LITIGATIONINTELLECTUAL PROPERTY >> ALERT

RECENT CASES EXPAND USE OF “ARTISTIC RELEVANCE” TEST AS A DEFENSE FOR TRADEMARK INFRINGEMENTIn 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 DECISIONSThe 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 Advertising1093

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.

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>> ALERT

NOVEMBER 2012

LITIGATIONINTELLECTUAL PROPERTY

In Rogers, the movie star Ginger Rogers brought a Lanham Act false endorsement claim for the use of her first name in the movie title “Ginger and Fred,” a film by the famed Italian film-maker Federico Fellini. She argued that the title was likely to confuse the public into believing that she sponsored, endorsed or was otherwise involved in the film. In dismissing Roger’s claim, the Second Circuit held that the title was artistically relevant to the movie, as the movie told the story of two fictional Italian cabaret dancers who became known as Ginger and Fred for their dancing style during World War II. Based on the holding in Rogers, the court in Webceleb agreed with the defendants that a likelihood of confusion analysis was not appropriate as the “Web Celeb” award had some artistic relevance to the underlying work (i.e., the awards show) and the use of “Web Celeb” was not explicitly misleading as to source. Webceleb has appealed the court’s decision.

Similar to the Webceleb holding, in Louis Vuitton Mallatier S.A. v. Warner Brothers Entertainment Inc., a federal

court in New York found that the use of a knock-off Louis Vuitton bag (referred to humorously as a “Lewis Vuitton” bag) in a scene in the movie Hangover II satisfied the Artistic Relevance test because it:

>>>> had some artistic relevance to the plot as a humorous device; and

>>>> was not explicitly misleading because viewers would not believe that Louis Vuitton produced or endorsed the film.

Finally, the Eleventh Circuit in University of Alabama Board of Trustees v. New Life Art, Inc. held in June 2012 that an artist’s renderings of the University of Alabama’s football team uniforms and school colors on paintings, prints and calendars did not violate the school’s trademarks because they were also protected by the First Amendment as artistic expression.

CONCLUSIONFor those involved in creating artistic works, the Artistic Relevance test is an important defense to a claim of trademark infringement, but it does

not mean that another’s trademark can be used in an artistic work if it is used in a way that is misleading as to source or content. For trademark owners seeking to protect their marks that are used by others in artistic works, the focus should be on whether the use in question is really artistic expression, or instead, is really designed to unfairly trade off the goodwill that the brand owner has built in its mark.

FOR MORE INFORMATION Marc J. Rachman Partner 212.468.4890 mrachman@dglaw.com

Dominick R. Cromartie Associate 212.468.4837 dcromartie@dglaw.com

or the D&G attorney with whom you have regular contact.

Davis & Gilbert LLPT: 212.468.48001740 Broadway, New York, NY 10019www.dglaw.com

© 2012 Davis & Gilbert LLP