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Motion Picture Academy Sues Over Oscar Party Props
Monte Carlo Productions' CEO admits to lying about destroying 10 1/2-foot tall Oscar replicas
Fulton County Daily Report
April 03, 2009
When the CEO of Monte Carlo Productions in Atlanta received a letter from the Academy of Motion Picture Arts and Sciences demanding that he stop throwing parties that included giant replicas of the Academy's famous Oscar statuette as props, he thought it was "the biggest joke that ever was."
But the Academy wasn't amused. Last Friday, the 82-year-old Hollywood institution that hosts the annual Academy Awards sued Monte Carlo, Chief Executive R. Bruce Nixon and company president John Brown in U.S. District Court in Atlanta. The Academy accused Monte Carlo of copyright and trademark violations associated with the company's unauthorized use of the coveted gold Oscar statuette at "Night At the Oscars" Hollywood-themed parties it offered as part of its events-planning business.
The Academy is seeking an injunction that would bar Monte Carlo from using the name Oscar or any Oscar replicas, $150,000 for willful infringement of its copyright and trademark, customer records and sales related to parties where the Oscar replicas were displayed, treble damages based on those profits, the delivery and destruction of all of Monte Carlo's Oscars and legal fees.
Nixon, who wrote his own reply to the Academy's original cease-and-desist letter, said Monday that he was "writing the Academy right now, explaining the whole circumstances," and that he had not yet retained counsel. He said he intended to meet Tuesday with a lawyer he occasionally consults regarding minor business matters, but added, "I can't afford to fight this. I'm going to own up to it. I just don't see how they can expect me to pay their monumental attorneys' fees."
The Academy's suit was prompted by the appearance last October of what it called Monte Carlo's "ersatz Oscars" on the Bravo cable-TV show, "The Real Housewives of Atlanta." The faux Oscars were part of the décor at a televised charity event hosted by cast member DeShawn Snow. According to news accounts, the gala bombed -- costing Snow's charity, the DeShawn Snow Foundation -- three times as much money as it raised. Monte Carlo had leased the 10-foot-tall Oscars to another party planning firm that arranged Snow's "Night of a Thousand Stars" semi-celebrity auction.
"I had no idea we were doing anything wrong," Nixon told the Daily Report on Monday in an interview about the suit. "We're not claiming we are the Academy. We are not claiming we are a sanctioned event of the Academy. ... We are just using [the giant Oscar replicas] for decorations.
"I really thought it was a joke. I was amused the Academy would have attorneys contact me, like my company could be detrimental to them."
But King & Spalding partner John W. Harbin, who filed the suit on the Academy's behalf, said the Academy's diligence in policing use of the Oscar's image is no joke. "For more than 80 years, the Oscar has signified the highest level of achievement in filmmaking, and the Academy has to diligently protect the mark and the copyright both in the statue and in the name so it continues to signify that excellence and only that," Harbin said.
David W. Quinto, a partner with Quinn Emanuel Urquhart Oliver & Hedges in Los Angeles who represents the Academy and has secured rulings that the Oscar is not in the public domain and deserves "the strongest possible protection against infringement," explained that the Oscar is "the Academy's institutional symbol ... and it's probably the most widely recognized international symbol of excellence in the performing arts. ... The Academy believes if the Oscars can be freely sold and rented, the award is cheapened and the value as symbolizing the very highest echelon of achievement will be diluted, will be weakened. And people may lose interest in seeing who wins an Oscar if the person next door has bought or rented Oscars for some other purpose."
Since 1929, the 13 1/2-inch tall Oscar statuette -- a 24-carat gold-plated knight holding a crusader's sword and standing on a film reel -- has been awarded for the film industry's outstanding cinematic achievements. The Academy copyrighted the Oscar in 1941 and later secured trademarks for the image of the statue and for the terms "Oscar" and "Oscars." The Academy never has permitted the reproduction and distribution of the Oscar to the public, according to the suit. And it has limited the Oscar's use in advertising to motion pictures that have won an Oscar.
Quinto said that the suit against Monte Carlo is not the first time the Academy has issued cease-and-desist orders or gone to court to stop someone from using the Oscar without permission. "Many people somehow view the Oscar as part of the American culture, part of the American identity and assume that the Oscar is free use," he said. "It's not, of course. It's both a registered trademark and copyrighted to the Academy. The Academy all the time sends polite reminder letters asking people who have used the Oscar for improper purposes to please don't do it again.
"However, every now and then, it is forced to file suit to protect its rights because under intellectual property laws, if you don't protect your rights, you eventually lose them."
Monte Carlo's faux Oscars made a very public debut last October when "Real Housewives" cast member DeShawn Snow -- the wife of Cleveland Cavaliers basketball player Eric Snow -- hosted her televised charity auction during the show. According to Monte Carlo's contract, the faux Oscars were posted outside the front door of the Snows' Alpharetta home.
According to news accounts of the series, Snow had announced that she intended to raise $1 million for her foundation, which promotes self-esteem in adolescent girls. Instead, according to the Atlanta Journal-Constitution, there were far fewer bids than expected during the auction, and many items attracted no bid at all. The result, according to the AJC: Snow spent $30,000 on a "diamond gala" that raised just $10,000. Snow was not invited back for the show's second season.
Quinto said he doesn't know how the Academy learned that Oscar replicas were part of Snow's gala décor. But, he said, "There are over 6,000 members of the Academy. There are many friends of the Academy. ... Many, many frequently call our attention to misuses of the Oscar."
The Academy promptly sent out investigators who traced the Oscars to Ribha Events, whose owner identified Monte Carlo Productions as the source of the bootleg Oscars. An investigator then contacted Monte Carlo, masquerading as a potential client who wanted to throw a party with a Hollywood/Oscar theme, according to the federal suit. The resulting proposal included the display of two gold Oscar statues, each 10 1/2-feet tall, at the entrance and more replicas of Oscar on a stage, according to the suit.
A second investigator, also incognito, was allowed to view the faux Oscars and was informed during a meeting with Monte Carlo staff that the company "has used the Oscars theme seven to nine times" in previous parties, the suit claims. That investigator also took photos of the bootleg statues.
In January, Quinto notified Monte Carlo that the company's use of its Oscar replicas and the phrase, "The Oscar Goes To ... " violated the Academy's copyright and trademark. The letter demanded that Monte Carlo immediately cease using the statues and the term "Oscar," and requested that all copies of the statue and any casting molds be returned to the Academy for destruction. Quinto also asked for information pertaining to how often and to whom the Oscars had been rented, and how much the company had profited from sales that included the bootleg Oscars.
A week later, Nixon replied, saying he had been unaware that the terminology Monte Carlo used in promoting its theme event, "Night at the Oscars," violated the Academy's trademark. In that letter, Nixon said Monte Carlo had stripped all references to the Oscar from its Web site and would refrain from using the Oscar or referring to the Oscar or the Academy Awards in any future Hollywood-themed event it produced.
He also claimed that Monte Carlo had only recently purchased the Oscar replicas from a production company that had gone out of business and that Monte Carlo had never used the Oscar replicas for any theme event. And he swore that the Oscar replicas had been trashed after they were damaged when a water leak flooded the company warehouse, apparently shortly after he received the cease-and-desist letter.
Nixon also signed a declaration stating that Monte Carlo had only had the statues two months. "I cannot remember the name or contact information of the company that sold them," his declaration stated. "Neither I nor anyone at Monte Carlo are able to locate any contact information for the company that sold them. Neither I nor Monte Carlo have any knowledge of who made the statues. I cannot remember how much Monte Carlo paid for the statues and Monte Carlo does not have a record of its payment."
Nixon's statement contradicted information previously secured by Academy investigators. After receiving Nixon's letter, the Academy sent out investigators a second time. They were shown the supposedly destroyed Oscars in Monte Carlo's warehouse, and received a party proposal from the company featuring the Oscar trademarks, according to the suit.
In an interview with the Daily Report, Nixon said that when he informed the Academy he would stop using the Oscar trademark, "I meant that sincerely." He said he warned his sales staff, "Do not sell Oscar statues. Take them down off the Web site."
But he acknowledged that the company's Oscar replicas were not destroyed in a warehouse flood and that he told Academy lawyers they had been destroyed "just to get them off my back."
He said the idea that he would ship the Oscar replicas to California for destruction was "preposterous. .... That's why I told them they got destroyed in a flood."
"I still have the statues," he told the Daily Report. "They have been turned into mummies," for use at Halloween theme parties.
"The only reason I lied to them," he continued, "is that I didn't want to destroy something I had $3,000 in if I could use them for something else."
Nixon also explained that he signed the declaration that Academy lawyers sent to him only because, "They kept bullying me."
"There were some lies in there," he continued. "I said [the Oscar replicas] were destroyed. I said we never used them, and we had. Those were the only two lies I told."
But, he insisted, "We weren't trying to rip them off. That was not the intent here. ... These people sent spies out. They sent investigators out. They took secret pictures. They called my people under false pretenses. The lawyers involved in this are bullies. They're sharks. .... I told some lies. I'm totally wrong. But this is like the New York Yankees suing a T-ball team for wearing a Yankees baseball hat without authorization. ... It's a joke."
Nixon also objected to the Academy's insistence on finding out how much money his company had made throwing Oscar parties. "They wanted some retribution for the fact that we used them," he said of the Oscar replicas. "What is their need for a few thousand dollars in retribution? ... Honestly, I can't afford an attorney. I mean that. We're at this point, it's how much money I can afford to put in this company to keep the doors open. ... I can't afford to fight this. I'm going to own up to it.
"I took it very lightly," he concluded. "Obviously, now I've got a law firm in California, I've got King & Spalding here. It's a serious matter. ... I'm literally guilty. But I'm not guilty of anything monumental. I haven't damaged the Academy. ... Plus, I thought it was silly that they thought I would infringe on them."
The case in the Northern District of Georgia is Academy of Motion Picture Arts and Sciences v. Monte Carlo Parties Ltd., No. 1:09-CV-00833.
Staff Reporter R. Robin McDonald can be reached at Robin.McDonald@IncisiveMedia.com
