Playmate succeeds in metatag case
In Playboy Enterprises Inc v Terri Welles, the Ninth Circuit Court of Appeals found the use of Playboy's trademarks as metatags in a commercial website to be permissible, nominative use.
Terri Welles, a model and website entrepreneur, was named Playboy's 1981 Playmate of the Year and now markets herself through her website 'www.terriwelles.com'. Welles refers to her Playmate title within her website and uses the terms 'playboy' and 'playmate' as metatags. As a result, an internet search for the terms produces links to her site, in addition to Playboy's sites.
Playboy alleged that use of its trademarks as metatags unfairly diverted potential customers to Welles's site and implied that the site was affiliated with Playboy.
The court of appeals applied the three-factor test from New Kids on the Block v News America Publishing to determine whether Welles's use of the trademarks was nominative:
- The product or service must not be readily identifiable without use of the trademark;
- Use of the trademark must be limited to that which is reasonably necessary to identify the product or service; and
- The user must not do anything that, in conjunction with the trademark, implies sponsorship or endorsement by the trademark holder.
The court chose the 'nominative use' test over the more traditional 'likelihood of confusion' test, noting that nominative uses may be commercial in nature.
Applying the test, the court found that no descriptive substitute for the Playboy marks existed. The court observed that Welles could not refer to her past accomplishments without resorting to absurd descriptive phrases such as "nude model selected by Mr Hefner's magazine as its number-one prototypical woman for the year 1981." The court felt that if identifying uses of trademarks were not allowed in the internet search context, web pages would be more difficult to find, and this could ultimately hinder the "free flow of information on the Internet".
In its analysis of the second factor, the court found that Welles used the marks a limited number of times as metatags, resulting in search results which did not regularly list her site above Playboy's sites. Therefore she used the marks only as was reasonably necessary.
The third factor was also satisfied as the website's reference to the year in which Welles was Playmate of the Year implied former association and not current sponsorship. The site disclaims affiliation with Playboy, although the court noted that an affirmative disclaimer was not required.
This case is significant in that it permits use of trademarks as metatags to draw users to a website. Past cases have disallowed use of Playboy trademarks as metatags (Playboy Enterprises Inc v Calvin Designer Label, 985 F Supp 1220) and the Ninth Circuit previously disallowed use of a trademark holder's mark as a metatag on the grounds that the defendant created initial interest confusion.
Ruth Ann Keene, Morrison & Foerster, New York
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