Trademark Law and Practice, Pages 221–224

Playboy Enterprises, Inc. v. Welles

United States Court of Appeals for the Ninth Circuit, 2002

Facts:

Defendant was on the cover of Playboy in 1981 and the title "Playboy Playmate" for the year. She then advertised this fact on her website. Plaintiff sued over defendant's use of the marks on the site in its metadata, header, and ads, as well as for the abbreviation "PMOY '81" being used as a watermark.

Procedural History:

District court granted defendants summary judgment.

Issue:

Is using a trademarked title to truthfully describe yourself protected by nominative fair use?

Reasoning:

Defendant was not using the mark to refer to her own product but only to plaintiff's. This would be nominative use. Each part must be evaluated separately whether it is nominative fair use or not:

  1. The headers and banner ads have to use plaintiff's trademarks. There is no other practical way to describe the title. She also only uses the name, not the trademarked font or symbols associated therewith. Nothing about the marks implies sponsorship from plaintiff. They clearly identify a title received long ago, and she even has a disclaimer disavowing any endorsement. The headers and banner ads are nominative fair use then.
  2. As with the previous item, defendant has no practical way to describe herself without referencing plaintiff. Much of her site describes her past with plaintiff, so the tags accurately describe the site. It would be difficult for users to find non-official sites about trademarked terms without being about to search for the terms themselves. As this is necessary then, it satisfies the second element. It also satisfies the third, as nothing suggests sponsorship, however this might be different if she repeated terms enough to get above plaintiff's official site.
  3. Defendant does not need to have a background on her with with plaintiff's trademark however. This is not necessary to describe her and does not even help anyway. As this fails on the first element of the test, it can be said to be infringing if the law protects this abbreviation.

Holding:

Yes, one may use a deserved trademarked title to describe oneself as necessary. Affirmed in part; reversed in part.

Note:

This deals with a very old search engine page ranking system where websites could put keywords in their metadata to get ranked higher in those areas.


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