Computer & Online Industry Litigation Reporter
June 2, 1998
Playboy is not likely to prove that a model and former Playboy Playmate of the Year is infringing its trademarks by using them on her web site, a federal judge has ruled, denying a preliminary injunction. Playboy Enterprises v. Welles, No. 98-CV-0413-K JFS (SD CA, April 22, 1998).
U.S. District Judge Judith N. Keep in San Diego said the model, defendant Terri Welles, was making fair use of Playboy's marks because she was using them to truthfully describe herself on the web site.
Welles appeared on the cover of Playboy in 1980, was featured as Playmate of the Month in December 1980, and was named Playmate of the Year in June 1981. Since then, she has appeared in 13 more issues of Playboy, plus 18 "newsstand specials" published by the company.
In June 1997, Welles launched a web site at www.terriwelles.com, which includes photographs of herself, an autobiography section, a fan club bulletin board, a listing of her personal appearance schedule, and promotions for her products. Welles uses the marks "Playboy" and "Playmate," along with related terms, in the content of the site and in the invisible metatags that search engines use to index sites.
Playboy Enterprises filed suit, alleging federal trademark infringement, dilution and false designation of origin, and related state and common law claims.
Judge Keep denied Playboy's motion for a preliminary injunction,
saying Welles has used the marks, including her title as Playmate of the
Year, to accurately describe herself, not to induce web surfers into believing
that her site is endorsed or sponsored by Playboy. In fact, the judge
noted, most of the pages on Welles' site include disclaimers stating that
she is not affiliated
with or endorsed by Playboy. Nor does Welles use the famous rabbit head logo or any other Playboy logos or marks, she said.
The judge found little likelihood of confusion, even though both Welles and Playboy are seeking to attract the same people - those willing to pay for adult online material.
"Given that Ms. Welles is the 'Playmate of the Year 1981',
there is no other way that Ms. Welles can identify or describe herself
and her services without venturing into absurd descriptive phrases," Judge
Keep said, noting that Playboy has not contractually restricted Welles'
right to use the title.