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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Playboy Enterprises, Inc. v. Terri Welles

7 F. Supp. 2d 1098 (S.D. Ca., February 27, 1998), aff'd. in part, reversed in part, 162 F.3d 1169 (9th Cir., Feb. 1, 2002)

Defendant is a model who appeared in numerous magazines published by plaintiff Playboy Enterprises, Inc. ("Playboy"). In one of these publications, defendant was described as "Playmate of the Month." In 1981, defendant won the "Playmate of the Year" award.

Defendant created a website at http://www.terriwelles.com. Her site features pictures of herself and others clothed and unclothed, as well as links to various erotic websites and banner ads. Defendant's site is titled "Terri Welles - Playmate of the Year 1981." "PM0Y 81", an abbreviation regularly used by plaintiff for "Playmate of the Year", appears as a repeating watermark in the background of each of the pages of defendant's site. In addition, defendant uses the terms "Playboy" and "Playmate" in hidden meta tags to describe her site for search engines. Many of the pages of defendant's site contain a disclaimer, stating that the site is not affiliated with or sponsored by plaintiff Playboy.

Playboy, which operates competing websites which similarly offer the public pictures of unclothed women, objected to defendant's use of Playboy's federally registered trademarks "Playboy", "Playmate" and "Playmate of the Year" in this fashion. Plaintiff also objected to defendant's use of "PM0Y 81." Charging that defendant's conduct constituted trademark infringement, false designation of origin, unfair competition and dilution, plaintiff sought to enjoin defendant from continuing its use of plaintiff's marks.

The court held that defendant's conduct constituted a fair use of plaintiff's trademarks and denied plaintiff's application. Pursuant to 15 U.S.C. ?1115 (b)(4), a party can use another's trademark when it "is descriptive of and used fairly and in good faith only to describe the goods or services of such party ... ". Because the marks "Playmate of the Year" and "Playmate of the Month" are descriptive of who defendant is, her use of them is a permitted fair use. Said the Court:

[T]he terms "Playmate", "Playmate of the Month", and "Playmate of the Year" are titles which "Playboy" magazine awards to certain "Playboy" models, who then use the title to describe themselves. Much like Academy Award winners, crowned Miss Americas, and Heisman Trophy winners, "Playboy" Playmates are given a title which becomes part of their identity and adds value to their name. Indisputably, these winners represent the awarding organization of sponsor, but the title becomes part of who they are to the public.

The Court further upheld defendant's right to use the terms "Playboy" and "Playmate" as meta tags.

With respect to the meta tags, the court finds there to be no trademark infringement where defendant has used plaintiff's trademarks in good faith to index the content of her website. ... Much like the subject index of a card catalog, the meta tags give the websurfer using a search engine a clearer indication of the content of a website. The use of the term "Playboy" is not an infringement because it references not only her identity as a "Playboy Playmate of the Year 1981," but it may also reference the legitimate editorial uses of the term "Playboy" contained in the text of defendant's website.

Lastly, the court held that plaintiff had not established that surfers were likely to be confused by defendant's use of the marks, the sin qua non of plaintiff's infringement claims. In so holding, the court relied on defendant's disclaimers, her decision to use fonts that were different from those appearing in plaintiff's publications, the fact that she did not use plaintiff's bunny logo and the lack of evidence of actual confusion.

The full text of this decision can be found on a website maintained by David J. Loundy.

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