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There’s a looming jury trial with big trademark stakes in Hollywood’s backyard.
In late May, the Academy of Motion Picture Arts and Sciences is tentatively scheduled to battle with domain registration giant GoDaddy.com for allegedly trafficking in unauthorized trademarks. The Film Academy (AMPAS) takes issue with GoDaddy’s “CashParking” program wherein its customers are allowed to buy a domain like Oscarbets.com or Oscarsornot.com, “park” that page and collect a portion of revenue from GoDaddy’s advertising partners on a pay-per-click basis.
In advance of the trial, the parties are each looking to score a summary judgment victory.
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In the process, GoDaddy has raised a provocative argument — that the Film Academy hasn’t done its job in showing that “Oscar” or “Oscars” has enjoyed a level of fame so great that the trademarks can be diluted by others.
The Film Academy says it is “irrelevant.”
In papers submitted to the court on Monday (read here), GoDaddy says “AMPAS seeks a finding that each of its marks are famous as a matter of law. AMPAS has not met its burden.”
GoDaddy objects to the fact that the Film Academy hasn’t submitted consumer surveys to show that its marks are recognized by the public, but instead is relying on evidence such as the opinions of GoDaddy employees and a declaration by the plaintiff’s lawyer that the organization that puts on the Academy Awards each year made a “substantial investment in advertising which averaged $2 million a year from 2007 to 2010, and totaled over $4 million in 2011.”
So GoDaddy is seeking to fill that void with its own consumer surveys.
The registrar giant commissioned Carol Scott, a marketing professor at UCLA, to assess consumer perceptions of 75 domain names alleged to be infringing the Film Academy’s marks. The survey was done in January, and 19,047 consumers were shown various domain names and asked, “What product(s), service(s), organization(s), activity(ies), or any associations, if any, come to mind?”
According to the results, of the 75 domain names, one domain name — oscarsornot.com — was highly associated with entertainment. Almost 49% of respondents said that domain was entertainment-related. But other domain names — ranging from dermoscars.com and oscarkids.com to traveloscar.com and oscarshotel.com — experienced much lesser association.
“For only one of the domain names did net associations with the Academy’s marks exceed 15%,” writes Scott in her conclusions. “I conclude that 74 of the 75 domain names that I tested are not confusingly similar to the Academy’s marks since no associations related to them come to mind for most consumers.”
GoDaddy doesn’t stop there.
It also commissioned an expert report from Geoffrey Nunberg, a linguistics professor at the University of California at Berkeley. He was tasked with addressing the alleged similarities from a lexicographical standpoint, which means he gets to throw around fun academic buzzwords like “information comparability” and analyze the essence of a sentence like “TO [football player Terrell Owens] deserves an Academy Award for being a crybaby.”
Nunberg says in his report that words can have generic meaning. “While these uses of Oscar and Academy Award are both historically derived from the Academy Awards of the AMPAS, they have distinct references which are wholly independent of the AMPAS awards and ceremonies,” he writes. “Analogously, when we speak of a product launch as D-Day or a product’s failure as a company’s Waterloo, we use terms in senses that are derived from the names of famous battles, but we are not referring to those battles.”
Here’s Scott’s full report (Exhibit D) and here’s Nunberg’s full report (Exhibit M). One might wonder whether the two reports are logically consistent. Scott is dubious about the fame of the Oscars while Nunberg essentially says that the Oscars are so famous, the word can be casually employed in multiple contexts.
Nevertheless, the Film Academy objects to “two unsworn expert reports,” which it says are “irrelevant.” In regards to Scott’s report, the 75 domain names are said to be “cherry-picked” and Nunberg’s “information comparability” criterion is said to be the the “wrong test.”
In its push for partial summary judgment (read in full here), the Film Academy says that GoDaddy ignores that the Anticybersquatting Consumer Protection Act “requires only straight-forward comparison with the marks. It is improper to compare the purported goods and services of the infringing domain names with those of the Academy or to employ the likelihood of confusion analysis used in trademark infringement suits.”
The Film Academy would rather have the judge focus on the allegation that GoDaddy “used” and “trafficked” in infringing domain names, exercised control over its service, knew what the alleged infringers were up to, and monetized use of its marks. The Film Academy also says that GoDaddy was itself the registrant of three domain names, including 2006AcademyAwards.com, AcademyAwardsShow.com and TheAcademyAwardsLive.com.
E-mail: email@example.com; Twitter: @eriqgardner
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