• Playboy Enterprises, Inc. v. Terri Welles, 279 F.3d 796 (9th Cir. 2002): The Ninth Circuit Affirms Nominative Fair Use Defense to Trademark Infringement
  • May 6, 2003
  • Law Firm: Fenwick & West LLP - Mountain View Office
  • On February 1, 2002, the United States Court of Appeals for the Ninth Circuit affirmed the right of Terri Welles, Playboy Magazine Playmate of the Year in 1981, to use Playboy Enterprises, Inc.'s ("PEI") trademarks on her website under the doctrine of "nominative fair use."

    Welles's website offered information about photos of Welles, advertised memberships in her photo club, and promoted her services as a spokesperson. The website contained a biographical section describing Welles's selection as Playmate of the Year in 1981 and her years modeling for PEI. After the lawsuit began, her website also included discussions of the suit and criticisms of PEI.

    PEI complained of several different uses of its trademarked terms on Welles's website: (1) the terms "Playboy" and "Playmate" in the "metatags" -- hidden code used by some search engines to determine the content of websites in order to direct users to relevant sites; (2) the phrase "Playboy Playmate of the Year 1981" and "Playmate of the Year 1981" on various banner ads, which may be transferred to other websites; and (3) the repeated use of the abbreviation "PMOY '81" as the "wallpaper" on pages of her website. PEI claimed that these uses constituted trademark infringement, dilution, false designation or origin and unfair competition.

    Citing its decision in New Kids on the Block v. New America Publishing, Inc. 471 F.2d 302, 306 (9th Cir. 1992), the court concluded that all uses, except Welles's use of "PMOY '81" as "wallpaper" on Welles's website constituted permissible, nominative fair uses and therefore did not infringe PEI's trademark rights uses. Specifically, the court found that Welles's use of headlines, banner advertisements and metatags was nominative, observing that no descriptive substitute existed for PEI's trademarks in this context and that Welles could not identify herself as a former Playmate of the Year without using certain PEI marks. As the district court had observed, "[t]o 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."

    Further, the court observed that Welles had used no more PEI marks than necessary in the banner adds, titles and metatags, noting that they use only the trademarked words, not the font or symbols associated with the trademarks. However, the Court found that Welles's use of "PMOY '81" as "wallpaper" exceeded the limits of fair use, as it was unnecessary to identify Welles as a former playmate. The court remanded to the district court for a determination of the extent to which PMOY is protectable as a trademark of PEI.