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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...

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Playboy Enterprises, Inc. v. Terri Welles, et al.

279 F3d 796 (9th Cir., February 1, 2002)

The Ninth Circuit Court of Appeals holds that defendant Terri Welles' use of plaintiff's trademarks "Playboy" and "Playboy Playmate of the Year" in the meta tags, masthead and various banner advertisements appearing on her web site neither infringe nor dilute those marks. These uses of plaintiff's marks by defendant, a model named by plaintiff as "Playmate of the Year" in 1981, are permissible nominative uses necessary to allow Ms. Welles to accurately describe herself and the content of her site. Such nominative uses of a mark are permissible when (1) the product being described is not readily identifiable without use of the trademark; (2) only so much of the mark is used as is reasonably necessary to identify the product; and (3) the user of the mark does nothing that suggests sponsorship by the owner of the mark. Plaintiff's trademark dilution claims failed because a nominative use is exempt from anti-dilution laws, as such a use refers to plaintiff's own product and therefore does not create an improper association between plaintiff's mark and the product of another. In reaching these determinations, the Ninth Circuit affirmed the decision of the district court below.

The Ninth Circuit also held that defendant's repeated use of the alleged mark "PMOY '81" in the wallpaper of her site was not a permitted nominative use because it was not necessary to describe Ms. Welles in light of the court's determination that she can use the phrase "Playboy Playmate of the Year 1981" on her web site. As such, the court reversed so much of the decision of the district court which dismissed the trademark infringement and dilution claims plaintiff asserted as a result of this use, and remanded those claims to the district court for a determination as to whether "PMOY '81" is a mark entitled to trademark protection.

Plaintiff Playboy Enterprises Inc. ("PEI") is the owner of a number of trademarks, including "Playboy" and "Playboy Playmate of the Year," which it utilizes in the operation of its business. Defendant Terri Welles ("Welles") is a model who appeared in plaintiff's "Playboy" magazine and who was chosen by plaintiff as its Playboy Playmate of the Year for 1981.

Welles thereafter commenced operation of a web site which contained photographs of, and biographical information concerning, herself, and discussed her past affiliation with PEI. Ms. Welles' site also advertised membership in a photo club. Ms. Welles placed the marks "Playboy" and "Playmate" in the meta tags of her web site. She did not, however, extensively repeat those marks in the site's tags. She also utilized the mark "Playboy Playmate of the Year 1981" in the masthead, and in banner advertisements that appeared on her web site. She did not, however, use the fonts or symbols PEI uses in connection with those marks -- she used only the words themselves. Lastly, Ms. Welles used the abbreviation "PMOY '81" repeatedly in the wallpaper of her site.

Unhappy with Ms. Welles' conduct, PEI commenced this action, asserting that defendant's use of its marks constituted trademark infringement, dilution, false designation of origin and unfair competition. After PEI commenced suit, Ms. Welles posted a disclaimer on her site, stating that it was neither affiliated with nor sponsored by PEI.

According to the Ninth Circuit, a permissive nominative use of a trademark is excepted from trademark infringement. Quoting from its prior opinion in New Kids On The Block v. New America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) the Ninth Circuit set forth the following test for determining whether use of another's mark is a permissive nominative use:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The court held that under this test, Welles' use of plaintiff's marks in both the masthead of, and in banner advertisements appearing on her site was a permissive nominative use. The Court held that Welles' use of plaintiff's marks was necessary for her to identify herself, and as such, satisfied the first prong of the nominative use test. Quoting with approval from decision of the district court below, the Ninth Circuit stated:

[T]here is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the "nude model selected by Mr. Hefner's magazine as its number-one prototypical woman for the year 1981" would be impractical as well as ineffectual in identifying Terri Welles to the public.

The Court held that Welles had satisfied the second prong of the test by only using so much of the marks as is reasonably necessary to identify herself. According to the Court "Welles' banner advertisements and headlines satisfy this element because they use only the trademarked words, not the font or symbols associated with the trademarks."

Lastly, the Court held that defendant satisfied the third prong of the nominative use test by including the year in which she was named Playmate of the Year, and by posting a disclaimer on her site, disclaiming any current affiliation with plaintiff. Said the Court:

The marks are clearly used to describe the title she received from PEI in 1981, a title that helps describe who she is. ... The designation of the year, in our case, serves the same function as the "former" in our example. It shows that any sponsorship or endorsement occurred in the past.

The Court noted (ftn. 26) that it was not mandating the use of such a disclaimer to meet the nominative use test.

The Court further held that the use of plaintiff's marks "Playboy" and "Playmate" in the site's meta tags was a permissive nominative use. The Court held that the meta tags in question were necessary to permit Ms. Welles to accurately describe herself, and the contents of her site which referenced her past affiliation with PEI. This is particularly true given the assistance meta tags give to those searching the Internet for sites addressing a particular subject.

Forcing Welles and others to use absurd turns of phrase in their meta tags, such as those necessary to identify Welles, would be particularly damaging in the internet search context. Searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute for trademarks. ... Similarly, someone searching for critiques of Playboy on the Internet would have a difficult time if Internet sites could not list the object of their critique in their meta tags.

The Court also held that defendant had satisfied the remaining prongs of the nominative use test, given that she did not repeatedly use the mark in her site's meta tags and therefore did not, by such use, cause her site to appear higher in a search engine response to a search for "Playboy" then plaintiff's own site.

The Court also affirmed the dismissal of the trademark dilution claims plaintiff asserted as a result of defendant's use of the mark in the meta tags, masthead and banner advertisements of her site.

We hold that nominative uses, by definition, do not dilute the trademarks. ... A nominative use, by definition, refers to the trademark holder's product. It does not create an improper association in consumers' minds between a new product and the trademark holder's mark.
When Welles refers to her title, she is in effect referring to a product of PEI's. She does not dilute the title by truthfully identifying herself as its one-time recipient any more than Michael Jordan would dilute the name "Chicago Bulls" by referring to himself as a former member of that team, or the two-time winner of an Academy Award would dilute the award by referring to him or herself as a "two-time Academy Award winner." Awards are not diminished or diluted by the fact that they have been awarded in the past. Similarly, they are not diminished or diluted when past recipients truthfully identify themselves as such. It is in the nature of honors and awards to be identified with the people who receive them.

Lastly, the court held that defendant's repeated use of the abbreviation "PMOY '81" in the wallpaper of her site was not a permissive nominative use. Such use was not necessary to describe Ms. Welles in light of the court's determination that she could utilize the mark "Playboy Playmate of the Year" on her site. The court accordingly reversed so much of the opinion of the district court below which had dismissed plaintiff's trademark infringement and dilution claims arising out of this conduct, and remanded for a determination as to whether the abbreviation "PMOY '81" was entitled to trademark protection.

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