Academy of Motion Picture Arts and Sciences v. Chocolate Perfection, Inc. et al Doc.

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Case 1:07-cv-06869-DLC Document 1 Filed 07/31/2007 Page 1 of 13

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ACADEMY OF MOTION PICTURE ARTS
AND SCIENCES , aCalifornia non-proft
corporation;
CASE
Plaintiff,

v.
DEMAND Fl JI]RY TRIAL
r =`=^
CHOCOI_,ATE PERFECTION, IIVC., a South
Carolina carporatian; and DOES 1 through 10,
inclusive;

Defendants. '^
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COIVIPLAIN')r

plaintiff Acadert^y of Motion Picture Arts and Sciences (the "Academy" or "Plainti.fl"} by

its attorneys Quinn. lwrr^anuel Urquhart Oliver & Hedges, LLP, far its Complaint against

Defendants Chocolate Perfection, Inc. ("Chocolate Perfection"} and Daes 1 through 10

{collectively t^vith Chocolate Perfection, "Defendants"} alleges as (allows:

PRELI117YNARY STATEMENT

1, In this action, the Academy seeks damages, injunctive relief and other

relief for copyright infringement, trademark infringement and unfair competition and dilution,

knowingly and willfiilly committed by Defendants in violation of the laws of the: United States

and the State of Nevv York. Without the Academy's permission ar consent, Defendants

manufacture, distribute, display, advertise anchor sell chocolate statuettes that are identical ta, ar

substantially or strikingly sirrzilar to the Academy's "©Oscar^" statuette ("chocolate statuettes"},

Dockets.Justia.com
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A 21L' 1"AlEliEil

2. The .A,cadeYny is, and at all times herein mentioned was, anon-profit

carporatian, organized and existing under the Iaws of the State, of California, with its principal

place of business in Las Angeles County, California.

i. Upon information and belief, Defendant Chocolate Perfection is a South

Carolina caxparation with its principal place .af business and mailing address at 2^^4 Remount

Road, Suite 111, North Charleston , South Carolina 2946-6I72.

4. The Academy is ignorant of the true names and capacities, wlaethex

individual, corporate ar otherwise, of Defendants Does 1-I0, inclusive, and therefore sues these

Defendants by such fictitious names. The Academy will seek leave of the Court to amend this

Carriplaint when the true identities of these Defendants are ascertained.

3U^tISDICTIIQN AND VENUE

5. This action axises under the copyright Iaws of the United States, Title 17',

United States Code, and under the trademark laws of the United States, Title 15, United States

Code, and under the statutory and common laws of the State of New 'York for dilution and unfair

cofnpetition. The Court has jurisdietiart under 28 U.S.C. §§ I331 and 1338, and 1 S U.S.C,

§ l 121, as well as principles of pendent jurisdiction. Jurisdiction is pxapex because at all times

relevant to this action Chocolate Perfection maintained rhinimum contacts with the Southern

District of New York through marketing materials and an agreement to sell products in the

jurisdiction. Venue lies in this district undez^ 28 U.S.C. §§ 1391(b) and I^00(a}. Venue is proper

in the Sauther^n District of New Yar1C because at all tunes relevant to this action Chocolate

Perfection. attempted to market products in the Southern District of New York.

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THE ACADEMY

- 6. Tl^e Acaderrxy was fvurided in 1927 by a now legcndaz^y ^graup ofthirty-sip

^ixn incLus[ry Leaders, who numbered a^nang them Cecil $. DelVli-Lle, Mary Pickford, 3'aek Warner .

^ and Douglas Fairbanks four the purposes of, infer olio, advancing ;motion picture arts and •scicnces

and ^rornat^rzg-cultaraL, educational and techn+^logical ^rogcess by fostering cooperation araaan:g

the motion picture industry's creative leadership. As a constant incentive ft^r mcrr^bers Af the

industry to strive to achieve chase purposes, and as a means of recagni^xng pe^'sons who mai€e

outstanding coz^trzbutions in their respective creative fields, the Academy azrnually confers

"Awards of Merit," Lcnown tQ the public as "ascars" in the plural, and "05Car" in the singular, in

F over twenty {20) categories of achievement,

E 7. The preserrtatia^x of the Awards of Merit is made during a. televised

cerearnany Lcnown as the ".{^-caderny Awards." The "Academy Awards" is seen each year an, a

. live or delayed basis in two hundred (200} :.auntries and territories.

8, ^`he A.caderxzy registered the "C^Oscar^" statuette with the Copyxight

Off ce of the IJarited States of America. The Aeaden^y renewed the xegistratiazx of its copyright

in the "OOscar^7." A true and correct copy o^the Certificate of Registration moo. G 3SS 12 and

the Certificate of Registration of a Claim to a Renewai of Copyright, No. R-4^F3432, a^ attached

collectively as lxhibit AA and, by this reference, are incorporated hereha as though set Earth at

length. The Academy's copyright is valid and subsisting. .

9. The copies of the statuette given to winners of "Academ^r Awards" are

given subject to ^ceztain restrictions, including prohibition against the sale, transi'er ar c+apS'mg of

the statuette. The Academy has rkve^' distributed, ar offered to d`zstribute, copies of the

"Q^?scar^" statuette to the publYC.

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"cQOscar®" w^^ tk^e, Patent aa^.d Trademark C?ffice of the United States of An7erica . True and

correct copies of U^aited Sfiates Trademark Registration Nas. 1,428,535; 1,895,980; X,960,182;

and 2,112,107 are attached collectively as 1lxhibit I3, and by this reference, are incorporated as

though set forth at length. These r^egistratians are valid, subsisting and incontestable.

ll. The Academy Awards have carne to symbolize the mast outstanding .

achievements in anation iiicture-malcing_ The Academy permits the above mentioned rnarlcs and

copyright to be used in advertising far only carefully iiraited and controlled purposes-such as

the advertising of nation pictures nominated for an Academy A^xra^rd^- and does not perrn.3t or

license any manufacture , reproduction, distribution, sale ar use of such marks by manufacturers,

distributors , or retailers such as Defendants.

DEFEI^Til^1N'pS' TJI^II•..AVS^UL CQNDUG`T

12. ,Upon infarnaatian and belief, Defendant Chocolate Perfection engages in

the sale of chocolates and other types of confectiana^y goods.

I 3. In or around March 2045, the Academy discovered that Chocolate

Perfection advertised, manufactured, sold and distributed chocolate statuettes that bore a

substantially ar strikizagly similar likeness to the "C^Cscar^" statuette. Upon information and

belief, chocolate statuettes ware sold through Chocolate Perfection's online catalog. The

Academy never authorized or consented to Chocolate Perfection's advertising, manufacturing,

reproduction, distribution ar sale ol'the chocolate statuettes. .

111-. t..l'pan discovering the unauthorized advertising, manufacturing, salmi and

distribution ol'the chocolate statuette to floc general public, and in particular through Chocolate

., Perfection's online ratalag, the Academy wrote to Chocolate Perfection informing it that the

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rrtanufacture and sell of chocolate statuettes substantially or strikingly similar to the "^Oscar^"

statuette violated copyright and iradernark law, The Acadenaay requested that ^Chacolate

Perfection.provide the Academy with its written assurance that Chocolate Perfection kvoald ^ .
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"permanently cease and desist. from any nnauthnrized use of the `©Uscar^' statuette lil£eness ar

arty statuette or depiction strilingly, substantially, ar confusingly similar thereto." The

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. Academy's letter also directed ChQCOlate I'arfectiorz's attention to the decision o#'the United

States Court of Appeals for the hlintl^ Circuit in Acac^em of Motion Picture Arts and Sciences v.

Creati^+e I-louse Fro^notiQns Inc_ 944 F.2d I446, l^^d; I4S8 (9th Cir. I99I) (holding that tl^e

I' unautharizeti use of such statuettes violated the laves of the United States, and the "Oscan'" rr^ark

should be given the strongest passible protection against infringennent). A true and correct copy

of the Academy's letter to Chocolate Perfection, dated March 21, Z^nS, is attached as Exhibit C

arid, by this reference, is incorporat-ed herein as thoagh set forth at length.

l5. In response, Chocolate Perfection claimed that it produced the chocolate

statuettes, which it called "Star Awards," with pernaissian from the Academy, which it claimed

to have received five years previously . A copy of Chocolate Perfection ' s response letter is

attached as Exhibit DD and, by this reference , is incorporated herein as though set forth at length.

.. , l5. The Academy responded to Chocolate Perfection on April 7, 2Q45,

informing it that the Academy was unaware of any communication between the Academy and

Chocolate l^erfcctioz^ giving Chocolate Perfection permission to produce the Star Award

statuettes. In that letter, the Academy requested that a copy of any communication between the

Academy and Chocolate Perfection regarding the "Star Awards" be sent immediately to the

. 1^,cadenr^y. A true and correct copy of the A.cademy's April 7, 2UOS, letter to Chocolate
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!'erfection is attached as Exhibit E and , by this reference, is incorporated herein as though set

forth at length.

1 ?. Chocolate Perfection never responded to the Academy's letter of ,April 7,

. 2005 . Chocolate Perfection failed to produce any coxnrntax^ication between fhe Academy axed

Chocolate Fer#'ection dexnanstrating that Chocolate Perfection had obtained the permission of the

Academy to manufacture the Star Awards. .

18. in or around March 2007 , the Acaderr^y discovaered that Chocolate

Perfection. continued to advertise , manufacture, sell and distribute its "Star Awards," The

Alliaxaz insurance company had distributed several of them as part of a marketing program. True

and correct copies of pictures of the "Star Award" AIlianz distributed are attached as Exhibit F.

I9. The Academy wrote to Chocolate Perfection on May 2.5, 200?, denying

Chocolate Perfection' s alleged permission to use the Academy's copyri-ghted property. The

Academy again infarxned Chocolate Perfection that the use of the chocolate statuettes

substantially or strikingly similar to the "^Qscar^ " statuette violated copyright and trademarl^

law. The Academy requested that Chocola#e Perfection "cease raaaking false alairns to possess

t^xe permission ofthe Academy to xrzanufacture , sell and distribute" its "Stag Awards." A true

azzd correct copy of the Academy's May 25, 20€}7, letter to Chocolate Perfection is attached as

'Exhibit G and , by this refs-^ezxce, is incorporated herein as though set Earth at length.

. 20. Chocolate Perfection did not respond to this correspondence . However,

the Aeadexny has obtained art email message dated June 28, 2007, ir! which Chocolate Perfection

ca>nfi^xrzed its ability and willingness to ship Star Awards to an address in this district from

Chocolate Perfection's place of business in North Charlestoxa , South Carolina. A true and correct

copy of that email is attached as Exhibit H.

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FIRST CLAZNI FC3R RE^IFF

Copyright Infrznge^ent-17 U.S.C. §§ I06, et se.^.)

21 The Academy repeats and realleges each and every allegation contained i^,

Paragraphs I through 2p, above, as though fully set forth at length.

22. Defenda^zts have manufactured, dz'stributed, displayed andlor used, and

continue to manufacture, distribute, display andlor ezse vaziaus types of statuettes that are

substantially az• strikingly similar to tine Academy's copyrighted "OOscar^" statuette.

Defendants' manufacture, reproduction, distributioa., display or use of the statuettes is and has

been, ^^+ithout the consent ar authorization of fihe Academy and far co^x^amercial purposes.

Accordingly, fefendants infringed the Aoaderny's copyright in its "©4scar®" statuette.

23. The Academy has suffered serious injury as a result of the foregoing

.infringement of its copyright, including harm to its good•svill azad reputation in the rnarl:.etplace.

Ire addition, the Academy ^ti.il continue to suiTer serious injury if Defendants are not ez^jained

fra^n. znanu;C^ctuxirig, reproducing, distributing, displaying ar otherwise using the statuettes that

are substa^ztially or shingly similar to the "C^30scarQ"statuette. The Academy has zoo adequate

rerr^edy at law for Defendants' acts ofi€d,'xingen^ent. Therefore, the Academy is entitled to

^. preliz^ainary and permanent injunctions enjoining Defendants'-acts of i^lfririg einertt acid to recover

its costs and reasonable attorneys' fees from Defendants pursuant to l7 U.S.C. § ^t?^, iri addition

to its lost pro#its and act^.ral damages or statutory damages for Defentlan#s' will^t infringement.

SECOND CY,AYFV,1,' p'OR RELIEF

(Tradezx^ark Iilfringemen^ 15 U.S . C. ^ ^ 1 X 1 ^l(1 }, 11 i 6^d) and I I 1 '^

24, ^ The Academy repeats and realleges i'a.ch anal every alle gation contained in

paragraphs l .through 23, above, as though fully set ^'arEh at length.

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in conr^ectiar^ ti^ith the advertising acrd proznotioz^ of the annual "Academy Awards" ceremony

and to recogr^izc naotign pictures honored by the Academy for excellence i^z one or more aspects.

2G. Because of the eacl.usiv^e and extensive. use and prarr^otion of its marks;

tlZe Academy's marks have acquired considerable value and have becaz3ne well knov^n to the

consuming public and trade throughout tiZe world as associated v^^ith the Academy and as the

highest ^narlcs of excellence in movie-rr^aking.

27. The Academy has not consented to, nor authorised, Defendants'

manufacture, reproduction , distribution, sale or use of statuettes thz^t are identical to or strilci.ngly

or substantially similar to the "©(]scar^" desi^ mark,

2S. The Academy has ztot consented ta, nor authorized , Defendants' use of the

"Oscar?" mark irr any manner.

29. .Defendants' imitation, copying and unauthorized use of the Academy's

registered marks constitutes trademark infringerrzen# anal causes. (a} likelihood of confusion,

deception and mistake among the consuming public anal #xade as to the source of the products

and (ia^ serious, irreparable injury to the Academy, izrcluding injury to i#s reputation and dilution

of the distinctive high quality of its xnaxks, for all of which the Academy has no adequate remedy

at lave. The Academy is entitled to preliminary and perrn^n.erit injunctions enjoirzi^g Defendants'

acts of infringernezat, to recover its costs and reasonable attorneys' fees from Defendants,

pursuant #a IS U.S.C. § 1 l l 7' and to recover tizree times Defendants' profits based on

Defendants' willful infringemer^t of the "C90scarQ" design mark.

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TI^ITRD CLA^l^i[ F4R RELIEF

(False Representatian^--1 S U.S:C. § 1125{a})

30. The Academy incorporates herein by reference each and every allegation

cartairted in paragraphs 1 tl3rough 23 and ^4 tlxraugh 29, above, as though set ^fortl^ at length_

3I. Defendants, through the sale afthei^ statuettes, have irnpliedly

misrepresented to the public that .Defexdants' stafuettes are approved, spansozed ar licensed by

the Academy.

32. Defendants' aforesaid acts constitute a false representation that

.Defendants'- sale of the statuettes. are authorized t}y ar emanate from the Academy. Defendants'

rrtaterial zraisrepzesentatiazas may cause the general, public to mistakenly believe that Defendants'

statuettes are authorized by or emanate from the Academy. Such ^rtisrepresezxtatians cvntirtue tv

harm the Academy 's ability to protect the integrity and image a#' its Warne and symbol of

excellence and are harming the Academy's reputation.

33. Defendants' acts constitute false representations artd are violations of

^ 43(a) of the Lanham Act, 15 U.S.G. § 1 125(a}.

34. Defendants' acts complained of herein irreparably damaged, and will.

continue to clazrxage, the Academy. The Academy has^na adequate rexaciedy at law far these

wrongs and injuries. The damage to the Acadetity includes harm to its gc^odwiII and reputation

in the rrtarkeiplace that rraaney darr^ages cannot compensate. The Academy is therefore entitled

to art injunction enjainirtg Defendants' acts of false representation.

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Fo^^.^~^r ^LA^n^ FaR ^L^^

(Diiution^l5 U.S.C. § I I25(c)}

3a. t"l^e Academy irzcarporatcs herein by reference each and every allegation

contained in paragraphs l through 23, 24 through ^9, arad 3^ through 34, above, as though set

forth at length.

35. 'Defendants' reproduction, manufacture , distribution, sale or use of the

statuettes that are substantially or strikingly similar to the Acaderriy ' s federally registered

"C^scar^" design mark, tarnishes and dilutes, and will eontiraae to tarnish aril dilute, the

distinctive duality of the Academy' s marks in violation of § 43^c} of the 1lanham Act, IS U.S.C.

§ 1 l25 (c}.

37. Defendants ' acts complained of herein have irreparably damaged , and will

continue to damage, the Academy. The Academy has na adequate remedy at lar^u for these

wrongs and in^ttriss. The darrxage to the Academy includes harm to its goodwill and reputation

that rrzoney clarrzages cannot compensate . The Academy i.s therefore entitled to an in, ^unction

en3oining the Defendants' acts of dilution, actual and statutory damages, and all additional relief

authoarized under the Lanham Act.

^FTH C1=,Al^ FUl^ R^IisTEF

(Common law Unfair Competition}

38, The Academy incorporates herein by reference each artd every allegation

contained in paragraphs i through 23, 2^4 tIuaugh 29, 30 through 34, and 3S thrflugh 3'T, above,

as though set forth at length.

39. Defendants ' reproduction, manufacture, distribution, display or sale of

statuettes that are substantially or strilcirigly similar to the "^Oscar^" statuette, as more fully set

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and has. tl^e potential to cause confusion in the zxzarketplace.

40. Defendants' reproduction, manufacture, distribution, display ar sale of

. statuettes that are substantially ar strikingly similar tv the "C^Oscar^'° statuette create the false

%rripressiarz that the statuettes are approved, licezased or sponsored by the Academy. This

cor^ stitutes an izrzjusi use and a misappropriation of, or izxjury to, the goodwill, ar business

reputation of tI^e AcademjJ and will subject the Academy's goodwill and busin.^ss reputation to

the hazards and perils .of Defendants' business activities, aver which the Academy has no

c;otatrol.

4l . Defendants' acts complained of herein have irreparably dfunaged, and will

cantirAUe to darrzage, the Academy. The Academy has no adecluate rez^edy at la^sr far these

wrongs and injiu-ies. The damage to the Acadern^T includes harm. to its gaadwill and reputation

in tl^e zrzarketplace-.that zxzone^ dazxiages carzxzot^ eorrzpensate: -The Academy- is^^therefore entitled..

to axz injiynctian enjoining Defendants' acts of unfair eonzpetition.

PRAYER FOR RELIEF

WHEi^FORFr, the Academy demands judgrrzent:

a. That 1efendants, as vrrell as all persflns acting under the direction, control,

permission ar authority a£ Defendants, or any of therzz, and all persons acting in caneez-^

therev,^ith, be enjaiized during the pendency of this action, and. permanently thereafter, frarn

.reproducing;, manufacturing, displaying, marketing, distributing, advertising, transferring ar

selling any facsizmile, copy, replica, reproduction, picture or depiction of the "©Oscar^" design

mark, or otherwise infringing the Academy's coP3+right ixz the "flOscaz^" statuette and

tradez^nark rights in the "C^Osc"mark, including but not liFnited to the Star Award;

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b. What all facsimiles, displays, copies, replicas, reproductions, pictures arzd

depictions of the Star Award, ar any other replica of the "c4Qscar^" statuette in-Defendants'

possession, custody ax ear^trol, and all pre-fabricated displays or kits, molds, matrices or other

devices used fc^r assembling, rx^ar^ufacturing, or reproducing floe afa^resaid items, be ordered `

delivered up for destxuction or seized and forfeited to the [3nited Mates;

c. That all records of custarners az^d sales relating to Defendants' infringing

products be delivered up to the Academy;

d. That Defendants pay to the Academy the full. casts of this action and the

Acaderrty' s reasonable attorneys ' fees pursuant tQ 1 ?^ U,S.C. § 505;

e. That the Academy recover its actual damages and last profits ar, in the

alternative; that the Academy recover statutory damages off' $150,000 for willful infringement

pursuant to 17 U.S.C. § 504 and its attorneys' fees pursuant to 1517.S.C. § 1117,

f. That the ^icatlemy zccover three times Defendants' prates and the

Academy's darnabes, reasonable attorneys' fees, prejuslgznent in#erest and the casts of this action

pursuant to 15 U.S.C. §§ 1114 and 1117;

g. That Defendants be preliminarily ar^d permanently enjoined from using

tl^e "Oscan" rxzarks ire any czaanxzer and reproducing, displaying, rrzax^ufacturing, marketing,

selling, distxibutiarz ar advertising any traplxy, statuette ar statuette display caz^i3singly sir^ ^ilar to

the "eOQscaz^" (including but not lirrrited to the Star Av^rard}, whether in two-or three-

dimensional form, and that all signs, prints , packages, wrappers, Iiterature, Web site listings and

advertisements in the possession of Defendants bearing any rcpraduction, counterfeit , copy or

colorable inaitatian of the."flOscar®," whethez^ in two- or tie-dirr^erxsianal fornn ., or "Oscan"

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marks, and alI devices, plates, xr^alds, matrices, and other zzxeans of making the sartxe, he

,delivered up and destroyed pursuant to 15 IJ,S.C. ^^ 111, 1118, and 1IZS; and

h. That the Academy have such other and further relief as t[xe Court dens

just and proper.

J^(JRY DEMAN'll

Pursuant to Federal Rafe of Civil Frocedure 38, Plaiarati^ .hereby demands a jury trial on

a.ll issues triahIe to a jury.

DATED: New York, New 'Y"arl^

Ju^Iy 30, 2007
QUINN EMANUEL URQt;HART OLNER &
^3EI]GES, LLP

^
{^ ^

La' E. siss (LW-7866)

S 1 Madison Avenue, 22nd Floor

New York, New Yark 10010
TeI: (212) 8^-97000
Faa: (x.12) 8^9-7140

ATTORNEY'S FOR ACADEMY OF

MOTION PICTURE ARTS AND SCIENCES

4f Counsel:

QUlNN EMANtJEL URQUHART UL1VEIt

& HEDGES, LLP
David W. Quinto
86S S . Figr^eroa Street, l Otlx Flaax
Los Angeles, California 90017
TeI: (213) 4^3-3000 .
Fay: (2I3) ^l^€3--3100

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