawke, Boyhood
Edward Norton, Birdman
Mark Ruffalo, Foxcatcher
J.K. Simmons, Whiplash
Winner: When it comes to winning awards, almost nothing is guaranteed, but J.K. Simmons has taken this award at every other award show and joins Julianne Moore and Patricia Arquette in the “We would be shocked if they lost” category.
Patricia Arquette, Boyhood
Laura Dern, Wild
Keira Knightley, The Imitation Game
Emma Stone, Birdman
Meryl Streep, Into the Woods
Patricia Arquette has won this award at all the previous award shows and will most likely win it at the Oscars. But do I secretly hope that Meryl wins every year for whatever she’s nominated for? Yep.