16
Mar/07

The "OSCAR in Italian" Decision Is A Pretty Significant Decision


I would imagine that the amicus committee at INTA has already been notified on this one. RAI, an Italian broadcaster’s distributed (by satellite) into the U.S. award shows using the word OSCAR in the title such as the WINE OSCARS. The Academy sued RAI in Los Angeles. RAI defeated a summary judgment motion, creating an issue of fact as to whether the word OSCAR is generic for award in Italian.
From RAI’s law firm press release:
Luce Forward received a favorable ruling for its broadcaster client on a summary judgment motion filed by the Academy of Motion Picture Arts and Sciences (Academy). The claim filed by the Academy arose from the alleged broadcast on the RAI International channel of Italian speaking award programs that contained the word “oscar” in their titles.
Los Angeles Judge Audrey Collins questioned the Academy’s right to prevent a producer or broadcaster of Italian language programming in the United States from using the word oscar in a program title which is intended for Italians living abroad in the U.S., and noted that there is evidence that the word “oscar” is a common word for an award in the Italian language.
In her ruling, Judge Collins wrote, “[the broadcaster] has raised a significant issue of fact regarding the distinctiveness of Plaintiff’s OSCAR mark among viewers of RAI International. [The broadcaster’s] evidence reveals that RAI International is broadcasted in the Italian language and is aimed at Italians living abroad. [The broadcaster’s] evidence also suggests that the word “oscar” in Italian can be generic for an award.”
Judge Collins added, “If the viewers of RAI International perceive the word “oscar” as being a generic term for an award when used in the Italian language, then the Italian award programs using the word “oscar” may not even bring about a mental association with the Plaintiff’s OSCAR mark.”
“We believe Judge Collins’ decision is significant because it recognizes that words have different meanings in different languages, and that the use of a word in a foreign language that has become generic in such foreign language does not infringe a trademark in the English language where the viewers of such programming understand such word in its generic sense.,” said Luce Forward Partner Kathy A. Jorrie, who led the legal team representing the broadcaster defendant. “In other words, in our case, because ‘oscar’ means ‘award’ in the Italian language, it is not likely that an Italian viewer would confuse Italian titles such as ‘Oscar del Vino’ (which means the ‘Wine Award’ in Italian) or ‘La Kore – Oscar della Moda’ (which means the ‘La Kore Fashion Award’ in Italian) to have any connection with the Academy of Motion Pictures & Sciences simply because of the inclusion of the word ‘oscar’ in the titles of such foreign language programs.”
Hollywood Reporter coverage.

TV Guide coverage
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