Playboy Enterprises, Inc. v. Welles
Encyclopedia
Facts
Former 1981 Playboy Playmate of the Year ("PMOY") Terri WellesTerri Welles
Terri Welles is an American actress and adult model.Welles was born in Santa Monica, California. She first appeared on the cover of the May 1980 issue of Playboy, wearing a flight attendant costume to illustrate a pictorial on stewardesses...
maintained a website which identified her as a former PMOY and displayed the registered trademarked terms Playboy, Playmate of the Year, and Playmate of the Month and the unregistered trademark "PMOY" in metatags, wallpaper
Computer wallpaper
Wallpaper is an image used as a background of a graphical user interface on a computer screen or mobile communications device. On a computer it is usually for the desktop, while for a mobile phone it is usually the background for the 'home' or 'idle' screen...
, banner ads, and the masthead
Masthead
-Media:* the masthead , a list, usually found on the editorial page of a newspaper or other periodical, listing the publisher, editorial board, advertising rates, etc....
. Playboy sued Welles, claiming both trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
and trademark dilution
Trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
.
Defendant was featured on the cover of a 1981 Playboy magazine. Defendant was a Playboy
Playboy
Playboy is an American men's magazine that features photographs of nude women as well as journalism and fiction. It was founded in Chicago in 1953 by Hugh Hefner and his associates, and funded in part by a $1,000 loan from Hefner's mother. The magazine has grown into Playboy Enterprises, Inc., with...
model and Playmate of the Year who used these trademarked terms to describe herself via her personal website. Plaintiff’s sued Defendant for Defendant’s under two theories: trademark infringement
Trademark infringement
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees...
and trademark dilution
Trademark dilution
Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
.
Opinion of the Court
The Court held that nominative use (a type of fair useFair use
Fair use is a limitation and exception to the exclusive right granted by copyright law to the author of a creative work. In United States copyright law, fair use is a doctrine that permits limited use of copyrighted material without acquiring permission from the rights holders...
for discussing the product itself) is permitted where:
- The product or service can not be readily identified without using the trademark (i.e. trademark is descriptive of a person, place, or product attribute);
- Only so much of the mark may be used as is reasonably necessary for identification (e.g. the words may be reasonably used but not the specific fontFontIn typography, a font is traditionally defined as a quantity of sorts composing a complete character set of a single size and style of a particular typeface...
or logoLogoA logo is a graphic mark or emblem commonly used by commercial enterprises, organizations and even individuals to aid and promote instant public recognition...
); and - The user does nothing to suggest sponsorship or endorsement by the trademark holder - which applies even if the nominative use is commercial.
Here, the Ninth Circuit Court applied the nominative fair use test to the defendant and concluded the Defendant’s use of these trademarked items was permissible because there was no other practical way for the Defendant to describe herself.
The Plaintiff was relying on the decision in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)
Brookfield Communications, Inc. v. West Coast Entertainment Corp.
The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation 174 F.3d 1036 , heard by the United States Court of Appeals for the Ninth Circuit established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial...
, to support the contention that the Defendant’s use of Playboy
Playboy
Playboy is an American men's magazine that features photographs of nude women as well as journalism and fiction. It was founded in Chicago in 1953 by Hugh Hefner and his associates, and funded in part by a $1,000 loan from Hefner's mother. The magazine has grown into Playboy Enterprises, Inc., with...
trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
in her web site infringes on its trademark by causing likelihood of confusion shown on the basis of initial interest confusion.
Initial interest of confusion: a confusion of consumer attention, even though no actual sale is finally completed as a result of the confusion and even though, once reaching the site, the consumer is not actually confused or is not likely to be confused as to the correct sponsor of the site to which he or she was led initially. Dr. Seuss Enters. V. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997), cert. denied, 521 U.S. 1146 (1997).
However, the court added that the Plaintiff’s reliance on Brookfield
Brookfield Communications, Inc. v. West Coast Entertainment Corp.
The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation 174 F.3d 1036 , heard by the United States Court of Appeals for the Ninth Circuit established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial...
was misplaced as applied to Welles case. None of the cases which Brookfield discusses involved fair use defense or a use of trademarks in the metatags which accurately and fairly described the contents of the web page or web site.
The court defined Plaintiff’s use of the theory of ‘initial interest of confusion’ as “confusion of ‘consumer attention, even though no actual sale is finally completed as a result of the confusion.” In order for this type confusion to be actionable under the Lanham Act several factors must be reviewed:
(1) Evidence of the initial interest confusion as being “damaging and wrongful,” (2) Evidence that confusion between two products “will mistakenly lead the consumer to believe there is some connection between the two and therefore develop an interest in the [defendant’s line that it would otherwise not have,” or (3) Evidence that the “situation offers an opportunity for sale not otherwise available by enabling defendant to interest prospective customers by confusion with the plaintiff’s product.”
In this case, the Plaintiff failed to present any facts indicating:
(1) Any initial interest confusion was “damaging and wrongful;”(2) Anyone believes or is likely to believe there is a connection Welles’ site and Playboy’s. (3) Welles received “opportunities for sale not otherwise available” by confusing web users; or (4) Any of Welles’ actual customers were in the “appreciable number,” or majority of people who when plugging in one of the Plaintiff’s trademark terms into a web browser search engine, was “looking for Playboy’s official site.”
There was also no evidence Welles intended to divert Plaintiff’s customers to her web site by trading on Playboy’s goodwill. This intent was relevant since the court in Brookfield
Brookfield Communications, Inc. v. West Coast Entertainment Corp.
The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation 174 F.3d 1036 , heard by the United States Court of Appeals for the Ninth Circuit established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial...
stated that in “Dr. Seuss, the Ninth Circuit explicitly recognized that the use of another’s trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may be still an infringement.” Brookfield
Brookfield Communications, Inc. v. West Coast Entertainment Corp.
The case Brookfield Communications, Inc. v. West Coast Entertainment Corporation 174 F.3d 1036 , heard by the United States Court of Appeals for the Ninth Circuit established that trademark infringement could occur through the use of trademarked terms in the HTML metatags of web pages when initial...
at 1062.
Conclusion
The court wanted to render an analysis that was flexible and reflective of “emerging technologies”, but also wanted to uphold common sense principles of trademark law.On appeal, the Ninth Circuit affirmed the district court’s conclusion with respect to Welles’s use of metatags because the court considered the use nominative.
External links
Text of the Playboy Enterprises Inc. v. Welles opinion- Terri Welles official site, still featuring the "Playmate of the Year" markhttp://caselaw.findlaw.com/us-9th-circuit/1068417.html Text of the Brookfield Communications Inc., v. West Coast Entertainment Corporation opinion]