microsoftIf you’re a Southern California online marketplace for social sharing of music, it might seem like a publicity dream to get your name mentioned by the likes of Microsoft and consumer goods mega-giant Procter & Gamble. Well, Webceleb Inc. (motto: “Discover. Be Discovered”) thought otherwise and its push for legal protections for its name and brand have hit the latest rejection, with the U.S. Court of Appeals for the Ninth Circuit upholding a summary judgment by a federal court in San Diego for the two Fortune 500 defendants.

procter-gamble_200x200The appellate judges found that the two corporations had engaged in fair use of “ favorite web celeb” as a People’s Choice Award category and in a section of an entertainment website. Webceleb had sued P&G claiming trademark infringement under the Lanham Act and unfair competition under California Business and Professional Code section 17200. But the appellate court held on Feb. 5 that “there is no genuine dispute that defendants’ use meets the classic fair use elements: 1. The use of the mark is not a trademark use; 2. The use is fair and in good faith; and 3. The use is only descriptive.” P&G did not use “web celeb” as a source identifier but rather as one of more than thirty five awards, and its use was purely descriptive, the appellate court said, adding this is a common term for internet celebrities in use for years. In 2007, for example, Forbes magazine released a list of what it termed the top web celebs.

The appellate judges said that use of the term on a section of an entertainment website  put up by MSN (a Microsoft subsidiary) was not infringing because it was found to be “merely descriptive of the magazine’s content.” The appellate court also noted that P&G was unaware of  plaintiff’s trademark when it created the award category, so there is no dispute that they did so in good faith. Under the totality of the circumstances, the appellate judges said, there was little likelihood of confusion and any minimal confusion was a risk the Plaintiff’s must bear for creating their mark.  The ruling may underscore the theory that, in creating a trademark, to avoid confusion, make the mark arbitrary and fanciful rather than descriptive or suggestive.