Showtime’s terrorist thriller Homeland and ABC’s comedy Modern Family walked off with the top Emmy prizes recently, capping another busy year for the television industry. Dixon Q. Dern, Esq., the Academy’s counsel for 35 years, (left), chatted with the Biederman Blog recently to explain how he protects the Emmys brand during awards season and throughout the year. Fun fact: He’s not just their lawyer, he’s also a winner.
Question — What are the intellectual property pillars of the Emmy?
Answer — We have the Emmy mark and we have the Emmy statuette. Those are copyrighted, but copyright of a logo, as you probably know, is not as strong as a trademark. The copyright on the Emmy statuette is not as strong as the trademark, so basically we rely on the trademarks for purposes of protecting them and going after people if they start misusing them.
The marks had not been registered until I got involved in the ’70s. The Television Academy started as a local Academy here (in Los Angeles). It moved to NYC and became the National Academy of Television Arts and Sciences. We filed a lawsuit, the result was that NATAS kept the daytime, sports and journalism Emmys and our TV Academy out here, ATAS, ended up with the Primetime Emmys, the Foundation and the L.A. Area Chapter. At that point, I registered the Emmy marks, but in the settlement agreement between the two Academies, both own the Emmys marks. It’s one of those rare situations where the mark is actually registered by co-owners ATAS and NATAS. It’s not typical.
Q.—How do you police and control the marks?
A.— We have very strict control on the use of both the name Emmy and any use of the likeness of the statuette. It’s broken down by different categories. [To see the full policies, click here.]
Q.— Among corporate partners, brands like Audi and Grey Goose, honorees and others who want to use the marks, nominees and honorees are the most high profile. What are they allowed to do with the marks?
A.— The main goal with both nominees and honorees is let them share with the world the fact that they’ve either been nominated or won — but not for an indefinite period of time, not without some qualification. Someone who won an Emmy 10 years ago without qualifying the year may overlap into new Emmy winners in the same category so the Academy has always been sensitive to that. Nominees (who do not end up winning) can mention that they are in the running for an Emmy and can use the statuette in an ad, as you see in the trades. Once the nomination period is over, that’s the end of their ability to use the statuette, although in the future they may refer to the fact that they were a nominee for a particular Emmy.
Q.— What about winners and honorees ? Can they use the marks forever?
A.— Those who win an Emmy then have the right to use the fact that they won the Emmy forever — though they should really identify the year. They can’t use the likeness of the statuette for more than a year, so we control the use of the likeness that way. As to corporate partners and others, we do incorporate trademark protection and approval provisions in our contracts.
Q.— You’re protective of the statuette?
A.— The requirement is that the Emmy statuette (presented visually) face left and not right and usually bears the federal trademark symbol ® and the reference to “ATAS/NATAS” or the like.
Q.— Oscar winners never may sell their Oscars. Can Emmy be sold?
A.— On the base of our statuette it says that the statuette is owned by the Academy and it retains its ownership. If they want to sell or otherwise get rid of it, they have to give it back. Unlike the Motion Picture Academy – I think they offer ten bucks – we don’t offer anything. We just say, “It’s not yours to sell.”
Q.— What’s your position on policing the unofficial gift suites and parties all across Los Angeles during awards week? Some try to associate with the Emmys, yet tip-toe around the trademarks by dubbing themselves, say, “Suite … in celebration of the Emmys?”
A.— There’s not much we can do to stop that. We looked into it at one point with a litigation firm out here, the same firm that represents the Oscars. As far as getting those [events] that are out in hotels, at rehearsals and the like, it’s almost impossible to prevent it. As long as they don’t represent that they have an affiliation with the Academy or the show — if they say they are a gift suite during the 2012 Emmy Awards — there’s not much I can do about it. There’s four or five of them every year of which I am aware. Currently,the Television Academy has no affiliation with any gift suite organization. I believe that NARAS (the Grammys) has no affiliation with gift suites either.
Q.— Do you work or cooperate with legal counterparts at the other Academies with major awards shows — the Grammys, Oscars and Golden Globes?
A.— I really have no contact with the [Golden Globes] counsel. Full disclosure: at one time, for several years, I represented the companies producing the Globes, but no longer do. Both the law firm and in-house counsel for AMPAS [the Oscars] and I do coordinate from time to time. However, other than an interest in protecting our respective IP, each Academy has different interests. For example , the Grammys, I believe, have all sorts of merchandise whereas neither ATAS nor NATAS do any merchandising. We obviously interface with our affiliated organization, the International Academy of Television Arts and Sciences and with NATAS all the time
Q.— Do you have advice on how to stay happy as a lawyer?
A.— I was pleased to be interviewed recently for the Southwestern Law School Entertainment Lawyer Archives and they asked the same question. The only way to really get in to Entertainment Law and be competitive is to be totally involved in it — if you want to be on the transactional side, be entirely willing to learn and know know all the details of the business necessary for intelligent negotiation and be willing to learn to draft well. I’ve been practicing for a long time. I came down here in ’56 and I’ve enjoyed every minute of it. If it’s something you like doing, you get in to an aspect of it you like. I lucked out.
Q.— You were recognized for your long service to the Academy with an honorary Emmy in 2009. Congratulations. Thoughts?
A.— I think they’ve only given about 10, so it’s a prestigious award to have, and I am very appreciative. Also, it looks good in my office.
Dixon Q. Dern (BA, Stanford, 1950 , J.D., 1953) has specialized in business and entertainment law since 1956, first as in-house counsel for entertainment companies including UPA (home of Mr. Magoo), CBS, Desilu and United Artist TV, and then, since 1967, in private practice. He has served as a neutral Arbitrator in entertainment labor matters and is a neutral Arbitrator on the Producers/Writers Guild of America and Producers/Directors Guild of America panels, as well as having formerly served for a number of years as a member of the AAA Labor Panel and as a current member of the Panel of Neutrals of AAA for commercial cases. He is a respected mediator and instructor in conflict resolution. Excerpts from a four-hour interview of him may be viewed at the Archive of American Television.