COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE ADVERTISING, AND

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COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE ADVERTISING, AND

Postby admin » Thu Feb 25, 2016 9:45 am

COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE ADVERTISING, AND TRADEMARK DILUTION; DEMAND FOR JURY TRIAL
by The Academy of Motion Picture Arts and Sciences
February 16, 2016

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QUINN EMANUEL URQUHART & SULLIVAN, LLP
John B. Quinn (SBN 90378)
johnquinn@quinnemanuel.com
865 S. Figueroa St, 10th Floor
Los Angeles, CA 90017
Tel: (213) 443-3200
Fax: (213) 443-3100

Margret M. Caruso (SBN 243473)
margretcaruso@quinnemanuel.com
555 Twin Dolphin Drive, 5th Floor
Redwood City, CA 94065
Tel: (650) 801-5000
Fax: (650) 801-5100

Attorneys for Plaintiff The Academy of Motion Picture Arts and Sciences

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION

ACADEMY OF MOTION PICTURE ARTS AND SCIENCES, a California nonprofit corporation,
Plaintiff,

vs.

LASH FARY d/b/a DISTINCTIVE ASSETS and DISTINCTIVE ASSETS LLC,
Defendants.

CASE NO. 2:16-cv-1061

COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE ADVERTISING, AND TRADEMARK DILUTION; DEMAND FOR JURY TRIAL

Plaintiff Academy of Motion Picture Arts and Sciences complains of defendants and alleges as follows:

Jurisdiction and Venue

1. This action arises under the trademark laws of the United States, Title 15, United States Code, as well as the unfair competition and dilution laws of the same, the State of California, and the common law. This Court has federal question jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121. This Court has pendent jurisdiction over the state law claims alleged herein. Venue lies in this district under 28 U.S.C. § 1391(b).

Nature of Action

2. Plaintiff Academy of Motion Picture Arts and Sciences (the “Academy”) is a non-profit organization dedicated to fostering and encouraging excellence in motion picture filmmaking. As part of its mission, the Academy annually presents the Academy Awards of Merit, popularly known as the “Oscars,” or “Academy Awards,” to honor outstanding achievements in the film industry. The Academy owns trademark registrations for OSCAR, OSCARS, ACADEMY AWARD, and ACADEMY AWARDS and carefully ensures that they are only used in a manner consistent with the highest standards of achievement.

3. Upon information and belief, Defendant Lash Fary is the founder, owner, and sole proprietor of Distinctive Assets and the founder of Defendant Distinctive Assets LLC (collectively, “Distinctive Assets”). Distinctive Assets purports to be a “niche” marketing business that specializes in “celebrity placement” by promoting the products of third parties through high-profile “gift bags” to celebrities who attend or are nominated for awards shows, such as the Academy Awards.

4. The Academy has no affiliation, connection, or association with Distinctive Assets’ “gift bags” or their contents, and certainly does not sponsor, endorse, or approve of Distinctive Assets, its services, or the products it promotes. Yet Distinctive Assets uses the Academy’s trademarks to raise the profile of its “gift bags” and falsely create the impression of association, affiliation, connection, sponsorship, and/or endorsement. For example, Distinctive Assets has referred to its gift bags as the “Everyone Wins At The Oscars®! Nominee Gift Bags,” and “Everyone Wins Nominee Gift Bags in Honor of the Oscars®” (collectively the “Infringing Bags”). (See Distinctive Assets’ Twitter posts of February 23, 2015 and February 5, 2016, true and correct copies of which are attached as Exhibit A).

5. Unsurprisingly, third parties have expressed confusion about the Academy’s association, affiliation, connection, sponsorship or endorsement of the Infringing Bags. Indeed, the recent wave of media stories concerning the Infringing Bags suggest that Distinctive Assets issued a press release to a multitude of media outlets that left readers with the definite impression of a connection between the Infringing Bags and the Oscars. For example, The Telegraph newspaper reported on its website that “[t]he Oscars doesn’t have a separate category for comedy, but if it did, its own goodie bag would be an outright winner.” (See “Breast lifts, vibrators and weight-loss aids: The Oscar’s sexist $200,000 goodie bag shames women,” posted on Telegraph.co.uk, a true and correct copy of which is attached as Exhibit B.) Similarly, Glamour magazine reported on its website that “[t]he 2016 Oscars might be the Academy of Motion Picture Arts and Sciences’ swankiest ceremony to date if this year’s gift bag has anything to say about it.” (“You Won’t Believe How Much the 2016 Oscar Swag Bags Are Worth!” posted on Glamour.com, a true and correct copy of which is attached as Exhibit C). These mistaken impressions are then passed on to readers and viewers of the reporting media, exponentially expanding the confusion Distinctive Assets sows among Oscar nominees, sponsors, viewers, and the public at large. Distinctive Assets’ confusing promotion of the Infringing Bags unmistakably infringes and is likely to dilute the Academy’s trademarks.

6. Distinctive Assets’ infringement and dilution is willful. Its use of registered trademark “®” symbols in connection with the Academy’s trademarks reflects its awareness of the Academy’s trademark rights. Moreover, Distinctive Assets knows that the Academy objects to the use of the Academy’s trademarks to promote Distinctive Assets’ Infringing Bags. Last year, the Academy repeatedly wrote to Distinctive Assets explaining the harm these gift bag promotions cause. Eventually, through its lawyer, Distinctive Assets agreed to stop creating false impressions that is associated with the Oscar ceremony or the Academy. But it has not done so. In flagrant disregard for its representations that it would clean up its act, Distinctive Assets is now at it again.

7. Distinctive Assets’ current unlawful promotion of its “gift bags” includes false statements concerning its association with award shows. On a page of its website with the header “AWARD SHOWS AND CELEBRITY PLACEMENTS,” Distinctive Assets proclaims:

Our exclusive involvement with many major award shows provides valuable access to an often elusive celebrity market. At each of our events, Distinctive Assets selects vendors and provides them with the opportunity to present their products/services to celebrities in a Gift Basket or through representation in our interactive Gift Lounge. Our résumé of events, press procurement and reputation among celebrities and producers are unrivaled in the industry.


(“Award Shows & Celebrity Placement” page on DistinctiveAssets.com, a true and correct copy of which is attached as Exhibit D). Distinctive Assets then represents: “Our Gift Lounges are held ON SITE at the award show or event and provides [sic] an opportunity for our clients to represent their line and personally interact with celebrities (and press).” (Id.) These statements are false regarding the Academy Awards. Distinctive Assets does not have any involvement with the Oscars—“exclusive” or otherwise—and it has no presence on the premises of the Oscar ceremony.

8. The Academy regrets having to bring this suit to compel Distinctive Assets to stop its false, confusing, misleading, infringing, and diluting actions. However, Distinctive Assets’ persistent unlawful behavior and disregard of its own agreement to stop its false associations leaves the Academy no choice.

Parties

9. Plaintiff Academy of Motion Picture Arts and Sciences is a nonprofit corporation organized and existing under the laws of the State of California, with its principal place of business in Los Angeles, California.

10. Upon information and belief, Lash Fary is an individual d/b/a Distinctive Assets, and Distinctive Assets LLC is a company, and both have their principle places of business at 913 South Mansfield Avenue, Los Angeles, California 90036.

Factual Background

The Academy’s Decades of Goodwill In Its Trademarks


11. The Academy was founded in 1927 as a non-profit organization designed to benefit the then-fledgling film industry in the United States. Shortly after its founding, the Academy decided to create an award to celebrate the highest standards in motion picture filmmaking as a method of advancing the industry; the presentation of this award would become known as the “Academy Awards” or “Oscars.”

12. The Academy presented the first Oscars in 1929. The ceremony proved so popular that it was broadcast live, via radio, the following year. Continued demand for the Oscar awards ceremony resulted in annual live broadcasts, eventually switching from radio to television in 1953. The Academy’s first color television broadcast occurred in 1966, and the first international broadcast, outside of Canada, took place in 1969. In 2015, the Academy Awards were televised live in more than 225 countries and territories worldwide. As part of protecting the extraordinary goodwill that the Academy has earned over the years, the Academy established standards for both the awards it makes and the awards ceremony itself.

13. As recognition of the Academy’s work grew, the Academy began to provide additional services to benefit both the film industry and the public. To better promote and protect those services, the Academy filed for a number of trademark registrations. First, the Academy obtained registration of the OSCAR® word mark with the Patent and Trademark Office on the Principal Register in 1975, pursuant to Certificate of Registration No. 1,096,990. A few years later, in 1978, the Academy applied for registration of the ACADEMY AWARDS® word mark, which it obtained pursuant to Certificate of Registration No. 1,103,859. (See Exhibit E, consisting of a true and correct copy of these registrations).

14. The Academy’s early registrations primarily covered the Academy’s annual telecast, but by 1979, the Academy was also creating booklets, press kits, chronologies, and other consumer media. As a result, the Academy obtained a registration for OSCAR® pursuant to Certificate of Registration No. 1,118,751, in connection with these new products and services. Over time, the scope of Academy’s works continued to grow, spurred on by both the Academy’s investment and new technologies, such as home video, and its unique caps, shirts, sweatshirts, and jackets commemorating the Oscar ceremonies. To cover these additional uses, the Academy applied for and obtained new registrations for OSCAR®, OSCARS®, ACADEMY AWARD®, and ACADEMY AWARDS® during the 1980s, 1990s, and early 2000s. These additional registrations include: OSCAR®, registered pursuant to Certificate of Registration Nos. 1,996,585, and 2,021,582; OSCARS®, registered pursuant to Certificate of Registration No. 1,528,890; ACADEMY AWARDS®, registered pursuant to Certificate of Registration Nos. 1,880,473 and 1,956,313; and ACADEMY AWARD® is registered pursuant to Certificate of Registration No. 2,245,965. All of these registrations are in the principal register. (See Exhibit F, consisting of a true and correct copy of these registrations). Collectively, these trademarks are referred to herein as the “Academy’s Marks.”

15. Meanwhile, the popularity of the Oscars has increased. In 2015, 36.6 million viewers watched the telecast of the awards ceremony, and advertisers paid a higher premium for 30-second commercials during that ceremony than they did for the Super Bowl. (See “The Oscars Beat The Super Bowl In Advertising Premium,” posted Forbes.com on February 20, 2015, a true and correct copy of which is attached as Exhibit G). The terms “Oscar” and “Academy Awards” in connection with the Academy’s uses of those terms, are now both entries in the Oxford English Dictionary and the Encyclopedia Britannica—and the Academy is recognized in both publications. Consistent with the general fame of the Academy’s Marks, in ruling for the Academy on one of its trademarks, the Ninth Circuit Court of Appeals held that “the Oscar . . . mark should be given the strongest possible protection against infringement.” See Academy of Motion Picture Arts and Sciences. v. Creative House Promotions, Inc., 944 F.2d 1446, 1455 (9th Cir. 1991).

16. The Academy’s work also goes beyond the celebratory evening of the Oscars ceremony. To advance the arts and sciences of motion pictures, to foster educational activities between the public and the industry, and to encourage an appreciation of the motion picture as an art form and a vocation, the Academy engages in many other activities. Among them, it established an Academy scholarship fund for film students, founded a fellowship program to aid aspiring screenwriters, and created the National Film Information Service to ensure that historians, students, and the public have access to the Academy’s vast library of historic primary source documents and materials. Since 2012, the Academy has been working to build a museum devoted to motion pictures, which will curate and present work from Oscar winners, nominees, and film makers from around the globe. The Academy continues to strive to do more, and better, and more quickly, in addressing the ongoing concerns of the film making community.

Distinctive Assets’ Unlawful Promotion Of Its “Gift Bags” In 2015

17. In the weeks leading up to the 2015 Oscars, Distinctive Assets began promoting its 2015 gift bags using the Academy’s OSCARS trademark to draw attention to itself and the products it was promoting by falsely creating an association with the Academy’s Oscars ceremony.

18. On information and belief, in February 2015, Distinctive Assets released press statements advertising its infringing gift bags as “Everyone Wins At the Oscars®! Nominee Gift Bags.” As a result of Distinctive Assets’ efforts, press outlets credited Distinctive Assets’ gift bags as being associated with the Academy even though they are not. For example, Vanity Fair posted a story to its website that stated “the Academy Awards have figured out a way to help wash the bitter taste of defeat right out of the mouths of those who don’t get to take home a little gold man to sit on their mantel: The gift bag[.]” (See “Oscar Gift Bags: Take A Peek Inside This Year’s $168,000 Bounty” VanityFair.com, February 11, 2015, a true and correct copy of which is attached as Exhibit H). Similarly, CBS affiliate Kiss FM reported that, because of the gift bags, “nominees will not be leaving the ceremony empty handed.” (“Oscar Gift Bag Is Filled With $125,000 Worth of Goodies,” CBSLocal.com, February 19, 2015, a true and correct copy of which is attached as Exhibit I).

19. Distinctive Assets also engaged in a social media campaign using the phrase “Everyone Wins At The Oscars®,” followed by links to the individual products carried in the infringing gift bags, as shown here:

Image

The Academy’s Efforts to Stop Distinctive Assets’ Unlawful Promotion Of Its Infringing Bags

20. Deeply concerned about the confusion Distinctive Assets was spreading, the Academy’s legal counsel wrote Distinctive Assets on or about February 17, 2015, to inform it that it “is critical that no one be confused into believing that your gift bags are associated with or have any connection with the Academy.” To avoid litigation, the Academy requested that Distinctive Assets confirm in writing that:

- All of Distinctive Assets’ future communications concerning the gift bags will clearly communicate that the Academy does not award, sponsor, endorse, or provide these gift bags and that any reporting about the gift bags must include that disclaimer. !"

- Mentions of Distinctive Assets’ 2015 gift bags for OSCAR® nominees will contain the disclaimer that these gift bags have no affiliation with the OSCARS® or the Academy. The disclaimer should be at least the size of the smallest font used elsewhere in the main text of the page or image. " - Distinctive Assets will not make any association, explicitly or implied, that its gift bags are associated with the OSCARS®, the ACADEMY AWARDS®, or The Academy in any advertising, marketing, or promotion going forward. !"


(See Feb. 17, 2015 Letter, a true and correct copy of which is attached as Exhibit J.)

21. Distinctive Assets did not respond to the February 17, 2015 letter. It continued to blatantly infringe. The week after receiving the Academy’s letter, Distinctive Assets posted on Facebook about its gift bags using the hashtag “#OscarGiftBag”—a phrase that deliberately and falsely associates Distinctive Assets’ gift bag with the Oscars. On or about February 27, 2015, the Academy again contacted Distinctive Assets, explaining that the Academy would pursue legal relief if it did not receive a response. (See Feb. 27, 2015 letter, a true and correct copy of which is attached as Exhibit K.)

22. On or about March 6, 2015, Distinctive Assets finally responded through a letter from counsel. The letter represented that Distinctive Assets “will not purposefully make an association between its gift bags and AMPAS going forward[,]” and specified that “it will no longer use the tagline ‘Everyone Wins At the Oscars®.’” (See March 6, 2015 Letter, a true and correct copy of which is attached as Exhibit L.)

23. Concerned that Distinctive Assets might have the misimpression that simply eliminating the Academy’s trademarks from the gift bag taglines would be sufficient, the Academy wrote back on or about March 23, 2015. That letter explained that eliminating that particular tagline was a necessary, but not sufficient step, to ending Distinctive Assets’ trademark infringement. The Academy made clear that Distinctive Assets was not permitted either to imply a relationship with the Academy or to use any of the Academy’s trademarks, not just the OSCARS mark, in future advertising for Distinctive Assets’ gift bags. (See March 23, 2015 Letter, a true and correct copy of which is attached as Exhibit M.)

24. On or about March 25, 2015 Distinctive Assets replied and stated that it “expressly agree[d] not to purposefully make an association between its gift bags and [the Academy] going forward,” and further acknowledged that “not making an association with [the Academy] includes not using [the Academy’s] other intellectual property in taglines” for gift bags. (See March 25, 2015 Letter, a true and correct copy of which is attached as Exhibit N.)

Distinctive Assets’ Persistent Unlawful Promotion Of Its Infringing Bags In 2016

25. The parties’ 2015 correspondence leaves no doubt that as of 2016 Distinctive Assets was fully aware of the Academy’s trademark rights, the Academy’s position about Distinctive Assets’ unlawful use, and Distinctive Assets’ own commitment not to create an association between its bags and the Academy or the Oscars. But with the 2016 Academy Awards weeks away, Distinctive Assets again chose to promote its products and services using the Academy’s trademarks to create confusion about its (lack of) relationship with the Oscars and the Academy.

26. This year, Distinctive Assets opted for the tagline “Everyone Wins Nominee Gift Bags in Honor of the Oscars®.” Its continued use of the same trademark in its tagline blatantly violates Distinctive Assets’ agreement “not to purposefully make an association between its gift bags” and the Academy, and it is likely to cause confusion as to the Academy’s non-association with Distinctive Assets and its gift bags.

27. But Distinctive Assets’ new tagline is hardly the only means it is now using to advance the false idea that it is connected to the Academy and the Oscars. On or about February 5, 2016, Distinctive Assets used the Academy’s OSCARS trademark on its social media Twitter account to describe its gift bag and posted a link to an article about the bags titled “Inside the Absurd $200K Oscar Gift Bag: Vapes, a Trip To Israel, and a Vampire Breast Lift.”

Image

Neither Distinctive Assets’ post nor the article itself contained any disclaimer clarifying that Distinctive Assets has no connection to the Oscars or the Academy. To the contrary, the article refers to Distinctive Assets, as “the company in charge of putting together the luxurious gift bags for nominees.” (See “Inside the Absurd $200K Oscar Gift Bag” posted to DailyBeast.com on February 5, 2016, a true and correct copy of which is attached as Exhibit O).

28. A wave of media reports on “Oscar gift bags” quickly followed Distinctive Assets’ announcement. For example, TMZ.com reported that “all the Oscar nominees get a stupid amount of swag in the official gift bag.” (“Oscar Gift Bag” TMZ.com, February 5, 2016, a true and correct copy of which is attached as Exhibit P). Similarly, The New York Post posted an article referring to “the gift bags at the Academy awards,” with no mention of Distinctive Assets or clarification that the Academy does not give away gift bags at the Academy Awards. (See “Gwyneth Paltrow Obviously Loves the $250 Oscars Toilet Paper,” NYPost.com, February 8, 2016, a true and correct copy of which is attached as Exhibit Q). The BBC’s Newsbeat website reported that “[a]s well as a gold statuette . . . all this year’s Oscar winners will leave with a goodie bag worth more than £130,000.” (“Oscars 2016: A look inside the £150,000 goodie bag,” BBC.co.uk, a true and correct copy of which is attached as Exhibit R). As with the other reports, the BBC did not clarify that the Academy does not give out “goodie bags.” And multiple news outlets, including CNBC, Fox News, The Washington Post, The Toronto Star, The National Post, Forbes, The New York Daily News, and Hollywood Reporter have all used the exact phrase “Oscar Swag Bag” to describe Distinctive Assets’ infringing gift bag—strongly suggesting that Distinctive Assets has used or encouraged use of this term in further violation of its agreement not to use the Academy’s trademarks to describe its bags.

29. The media coverage reveals that Distinctive Assets appears to be taking no steps to stop wrongfully implying a relationship with the Academy. An article posted to Self’s website on February 10, 2016, describes Distinctive Assets as “the company in charge of the swag bags,” with no explanation that it was not retained by, does not work for, and has no connection with, the Academy. (See “Peek Inside This Year’s $200,000 Oscars Gift Bags” posted to Self.com, February 10, 2016, a true and correct copy of which is attached as Exhibit S). As a result, a reader is left with the false impression that the Academy retained Distinctive Assets for the purpose of providing gift bags to Oscar Nominees.

30. Distinctive Assets further reinforces the false impression that it has a connection with the Oscars through false advertising. Distinctive Assets’ website states that it has “exclusive involvement with many major award shows,” even though it has no involvement with the Oscars. See Ex. D. It also touts that its “Gift Lounges are held ON SITE at the award show or event and provides an opportunity for our clients to represent their line and personally interact with celebrities (and press).” Id. But Distinctive Assets has no “gift lounge” on the grounds of the Oscar ceremony.

31. Distinctive Assets’ continued use of the Academy’s trademarks not only infringes the Academy’s trademarks, but it is also likely to dilute the distinctiveness of the Academy’s famous trademarks and tarnish their goodwill. Press about the 2016 gift bags has focused on both the less-than-wholesome nature of some of the products contained in the bags, which purportedly include a $250 marijuana vaporizer, a $1,900 “vampire breast lift,” skin treatments by Park Avenue plastic surgeons valued at more than $5,500, a $250 sex toy, and $275 Swiss-made toilet paper, and the unseemliness of giving such high value gifts, including trips costing tens of thousands of dollars, to an elite group of celebrities. See, e.g. Exs. B, O, and P. For example, Forbes.com ran an article entitled “The $200,000 Oscars Gift Bag: The Business of Vibrators, Breast Lifts, and More Absurd Swag.” (a true and correct copy of which is attached as Exhibit T.) The article unequivocally associates the Academy with the “absurd” contents of the bag and does nothing to dispel the association.

32. Distinctive Assets’ wrongful conduct has harmed the Academy, including by causing it to spend significant resources responding to inquiries and comments relating to its lack of affiliation with Distinctive Assets and its gift bags and trying to correct the misimpressions Distinctive Assets has created. Some of the harm Distinctive Assets has caused cannot be quantified, including harm to the goodwill of the Academy’s trademarks and the Academy’s reputation.

FIRST CLAIM FOR RELIEF
(Trademark Infringement -- 15 U.S.C.§ 1114(1), 15 U.S.C. § 1125(a))


33. The Academy incorporates herein by reference each and every allegation contained in paragraphs 1 through 32, above, as though set forth herein.

34. The Academy has long used its OSCAR®, OSCARS®, ACADEMY AWARD®, and ACADEMY AWARDS® word marks in interstate commerce in connection with the advertising and promotion of the annual Academy Awards® ceremony and to recognize motion pictures honored by the Academy for excellence. The Academy’s Marks are registered on the principle register.

35. In connection with its promotion of its services and others’ goods and services, Distinctive Assets has used and is using in commerce reproductions, copies, facsimiles, and depictions of the Academy’s Marks in a manner likely to cause confusion or mistake or to deceive. Distinctive Assets’ actions have at all times been without the Academy’s consent.

36. Distinctive Assets’ acts violate 15 U.S.C. § 1114(1) and 15 U.S.C. § 1125(a).

37. Distinctive Assets has been unjustly enriched as a direct and proximate result of its harmful conduct, which has also harmed the Academy, including by causing it to spend significant resources responding to inquiries and comments relating to its lack of affiliation with Distinctive Assets and its gift bags and trying to correct the misimpressions Distinctive Assets has created. Pursuant to 15 U.S.C. § 1117(a), the Academy is entitled to, and should be awarded defendants’ profits and any damages sustained by the Academy, and the costs of this action.

38. Because defendants have willfully used the Academy’s Marks in a manner calculated to promote the sale or distribution of its goods and services, and because this is an exceptional case, the Academy is entitled to recover three times defendants’ profits and the Academy’s damages, and reasonable attorney’s fees pursuant to 15 U.S.C. § 1117.

39. Distinctive Assets’ acts have damaged, and will irreparably damage, the Academy. The Academy has no adequate remedy at law for all of these wrongs and injuries. The damage to the Academy includes harm to its goodwill and reputation in the marketplace that money damages cannot compensate. The Academy is, therefore, entitled to a preliminary and permanent injunction restraining and enjoining Distinctive Assets and its agents, servants, and employees, and all persons acting thereunder, in concert therewith or on their behalf, from using the Academy’s Marks, or any mark including those Marks, in connection with the sale, offering for sale, distribution or advertising of goods or services, or in any manner likely to cause confusion or mistake or to deceive the trade or public as to the source or origin of defendants’ products.

SECOND CLAIM FOR RELIEF
(California Common Law Trademark Infringement)


40. The Academy repeats and incorporates by reference each and every allegation of paragraphs 1 through 39 above, as though fully set forth herein.

41. The Academy commenced use of the Academy’s Marks before any and all use of confusingly similar marks by Distinctive Assets.

42. Distinctive Assets is using and has used the Academy’s Marks in commerce in connection with its promotion of its services and others’ goods and services without the Academy’s consent.

43. There is a likelihood of confusion in the minds of the public that Distinctive Assets is affiliated with the Academy.

44. Distinctive Assets has been unjustly enriched as a direct and proximate result of this harmful conduct, and the Academy has suffered, and will continue to suffer, harm as it is caused to spend resources responding to inquiries and comments relating to is lack of affiliation with Distinctive Assets and its gift bags. Accordingly, the Academy is entitled to receive damages, including, but not limited to restitution, actual, and exemplary damages.

45. Distinctive Assets’ repeated, intentional use of the Academy’s Marks is malicious, particularly in light of Distinctive Assets’ express representations to the Academy that it would cease using the Academy’s Marks. Accordingly, pursuant to California Civil Code § 3294(a), the Academy is entitled to punitive damages.

46. Distinctive Assets’ repeated, intentional use of the Academy’s Marks is also fraudulent in light of its express representations to the Academy that it would cease using the Academy’s Marks. Accordingly, pursuant to California Civil Code § 3294(a), the Academy is entitled to punitive damages.

47. Distinctive Assets’ acts have damaged, and will irreparably damage, the Academy. The Academy has no adequate remedy at law for all of these wrongs and injuries. The damage to the Academy includes harm to its goodwill and reputation in the marketplace that money damages cannot compensate. The Academy is, therefore, entitled to a preliminary and permanent injunction restraining and enjoining defendants and their agents, servants, and employees, and all persons acting thereunder, in concert therewith or on their behalf, from using the Academy’s Marks, or any mark including those Marks, in connection with the sale, offering for sale, distribution or advertising of goods or services, or in any manner likely to cause confusion or mistake or to deceive the trade or public as to the source or origin of defendants’ products.

THIRD CLAIM FOR RELIEF
(False Advertising – 15 U.S.C. § § 1125(a)(1)(B))


48. The Academy incorporates by reference each and every allegation contained in paragraphs 1 through 47 above, as though set forth herein.

49. Distinctive Assets has made false and misleading representations of fact in a commercial advertisement about its infringing gift bags, including, but not limited, to representations that Distinctive Assets has an exclusive relationship with the Academy, that it is in charge of gift bags for the Academy, and that it will be giving away the infringing gift bags “on site” at the Academy Awards annual telecast.

50. Distinctive Assets’ misrepresentations are material in that they are likely to influence decisions regarding media coverage of the Academy Awards annual telecast, as well as decisions regarding whether a company will retain Distinctive Assets for advertising purposes, whether a company will decide to become a sponsor of the Oscars, whether a person will serve as a presenter at the Oscars, and whether a person will view the Oscars.

51. Distinctive Assets has made misrepresentations on its website and on social media accounts, and thus in connection with interstate commerce.

52. The Academy is likely to be directly harmed by Distinctive Assets’ false and misleading statements due to a lessening of goodwill associated with the Academy, and Distinctive Assets has been unjustly enriched as a direct and proximate result of its harmful conduct. Pursuant to 15 U.S.C. § 1117(a), the Academy is entitled to, and should be awarded defendants’ profits, and any damages sustained by the Academy, and the costs of this action.

53. Because defendants have willfully made false representations in a manner calculated to promote the sale or distribution of its goods and services, and because this is an exceptional case, the Academy is entitled to recover three times defendants’ profits and the Academy’s damages, and reasonable attorney’s fees pursuant to 15 U.S.C. § 1117.

54. Distinctive Assets’ acts have damaged, and will irreparably damage, the Academy. The Academy has no adequate remedy at law for all of these wrongs and injuries. The damage to the Academy includes harm to its goodwill and reputation in the marketplace that money damages cannot compensate. The Academy is, therefore, entitled to a preliminary and permanent injunction restraining and enjoining Distinctive Assets and its agents, servants, and employees, and all persons acting thereunder, in concert therewith or on their behalf, from making additional false and misleading statements in commerce.

FOURTH CLAIM FOR RELIEF
(False Advertising California Business and Professions Code § 17500 et seq.)


55. The Academy repeats and incorporates by reference each and every allegation of paragraphs 1 through 54 above, as though fully set forth herein.

56. Distinctive Assets intended to sell its advertising services to the public, as demonstrated through its media contacts, website, press releases, and statements.

57. Distinctive Assets disseminated information that was untrue and misleading.

58. Distinctive Assets knew, or should have known, that these statements were false, as Distinctive Assets does not have an exclusive relationship with the Academy or the Oscars, or indeed, any connection at all, and does not provide gift bags on the premises of the Oscars ceremony during the event.

59. Distinctive Assets’ false statements were calculated to affect the sale of Distinctive Assets’ services, which depend upon exploiting the Academy’s goodwill for publicity.

60. As a direct and proximate result of Distinctive Assets’ false statements, Distinctive Assets has obtained unlawful profits, or has otherwise been unjustly enriched. Accordingly, the Academy is entitled to receive damages, including, but not limited to restitution and disgorgement of Distinctive Assets’ profits.

61. Distinctive Assets’ acts complained of herein have damaged, and will irreparably damage, the Academy. The Academy has no adequate remedy at law for all of these wrongs and injuries. The damage to the Academy includes harm to its goodwill and reputation in the marketplace that money damages cannot compensate. The Academy is, therefore, entitled to a preliminary and permanent injunction restraining and enjoining defendants and their agents, servants, and employees, and all persons acting thereunder, in concert therewith or on their behalf, from making additional false and misleading statements in commerce.

FIFTH CLAIM FOR RELIEF
(Trademark Dilution -- 15 U.S.C. § 1125(c) and Cal. Bus. & Prof. Code § 14247)


62. The Academy repeats and incorporates by reference each and every allegation of paragraphs 1 through 61 above, as though fully set forth at length.

63. The Academy’s Marks are famous and distinctive. The Academy’s annual awards ceremony, known to the public as the “Oscars” or the “Academy Awards,” has occurred annually since 1929. The Academy’s Marks are registered on the Principal Trademark Register. The marks are so well recognized that they have their own definitions in the Oxford English Dictionary and entries in the Encyclopedia Britannica. Recognition and viewership of the Academy’s awards ceremony is so widespread that publications have compared it to the Super Bowl.

64. Distinctive Assets’ use in commerce of the Academy’s Marks in connection with their services and commercial activities is likely to dilute the distinctive quality of the Academy’s Marks in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c) and Cal. Bus. & Prof. Code § 14247.

65. Distinctive Assets has offered and is offering for sale and selling advertising services through use of the Academy’s Marks in connection with the distribution of unseemly “gift bags” and products scorned in the press, including products that facilitate the consumption of illegal drugs, sex toys, and outlandishly priced toilet paper.

66. Distinctive Assets’ use in commerce of the Academy’s Marks in the service of promoting these goods is likely to tarnish the goodwill associated with the Academy’s Marks in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).

67. Distinctive Assets has been unjustly enriched as a direct and proximate result of this harmful conduct, and the Academy has suffered, and will continue to suffer, harm as it is caused to spend resources responding to inquiries and comments relating to Distinctive Assets’ gift bags. Accordingly, the Academy is entitled to receive damages, including, but not limited to restitution, actual, and exemplary damages, and the costs of this action.

68. Because defendants willfully intended to trade on the reputation of the Academy, and because this is an exceptional case, the Academy is entitled to recover defendants’ profits and reasonable attorney’s fees pursuant to 15 U.S.C. § 1117(a).

69. Distinctive Assets’ acts have damaged, and will continue to damage, the Academy irreparably. The Academy has no adequate remedy at law for all of these wrongs and injuries. The damage to the Academy includes harm to the value and goodwill associated with its mark that money cannot compensate. The Academy is, therefore, entitled to a preliminary and permanent injunction restraining and enjoining defendants and their agents, servants and employees, and all persons acting thereunder, in concert therewith or on their behalf, from their commercial use in commerce of the Academy’s Marks, or any colorable imitations thereof, in any manner likely to dilute the Academy’s Marks.

PRAYER FOR RELIEF

WHEREFORE, the Academy demands judgment:

1. That, pursuant to 15 U.S.C. §§ 1114, 1116, and 1125, and applicable California and common law, defendants, as well as all persons acting under the direction, control, permission, or authority of defendants, or any of them, and all persons acting in concert therewith, be enjoined during the pendency of this action, and permanently thereafter, from using, displaying, marketing, distributing, advertising, transferring or selling any services using the Academy’s trademarks or otherwise creating a false association with the Academy or the Oscars.

2. That, pursuant to 15 U.S.C. § 1117(a), the Academy is entitled to, and should be awarded any damages it sustained, defendant’s profits, and the costs of this action.

3. That, because defendants’ conduct has been willful and this is an exceptional case, the Academy recover three times the defendants’ profits and the Academy’s damages, and reasonable attorneys’ fees pursuant to 15 U.S.C. §§ 1114, 1117, and 1125(a) and (c) and applicable California and common law.

4. That, because the defendants’ conduct has been malicious, or in the alternative fraudulent, or both, the Academy recover punitive damages California Civil Code § 3294(a); and

5. That the Academy have such other and further relief as the Court deems just and proper.

DATED: February 16, 2016 QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Margret M. Caruso Margret M. Caruso Attorneys for Plaintiff The Academy of Motion Picture Arts and Sciences

DEMAND FOR JURY TRIAL

Plaintiff Academy of Motion Picture Arts and Sciences hereby demands trial by jury pursuant to Fed. R. Civ. Proc. § 38(b).

DATED: February 16, 2016

QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Margret M. Caruso
Margret M. Caruso
Attorneys for Plaintiff
The Academy of Motion Picture Arts and Sciences
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Re: COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE ADVERTISING,

Postby admin » Thu Feb 25, 2016 9:53 am

Call For Oscar Nominees to Reject the Trip Sponsored by the Israeli Government
by The Palestinian Performing Arts Network
February 16, 2016

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The Palestinian Performing Arts Network (PPAN), organizations and individuals that represent the majority of the Palestinian cultural sector, call on Oscar nominees to reject the trip sponsored by the Israeli government included in this year’s Academy gift bag.

This is yet another cynical attempt of the Israeli government to use influential cultural figures to whitewash its persistent human rights abuses and denial of freedom to Palestinians. We urge you to distance yourselves from Israel’s official state propaganda efforts while it denies not only the right to life of Palestinians but also our right to artistic expression and any semblance of a normal life through a violent, decades-long regime of occupation, colonialism and apartheid.

We condemn the Academy awards for giving a platform for the Israeli government to bribe Oscar nominees with this trip. We see this as an extension to its overt discrimination against black artists and their deep-rooted exclusion from the Academy and wider discrimination in society. We stand in solidarity with our allies in the #OscarsSoWhite campaign and identify with their demands as Palestinians also grapple daily with Israel’s dehumanization, denial of human rights and racial exclusion.

Israel wants to present itself as a normal tourist destination and a liberal democracy when in fact it rules over millions of disenfranchised Palestinians under military occupation, siege and discriminatory laws. No amount of whitewashing can make Israel’s oppression palatable to an increasingly vocal public opinion, including a growing number of celebrities willing to speak out.

As part of its attacks on Palestinians, Israel deliberately attacks Palestinian art and cultural production. For example, Israel banned in 2009 all displays of culture connected to Jerusalem as the Arab League and UNESCO designated Capital of Arab Culture. Palestinian circus performer Mohamed Abu Sakha is currently imprisoned by Israel with no charge, detained as he was on his way to work. Israel’s culture minister Miri Regev is notorious for her fanatic racism against Palestinians and calling black asylum-seekers in Israel a “cancer.” Israel’s culture ministry is leading the war against dissent in Israel, chiefly by Palestinians who seek to have their rights and equality recognized.

Israel publicly celebrates visits by international artists as a sign of support for its policies and a breach in its growing international isolation. For example, when Alicia Keys violated the boycott and performed in Tel Aviv in 2013, her visit was proudly tweeted at least eight times by Israel’s Ministry of Foreign Affairs. Any Israeli-government sponsored visit by an Oscar nominee would be portrayed as a sign of support for Israel’s oppression of Palestinians.

Palestinian artists call on Hollywood figures to act with conscience by refusing Israel's ongoing attempts to legitimize its violations of international law and war crimes against the Palestinian people.

We call upon our fellow artists and cultural organizations to condemn this partnership between the Academy Awards and the Israeli government and urge Oscar nominees to reject Israel's cynical whitewash attempts.

Please share your statement or action with us at info@ppan.ps
Tweet using #ApartheidOscars

Representative organizations in the Palestinian performing arts community who have endorsed this call:

Al-Harah Theatre, Bethlehem:www.alharah.org

The Edward Said National Conservatory of Music, Ramallah and Gaza: http://ncm.birzeit.edu/en

Al Kamandjati Association, Ramallah: http://www.alkamandjati.com

Theatre Day Productions, Gaza: http://www.theatreday.org

Yes Theatre, Hebron: http://www.yestheatre.org

The Palestinian Circus School, Ramallah: http://www.palcircus.ps

The Freedom Theatre, Jenin refugee camp: http://www.thefreedomtheatre.org

Popular Art Center, El Bireh: http://www.popularartcentre.org

El Funoun Dance Troupe, El Bireh: http://www.el-funoun.org

Ashtar Theatre, Ramallah: http://www.ashtar-theatre.org
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