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Oscar® – a Protected Trademark in Switzerland

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Oscar® – a Protected Trademark in Switzerland MARUGG DISPUTE RESOLUTION OSCAR® – A PROTECTED TRADEMARK IN SWITZERLAND By Daniel Marugg, Attorney-at-law, LL.M., Commercial Mediator CEDR / Mediator SAV KYUSUNG GONG / ©A.M.P.A.S. THE OSCAR TRADEMARK AND ITS LEGAL ASPECTS The sign OSCAR as well as the Oscar statuette are protected worldwide by trademark and copyright law for the trademark proprietor, the Academy of Motion Picture Arts and Sciences ("Academy"), Beverly Hills, Los Angeles. The Swiss trademark protection is based on various trademark registrations, amongst others, since 1993, for "education; training; entertainment, including awards for commendable achievements; sporting and cultural activities" (Swiss trademark no. P-412103), with usage priority since March 1, 1973, and since 1988 for "feature films and video tapes; printed matter" (Swiss trademark no. P-364248). Thus, according to Art. 13 of the Swiss Trademark Protection Act ("TmPA"), the Academy "has the exclusive right to use the trademarks to identify the goods or services for which they are claimed and to dispose of them, and it LITIGATION | ARBITRATION | MEDIATION may - insofar as [someone] has unlawfully disregarded this exclusive right of the [Academy] and is thus committing a trademark infringement - exercise the legal protection of Art. 52 et seq. TmPA" (Commercial Court of the Canton of Zurich, HG060392-O, E. 3.2). Moreover, as "well-known, if not famous" trademarks (Commercial Court of the Canton of Zurich, HG060392-O, E. 6.1.2), the sign OSCAR and the Oscar statuette are protected for other goods and services as well as against dilution and reputation exploitation or impairment. Furthermore, the design of the Oscar statuette is also pro- tected by copyright. The aforementioned ruling of the Commercial Court and further actions of the Academy have led to a recent decline in violations of the Academy's rights in Switzerland, Germany and most of Europe. Naturally, the situa- tion remains closely monitored. However, the issue continues to be unsatisfactory in Italy, with partly diametri- cally opposing court rulings, and, of course, in China because of the generally still inadequate protection of intellectual property rights. The Oscar is 34 cm tall and weighs 3.9 kg. It is coated with a wafer-thin 24-carat gold layer. Since nobody knows in advance who will be allowed to take home the coveted film prize, the name of the winner, the corresponding Oscar category and the title of the film will only be engraved on its base after the Oscar ceremony. The award winners receive the Oscar statuette only for possession for life, with the possibility of inheritance within the family. The Academy remains the owner, and many Oscar statuettes are returned to the Academy after the winners' death. KYUSUNG GONG / ©A.M.P.A.S. 2|5 THE ACADEMY OF MOTION PICTURE ARTS AND SCIENCES (©A.M.P.A.S.®) AND THE OSCARS – INSIGHTS ON THE HISTORY OF THE OSCAR AND THE 91ST ACADEMY AWARDS The Academy Awards or Oscars, which take place in Hollywood, Los Angeles, at the end of February each year, are both the finale and, above all, the highlight of the annual events that award prizes for outstanding achieve- ments in film. Although the record of around 55 million television viewers from 1998 was not reached this year, the number of television viewers at this year's 91st Oscars again increased markedly compared to previous years and made the Academy Awards again – as is generally the case – the most watched entertainment program on American television (and probably worldwide) as well as the highest rated non-sports program (see also www.hollywoodreporter.com; variety.com). The annual Academy Awards are as "good" as the films and their protagonists of the respective "Oscar year"; the number of viewers may vary accordingly. The stage of the Oscars is the Dolby Theatre in Hollywood; the television transmission is done by the channel ABC. The Academy of Motion Picture Arts and Sciences, currently based in Beverly Hills, Los Angeles, has signed long-term contracts with both the Dolby Theatre and ABC. The Oscars are generally marketed by ABC, whereby the Academy has concluded a few separate marketing agreements, also with the watch manufacturer Rolex. Otherwise, the Academy does not license its (intellectual property) rights. In addition to the Academy Awards/Oscars themselves, the rights to the Oscar statuette form the Academy's central assets. In addition, from the end of this year, the Academy Museum will be in operation, which, after various attempts, will now be built directly next to the Los Angeles County Museum of Art - LACMA by the architect Renzo Piano for the Academy (www.academymuseum.org/?ref=oscars.org). The history of the Academy and the Oscar began in 1927 in Los Angeles, when various owners of film studios and other representatives of the film industry decided to set up an organization to support the film industry, which in turn began in 1929 to organize annual film awards in the form of a gold trophy. At the beginning it was called the "Academy Award of Merit", later it got the name Oscar. The godfather of the name Oscar can no longer be determined today. Originally, the Oscar was awarded in 12 categories, to which more were successively added over the years (see the complete list of winners of this year's 91st Oscars and the previous Oscars at www.oscars.org/oscars/ceremonies/2019). The Academy Awards met great public interest from the very begin- ning. In addition to extensive coverage in the newspapers, the Oscars were broadcast live by a Los Angeles radio station as early as 1930. From 1953 the country- (coast to coast) and from 1969 the worldwide television trans- mission of the Academy Awards began. Films released during the Oscar Season, from January 1 to December 31 of the previous year, will be considered by the Academy and its members, respectively. The Oscar nominations take place in mid-January in currently 24 categories. The procedure for nominations and final voting is regulated in detail. For most categories, nomi- nations and evaluations are carried out by the actors of the respective industry, according to the principle of actors nominate actors, film editors nominate film editors, etc. The nominations are made by the respective industry's nominators. In the final, all Oscar categories will be available for voting by the Academy's voting mem- bers (see www.oscars.org for more details). The membership of the Academy is limited to filmmakers who work in any way on the production of feature films. It is only granted on recommendation – by sponsorship only; a candidate should have demonstrated ex- ceptional achievement in the field of theatrical motion pictures – and after review and decision by the 3|5 Academy's Board of Governors (currently consisting of 54 members). One exception applies to all Oscar nomi- nated individuals who are automatically considered for a membership. Currently, the Academy has approxi- mately 8'000 members. With the Oscars, the Academy is organizing film awards for representatives of the film industry. The aforemen- tioned principle of "filmmakers for filmmakers" applies; the members of the film community award their best. This is what makes the Oscar so unique in the eyes of filmmakers and the most valuable award in the film in- dustry. The Oscars are therefore not critic prizes, even if many film critics around the world would like it to be different and sometimes write heavily against it. The 91st Oscars of 24 February 2019, in contrast to earlier Academy Awards, were not presented by a so-called host, but the respective announcements and the presentation of the Oscars were made by actors, which also shortened the duration of the Academy Awards. Various participating actors as well as members of the Academy prefer this concept because the Oscars focused on the essentials. Social developments and changes have not left the Academy as an institution and with it the Oscars untouched over the years. At one of the world's best-known events in the entertainment industry, it is not surprising that such developments and changes are being negotiated in a way that is effective for the public. Among the most recent movements are #OscarSoWhite and #MeToo, in the course of which the membership of the Academy has been broadened (the Academy has indeed become more colourful and more feminine) and the nominations and awards of the Oscars cover film-making even more diversely. The 91st Oscars on 24 February 2019, for ex- ample, included several awards for an action film with a black superhero (Black Panther), a film about an indig- enous maid in Mexico (Roma; with the Oscars for cinematography, direction and foreign film) and a film biog- raphy about a gay, immigrant rock star (Bohemian Rhapsody; with the Oscar for Rami Malek as leading actor, among others). Also to be mentioned is Spike Lee's first Oscar for his screenplay for BlacKkKlansman, or the Oscars for Green Book, a film from the racially segregated south of the USA in the 1960s, as best film and for Mahershala Ali as best supporting actor, both rightly so. Regina King received the Oscar for Best Supporting Actress from the - enchanting - film If Beale Street Could Talk. Further highlights of the 91st Oscars were the appearance of Queen at the beginning of the Academy Awards and of course the duet of Lady Gaga and Bradley Cooper with the song Shallow from the movie A Star is Born, for which Lady Gaga received the Oscar for the best original film song. That this performance would be the emo- tional highlight of the 91st Oscars was already apparent during the rehearsals.
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