EDITORIAL: ACADEMY AWARDS, UNIMAA TRADEMARK DISPUTE: A BATTLE OF ATTRITION WITH NO WAY OUT?

EDITORIAL: AMPAS VS. UNIMAA TRADEMARK DISPUTE, THE STARING WAY OUT!

The Academy of Motion Picture Arts and Sciences - AMPAS (Academy Awards), more popularly known as the Oscars, which headquarters at Beverly Hills, California, United States, has locked horns with Mr. Hope Obioma Opara over the trademark registration of Universal Movies Academy Awards (UNIMAA) in Nigeria.

AMPAS contends that the presence of “Academy Awards” in “Universal Movies Academy Awards“ is an infringement on their trademark. This is not the first time AMPAS is taking such a position. Interestingly, Oscars has lost various trademark disputes premised on this similar argument, even in the United States of America.

Owners of UNIMAA contend that “Academy Awards” is generic and cannot be for the exclusive use of AMPAS.

WHAT IS MEANT BY GENERIC?

How is a generic mark different from a descriptive mark? A descriptive mark can acquire a secondary meaning in the mind of consumers that can be proven. A generic mark cannot acquire a secondary meaning because it refers to the category of product or service. For example, “accounting firm” on its own cannot be registered as a service mark because it is a generic term for a type of service, and it cannot acquire a secondary meaning by association with only one accounting firm. Consequently, “Academy Awards” is being seen as a generic term like the term “accounting firm”.

IS AMPAS THE SOLE PROPRIETOR OF THE TRADEMARK ACADEMY AWARDS WORLDWIDE

Let’s begin by knowing how long “ACADEMY AWARDS” has existed and if there are copycats of the trademark.

On 11 May 1927, AMPAS was founded. That adds up to about 93 years in 2020. However, further research has revealed the existence of the phrase “Academy Awards” as a trademark several decades before Oscars existence. Before the incorporation of Academy Motion Picture Arts and sciences (AMPAS), the phrase “Academy Awards” had been in existence in the Republic of Ireland since 1785 as “THE ROYAL IRISH ACADEMY AWARDS.” This adds up to 235 years. That is more than a century before the existence of AMPAS.

Speaking of copycats, Oscars can easily be accused by THE ROYAL IRISH ACADEMY AWARDS of copying the phrase “Academy Awards” from them, having existed about 140 years earlier. The Royal Irish Academy Awards is not an antiquated body. Their website www.ria.ie is still active today and they honor arts as well.

BRAND CONFUSION?

One of the defining aspects of the bone of contention in trademark disputes is if there will be confusion by the prospective public about the brand. How has the phrase “Academy Awards” fared in this regard?

To begin with, let’s outline some other brands that use Academy Awards without being mistaken as being owned by AMPAS.

  • WORLD YOUTH ACADEMY AWARDS
  • The World Academy of Medical Sciences - Given to the World's most prominent medical professionals (WAMS MEDICAL ACADEMY AWARDS)
  • BQF LEAN SIX SIGMA ACADEMY AWARDS 2019
  • THE SWIDISH ACADEMY AWARDS “NOBEL PRICE”
  • LHS LEADERSHIP ACADEMY AWARDS
  • In NIGERIA, AFRICAN MOVIE ACADEMY AWARDS (AMAA) Founded in 2005
  • In INDIA, “INTERNATIONAL INDIAN FILM ACADEMY AWARDS”; (First awarded‎: ‎2000) The 2017 edition was held July 14–15, 2017 in MetLife Stadium in East Rutherford, New Jersey, USA. Interestingly, although this event was right under the nose of OSCARS, no infractions from Oscars barring the event was registered.
  • In ITALY: ITALIAN DOCUMENTARY ACADEMY AWARDS (established in 1955)
  • In USA : PRINCE OF PRESTIGE ACADEMY AWARD Founded in 2010 Florida US – still in the same country as Oscars’.
  • In INDIA, PRIYADARSHNI ACADEMY AWARDS (Nanik Rupani founded a unique institution, Priyadarshni Academy in 1985 )
  • In SOUTH AFRICA , ZULU AFRICAN FILM ACADEMY AWARDS (ZAFAA Global Awards) edition in 2006.
  • In CHINA, “CHINA ACADEMY AWARDS OF DOCUMENTARY FILM (CAADF); (The China Academy Awards for Documentary Film (CAADF) is one of the … First launched in 2011, CAADF is known as “The Oscars of China
  • In JAPAN, they have “JAPANESE ACADEMY AWARDS/JAPANESE ACADEMY PRICE. Founded in 1978 Japan
  • In HOLLAND, they have “TENT ACADEMY AWARDS” ROTTERDAM; (TENT. is a new municipal exhibition space in the center of Rotterdam, Holland, opened in 1999 and TENT ACADEMY AWARDS 2001 • Screening) Holland
  • In USA, they have “ANNUAL FACET ACADEMY AWARDS OF INDIANA UNIVERSITY” (Founded in 1989) USA.
  • In EUROPE, they have “EUROPEAN MUSEUM ACADEMY AWARDS”, (the Council of Europe. It was founded in 1977 by journalist, author Kenneth Hudson.) European Union.

A REFERENCE CASE

In the United States, for instance, the Academy of Motion Picture Arts and Sciences instituted litigation against GoDaddy for Cybersquatting.

 

Case No. CV 10-03738 AB (CWx)

[consolidated with Case No. CV 1308458-ABC (CW)

FINDINGS OF FACT AND

CONCLUSIONS OF LAW (Fed. R.

Civ. P. 52(a)(1))

SEE LINK FOR DETAIL https://www.documentcloud.org/documents/2398387-oscars-ruling.html?fbcl…;

 

The Internet domain registrar was accused of illegally profiting off its trademarks, including for the Oscar telecasts. In a 129-page decision, according to Reuters, U.S. District Judge Andre Birotte in Los Angeles said the Academy failed to show that GoDaddy acted in bad faith by letting customers purchase 293 domain names such as academyawards.net, oscarsredcarpet.com, billycrystal2012oscars.com and theoscargoestothehangover.com.

The Academy sued GoDaddy in 2010, accusing the Scottsdale, Arizona-based company of letting customers “park” their pages on the Internet and share in revenue collected from advertising on those pages.

It sought statutory damages of $100,000 per infringement, equal to more than $29 million, court papers showed.

Birotte, however, said GoDaddy “reasonably relied” on its users’ representations that their domain registrations did not infringe any trademarks, including the Academy’s.

“Any inadvertent use by GoDaddy of domain names that are confusingly similar or identical to the AMPAS Marks via its automated processes was unintentional,” Birotte wrote. “AMPAS has failed to prove that GoDaddy had the required specific bad faith intent to profit from the AMPAS marks.”

Birotte ruled after a four-day, non-jury trial in early August.

“We are disappointed at the court’s decision,” an Academy spokeswoman said. “While we appreciate the court’s recognition of the strength of the Academy’s marks, we believe the court should have found that the GoDaddy Parked Pages program improperly uses those marks. We will evaluate our appellate options.”

Nima Kelly, GoDaddy’s general counsel, said the company “has always supported brand owners in protecting their intellectual property rights,” and that the decision supports its efforts to protect the legitimate interests of customers and brand owners.

Clearly, there’s evident of clarity between brands when “Academy Awards” is used by other brands.

 

ANOTHER CASE

One wonders how Academy Awards have existed in China with other platforms bearing “Academy Awards” without litigation.
Oscar’s Application in China was dated 2004-11-09. Their Preliminary Validation was on  2008-08-20, and only successfully registered on 2008-11-21. Their file detail (Number: 4353552 Class: 41.)
Few years later, in 2011 precisely, “CHINA ACADEMY AWARDS OF DOCUMENTARY FILM (CAADF) - The Oscars of China was birthed. Academy Awards has coexisted with CAADF in China without the sort of disputes they are raising in Nigeria. What makes the difference?

Others are THE ACADEMY AWARDS OF CULTURAL INDUSTRIES (Number: 33625010 Class: 35); THE ACADEMY AWARDS OF CULTURAL INDUSTRIES (Number: 33625013 Class: 41)
 

LITIGATION OR SETTLEMENT?

The path to settling this dispute quickly and in favor of AMPAS & Mr. Hope Obioma Opara seems more favored through out of court negotiation.

When faced with a trademark dispute or trademark dispute, it’s advised to consider out of court settlement options. Benefits of avoiding litigation include: escalating litigation costs and the uncertainty of an unfavorable result. At this point, it will interest you to know that Africa Movie Academy Awards (AMAA) which has existed since 2005 is also being challenged. The likelihood of de-registering two local brands by the Ministry of Trade and Commerce for a foreign platform is slim, especially since the Academy Awards hasn’t had any major public impact in Nigeria that will result in the supposed conflict of interests.

It must be noted that both court proceedings and Trademark Trial and Appeal Board proceedings are lengthy, expense, and significantly interfere with a brand's marketing program and related activities due to stalls. Besides from avoiding exorbitant legal expenses and achieving a speedy resolution, settlement of a trademark conflict has other advantages as well. For one, AMPAS risks being labeled an organization that goes to different countries to muzzle innovation in the guise of trademark conflicts. A loss of this case in court will impact further on AMPAS negatively.

An agreement can be prepared that meets the specific needs of the respective parties, you can eliminate the risk of an unfavorable result, you can maintain amicable relations between the parties, you can avoid producing confidential information and documents in discovery and you can resume day-to-day business activities without too much interruption.

At this time, we recommend that AMPAS and UNIMAA take steps to resolve this dispute away from litigation. AMPAS can propose buying UNIMAA. Our sources reveal that UNIMA is already registered by the defendant as well; and may be willing to let go of UNIMAA through a settlement.

Hook up with me, like & share my new page:

For more, follow

Share On Social Media

Click Share | Rate  Content | Post your comments below & let's talk!

Comment On Facebook