IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91175317
`
`) ) ) ) ) ) ) ) ) 3
`
`) ) ) ) ) ) 3
`
`) ) )
`
`In the Matter of Trademark
`
`Application Serial No.: 78/725,675
`
`Filing Date: October 3, 2005
`
`Mark: ROCKSTAR
`
`Publication Date: September 26, 2006
`
`Int’! Class: 30
`
`TAKE-TWO INTERACTIVE
`SOFTWARE,
`INC.,
`
`Opposer,
`
`v.
`
`RUSSELL G. WEINER,
`
`Applicant.
`_
`
`APPENDIX OF CASES TO OPPOSER’S REPLY IN SUPPORT
`OF MOTION TO COMPEL
`
`2689328.l
`
`

`
`Opposer Take-Two Interactive Software, Inc. hereby submits true and correct copies of
`
`the following caselaw in connection with its Opposition to Applicant’s Motion to Compel:
`
`1.
`
`Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc.,
`
`944 F.2d 1446 (9th Cir. 1991).
`
`2.
`
`Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149 (9th Cir.
`
`1963)
`
`In addition, for the Board’s convenience, attached are true and correct copies of the
`
`following decision available on Westlaw:
`
`3.
`
`CG Roxane LLC V. Fiji Water Co. LLC, 2008 WL 2276403 (N.D. Cal. 2008).
`
`Date: May 11,2010
`
`Respectfully submitted,
`
`'
`
`ll
`
`WM
`
`Alex L. Lewis
`
`Karin G. Pagnanelli
`Eric G. Gennan
`
`MITCHELL SILBERBERG & KNUPP LLP
`
`11377 West Olympic Boulevard
`Los Angeles, California 90064
`(310) 312-2000
`Attorneys for Opposer Take-Two Interactive
`Software, Inc.
`
`2689328.l
`
`

`
`N21N21
`
`

`
`Wéstléw.
`
`Page 1
`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`P
`
`United States Court of Appeals,
`Ninth Circuit.
`ACADEMY OF MOTION PICTURE ARTS AND
`
`SCIENCES, Plaintiff-Appellant,
`v.
`
`CREATIVE HOUSE PROMOTIONS, INC., De-
`fendant-Appellee.
`ACADEMY OF MOTION PICTURE ARTS AND
`SCIENCES, Plaintiff-Appellee,
`v.
`
`CREATIVE HOUSE PROMOTIONS, INC., De-
`fendant-Appellant.
`Nos. 90-55006, 90-55144.
`
`Argued and Submitted March 4, 1991.
`Decided July 31, 1991.
`As Amended Oct. 2, 1991.
`
`Motion picture academy appealed from judgment of
`the United States District Court for the Central Dis-
`
`J., 72_8
`trict of California, Laughlin E. Waters,
`F.Supp.
`l442, which dismissed its claim for copy-
`righted trademark infringement of its “Oscar” award.
`The Court of Appeals, Pregerson, Circuit Judge, held
`that: (1) there had been no general distribution of the
`award so as to cause loss of common-law copyright
`prior to registration; (2) there was showing of likeli-
`hood of confusion acquired for Lanham Act and Cali-
`fornia unfair competition claims; and (3) academy
`could maintain claim under California antidilution
`statute.
`
`Affirmed in part and reversed and remanded in part.
`
`West Headnotes
`
`13 Federal Courts 1703 €>=>776
`
`170B Federal Courts
`
`170BVIII Courts of Appeals
`170BVIII! K) Scope, Standards, and Extent
`l70BVlll1K)l In General
`l70Bk776 k. Trial De Novo. Most
`
`Cited Cases
`
`Federal Courts 1703 03830
`
`_l_l(fi Federal Courts
`170BVIII Courts of Appeals
`l70BVIII§ K1 Scope, Standards, and Extent
`l70BV[ll(K)4 Discretion of Lower Court
`l70Bk830 k. Costs, Attorney Fees and
`Other Allowances. Most Cited Cases
`
`Federal Courts 1703 C-W860
`
`l_Z9_l§ Federal Courts
`170BVIII Courts of Appeals
`l70BVlIl( K) Scope, Standards, and Extent
`l70BVlII(K)5 Questions of Fact, Verdicts
`and Findings
`
`l70Bk855 Particular Actions and Pro-
`
`ceedings, Verdicts and Findings
`l70Bk860 k. Copyrights, Patents and
`Trade Regulation. Most Cited Cases
`Question of whether a divesting general publication
`of copyrighted work had occurred was a question of
`law to be reviewed de novo; finding regarding likeli-
`hood of confusion under the Lanham Act was re-
`
`viewed under the clearly erroneous standard; review
`of pendant law claims was de novo for questions of
`law and clearly erroneous as to conclusions regarding
`likelihood of confusion, and denial of attorney fees
`was reviewed for abuse of discretion. Lanham Trade-
`
`Mark Act, § 43(a), 15 U.S.C.A. § ll25(a).
`
`[11 Copyrights
`%105
`
`and Intellectual Property 99
`
`22 Copyrights and Intellectual Property
`2% Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`“Publication” is deemed to occur when, by consent of
`the copyright owner, original or tangible copies of the
`work are sold, leased, loaned, given away, or other-
`wise made available to the general public or when an
`authorized offer is made to dispose of the work in
`such a manner, even if sale or other disposition does
`not in fact occur.
`
`1§_[ Copyrights
`%105
`
`and Intellectual Property 99
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`
`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 2
`
`9_9 Copyrights and Intellectual Property
`E Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`Act of publication which injects work into the public
`domain before January 1, 1978, strips the work of its
`protections under common law and the 1976 Copy-
`right Act. 17 U.S.C.A. §§ 101-§l_0.
`
`L41 Copyrights and Intellectual Property 99
`0383(1)
`
`9_9 Copyrights and Intellectual Property
`Q1 Copyrights
`9911.1) Infringement
`9911} )2 Remedies
`99k72 Actions for Infringement
`99k83 Evidence
`
`99k83( 1) k. Presumptions and
`Burden of Proof. Most Cited Cases
`
`Copyright which had been registered in 1941 was
`entitled to a presumption of validity with respect to
`claim that there had been a general publication of it
`prior to 1941. 17 U.S.C.(1976 Ed.) §§ 11, 209.
`
`]_5_1 Copyrights
`09104
`
`and Intellectual Property 99
`
`22 Copyrights and Intellectual Property
`E Intellectual Property
`99kl04 k. Right to Control Disposition or
`Use. Most Cited Cases
`
`Under common law, creator of artistic work has right
`to copy and profit from the work, and can distribute
`or show it to limited class of persons for limited pur-
`pose without losing common-law copyright.
`
`lg Copyrights
`C3105
`
`and Intellectual Property 99
`
`9_9 Copyrights and Intellectual Property
`23 Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`If creator exceeds scope of limited publication and
`allows work to pass into public domain, general pub-
`lication of work occurs and, at that point, unless the
`creator has obtained a statutory copyright, anyone
`can copy, distribute, or sell the work.
`
`111 Copyrights and Intellectual Property 99 $91
`
`9_9 Copyrights and Intellectual Property
`9_9_l Copyrights
`9911A} Nature and Subject Matter
`99kl k. Nature of Statutory Copyright.
`Most Cited Cases
`
`Copyrights and Intellectual Property 99 C310]
`
`9_9 Copyrights and Intellectual Property
`2211 Intellectual Property
`99kl0l k. Nature of Property; Common Law
`’
`Copyright in General. Most Cited Cases
`Once creator obtains statutory copyright, common-
`law copyright is extinguished.
`
`Q1 Copyrights
`éfivros
`
`and Intellectual Property 99
`
`92 Copyrights and Intellectual Property
`El Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`Motion picture academy's “Oscar” award did not
`become part of public domain merely by being pub-
`licly displayed and presented at award ceremonies.
`
`L21 Copyrights
`%105
`
`and Intellectual Property 99
`
`9_9 Copyrights and Intellectual Property
`2911 Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`Under common law, mere performance or exhibition
`of artistic work does not amount to a publication.
`
`Ll_Q[ Copyrights and Intellectual Property 99
`$9105
`
`9_9 Copyrights and Intellectual Property
`9&1 Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`Publishing of pictures of “Oscar” award from motion
`picture academy in books, newspapers, and maga-
`zines did not thrust the award into the public domain.
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`944 F.2d 1446,60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 3
`
`T‘
`
`[£1 Copyrights and Intellectual Property 99
`09105
`
`22 Copyrights and Intellectual Property
`_9__9fl Intellectual Property
`99k105 k. Dedication to Public. Most Cited
`
`Cases
`
`Publishing two-dimensional pictures does not consti-
`tute divesting publication of three-dimensional ob-
`jects.
`
`[£1 Copyrights and Intellectual Property 99
`69105
`
`9_9 Copyrights and Intellectual Property
`E Intellectual Property
`99kl05 k. Dedication to Public. Most Cited
`
`Cases
`
`General publication occurs when a work is made
`available to members of the public, regardless of who
`they are or what they will do with it; publication is
`limited and does not trigger loss of common-law
`copyright when tangible copies of the work are dis-
`tributed to a definitely selected group and for a lim-
`ited purpose without the right of further reproduction,
`distribution, or sale.
`
`Ll_3_1 Copyrights and Intellectual Property 99
`@105
`
`22 Copyrights and Intellectual Property
`2911 Intellectual Property
`99k105 k. Dedication to Public. Most Cited
`
`Cases
`
`To show that there had been only limited publication
`of the “Oscar” by motion picture academy, thus re-
`taining common-law copyright, academy was re-
`quired to show that the purpose of distributing the
`“Oscar” was limited and that the “Oscar” recipients
`had normally had no right of sale or further distribu-
`tion.
`
`Q1 Copyrights and Intellectual Property 99
`0-=>105
`
`22 Copyrights and Intellectual Property
`_9_9_Il Intellectual Property
`99k105 k. Dedication to Public. Most Cited
`
`Cases
`
`that winners of motion picture academy's
`Fact
`“Oscar” were permitted to advertise the fact that they
`won their award or display pictures of it did not
`amount to a distribution so as to cause the academy
`to lose its common-law copyright in the statute.
`
`]l_5[ Copyrights and Intellectual Property 99
`@105
`
`29 Copyrights and Intellectual Property
`9_9u Intellectual Property
`99k105 k. Dedication to Public. Most Cited
`
`Cases
`
`incidentally
`film industry might benefit
`that
`Fact
`from promotion of the “Oscar” did not transform the
`limited distribution of that award into a general pub-
`lication so as to divest the motion picture academy of
`its common-law copyright in the award.
`
`Llfl Copyrights and Intellectual Property 99
`@105
`
`_9 Copyrights and Intellectual Property
`E Intellectual Property
`99k105 k. Dedication to Public. Most Cited
`
`Cases
`
`Indirect commercial benefits do not necessarily trans-
`form limited distribution award into a general publi-
`cation, resulting in loss of common-law copyright, if
`no direct sales of the work are involved.
`
`lul Copyrights and Intellectual Property 99
`%105
`
`29 Copyrights and Intellectual Property
`2% Intellectual Property
`99k105 k. Dedication to Public. Most Cited
`
`Cases
`
`Although there were no express restrictions on re-
`cipients' use or distribution of “Oscar” awards from
`motion picture academy prior to the time that the
`award was copyrighted, restrictions on further distri-
`bution were implied, so that there was no general
`distribution resulting in loss of common-law copy-
`right; neither the motion picture academy or any liv-
`ing Oscar recipient had ever offered to transfer an
`“Oscar” to the general public, each trophy was per-
`sonalized with the name of the individual winner, and
`
`academy had never given permission to sell or dis-
`tribute “Oscars.”
`
`1
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 4
`
`]_1_§[ Trademarks 382T €>=>1o63
`
`;8_2_'[Trademarks
`382Tll Marks Protected
`
`382Tkl061 Form, Features, or Design of
`Product as Marks; Trade Dress
`382Tkl063 k. Distinctiveness; Secondary
`Meaning. Most Cited Cases
`(Formerly 382k43 Trade Regulation)
`
`Trademarks 382T @1064
`
`3_§2_T Trademarks
`382TlI Marks Protected
`
`382Tkl06l Form, Features, or Design of
`Product as Marks; Trade Dress
`382Tkl064 k. Functionality. Most Cited
`
`Cases
`
`(Formerly 382k43 Trade Regulation)
`To be protected under the Lanham Act, particular
`design must be both nonfimctional and have a secon-
`dary meaning. Lanham Trade-Mark Act, § 43(a), _l§
`U.S.C.A. § l125§a[.
`
`my Trademarks 382T €:’1065(2)
`
`3_8_2_I Trademarks
`382Tll Marks Protected
`382Tkl 061 Form, Features, or Design of
`Product as Marks; Trade Dress
`382Tkl065 Particular Cases or Products
`
`382Tkl065(2) k. Distinctiveness; Sec-
`ondary Meaning. Most Cited Cases
`(Formerly 382k43 Trade Regulation)
`
`Trademarks 382T C-310650)
`
`3__;l:Trademarks
`382Tll Marks Protected
`382Tk106l Form, Features, or Design of
`Product as Marks; Trade Dress
`382Tkl065 Particular Cases or Products
`
`382Tkl065(3) k. Functionality. flat
`
`Cited Cases
`
`(Formerly 382k43 Trade Regulation)
`Motion picture academy's “Oscar” award, with a
`sleek, muscular build and distinctive design, was
`nonfiinctional, since achievement award need not
`have those particular characteristics, and the award
`
`it was
`had acquired a secondary meaning, so that
`entitled to protection under the Lanham Act. Lanham
`Trade-Mark Act, § 43(a), 15 U.S.C.A. § ll251a).
`
`]2_0[ Trademarks 382T €W1092
`
`3&1 Trademarks
`382Tlll Similarity Between Marks; Likelihood of
`Confusion
`382Tk1090 Nature of Marks
`
`382Tkl092 k. Strength or Fame of Marks;
`Degree of Distinctiveness. Most Cited Cases
`(Formerly 382k339 Trade Regulation)
`It was error to link the subissue of strength of the
`trademark with the overriding issue of likelihood of
`confusion in determining whether
`there was
`a
`Lanham Act violation. Lanham Trade-Mark Act, §
`43(a), l5 U.S.C.A. § 1125121).
`
`1g_1_1 Trademarks 382T €>w1o33
`
`fl;ITrademarks
`382TII Marks Protected
`
`382Tkl033 k. Levels or Categories of Dis-
`tinctiveness in General; Strength of Marks in Gen-
`eral. Most Cited Cases
`
`(Formerly 382k356 Trade Regulation)
`“Oscar” trademark for motion picture award was en-
`titled to the strongest possible protection against in-
`fringement. Lanham Trade-Mark Act, § 43(a),
`l_5
`U.S.C.A. § ll25ga).
`
`ml Trademarks 382T C-?1629(2)
`
`;§_2_I Trademarks
`382TIX Actions and Proceedings
`382TlX§ C) Evidence
`382Tkl620 Weight and Sufficiency
`382Tkl 629 Similarity; Likelihood of
`
`Confusion
`
`382Tkl 629(2) k. Actual Confusion.
`Most Cited Cases
`
`(Formerly 382k596 Trade Regulation)
`Evidence of actual confusion is persuasive proof that
`future confusion is likely. Lanham Trade-Mark Act, §
`43(a), 15 U.S.C.A. § 1l25(a).
`
`L23 Trademarks 382T Cmioss
`
`3 82T Trademarks
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 5
`
`382Tlll Similarity Between Marks; Likelihood of
`Confusion
`382Tkl083 Nature of Confusion
`382Tk1086 k. Actual Confusion. M_o_s_t
`Cited Cases
`
`(Formerly 382k335 Trade Regulation)
`Actual confusion is not necessary to a finding of like-
`lihood of confusion under the Lanham Act;
`likeli-
`hood of confusion will be found whenever consumers
`
`are likely to assume that a market is associated with
`another source or sponsor because of similarities be-
`tween the two marks. Lanham Trade-Mark Act, §
`43(a), l5 U.S.C.A. § 1125ga).
`
`12_4i Trademarks 382T €»“«?1629(4)
`
`3&1: Trademarks
`382TIX Actions and Proceedings
`382TlX§ C 1 Evidence
`382Tkl620 Weight and Sufficiency
`382Tkl629 Similarity; Likelihood of
`
`Confusion
`
`382Tkl629(4) k. Consumer Data and
`Market Research; Tests and Surveys. Most Cited
`Cases
`
`(Formerly 382k596 Trade Regulation)
`Evidence that 70% of the population targeted for dis-
`tribution of award which allegedly infringed trade-
`mark of award of the motion picture academy associ-
`ated the allegedly offending award with the motion
`picture “Oscar” was sufficient to show likelihood of
`confusion for purposes of Lanham Act claim and
`California unfair competition claim. Lanham Trade-
`Mark Act, § 43(a),
`l5 U.S.C.A. §
`ll25§a); West's
`Ann.Cal.Bus. & Prof.Code §§ 14330, 17200 et seg.
`
`12_51 Trademarks 382T @1609
`
`3_§2_T Trademarks
`382TIX Actions and Proceedings
`382TIXl C) Evidence
`382Tkl601 Presumptions and Burden of
`
`Proof
`
`382Tkl609 k. Similarity; Likelihood of
`Confusion. Most Cited Cases
`
`(Formerly 382k57l.l, 382k571 Trade Regulation)
`When one party knowingly adopts mark similar to
`another's, reviewing courts presume that party will
`accomplish its purpose and that the public will be
`deceived and, where evidence shows that one com-
`pany deliberately adopted another's name to obtain
`
`advantage from the other's good will, court may infer
`likelihood of confusion. Lanham Trade-Mark Act, §
`43(a), 15 U.S.C.A. § ll25(a).
`
`]2_6[ Trademarks 382T €W1461
`
`3 82T Trademarks
`
`382TVlll Violations of Rights
`382TVIIl( B) Dilution
`382Tk146l k. Nature and Extent of Harm;
`
`Similarity, Competition, and Confusion. Most Cited
`Cases
`
`(Formerly 382k409, 382k407 Trade Regulation)
`To prevail on claim of unlawful dilution under Cali-
`fornia law, plaintiff need not show actual injury or
`likelihood of confusion and need only show that its
`business reputation was likely to be injured or that
`the distinctive value of its mark was likely to be di-
`luted. West's Ann.Cal.Bus. & Prof.Code § 14330.
`
`1111 Trademarks 382T 691461
`
`E Trademarks
`382TVIll Violations of Rights
`382TVIII§B) Dilution
`382Tk146l k. Nature and Extent of Harm;
`
`Similarity, Competition, and Confusion. Most Cited
`Cases
`
`(Formerly 382k473 Trade Regulation)
`Fact that motion picture academy was not able to
`show money damages as a result of use by another of
`award similar to the academy's “Oscar” did not pre-
`clude finding of dilution, as the marketing of an
`award which resembles an internationally acclaimed
`award dilutes the latter's distinctive value. West's
`Ann.Cal.Bus. & Prof.Code § 14330.
`
`gal Trademarks 382T @1459
`
`3_§2_T Trademarks
`382TVlIl Violations of Rights
`382TVlll1B) Dilution
`382Tkl458 Nature and Elements in Gen-
`
`eral
`
`Cases
`
`382Tkl459 k. In General. Most Cited
`
`(Formerly 382k46l Trade Regulation)
`Antidilution doctrine is designed to protect against
`gradual whittling away of a trademark's value. West's
`Ann.Cal.Bus. & Prof.CoQ_§ 14330.
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 6
`
`L2_9_1 Federal Civil Procedure 170A $928374
`
`1 Federal Civil Procedure
`170AXX Sanctions
`
`l70AXX( F) On Appeal
`l70Ak2837 Grounds
`170Ak2837.1 k. In General. Most Cited
`
`Cases
`
`(Formerly l70Ak2837)
`Failure to cite two cases counter to party's petition
`did not warrant award of double costs, including at-
`torney fees, where other circuits had adopted the rule
`which the party was urging and where it had been
`acknowledged that, in the future, en banc court might
`
`want
`to consider the issue. F.R.A.P.Ru1e 38
`28
`U.S.C.A.
`
`*1448 Louis P. Petrich Leopold, Petrich & Smith,
`Los Angeles, Cal., for plaintiff-appellant, cross ap-
`pellee.
`
`
`*1449 Eric Olson Halstead, Baker & Olson, Los An-H
`geles, Cal., for defendant—appellee, cross appellant.
`
`Appeal from the United States District Court for the
`Central District of California.
`
`Before PREGERSON, HALL and BRUNETTI, Cir-
`cuit Judges.
`
`PREGERSON, Circuit Judge:
`
`Appellant-cross—appellee Academy of Motion Picture
`Arts and Sciences (“the Academy”) brought an action
`in the district court for copyright and trademark in-
`fringement and related state law claims against appel-
`lee-cross-appellant Creative House Promotions, Inc.
`(“Creative House”) for marketing the “Star Award,”
`a gold figure closely resembling the Academy's fa-
`mous “Oscar” statuette. The district court concluded
`after a bench trial that the Oscar was not entitled to
`
`copyright protection because it had previously en-
`tered the public domain. The court also ruled against
`the Academy on its trademark infringement and re-
`lated claims. The court found that (1) the Academy
`failed to show that recipients or viewers of the Star
`Award were likely to confuse it with the Oscar, and
`(2) the Academy failed to establish that
`the Star
`Award had diluted the Oscar's quality.
`
`The Academy appeals the district court's rulings in
`favor of Creative House. We have jurisdiction under
`28 U.S.C. § 1291, and we reverse. On cross-appeal,
`Creative House appeals the district court's denial of
`attorneys’ fees, and the Academy seeks double costs
`for Creative House's failure to cite controlling author-
`ity. We affirm the denial of fees, and reject the Acad-
`emy's request for double costs.
`
`BACKGROUND
`
`The Academy was established by film industry lead-
`ers in 1927 to promote cultural, educational, and
`technological progress in general, and to advance
`motion picture arts and sciences in particular.
`In
`1929, the Academy began its annual awards cere-
`mony, in which it recognizes industry artists for out-
`standing achievement
`in their fields and bestows
`upon them the coveted “Oscar” statuette. The awards
`ceremony has been televised annually since 1953,
`and is seen across the United States and throughout
`the world. Pictures of the Oscar have been featured in
`the media since 1929.
`
`the Academy claimed
`From 1929 through 1941,
`common law copyright protection for the Oscar as an
`unpublished work of art. Each of the 158 Oscars
`awarded during that time bore its winner's name, but
`did not display any statutory copyright notice.
`In
`1941,
`the Academy registered the Oscar with the
`United States Copyright Office as an unpublished
`work of art not reproduced for sale. All Oscars
`awarded since that time contained statutory copyright
`notices.
`In 1968,
`the statutory copyright was re-
`newed.
`
`After securing the original copyright registration in
`1941, the Academy restricted the manner in which
`winners could advertise their Oscars. Specifically,
`any advertisements featuring the Oscar had to iden-
`tify the year and category in which the recipient won
`the award. The Academy also required recipients to
`give the Academy rights of first refusal on any in-
`tended sale of their Oscar. Before this time,
`the
`
`Academy had not placed any express restrictions on
`the use or disposal of the award.
`
`In 1950, the estate of post—mortem Oscar recipient
`Sid Grauman offered Grauman's Oscar for sale at a
`
`public auction. No Oscar had previously been offered
`for sale. An Academy representative ultimately pur-
`
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`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 7
`
`chased the award.
`
`In 1976, Creative House, a manufacturer and dis-
`tributor of advertising specialty items, commissioned
`a trophy sculptor to design a striking figure holding a
`star in its hand. The finished product was a naked,
`muscular male figure closely resembling the Oscar,
`known as the “Star Award.” Both the Star Award and
`
`the Oscar are solid metal with a shiny gold finish and
`stand on a circular gold cap mounted on a round base.
`The district court found only two significant differ-
`ences between the *1450 two: the Star Award is two
`
`inches shorter than the Oscar, and holds a star rather
`than a sword.
`
`Although Creative House initially produced the Star
`Award to honor its advertising agency client's “star”
`salespeople, it later sold the award to other corporate
`buyers. In the Chicago area, Creative House mar-
`keted the award directly to various corporate buyers
`through the Star Award incentive program. Under the
`program, corporate sales personnel who reached the
`highest level of achievement would receive the Star
`Award. In other areas of the country, the award was
`advertised in catalogs and single-page “cut sheets”
`and marketed through distributors. Most customers
`were corporate buyers who purchased the awards for
`employees as gifts.
`
`In 1983, the Academy demanded that Creative House
`discontinue or significantly change the Star Award.
`Creative House refused. After negotiations between
`the parties broke down, the Academy filed suit for
`copyright
`infringement, false designation of origin
`under the Lanham Act, and unfair competition and
`trademark dilution under California law.
`
`After a bench trial, the district court ruled, in a pub-
`lished opinion that
`the Oscar was not entitled to
`copyright protection because a divesting, general
`publication of the Oscar occurred before the 1976
`Copyright Act's effective date of January 1, 1978,
`which triggered a loss of the pre-1941, common law
`copyright. Academy of Motion Picture Arts and Sci-
`
`ences
`v. Creative House Promotions
`Inc.
`728
`F.Supp. 1442, 1446-48 (C.D.Cal.l989).EM In con-
`cluding that the Oscar had “entered the public do-
`main” through a general publication,
`the court re-
`jected the Academy's argument that publication of the
`Oscar had been limited to a select group of persons
`for a limited purpose.
`
`ELl_l_. Because of differing protections be-
`tween common law and statutory copyright
`under the 1909 Copyright Act, the concept
`of “publication” has become a legal word of
`art. 1 M. Nimmer & D. Nimmer, Nimmer on
`Copyright § 4.01 (1990). A publication is
`deemed to occur “when by consent of the
`copyright owner,
`the original or tangible
`copies of a work are sold,
`leased,
`loaned,
`given away, or otherwise made available to
`the general public, or when an authorized of-
`fer is made to dispose of the work in any
`such manner even if a sale or other such dis-
`
`position does not in fact occur.” American
`Vitagragh v. Levy, 659 F.2d 1023, 1027 (9th
`Cir.l98l 1, quoting 1 Nimmer § 4.04 at 4-18
`to 4-19. Under the Copyright Act of 1976,
`an act of publication which injects a work
`into the public domain before January 1,
`1978 strips the work of its protection under
`both the common law and the 1976 Act.
`1
`
`Nimmer § 4.01 [B] at 4-5 to 4-6.
`
`On the trademark and related claims, the district court
`held that no violation of the Lanham Act, nor any
`unfair competition under California law, had oc-
`curred because the Academy had failed to show a
`significant
`likelihood of confusion among Star
`Award purchasers, Academy, 728 F.Supp. at 1451.
`The court also rejected the Academy's dilution claim
`afler finding no proof that the Star Award had diluted
`the Oscar's quality or invaded its good will. Icl._at
`_l_4_5_2_. Finally,
`the district court rejected Creative
`House's request for attorneys’ fees because the com-
`pany had failed to show any malicious or oppressive
`conduct by the Academy. Id.
`
`STANDARDS OF REVIEW
`
`|ll|2||3[ On the copyright issue, the question before
`us is whether the undisputed facts surrounding distri-
`bution of the Oscar support the district court's con-
`clusion that a divesting, general publication of the
`Oscar occurred before 1941. That question is one of
`law, which we review de novo. See Harger House,
`
`Inc. v. Thomas Nelson Inc., 889 F.2d 197, 201 19th
`Cir. 1 989 1.
`
`issue, we review the district
`On the Lanham Act
`court's finding regarding likelihood of confusion un-
`
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`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 8
`
`der the clearly erroneous standard. Ecligse Associates
`Ltd. v. Data General CorQ., 894 F.2d 1114, 1116-17
`
`[9th Cir.l990 1; Levi Strauss & Co. v. Blue Bell Inc.
`778 F.2d 1352, 1355 19th Cir.l985) (en banc).
`
`The standard of review for the pendant state law
`claims is de novo for questions of state law, and
`clearly erroneous as to conclusions regarding the
`likelihood of confusion.*1451 Century 21 Real Es-
`tate Corg. v. Sandlin, 846 F.2d 1175, 1180 (9th
`Cir.1988[.
`
`Finally, we review the district court's denial of attor-
`neys' fees for abuse of discretion. Transgo,
`Inc. v.
`AJAC Transmission Parts Corp., 768 F.2d l001_,
`
`1014 (9th Cir.l985), cert. denied, 474 U.S. 1059 106
`S.Ct. 802, 88 L.Ed.2d 778119861.
`
`DISCUSSION
`
`1. Copyright Validity
`
`Under the Copyright Act of 1976 (“the 1976 Act”),
`17 U.S.C. §§ 101-8_l_Q, a copyrighted work is entitled
`to protection if it has not become part of the public
`domain prior to the Act's effective date of January 1,
`1978. The district court ruled that the Oscar was not
`
`entitled to protection under the 1976 Act because it
`had entered the public domain through a general pub-
`lication before it was protected by statutory copyright
`in 1941. The Academy attacks that ruling by arguing
`that the district court (1) failed to recognize and apply
`a presumption that the Oscar was a protected, unpub-
`lished work in light of its 1941 copyright registration
`certificate; and (2) erred in finding that a general pub-
`lication of the Oscar occurred before January 1, 1978.
`
`A. Statutory Presumption
`
`The Academy maintains that the Oscar's 1941 copy-
`right registration as a work “not reproduced for sale”
`under § 11 of the 1909 Copyright Act raised a statu-
`tory presumption of copyright validity that the district
`court ignored. Essentially, the Academy argues that if
`the Oscar had been “published” (i.e., made available
`to the general public in a manner that resulted in a
`“general publication”-see Section IB, infra ) before
`1941,
`it would not have been eligible for copyright
`under § 11; conversely, the fact the copyright was
`granted establishes that the Oscar had not been pub-
`
`lished before that date.
`
`[4] We agree that the district court erred in failing to
`afford the Academy's 1941 copyright a presumption
`of validity. Section 209 of the 1909 Act provides that
`a certificate of registration shall be prima facie evi-
`dence “of the facts stated therein.” Although the
`“facts” stated in a certificate of registration are lim-
`ited to the date, name and description of the work,
`and name of the registration holder, a majority of
`courts have held that § 209 creates a rebuttable pre-
`sumption that the certificate holder has met all the
`requirements for copyright validity. See Ggste v.
`Kaiserman, 863 F.2d 1061, 1064-65 12d Cir,l9881;
`see also H.R. No. 94-1476, 94th Cong., 2d Sess. at
`157 (1976), reprinted in 1976 U.S.Code Cong. &
`Admin.News, 5659, 5773 (“The principle that a cer-
`tificate represents prima facie evidence of copyright
`validity has been established in a long line of court
`decisions, and it is a sound one.”). In this case, the
`certificate of registration creates a rebuttable pre-
`sumption that the Oscar was an unpublished work in
`1941. As a result, Creative House bore the burden of
`showing that the Oscar entered the public domain
`before 1941.
`
`B. General v. Limited Publication
`
`l5H6||7l Under the common law, the creator of an
`artistic work has the right to copy and profit from the
`work, and can distribute or show it to a limited class
`of persons for a limited purpose without losing that
`common law copyright. Burke v. National Broadcast-
`in Co.
`Inc. 598 F.2d 688 691
`1st Cir. , cert. de-
`nied, 444 U.S. 869, 100 S.Ct. 144, 62 L.Ed.2d 93
`H979 1. This sort of limited distribution is known as a
`“limited publication.” If the creator exceeds the scope
`of a limited publication and allows the work to pass
`into the public domain, a “general publication” of the
`work occurs. At that point, unless the creator has
`obtained a statutory copyright,F~N3 *1452 anyone can
`copy, distribute or sell the work. Id. Although an ar-
`tistic work may be exposed to the public by exhibi-
`tion, by limited publication, or by general publica-
`tion, only general publication triggers the loss of the
`creator's common law copyright. Id. The distinction
`between general and limited publication reflects an
`attempt by courts to mitigate the harsh forfeiture ef-
`fects of a divesting general publication. American
`Vita ra h Inc. v. Lev
`659 F.2d 1023
`10 7 9th
`
`Cir.l98l 1. As a result, “it takes more in the way of
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`944 F.2d 1446, 60 USLW 2174, 1991 Copr.L.Dec. P 26,767, 19 U.S.P.Q.2d 1491
`(Cite as: 944 F.2d 1446)
`
`Page 9
`
`copyright-when tangible copies of the work are dis-
`tributed both (1) to a “definitely selected group,” and
`(2) for a limited purpose, without the right of further
`
`reproduction, distribution or sale. White v. Kimmell
`193 F.2d 744, 746-47 (9th Cir), cert. denied,
`3_4_.”;
`U.S. 957, 72 S.Ct. 1052, 96 L.Ed. 1357 M952). We
`consider each element of White's two-part “limited
`publication” test separately.
`
`1. Selected group
`
`As the district court concluded, “There is no question
`that the Academy has awarded the Oscar only to a
`select group of persons.” The Academy distributes
`the coveted Oscar to performers and members of the
`motion picture industry selected for outstanding
`achievement. At the 63rd Annual Academy Awards
`held this year, for example, the film “Dances With
`Wolves” was chosen among hundreds as the best film
`of 1990;
`its director, Kevin Costner, was selected
`from a field of five distinguished directors as “Best
`Director” of the year.
`
`The majority of performers in the industry will never
`receive an Oscar. More importantly,
`the Academy
`has never sold or distributed the award to the general
`public.
`
`2. Limited purpose
`
`the “limited purpose” prong of the
`[Q] To meet
`White test, the Academy must show both (a) that the
`purpose of distributing the Oscar was limited; and (b)
`that Oscar recipients had no right of sale or further
`distribution-i.e.,
`that their right of distribution was
`
`expressly or impliedly limited. See