Published in: Southern California Super Lawyers 2013 — February 2013

Oscar, Oscar, Oscar

By Erik Lundegaard

John Quinn and David Quinto, of Quinn Emanuel Urquhart & Sullivan, general counsel and lawyer for the Academy of Motion Picture Arts and Sciences, get ready for their close-up

SL: It’s October 2012. The 85th Annual Academy Awards will be presented in February 2013. What issues do you anticipate between now and then?

Quinn: There are routine things related to the Oscar show. Every year there are clearances that need to be obtained. We review the script for the show. There are security arrangements that need to reviewed and updated. We work very closely with the police.

 

SL: In what capacity?

Quinn: The Oscar show is viewed by a billion people worldwide. There’s a real concern that some ill-intentioned group might see that as an opportunity to make some statement, and get into the auditorium and do something. There are extremely strict controls. The Academy knows who should be in every single seat. Inevitably, every year, although people who get tickets sign agreements not to transfer their tickets under any circumstances, some people seem to misunderstand that. When somebody or something doesn’t match up, they are brought and questioned by lawyers from our firm. We have a desk there; and if people don’t belong, they’re arrested on the spot. There’s a police substation that’s set up.

David is reminding me that [in 2012] we had 12 arrests for trespassing.

Quinto: You might be interested to know that it’s actually Quinn Emmanuel lawyers who make the arrest.

 

SL: The attorneys do the arresting?

Quinto: We make citizen’s arrests, and [if there are sufficient grounds for arrest] there are off-duty LAPD police officers on site who write up the arrest reports. Then the LAPD send a black-and-white limo service to take the bodies to the gray-bar hotel.

Quinn: You asked what kinds of legal work between now and the show? In advance [of the show] there are memos for talent, stars who are going to appear, waivers with unions. We review all those. Everybody who participates in the show, there’s some type of legal arrangement that we review and get involved in.

Then there are the things we can’t anticipate. From time to time, there are people who seek to challenge legally the nomination process. They think they should be included in a nomination for a particular achievement and that their name was left out. Or sometimes a question is raised about whether a film that’s nominated in a particular category really qualifies or not, and people go to the courts to try to challenge those decisions.

 

SL: An example?

Quinn: There are always five best foreign-language film nominations. Several years ago there was a film that was nominated from … I want to say Uruguay. But somebody dropped a dime on them and said, “This is bullshit, it’s actually an Argentine film.” So at that point the Academy looked into it and decided that, in fact, this was an Argentine film that had been nominated by Uruguay and disqualified it. And [the filmmakers] brought a lawsuit.

We litigated it on an expedited basis because they were seeking preliminary injunction as to whether this film was properly nominated as a Uruguayan film or not. [It] can be complicated these days. The actors may be from one country, the financing is from another country, the producers from another country. Which country is the film properly identified with? Complex questions. But this one, you added all that up, and this was clearly an Argentinian film. And though it had been nominated by the Academy-recognized film committee in Uruguay, it shouldn’t have been. So there were only four nominated films that year. In the meantime, the issue was litigated, and we ended up winning the preliminary injunction issue.

Quinto: There was [also] the big case we had for the Academy and the Producers Guild brought by Bob Yari.

Quinn: Oh yeah. The guy for—

Quinto: Crash.

Quinn: The movie Crash, which actually won … was it Best Picture? He claimed he should have gotten a producer’s credit and brought a lawsuit. That played out after the Oscar show. I think he sought a preliminary injunction in advance, and he lost that. But he didn’t go away. He litigated the case. We ultimately won.

 

SL: Earlier you mentioned you have to look at the Academy Award show script for approval. What are some examples of things you’ve flagged in the past?

Quinto: One year there was a joke about an actress that suggested she had been having sex out of wedlock with a minor.

Quinn: And we said, “You really can’t do this.”

Quinto: And the response from the producer was, “Look, I heard a joke about Jerry Buss going to Cedar Sinai to wait for his next wife to be born.” And I said, “That’s completely different. The imputation of a lack of chastity to a man is a lot different than the imputation of a lack of chastity to a woman. Plus, what you don’t know,” I said to the producer, “is that the Academy had a dispute this year with that particular actress.” The Academy had threatened a lawsuit. The whole thing was resolved confidentially. But if anyone had a reason to be sore with the Academy at that moment, it was that actress. That was one time I raised a challenge.

 

SL: Was it listened to?

Quinto: It was listened to. Another time there was a hysterically funny joke about an unnamed baseball player on steroids, and ABC broadcast standards said, “Look, people will tell in a nanosecond that this joke is about Barry Bonds. We’ll be sued. So the joke has to be cut.” And I said, “No, no. I’m a litigator. And as a litigator, I can tell you Barry Bonds will not sue. If he were to sue all his medical records would be open to discovery. He doesn’t want that.” So they kept it in. I thought it got good laughter during rehearsals but they cut it on the basis that it didn’t get enough laughs.

 

SL: You’re there for rehearsals, too?

Quinn: We go to the rehearsals sometimes. I mean, we have other things to do.

 

SL: Such as? What else do you do for the Academy?

Quinn: The Academy has for many months been negotiating with the Los Angeles County Museum of Art to develop a museum for motion pictures, and the history of Hollywood in motion pictures. It’s a very exciting project where the—what’s that old art-deco building?—will be converted into a motion picture history museum. People come from all over the world to Los Angeles wanting to see Hollywood, and wanting to see something and get in touch with the history of Hollywood and film in Los Angeles, and the reality is there’s no place to go. I think this will be transformative.

 

SL: What kinds of legal issues does this raise?

Quinn: There’s a very lengthy, long-term lease that has to be negotiated. Then, on La Cienega, the Academy has a Motion Picture Film Study Center at the old Beverly Hills Waterworks, which is probably the premier research institution in the world on the history of motion pictures. The Waterworks itself is owned by the city of Beverly Hills, but we’re involved in negotiating a 99-year lease with the city, and then construction arrangements to build that facility, to convert it for that use.

The source of most of the revenue that finances all the different Academy activities—from the Oscar show, to student film awards, to grants, to film festivals around the world, to film preservation—most of that revenue comes from the contract with ABC to broadcast the Oscar show. That is a deal that gets renegotiated every few years. So we’re involved in negotiating that contract. I think the license fee is now something like $80 million? I’m looking at David. $80 million, $60 million, something like that. Per year.

And the Academy has several hundred employees, so you get the legal issues that come up with any organization with an employee base of that size. You also get issues relating to people who leave their estates to the Film Study Center, and competing claims to bequests.

Quinto: There are people who put Oscars up for sale.

Quinn: There you go. When you receive your Oscar, before you take physical possession, you’ll be asked to sign a rider for a first refusal agreement. Basically, before transferring or selling it to anybody, you will offer it to the Academy for one dollar. The Academy is of the view that Oscar statuettes shouldn’t be articles of commerce. They are unique recognitions of achievement, and they shouldn’t be purchased and sold in the marketplace. So from time to time, somebody tries to sell one, and we’re in court seeking injunction against the sale.

 

SL: When was the rider first introduced?

Quinn: 1950.

 

SL: You’re also dealing with copyright infringement issues, yes?

Quinn: The statuette itself is a copyrighted three-dimensional work of art. The silhouettes of the Oscar is a trademark. The words “Academy Award” and “Awards,” plural, and “Oscar” and “Oscars,” plural, are all registered trademarks of the Academy—not just in the United States, but in 80-some countries around the world. And of course, the show itself is copyrighted.

 

SL: Where are you Oscar night?

Quinn: I’m sitting in a seat somewhere in the orchestra enjoying the show. Dave, often as not, is back at a help desk working with the police and dealing with the handful of people who every year try to get in.

 

SL: What does Quinn Emanuel do for the Academy that might surprise people?

Quinto: One totally bizarre situation we had involved a trademark infringement claim based on the Academy’s use of commercially available music during the Awards show. It was [a song] released by Sony, and nobody stopped to think that the music might cause a trademark infringement problem. But the songwriters had included Michael Buffer’s [catchphrase] “Let’s Get Ready to Ru-u-umble” in a song. So we had a trademark infringement claim from Michael Buffer.

 

SL: I’m slightly confused. If the Academy had paid the royalties for the song, wouldn’t the issue be between Buffer and the music company?

Quinto: Well, that would certainly be an issue, but we had used the song in the show. Frankly, I think we would have won if we’d gone to trial on the issue, but it was cheaper to settle.

 

SL: Mr. Quinn, you became general counsel of the Academy in 1987. How did that come about?

Quinn: We had been doing trademark and copyright enforcement work for the Academy relating primarily to Oscar copyright and trademark issues, so they knew us. And the previous general counsel was retiring. So they turned to us. I am the third general counsel the Academy has ever had in its history, and I’ve been general counsel longer than the other two.

 

SL: Who was the previous general counsel?

Quinn: Gyte Van Zyl. He was our client for a while when we were doing the litigation work for the Academy.

 

SL: Did he give you any advice?

Quinn: From time to time, we’re asked to interpret rules governing eligibility for different awards. There are very extensive rules for each category of Oscar. Gyte said he always thought that it was best to err on the side of inclusiveness, and not to exclude films or achievements from consideration if possible. That has stuck with us.

 

SL: Of all of the various work that you’ve done for the Academy over the past 25 years, what was the biggest case? Was it the Disney lawsuit in ‘89 when Rob Lowe performed onstage with Snow White?

Quinn: That made a lot of news but that case went away immediately. It was total bullshit.

The biggest case was a case called Creative House, where for a period of some months we had a ruling after trial in the Federal District Court that the copyright that the Academy claimed in the Oscar statuette was invalid. It was ultimately reversed in a very strong opinion from the 9th Circuit Court of Appeals. But it is a fact that, from 1927 to 1941, Oscar statuettes were given out to winners with no notice of copyright on the statuette. It wasn’t until 1941 that they actually registered the copyright with the United States Copyright Office.

So there was at least an argument that we used to hear from infringers from time to time that “You don’t have a valid copyright in the statuette anyway because it’s in the public domain. You gave it out for those years with no notice and with no registration with the Copyright Office.” This was like a skeleton in the closet that infringers would raise from time to time.

And there came a point where we actually tried the issue here in L.A. in Federal District Court. In the first instance, after trial, the judge ruled that giving the Oscar those years, under those circumstances, without a registration or notice, put the statuette in the public domain, and that we didn’t have a copyright. That was a very trying few months until we got that reversed by the 9th Circuit.

The good news was the 9th Circuit opinion is a very strong opinion on the validity of the copyright that we’re able to brandish to infringers when they raise issues about the validity of our copyright. I really think the Academy’s copyright in the Oscar can’t seriously be challenged now.

Quinto: The 9th Circuit straightened that out with a declaration that has a strong mark: The Oscar’s entitled to the strongest protection possible. Language we have cited in every cease-and-desist letter.

 

SL: Do you guys have an Oscar pool at your firm?

Quinn: We used to do it. I’m sure there are. Dave and I don’t participate.

 

SL: Even back in the day you didn’t participate in the Oscar pool?

Quinn: Oh, I’m sure I did.

 

SL: Who’s the better handicapper?

Quinn: Between Dave and I? I have no idea. I’m pretty good, though.

 

SL: Mr. Quinto?

Quinto: Well, I used to have a secret advantage. I would go to the Academy and ask people there who they thought was likely to win.

Quinn: They’re very good on foreign language, documentaries, shorts, things that most people don’t necessarily see. You can get intelligence from them.

 

SL: Are either of you members of the Academy?

Quinn: I am a member of the Academy, but I’m a so-called associate member, which is a non-voting status.

Quinto: I’m out in the cold.

 

SL: Is there anything that I didn’t ask that you would like to talk about?

Quinn: The Academy is one of those very, very rare organizations. It’s a not-for-profit company, an organization [that] very much lives up to its name: the Academy of Motion Picture Arts and Sciences. When people from the industry come to the Academy to do Academy business, they put that business hat aside. It’s inspiring to see how the focus is just upon recognizing great achievements in motion pictures. It’s an organization that, more than any other I’ve ever been aware of, focuses on the merits of its mission to the exclusion of everything else. It’s not about making money. You can’t buy a T-shirt or a cap with an Oscar statuette on it. They can make all kinds of money merchandising the Oscars and they’re not interested in doing that. It really is a high-minded organization.

View Lawyer Profiles:

John B. Quinn

David W. Quinto

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