LITIGATION INTELLECTUAL PROPERTY >> ALERT RECENT CASES EXPAND USE OF “ARTISTIC RELEVANCE” TEST AS A DEFENSE FOR TRADEMARK INFRINGEMENT In the case Webceleb Inc. v. The Procter & Gamble Company et. al., a California federal court recently held that the use of the term “Web Celeb” as a title for an award category in the People’s Choice Awards did not infringe the plaintiff’s trademark in “WEBCELEB,” as it satisfied the “Artistic Relevance” test. The district court found that the Artistic Relevance test was an applicable defense in this case because: the challenged mark was used in a title to a work of art and was artistically relevant in some way to the underlying work of art; and the challenged mark was not misleading as to source or content. In prior decisions by courts in the Ninth Circuit and elsewhere, the Artistic Relevance test, which is based upon protections under the First Amendment for artistic works, has been applied to titles of movies, books, songs, and to the content contained in such artistic works. For example, in June 2012, a New York federal court applied the Artistic Relevance test to allow the use of a mark within a scene in the movie Hangover II, and the Eleventh Circuit applied the Artistic Relevance test to find that an artist’s use of the colors and uniforms of the University of Alabama’s football team on paintings, prints and calendars was not infringing. BACKGROUND OF RECENT DECISIONS The Webceleb case involved the company Webceleb, which operates an online social marketplace for musicians to use its platform to distribute their music directly to fans. Procter & Gamble (P&G) sponsors and produces The People’s Choice Awards, an entertainment award show that determines winners based upon votes from the general public. In January 2010, the award show featured a category titled “Web Celeb,” which honored celebrities having a strong internet presence. In November 2010, Webceleb filed a trademark infringement lawsuit against P&G, Berman Braun and Microsoft Corporation claiming the use of “Web Celeb” as a category in The People’s Choice Awards infringed its WEBCELEB mark. Webceleb argued that the Artistic Relevance test did not apply and that the traditional likelihood of confusion analysis used to establish trademark infringement should determine whether the “Web Celeb” award category infringed its mark. Citing the Second Circuit’s 1989 holding in Rogers v. Grimaldi, the defendants argued that no likelihood of confusion analysis was necessary and that the “Web Celeb” award was not infringing since it met the Artistic Relevance test as it was relevant artistically to the awards show and it did not explicitly mislead viewers as to its source. NOVEMBER 2012 Attorney Advertising 1093 THE BOTTOM LINE When a challenged mark is used artistically and has a connection to an underlying work, the Artistic Relevance test may be used as a defense to a claim for trademark infringement, as long as the challenged mark is not explicitly misleading as to source. This test can apply to a variety of artistic works, including movies, literary works, graphic works and television shows. >> continues on next page