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Acad. of Motion Picture Arts & Scis. v. Creative House Promotions, Inc. - 944 F.2d 1446 (9th Cir. 1991)

Rule:

An action for unfair competition under Cal. Bus. & Prof. Code § 17200 et seq. is "substantially congruent" to a trademark infringement claim under the Lanham Act. Under both, the ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks.

Facts:

Plaintiff Academy of Motion Picture Arts and Sciences (Academy) brought an action in the district court for copyright and trademark infringement and related state law claims against Defendant Creative House Promotions, Inc. (Creative House) for marketing the "Star Award," a gold figure closely resembling the Academy's famous "Oscar" statuette. The district court concluded that, after a bench trial, the Oscar was not entitled to copyright protection because it had previously entered the public domain. The court also ruled against the Academy on its trademark infringement and related claims. The court found that (1) the Academy failed to show that recipients or viewers of the Star Award were likely to confuse it with the Oscar, and (2) the Academy failed to establish that the Star Award had diluted the Oscar's quality. The Academy appeals the district court's rulings in favor of Creative House. On cross-appeal, Creative House appeals the district court's denial of attorneys' fees, and the Academy seeks double costs for Creative House's failure to cite controlling authority.

Issue:

Did the Academy’s "Oscar" award retain common law copyright protection?

Answer:

Yes

Conclusion:

The Court of Appeals for the Ninth Circuit found that the Academy’s award retained common law copyright protection. Further, the Court held that as substantial evidence of likelihood of consumer confusion between the Academy and Creative House’s statuette's existed, a violation of the Lanham Act and state law had occurred. In addition, as Creative House’s award was marketed as one which resembled the one more famous, the distinctive value of the Academy’s award was diluted in violation of Cal. Bus. & Prof. Code § 14330. The court also affirmed the denial of attorneys' fees, as the Academy neither acted in bad faith nor frivolously.

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