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In a unanimous decision was issued by the Ninth Circuit Court of Appeals, the use of the term "Playmate of the Year" by Terri Welles, a former Playboy Playmate, was determined to be non-infringing of marks registered to Playboy Enterprises Inc. (PEI) with regard to the content and metatags of her web site, toriwelles.com.
The court found that the bare statement of the fact that Ms. Wellles was a former Playmate of the Year, a term trademarked by PEI, did not constitute endorsement by PEI. Additionally, the court noted that it made no difference that the web site competed with Playboy's own site and charged a $19.95 membership fee. The court found that it would be just as unlikely that the Chicago Bulls endorsed a web site run by Michael Jordan if he was referred to as a "former Chicago Bull." Of note, Ms. Welles also did have a disclaimer on the bottom of her web pages that specifically disclaimed any association with PEI. The court did find that the use of "PMOY" in the background of Ms. Welles' web site did constitute infringing use.
The court did not award attorneys fees to Ms. Welles as it did not find the filing of suit by PEI to be frivolous. When the case was first filed in 1998, the law regarding use of trademarked terms in metatags was undetermined and far from settled. The use of metatags in search enginge such as Yahoo! and Lycos could reap lucrative rewards.
Not all legal professionals are satisfied by this result, which seems to create a "nominative legal use" right of trademarks. This is similar to the "fair use" exceptions that apply to copyright law where usage without permission from the owner of the copyright would not result in an infringing use. However, it would seem that the result might be gratifying from a public policy perspective as use of a trademark as an identifying factor that does not cause confusion as to the origin of a good or service is beneficial to the public. A body shop that repairs Porsche sports cars should be able to state this fact clearly to the public without worrying about trademark infringment.
Decisions of the case may be obtained here:
The court found that the bare statement of the fact that Ms. Wellles was a former Playmate of the Year, a term trademarked by PEI, did not constitute endorsement by PEI. Additionally, the court noted that it made no difference that the web site competed with Playboy's own site and charged a $19.95 membership fee. The court found that it would be just as unlikely that the Chicago Bulls endorsed a web site run by Michael Jordan if he was referred to as a "former Chicago Bull." Of note, Ms. Welles also did have a disclaimer on the bottom of her web pages that specifically disclaimed any association with PEI. The court did find that the use of "PMOY" in the background of Ms. Welles' web site did constitute infringing use.
The court did not award attorneys fees to Ms. Welles as it did not find the filing of suit by PEI to be frivolous. When the case was first filed in 1998, the law regarding use of trademarked terms in metatags was undetermined and far from settled. The use of metatags in search enginge such as Yahoo! and Lycos could reap lucrative rewards.
Not all legal professionals are satisfied by this result, which seems to create a "nominative legal use" right of trademarks. This is similar to the "fair use" exceptions that apply to copyright law where usage without permission from the owner of the copyright would not result in an infringing use. However, it would seem that the result might be gratifying from a public policy perspective as use of a trademark as an identifying factor that does not cause confusion as to the origin of a good or service is beneficial to the public. A body shop that repairs Porsche sports cars should be able to state this fact clearly to the public without worrying about trademark infringment.
Decisions of the case may be obtained here:
