Don’t forget the [registered trademark symbol]
Even if your first name happens to be Oscar, you might want to rethink using it on your blog, website or any product you may be about to market. The folks who run the Academy Awards feel a certain possessiveness about their golden statuette of the same name, and they’re not afraid to pull rank.
Just recently, the long-running information and trivia site Oscarwatch.com was forced to change its name under threat of being shut down. But it’s not just the rise of the Internet that has the academy protecting its name and image.
For the better part of the last 70 years, entrepreneurs have tried to appropriate the Academy of Motion Picture Arts and Science’s most cherished brand -- the Oscar -- for commercial products. That has put the academy in the position of trying to bolster its symbolic value and stave off what has become an incessant wave of trademark infringements. “It happens all the time,” said Bruce Davis, executive director of the academy. “I think we see a new board game each year where the pieces are little Oscar statuettes.”
As a result, even the most innocuous products -- an “Academy Award” deli sandwich, say, or the Academy Award tailoring shop -- have been squeezed by the film academy’s muscle.
In 1996, Frank Sheftel, a chocolatier in North Hollywood, made headlines when his company produced chocolate Oscar figurines for academy member Mark Canton, who was then president of Sony Pictures. According to Sheftel, Canton ordered the chocolates for a private party, yet when the academy got wind of the agreement, it slapped Sheftel with a federal copyright infringement lawsuit. “I decided to fight it,” Sheftel said. “And that led to a lot of negative publicity for the academy, so they decided to settle.”
Sheftel wasn’t alone; he said that dozens of candy companies were producing similar edible Oscar figurines at the time. Sheftel said he purchased his mold from a catalog, which was one of many available to wholesalers.
And the name game continues. A Google search reveals that there are more than a dozen companies that use some form of the academy’s name to make products. South Carolina-based Academy Awards Inc. makes signs, banners and flags, while L.A.-based Academy Award Clothes Inc. has been distributing garments with that label since 1950. Will the academy go after them? “You don’t have to sue them all,” Davis said, “but you have to at least write them a letter stating that we are aware of the misappropriation and, if it continues, a lawsuit will be forthcoming.”
Just ask the clothing manufacturers Schnur & Cohan. They started producing a line of “Academy Award” undergarments for women in the late 1940s, selling more than 13 million units nationwide. E. Fulton Brylawski, an expert in copyright law who was the academy’s attorney at the time, sued the manufacturer in 1955. “That case went all the way to the Court of Appeals,” he said, where he prevailed.
At one point, the academy decided upon a strategic maneuver to fight the unlawful product glut and still come out ahead financially. In 1949, academy director Margaret Herrick authorized a four-year contract with Bulova watches for the film organization’s first commercial license. The manufacturer paid the academy $145,000 (a little more than $1 million in 2007 dollars) to create an exclusive line of Academy Award watches.
“The academy was a very hand-to-mouth organization at the time,” said Davis of the choice to leverage Oscar. “And all that money went to paying off its headquarters, which was then on Melrose. But more importantly, the license with Bulova meant that it would be in Bulova’s best interest to fight off infringements with its own legal department, which was significantly larger than the academy’s. So they believed that this would finally put an end to all the illegal products out there.”
But when the company began running ads touting that its Academy Award watch had a “winning” design, the academy charged it with “perpetrating a fraud” on the public. Arguing that Oscar’s symbolic value had been diminished because people would assume that Bulova had earned an Oscar for “best watch design,” the academy aligned with the Federal Trade Commission to break its contract with the company two years early. (Some of those watches now appear on EBay selling for as much as $2,500.)
The academy had much more difficulty with entrepreneurs who managed to register “Oscar” and “Academy Award” with the U.S. Patent and Trademark Office. By the early 1950s, 17 people had registered the names for commercial purposes. New York’s Max Schlesinger, for example, changed his company, Champion Play, to Academy Award Products in 1946, giving him the right to produce an array of goods -- firearms, refrigerators, washing machines, silverware and power tools -- with the Academy Award name.
“The board now understands that it is imperative that it must keep the academy’s name out of such entanglements altogether,” Davis said.
Branding expert Laura Ries agreed. “It’s a very successful, focused brand. But if it’s ... seen in too many places, it will ultimately dilute the product,” she said.
Meanwhile, don’t expect to see any more chocolate Oscars from Sheftel, the candy maker, even though he continues to get annual requests for them come, Oscar time. “I signed an agreement,” he said, “which says that I can’t make any more male nude figures. So now I’m making award envelopes instead.”