LOS ANGELES (Hollywood Reporter, ESQ.) - Is “Oscar” a generic term? It may be in Italian, a Los Angeles judge has found in a decision to deny summary judgement in a case brought by the Academy of Motion Picture Arts and Sciences, which organises the world’s most prestigious movie awards.
The Academy, which aggressively protects its “Oscar” name and image, filed suit against Italian broadcaster RAI International for trademark infringement over its broadcast of several awards programs using the word “Oscar.” Among the programs: Wine Oscars, Fashion Oscars, TV Oscars and Music Oscars, according to AMPAS’ attorney, David Quinto.
RAI International is distributed by satellite firm EchoStar Communications Corp., which is also named as a defendant in the lawsuit. According to the suit, RAI broadcast the “Oscar” shows to U.S. subscribers as well as those in Italy.
In denying AMPAS’ motion for summary judgement, U.S. District Court Judge Audrey Collins wrote that there is no question that the Oscar mark is strong in the English language and, “The use of ‘Oscar’ to describe an award or awards program is arbitrary or fanciful and deserves maximum protection. However, EchoStar has presented evidence showing that the word ‘Oscar’ could be considered generic in Italy and in the Italian language.”
The awards programs were shown in the United States, but were broadcast in Italian. And the Academy, Collins concluded, didn’t object to EchoStar’s evidence that RAI programming is aimed at Italians living abroad.
“EchoStar presents evidence that the meaning of ‘Oscar’ in the Italian-language programs is quite different than the meaning of ‘Oscar’ in English,” Collins wrote in the March 6 opinion.
The shows also used words in their titles besides “Oscar” and appeared to focus on achievement in Italian industries other than entertainment.
But Quinto said non-Italian citizens watch RAI in the United States, including Americans who want to brush up on their Italian. To them, there is no confusion as to what “Oscar” means, Quinto said.
“The Academy has already requested that EchoStar produce its complete customer list, and we’ll engage a customer market expert to gauge whether there is actual confusion,” Quinto said. “It doesn’t end the case. The court has simply said on the record before it (that) the evidence was insufficient to grant the motion.”
EchoStar’s Los Angeles attorney, Kathy Jorrie, said the decision by Collins was significant because the court recognised that words have different meanings in different languages.
“In our case, because ‘Oscar’ means ‘award’ to the Italian language, it is not likely that an Italian viewer would confuse Italian titles such as ‘Oscar del Vino’ (Wine Award) or ‘La Kore -- Oscar della moda’ (La Kore Fashion Award) to have any connection with (AMPAS) simply because of the inclusion of the word ‘Oscar’ in the title of such foreign-language programs,” she said.