Playboy Enterprises, Inc. v. Welles

Playboy Enterprises Inc. v. Terri Welles Inc.
United States District Court for the Southern District of California
Full case name	'Playboy Enterprises Inc., v. Terri Welles Inc., Terri Welles, Steven Huntington, Michael Mihalko, and PIPPI, Inc.'
Date decided	December 1, 1999
Judge sitting	Judith N. Keep
Case holding
Welles’ nominative use of Playboy’s trademarked terms in the metatags of her web site was fair use because web users must utilize identifying words to find their intended web site. Not all web searches utilizing the words “Playboy,” “Playmate,” and “Playboy Playmate of the Year 1981” are intended to find “Playboy” goods or the official “Playboy” site. There was no likelihood of confusion between Defendant's website and Playboy's trademark. Defendant’s fame and recognition derive from her popularity as a Playboy model and Playmate of the year, thus her use of the trademarked terms was descriptive (nominative).
Keywords
trademark infringement, trademark dilution, metatags, cyberlaw

Playboy Enterprises, Inc. v. Welles was a United States district court case between former 1981 Playboy Playmate of the Year ("PMOY") Terri Welles and Playboy Enterprises, Inc. in which Welles was accused of trademark infringement and trademark dilution in her use of Playboy's trademarked terms in the metatags of her website.

Welles 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, banner ads, and the masthead. Playboy sued Welles, claiming both trademark infringement and trademark dilution.

Defendant was featured on the cover of a 1981 Playboy magazine. Defendant was a Playboy 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 and trademark dilution.

The Court held that nominative use (a type of fair use for discussing the product itself) is permitted where:

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., to support the contention that the Defendant’s use of Playboy trademark in her web site infringes on its trademark by causing likelihood of confusion shown on the basis of initial interest confusion.

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