Case(s): Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002).
Terri Welles was on the cover of Playboy in 1981 and was chosen to be the Playboy Playmate of the Year for 1981. During the relevant time period, Welles’ website offered information about and free photos of Welles, advertised photos for sale, advertised memberships in her photo club, and promoted her services as a spokesperson. A biographical section described Welles’ selection as Playmate of the Year in 1981 and her years modeling for Playboy Enterprises, Inc. (“PEI”).
PEI sued Welles for constituted trademark infringement, dilution, false designation of origin, and unfair competition. It pointed to four different uses of its trademarked terms on Welles’ website: (1) the terms “Playboy” and “Playmate” in the metatags of the website; (2) the phrase “Playmate of the Year 1981” on the masthead of the website; (3) the phrases “Playboy Playmate of the Year 1981” and “Playmate of the Year 1981” on various banner ads, which may be transferred to other websites; and (4) the repeated use of the abbreviation “PMOY ′81” as the watermark on the pages of the website.
The district court granted defendants’ motion for summary judgment.
Ninth Circuit Decision
PEI appealed the grant of summary judgment on its infringement and dilution claims, and the Ninth Circuit affirmed in part and reversed in part. The Ninth Circuit applied the nominative fair use test from New Kids On The Block v. New America Publishing, Inc., namely, “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.”
Against that background, the Ninth Circuit concluded that except for the use of PEI’s protected terms in the wallpaper of Welles’ website, her uses of PEI’s trademarks are permissible, nominative uses. They imply no current sponsorship or endorsement by PEI, and instead, they serve to identify Welles as a past PEI “Playmate of the Year.” In particular, the Ninth Circuit held that Welles’ use of Playboy’s trademarks in both the masthead of, and in banner advertisements on her site was a permissive nominative use. The Court held that Welles’ use of PEI’s marks was necessary for her to identify herself, and thus, satisfied the first prong of the nominative use test.
The Court held that Welles also 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.”