Oscar “Swag Bag” Gets Booted From the Red Carpet By The Academy—Don’t Let This Happen To You!

In a recent post, we provided guidance on how an advertiser might execute a Super Bowl-related promotion even if it is not an authorized game sponsor.  First, avoid mentioning the trademarked name of the event — instead, refer more generally to the “Big Game” or other event descriptor.  Second, don’t include any content that suggests an authorized relationship with the NFL or “official” sponsorship status. We concluded our post by commenting that these rules of the road should be kept in mind for the upcoming Oscar Night. At least one company didn’t get the memo.

Last week, the Academy of Motion Picture Arts and Sciences brought suit in federal court in California against Lash Fary d/b/a Distinctive Assets, for marketing swag bags in a manner that allegedly creates a false impression of authorization or sponsorship by the Academy.  Distinctive Assets’ first mistake was to use the Academy’s registered OSCARS® trademark in the tagline for its products: “Everyone Wins Nominee Gift Bags in Honor of the Oscars®.”  Second, Distinctive Assets attempted to communicate an official relationship with the Academy Awards show by touting its “exclusive involvement with major award shows” and stating 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)”.

If that wasn’t enough, according to the Academy, Distinctive Assets had engaged in similar conduct in advance of the 2015 Academy Awards show, with the additional act of using the hashtag “#OscarGiftBag” on Facebook. Following the exchange of cease and desist correspondence, Distinctive Assets apparently agreed in writing that it would not “purposefully make an association” between its gift bags and the Academy and would no longer use the tagline “Everyone Wins At the Oscars®” or other Academy trademarks or intellectual property. When it repeated its allegedly violative conduct ahead of the 2016 award show, the Academy filed suit for trademark infringement and false advertising under federal and California state law.

While we won’t learn the winner of this case along with the other big awards on Oscar Night, the Academy is clearly busy with more than just tallying votes on film nominees. If you’re thinking of hopping on the Oscar Night bandwagon with a promotion or just a few social media posts – we have some tips to get your advertising “red carpet” ready:

• OSCAR, SUNDAY AT THE OSCARS, ACADEMY AWARDS, OSCAR NIGHT and the design of the Oscar Statuette are all registered trademarks of the Academy of Motion Picture Arts and Sciences. Avoid branding your promotion using these trademarks or using them in a manner that suggests an official connection with the event unless your company is an authorized sponsor or licensee.

• The Academy and other brand owners look at your hashtags. Whether using a hashtag containing another’s trademark constitutes infringement or unfair competition is likely a fact specific inquiry that turns on whether the hashtag and surrounding content suggests approval by or association with the brand owner.  The safest move is to stay away from third-party trademarks in your hashtags.

• If your company tweets, grams or posts on Facebook before, during or after the award show, be aware that using celebrity names and images can expose your company to right of publicity claims.