Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc.

Citation944 F.2d 1446
Decision Date02 October 1991
Docket Number90-55144,Nos. 90-55006,s. 90-55006
Parties, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491 ACADEMY OF MOTION PICTURE ARTS AND SCIENCES, Plaintiff-Appellant, v. CREATIVE HOUSE PROMOTIONS, INC., Defendant-Appellee. ACADEMY OF MOTION PICTURE ARTS AND SCIENCES, Plaintiff-Appellee, v. CREATIVE HOUSE PROMOTIONS, INC., Defendant-Appellant.
CourtU.S. Court of Appeals — Ninth Circuit

Louis P. Petrich, Leopold, Petrich & Smith, Los Angeles, Cal., for plaintiff-appellant, cross appellee.

Eric Olson, Halstead, Baker & Olson, Los Angeles, Cal., for defendant-appellee, cross appellant.

Appeal from the United States District Court for the Central District of California.

Before PREGERSON, HALL and BRUNETTI, Circuit Judges.

PREGERSON, Circuit Judge:

Appellant-cross-appellee Academy of Motion Picture Arts and Sciences ("the Academy") brought an action in the district court for copyright and trademark infringement and related state law claims against appellee-cross-appellant 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 after a bench trial that 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. We have jurisdiction under 28 U.S.C. § 1291, and we reverse. 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. We affirm the denial of fees, and reject the Academy's request for double costs.

BACKGROUND

The Academy 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, the Academy 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. The awards ceremony has been televised annually since 1953, and is seen across the United States and throughout the world. Pictures of the Oscar have been featured in the media since 1929.

From 1929 through 1941, the Academy 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, the Academy 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.

After securing the original copyright registration in 1941, the Academy restricted the manner in which winners could advertise their Oscars. Specifically, 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 the Academy rights of first refusal on any intended sale of their Oscar. Before this time, the Academy had not placed any express restrictions on the use or disposal of the award.

In 1950, the estate of post-mortem Oscar recipient Sid Grauman offered Grauman's Oscar for sale at a public auction. No Oscar had previously been offered for sale. An Academy representative ultimately purchased the award.

In 1976, Creative House, a manufacturer and distributor of advertising specialty items, 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 Although Creative House initially produced the Star Award to honor its advertising agency client's "star" salespeople, it later sold the award to other corporate buyers. In the Chicago area, Creative House marketed the award directly to various corporate buyers through the Star Award incentive program. Under the program, corporate sales personnel who reached the highest level of achievement would receive the Star Award. In other areas of the country, the award was advertised in catalogs and single-page "cut sheets" and marketed through distributors. Most customers were corporate buyers who purchased the awards for employees as gifts.

two: the Star Award is two inches shorter than the Oscar, and holds a star rather than a sword.

In 1983, the Academy demanded that Creative House discontinue or significantly change the Star Award. Creative House refused. After negotiations between the parties broke down, the Academy filed suit for copyright infringement, false designation of origin under the Lanham Act, and unfair competition and trademark dilution under California law.

After a bench trial, the district court ruled, in a published opinion 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. Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc., 728 F.Supp. 1442, 1446-48 (C.D.Cal.1989). 1 In concluding that the Oscar had "entered the public domain" through a general publication, the court rejected the Academy's argument that publication of the Oscar had been limited to a select group of persons for a limited purpose.

On the trademark and related claims, the district court held that no violation of the Lanham Act, nor any unfair competition under California law, had occurred because the Academy had failed to show a significant likelihood of confusion among Star Award purchasers, Academy, 728 F.Supp. at 1451. The court also rejected the Academy's dilution claim after finding no proof that the Star Award had diluted the Oscar's quality or invaded its good will. Id. at 1452. Finally, the district court rejected Creative House's request for attorneys' fees because the company had failed to show any malicious or oppressive conduct by the Academy. Id.

STANDARDS OF REVIEW

On the copyright issue, the question before us is whether the undisputed facts surrounding distribution of the Oscar support the district court's conclusion that a divesting, general publication of the Oscar occurred before 1941. That question is one of law, which we review de novo. See Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir.1989).

On the Lanham Act issue, we review the district court's finding regarding likelihood of confusion under the clearly erroneous standard. Eclipse Associates Ltd. v. Data General Corp., 894 F.2d 1114, 1116-17 (9th Cir.1990); Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1355 (9th Cir.1985) (en banc).

The standard of review for the pendant state law claims is de novo for questions of state law, and clearly erroneous as to conclusions regarding the likelihood of confusion.

Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir.1988).

Finally, we review the district court's denial of attorneys' fees for abuse of discretion. Transgo, Inc. v. AJAC Transmission Parts Corp., 768 F.2d 1001, 1014 (9th Cir.1985), cert. denied, 474 U.S. 1059, 106 S.Ct. 802, 88 L.Ed.2d 778 (1986).

DISCUSSION
I. Copyright Validity

Under the Copyright Act of 1976 ("the 1976 Act"), 17 U.S.C. §§ 101-810, a copyrighted work is entitled to protection if it has not become part of the public domain prior to the Act's effective date of January 1, 1978. The district court ruled that the Oscar was not entitled to protection under the 1976 Act because it had entered the public domain through a general publication before it was protected by statutory copyright in 1941. The Academy attacks that ruling by arguing that the district court (1) failed to recognize and apply a presumption that the Oscar was a protected, unpublished work in light of its 1941 copyright registration certificate; and (2) erred in finding that a general publication of the Oscar occurred before January 1, 1978.

A. Statutory Presumption

The Academy maintains that the Oscar's 1941 copyright registration as a work "not reproduced for sale" under § 11 of the 1909 Copyright Act raised a statutory presumption of copyright validity that the district court ignored. Essentially, the Academy argues that if the Oscar had been "published" (i.e., made available to the general public in a manner that resulted in a "general publication"--see Section IB, infra ) before 1941, it would not have been eligible for copyright under § 11; conversely, the fact the copyright was granted establishes that the Oscar had not been published before that date.

We agree that the district court erred in failing to afford the Academy's 1941 copyright a presumption of validity. Section 209 of the 1909 Act provides that a certificate of registration shall be prima facie evidence "of the facts stated therein." Although the "facts" stated in a certificate of registration are limited to the date, name and description of the work, and name of the registration holder, a majority of courts have held that § 209 creates a rebuttable presumption that the certificate holder has met all the requirements for copyright...

To continue reading

Request your trial
140 cases
  • City of Carlsbad v. Shah, Civil No. 08cv1211 AJB (WMc)
    • United States
    • U.S. District Court — Southern District of California
    • 9 Febrero 2012
    ...the Lanham Act. Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994) (citing Academy ofMotion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991). Under common law unfair competition claims, the "ultimate test" is "whether the public is lik......
  • In re Wright
    • United States
    • United States Bankruptcy Courts. Ninth Circuit. U.S. Bankruptcy Court — Central District of California
    • 24 Octubre 2006
    ...statutes are intended to prevent "the gradual `whittling away' of a trademark's value." Acad. of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir.1991) (quoting 2 J. McCarthy, Trademarks and Unfair Competition, § 24:13 (2d ed.1984)). Dilution i......
  • McIntosh v. Northern California Universal Enterprises Company
    • United States
    • U.S. District Court — Eastern District of California
    • 30 Octubre 2009
    ...to members of the public regardless of who they are or what they will do with it." Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1451-52 (9th Cir.1991) (citing Burke v. National Broadcasting Co., Inc., 598 F.2d 688 (1st Cir.), cert. denied, 4......
  • Aurora World Inc. v. Ty Inc.
    • United States
    • U.S. District Court — Central District of California
    • 15 Diciembre 2009
    ...... ORDER DENYING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION MARGARET M. MORROW, ...Random House", Inc., 297 F.3d 815, 822 (9th Cir.2002) (“The \xE2"... the individual images of a motion picture or other audiovisual work, to display the ...See Academy of Motion Picture Arts & Sciences v. Creative se Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir.1991) ......
  • Request a trial to view additional results
4 books & journal articles
  • Intellectual property
    • United States
    • James Publishing Practical Law Books California Causes of Action
    • 31 Marzo 2022
    ...applies equally to claims under California law. As explained by the court in Academy of Motion Picture Arts v. Creative House (9th Cir.) 944 F.2d 1446, 1457 (1991), the ultimate test under both federal and California law is whether the similarity between the two marks is likely to deceive o......
  • Table of Cases
    • United States
    • James Publishing Practical Law Books Preparing for Trial in Federal Court
    • 4 Mayo 2010
    ...South Carolina , 237 F.3d 386 (4th Cir. 2001), §7:161.1 Academy of Motion Pictures Arts and Sciences v. Creative House Promotions 944 F.2d 1446, 1457 (9th Cir. 1991), Form 7-10 Accuride Int’l Inc. v. Accuride Corp. 871 F.2d 1531, 1534-1535 (9th Cir. 1989), Form 7-10 Aceves v. Allstate Ins. ......
  • Motions
    • United States
    • James Publishing Practical Law Books Preparing for Trial in Federal Court
    • 4 Mayo 2010
    ...to a service mark infringement claim under the Lanham Act. 2 Academy of Motion Pictures Arts and Sciences v. Creative House Promotions , 944 F.2d 1446, 1457 (9th Cir. 1991). The “ultimate test” is “whether the public is likely to be deceived or confused by the similarity of the marks,” Acad......
  • UNDERSTANDING COPYRIGHT'S FIRST ENCOUNTER WITH THE FINE ARTS: A LOOK AT THE LEGISLATIVE HISTORY OF THE COPYRIGHT ACT OF 1870.
    • United States
    • Case Western Reserve Law Review Vol. 71 No. 2, December 2020
    • 22 Diciembre 2020
    ...[https://perma.cc/Y5PT-25NR]. (9.) Compare, e.g., Acad, of Motion Picture Arts and Seis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1452 (9th Cir. 1991) (noting that public display of copies of a work does not amount to publication divesting common-law copyright), with Letter Edged ......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT