The Academy of Motion Picture Arts and Sciences (AMPAS) has sued the operator of the website oscarwatch.com for trademark infringement based on the use of "Oscar" in the website's address. AMPAS holds several federal trademark registrations for "Oscar" for various goods and services, such as "telecasts in connection with recognition of distinguished achievement in the motion picture industry" (reg. no. 1096990), "prerecorded videotapes featuring entertainment relating to motion pictures and award ceremonies" (reg. no. 2021582), and "sweatshirts, jackets, t-shirts and caps" (reg. no. 1996585).
The complaint alleges that oscarwatch.com's use of "Oscar" constitutes trademark infringement, dilution, false designation of origin, and a violation of the anticybersquatting consumer protection act. A copy of the complaint is not yet available on the court's website, but Moviecitynews.com has made a portion of it available online (page 1, 2, 3, 4). Oscarwatch.com has countered that its use of "Oscar" constitutes fair use under trademark law, stating that the website offers commentary that directly addresses the Oscars awards, a topic of great interest to the general public, and therefore the Oscarwatch to describe commentary about the Oscars constitutes fair use.
This fair use argument appears to be the "nominative fair use" argument the Ninth Circuit Court of Appeals (the court whose law applies to this case, as it was filed in California federal court) found compelling in New Kids on the Block v. News America Publishing, Inc. There, the court found that a newspaper's use of the name "New Kids on the Block" to describe the musical group was fair use, because the New Kids trademark was being used to refer to the New Kids on the Block themselves, rather than for a competing group or products. The court held that:
where the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
It is uncertain whether such a defense will be successful under these facts, but this case illustrates an issue commonly faced by trademark owners when members of the public use a mark. On one hand, a mark owner must police use of the mark in order to maintain rights in the mark, but on the other hand, enforcement cannot be so zealous as to wrongfully pursue fair uses of the mark. Striking the appropriate balance is the key, but is often difficult even for experienced trademark practitioners.
