Academy Of Motion Pictures Arts And Sciences v. Creative House Promotions, Inc.

944 F.2d 1446 (9th Cir. 1991)

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Nature of the Case

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Facts

P was established by film industry leaders in 1927 to promote cultural, educational, and technological progress in general, and to advance motion picture arts and sciences in particular. In 1929, P began its annual awards ceremony, in which it recognizes industry artists for outstanding achievement in their fields and bestows upon them the coveted 'Oscar' statuette. From 1929 through 1941, P claimed common law copyright protection for the Oscar as an unpublished work of art. Each of the 158 Oscars awarded during that time bore its winner's name but did not display any statutory copyright notice. In 1941, P registered the Oscar with the United States Copyright Office as an unpublished work of art not reproduced for sale. All Oscars awarded since that time contained statutory copyright notices. In 1968, the statutory copyright was renewed. In 1941, the Academy restricted the manner in which winners could advertise their Oscars. Any advertisements featuring the Oscar had to identify the year and category in which the recipient won the award. The Academy also required recipients to give P rights of first refusal on any intended sale of their Oscar. In 1976, D commissioned a trophy sculptor to design a striking figure holding a star in its hand. The finished product was a naked, muscular male figure closely resembling the Oscar, known as the 'Star Award.' Both the Star Award and the Oscar are solid metal with a shiny gold finish and stand on a circular gold cap mounted on a round base. The district court found only two significant differences between the two: the Star Award is two inches shorter than the Oscar, and holds a star rather than a sword. D sold the award to other corporate buyers. Most customers were corporate buyers who purchased the awards for employees as gifts. In 1983, P demanded that D discontinue or significantly change the Star Award. P filed suit for copyright infringement, false designation of origin under the Lanham Act, and unfair competition and trademark dilution under California law. The district court ruled that the Oscar was not entitled to copyright protection because a divesting, general publication of the Oscar occurred before the 1976 Copyright Act's effective date of January 1, 1978, which triggered a loss of the pre-1941, common law copyright. The court rejected P's argument that publication of the Oscar had been limited to a select group of persons for a limited purpose. On the trademark claims, it held that P had failed to show a significant likelihood of confusion among Star Award purchasers. P appealed.