OP CLAMBAKE: My response to lawyers
Chris Owen
enforced closure of www.xenu.net. I'd suggest that other critics keep
it handy as a cookie-cutter text, in case the RTC goes after your sites
too.
Incidentally, if you don't have a disclaimer on your pages, get one up
quick; it's of considerable value in deflecting a "passing off" claim.
-----------
Dear Mr. Courtney,
I am the author of the page accessed via http://www.xenu.net/FBI/.
Although I have granted permission for this document to be distributed
freely - and to be archived on Mr. Andreas Heldal-Lund's website - I
retain exclusive rights to its use.
I understand that the Religious Technology Center (RTC) has demanded the
removal of that page and a number of others, for the following reasons:-
> This is to give you notice that our office represents
>Religious Technology Center ("RTC"), owner of the trademarks of
>the Scientology religion. The terms SCIENTOLOGY, DIANETICS, and
>L. RON HUBBARD are internationally registered trademarks and
>service marks of RTC. Currently, you are using these trade and
>service marks on your web page in "metatags" without the
>authorization of our client. These marks are located under the
>following URLs: [...]
>
> Your unauthorized use of the above-referenced marks as
>"machine readable code" or "metatags" creates a likelihood of
>confusion as to source or sponsorship of his site by our client,
>in violation of United States state and federal law, including
>the Lanham Act, 17 U.S.C. section 1114 et seq. Such conduct was
>expressly prohibited by the court in the recent case entitled
>Playboy Enterprises, Inc. v. Calvin Designer Label, 44 U.S.P.Q.2d
>1156 (1997) in which the Court found that the use of another
>trademarks as "metatags" violated United States law because it
>made the trademark owners's trademarks accessible to "individuals
>or Internet search engines which attempt to access the [trademark
>owner] under the [trademark owner's] registered trademark." The
>Court issued a preliminary injunction ordering the infringer to
>immedately cease and desist such activity. In other words, using
>another's registered trademark as a "metatag" to covertly
>diverting Internet searchers and individuals away from the
>trademark owner's web site, violates the law.
The RTC is in error in citing the above cases in relation to Mr. Heldal-
Lund's site. The cases in question involved clear attempts by the
defendants, for commercial reasons, to "pass off" their websites as
being connected with the plaintiffs. As such they were self-evident
violations of the Lanham Act.
However, Mr. Heldal-Lund's circumstances are very similar to those
involved in _Playboy Enterprises v. Welles_ (No. 98-CV-04130K JFS (SD
CA, April 22, 1998) - text appended below). _Welles_ related to a
former Playboy "Playmate of the Month" - a term trademarked by Playboy
Enterprises International (PEI) - describing herself as such on her own
commercial website. She also used the trademarked terms "Playboy" and
"Playmate" in her metatags. PEI filed suit, alleging federal trademark
infringement, dilution and false designation of origin.
The Court denied PEI's claims of relief, ruling that the defendant was
making fair use of the trademarked terms in question. In _New Kids on
the Block v. New Am. Pub. Inc._ (971 F.2d 302, 305 (9th Cir. 1992),
following a previous precedent, it was stated that
"The 'fair use' defense, in essence, forbids a trademark registrant to
appropriate a descriptive term for his exclusive use and so prevent
others from accurately describing a characteristic of their goods."
This was applied in the _Welles_ case for the simple reason that, as Ms.
Welles was indisputably a Playmate of the Month, she could not describe
herself as being anything other. Similarly, as Mr. Heldal-Lund's
website is about Scientology, Dianetics and L. Ron Hubbard, he cannot
avoid using those three terms. In the _Welles_ case, the court found
that Ms. Welles' use of the trademarked term was fair use.
A crucial theme of Lanham and the cases cited by the RTC is the
possibility of "a likelihood of confusion as to source or sponsorship of
his site by our client", in the words of the RTC's lawyer. However, the
RTC's claim in this and other regards are far weaker than PEI's
unsuccessful claims in _Welles_. Mr. Heldal-Lund has never claimed to
be an agent of the RTC or any other Scientology entity. Nor does a
claim of any official connection with Scientology appear anywhere on his
website. His home page explicitly states:
DIANETICS AND SCIENTOLOGY ARE TRADEMARKS OF THE RELIGIOUS TECHNOLOGY
CENTRE. THESE PAGES AND THEIR AUTHOR ARE NOT CONNECTED WITH THESE
ORGANIZATIONS, OR ANY OTHERS RESIDING UNDER RTC'S CORPORATE UMBRELLA.
indicating that Mr. Heldal-Lund wishes to avoid any suggestion that he
is connected to RTC/Scientology. (Consumers Union of U.S. v. General
Signal Corp, 724 F.2d 1044, 1053, (2nd Cir. 1983) - "Disclaimers are a
favored way of alleviating consumer confusion as to source or
sponsorship.")
Mr. Heldal-Lund does not use any logos trademarked by RTC/Scientology.
His site's look and feel is completely different from any official
RTC/Scientology website. He does not sell, distribute or promote any
goods or services via his website, so by definition cannot be competing
with RTC/Scientology's commercial activities. His website is strongly
critical of Scientology, Dianetics and L. Ron Hubbard and acts as a
gateway to other critical websites; its content could not possibly be
mistaken for officially approved or endorsed material. In short, there
is no point whatsoever on which any confusion could exist.
In a ruling on the principles of trademark protection (Prestonettes v.
Coty, 264 U.S. 359, 368 (1924)), Justice Holmes noted that "[w]hen the
mark is used in a way that does not deceive the public, we see no such
sanctity in the word as to prevent its being used to tell the truth. It
is not taboo." In this instance, Mr. Heldal-Lund's use of the RTC's
trademarks is being conducted in a fashion which, quite plainly, takes
pains to avoid any such deceit.
On the specific point of metatagging, which parallels exactly the
situation obtaining in _Welles_, the court on that occasion declared
that
"there [is] no trademark infringement where defendant has used
plaintiff's trademarks in good faith to index the content of
her website... Much like the subject index of a card catalog,
the meta tags give the websurfer using a search engine a clearer
indication of the content of a website."
The use of trademarks as catalogue terms is well established in the law.
The Library of Congress, the Encyclopedia Britannica and Microsoft all
use the terms Scientology, Dianetics and L. Ron Hubbard to classify
material. Indeed, the online edition of the Britannica also uses those
terms in its metatags. (See
http://search.britannica.com/bcom/eb/article/2/0,5716,68012+1,00.html)
The Lanham Act also imposes a test of "hardship and irreparable harm" on
the part of the aggrieved party. The RTC has not suggested in its letter
any way in which "diverting Internet searchers and individuals away from
the trademark owner's web site" could cause it hardship. Moreover, it
is difficult to see how a non-profit, exclusively charitable corporation
could credibly claim to be suffering commercial damage from people
visiting other websites in preference to its own.
For these reasons, I believe the RTC's complaints have no credibility
and no possibility of success in court, based on existing precedents. I
urge you to restore public access to Mr. Heldal-Lund's site forthwith.
--------------------
[from http://www.isplaw.com/download/PlayboyWellesOrder.htm]
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
PLAYBOY ENTERPRISES, INC. a Delaware corporation,
Plaintiff
v.
TERRI WELLES,
Defendant.
CASE NO. 98-CV-0413-K (JFS) ORDER DENYING PLAINTIFF'S MOTION FOR
PRELIMINARY INJUNCTION
------------------------------------------------------------------------
On February 27, 1998, plaintiff Playboy Enterprises, Inc. (PEI) filed a
Complaint against defendant Terri Welles. The Complaint consists of five
causes of action.. 1) trademark infringement pursuant to 15 U.S.C, §
1114(1); 2) false designation of origin and unfair competition under 15
U.S.C § 1125(a); 3) dilution of trademarks pursuant to 15 U.S.C. 125(c);
4) trademark infringement and unfair competition under California common
law; 5) unfair competition in violation of Cal. Bus. & Prof Code §
17200, et seq.
On March 18, 1998, plaintiff filed a Motion for Preliminary Injunction.
Defendant filed an Opposition on April 6, 1998. Plaintiff filed its
Reply on April 13, ]998. The Court heard oral arguments on April 20,
1998.
I. BACKGROUND
The following background facts are taken from the parties' contentions
in their papers, but the court does not make any ultimate findings of
fact with respect to this case. Plaintiff Playboy Enterprises, Inc.
(PEI) is an international publishing and entertainment company. Since
1953, PEI has published Playboy magazine, a widely popular magazine with
approximately ten (10) million readers each month. PEI also publishes
numerous specialty magazines such as Playboy's Playmate Review,
Playboy's Playmates of the Year, and Playboy's Calendar Playmates among
other publications. In addition to its publishing ventures, PEI produces
television programming for cable and direct-to-home satellite
transmission and sells and licenses various goods and services including
videos.
PEI has established two websites. According to plaintiff, its free
website, http://www.playboy.com, has become one of the most popular
sites on the Web and is used to promote its magazine, goods, and
services. Its other website, called the Playboy Cyber Club,
http://www.cyber.playboy.com, is devoted to promoting current and former
PEI models.
PEI owns federally registered trademarks for the terms Playboy,
Playmate, Playmate of the Month, and Playmate of the Year. The term
Playmate of the Year is sometimes abbreviated 'PMOY'. PEI does not have
a federally registered trademark in the abbreviation PMOY, although PEI
argues that "PMOY" is worthy of trademark protection because it is a
well-known abbreviation for the trademark Playmate of the Year.
Defendant Terri Welles is a self-employed model and spokesperson, who
began her modeling career with Playboy magazine in 1980. In May of 1980,
Ms. Welles appeared on the cover of Playboy magazine and was
subsequently featured as the Playmate of the Month in the December 1980
issue. Ms. Welles received the Playmate of the Year award in June of
1981. Since 1980, Ms. Welles has appeared in no less than thirteen (13)
issues of Playboy magazine and eighteen (18) newsstand specials
published by PEI. Defendant claims that she has always referred to
herself since 1980 as a Playmate or Playmate of the Year with the
knowledge of PEI.
On June 29, 1997, Ms. Welles opened a website,
http://www.terriwelles.com, which includes photographs of herself and
others (both nude and clothed), a fan club posting board, an
autobiography section, and a listing of current events and personal
appearances. The domain name for defendant's site is "terriwelles," the
heading for the website is "Terri Welles--Playmate of the Year 1981,"
and title of the link page is "Terri Welles--Playboy Playmate of the
Year 1981." Each of the pages uses "PMOY '81" as a repeating watermark
in the background. According to defendant, eleven (11) of the fifteen
(15) free web pages include a disclaimer at the bottom of the pages, in
varying font sizes depending on the page, which indicates that the
website is not endorsed by PEI; the disclaimer reads as follows. "This
site is neither endorsed, nor sponsored by, nor affiliated with Playboy
Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR and PLAYMATE OF THE
MONTH are registered trademarks of Playboy Enterprises, Inc," Defendant
uses the terms Plavboy and Playmate along with other terms within the
keywords section of the meta tags, which constitutes the internal index
of the website used by some search engines.
The site contains link pages to other erotic, adult-oriented websites.
It also contains advertising "banners" for those types of websites.
Since May of 1997, defendant has been in contact with plaintiff about
the design and creation of her website. Defendant claims that plaintiff,
through Marcia Terrones, the director of the "Rights and Permission"
department at PEI, informed her that she could identify herself as the
Playmate of the Year 1981 but that she could not reproduce the rabbit
head logo on her proposed website. Various communications between
defendant and plaintiff ensued. According to defendant, PEI, through
Hugh Hefner, initially complimented her website and encouraged her use
of the title Playmate of the Year 1981. However, Mr. Hefner later
informed defendant that use of PEI's trademarks were restricted;
instead, he invited defendant to join PEI's new Cyber Club. Defendant
refused this invitation, and PEI continued to demand that defendant
remove the Playmate of the Year title from the home page as well as
remove the PMOY watermark from the background.
Plaintiff has moved for a preliminary injunction which would enjoin
defendant from 1) using the trademarked term Playmate of the Year in the
title of the home page and the link page; 2) from using the watermark
PMOY '81 in the background; and 3) from using the trademarked terms
Playboy and Playmate in the meta-tagging of defendant's site. Therefore,
the task before the court is to determine whether a preliminary
injunction against defendant is warranted in this instance.
II. STANDARD OF LAW
To be entitled to a preliminary injunction, a party must show either (1)
a combination of probable success on the merits and a possibility of
irreparable harm, or (2) the existence of serious questions on the
merits and the balance of hardships weighing heavily in its favor.
Vision Sports v. Melville, 888 F.2d 609, 612 (9th Cir. 1988). These are
not two distinct tests, but ends of a continuum in which the required
showing of harm "varies inversely with the required showing of
meritoriousness." Rodeo Collection v. West Seventh, 812 F.2d 1215, 1217
(9th Cir. 1987) (citation omitted). "Thus, a moving party need not
demonstrate that [it] risks irreparable injury, but [it] must at least
show that [it] will suffer a degree of hardship that outweighs the
hardship facing the opposing party if the injunction is not issued.
Similarly, a moving party need not demonstrate that [it] will succeed on
the merits, but must at least show that [its] cause presents serious
questions of law worthy of litigation." Topanga Press. Inc. v. City of
L.A., 989 F.2d 1524, 1528 (9th Cir. 1993).
III. DISCUSSION
In general, plaintiff argues that defendant's use of the Playboy and
Playmate trademarks in conjunction with her website is likely to cause
confusion, mistake or deception. See Complaint at ¶ 32. Specifically,
PEI avers that these alleged infringements are harming it and its
trademarks since websurfing consumers are likely to believe that
defendant's website is authorized, sponsored or otherwise approved of by
PEI when it is not. Id. Defendant, on the other hand, contends that her
use of the title Playmate of the Year and the abbreviation PMOY is
merely a descriptive use of those terms so as to identify herself to her
customers. She argues that any other use of PEI's trademarked terms is
merely used in an editorial fashion.
In this motion, plaintiff concentrates on defendant's use of the
Playmate of the Year title in Ms. Welles' web page heading and link
page, her use of the PMOY'81 term as a watermark in the web page
background, and her use of the Playboy and Playmate marks as meta tags.
These appear to be the only infringements alleged by PEI; accordingly,
the court will focus on these three particular issues in this order.
Based on these alleged infringements, plaintiff states five causes of
action against defendant in its Complaint. However, in this motion, PEI
moves for a preliminary injunction on the basis of only three of those
causes of action: (First Cause of Action) federal trademark
infringement; (Second Cause of Action) false designation of origin under
section 43(a) of the Lanham Act; and (Third Cause of Action) dilution
under section 43(c) of the Lanham Act. Defendant refers to these two
causes of action as the trademark causes of action and can be treated
together. Plaintiff does not make direct reference to the remaining
causes of action which are related state law causes of action.
Therefore, the court will not address those issues. The court will now
address whether a preliminary injunction is warranted in this case.
A. Irreparable Harm
"In copyright and trademark cases, irreparable injury is presumed upon a
showing of likelihood of success." Dr. Seuss Enters. v. Penguin Books
USA. Inc., 924 F. Supp. 1559, 1574 (S.D. Cal. 1996), aff'd, 109 F.3d
1394 (9th Cir. 1997). Thus, the court will examine the plaintiff's
likelihood of success on the three causes of action upon which it
relies.
B. Likelihood of Success in Trademark Causes of Action
Plaintiff asserts that defendant is infringing on its registered
trademarks in violation of Section 32(1) of the Lanham Act, 15 U.S.C. §
I 114(1), and that said infringement is causing confusion, mistake, or
deception which constitutes false designation of origin and unfair
competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a). The purpose of trademarks is to allow for customer
identification of the manufacturer or sponsor of a good or the provider
of a service. See New Kids on the Block v New Am. Pub Inc., 971 F.2d
302, 305 (9th Cir. 1992).
It is undisputed that PEI owns federally-registered trademarks for the
words Playboy, Playmate, Playmate of the Month, and Playmate of the
Year. The term Playboy has gained widespread public recognition and is
distinctive due in large part to the long-standing success and
popularity of Playboy magazine and related publications from PEI. See
Playboy Enters. Inc. v. Chuckleberry Publishing Inc., 687 F.2d 563,
566-67 (2d Cir. 1982) (holding that the Playboy mark is distinctive,
widely recognized, and of great value). However, the other trademarks
such as Playmate are not only trademarks related to Playboy magazine,
but they are titles bestowed upon particular models who appear in that
magazine. From the papers submitted and the oral arguments, it appears
that the terms Playmate, Playmate of the Month, and Playmate of the Year
are titles which Playboy magazine awards to certain Playboy models, who
then use the title to describe themselves. Much like Academy Award
winners, all the crowned Miss Americas, and the Heisman Trophy winners,
Playboy Playmates are given a title which becomes part of their identity
and adds value to their name. Indisputably, these winners represent the
awarding organization or sponsor, but the title becomes part of who they
are to the public.
In the case of Playboy Playmates, PEI encourages these select models to
use their titles for their self-promotion and the promotion of its
magazines and assorted goods and services. In the case of Ms, Welles, it
appears that PEI had no objection to her use of the terms Playmate of
the Year or Playboy Playmate until she launched her competing website.
In oral argument, PEI conceded that these models may use their title for
their own benefit, as in the title of an autobiography. PEI also
admitted that Ms. Welles is not contractually restricted from using the
terms Playmate of the Month or Playmate of the Year based on her
previous contracts with PEI. However, it contends that Ms, Welles may
not trade on PEI's marks so as to compete with PEI; specifically, PEI
argues that the prominent use of its marks to attract the attention of
potential customers is a trademark infringement as well as a dilution of
its marks.
In the papers submitted, the parties engage in an extensive analysis of
whether defendant's use of PEI's trademarks creates confusion among
websurfers. Indeed, the dispositive legal issue in the standard
trademark case concerns "customer confusion" See WCVB-TV v. Boston
Athletic Ass'n, 926 F.2d 42, 44 (1st Cir. 1991). The Ninth Circuit has
articulated an eight-factor test which the Court may consider in
determining the likelihood of confusion: 1) the strength of the mark; 2)
proximity or relatedness of the goods; 3) similarity in appearance,
sound, and meaning of the marks; 4) evidence of actual confusion; 5)
degree to which the marketing channels converge; 6) type of good and
degree of care customers are likely to exercise in purchasing them; 7)
evidence of the intention of defendant in selecting and using the
alleged infringing name; and 8) likelihood that the parties will expand
their product lines. See Metro Pub. Ltd. v. San Jose Mercury News, 987
F.2d 637, 640 (9th Cir 1993); see also Century 21 Real Estate Corp.,. v.
Sandlin, 846 F.2d 1175,1178-79 (9th Cir. 1988) (applying a similar six-
factor test). These factors are simply helpful guidelines for the
determination of potential customer confusion. See Metro Pub., 987 F.2d
at 640.
This case, however, is not a standard trademark case and does not lend
itself to the systematic application of the eight factors. In the case
at bar, defendant has used the terms Playmate of the Year and its
abbreviation PMOY on her website. She has also used the terms Playboy
and Playmate as meta tags for her site so that those using search
engines on the Web can find her website if they were looking for a
Playboy Playmate. The problem in this case is that the trademarks that
defendant uses, and the manner in which she uses them, describe her and
identify her. This raises a question of whether there is a "fair use" of
these marks pursuant to 15 U.S.C. §§ 1115(b)(4) and 1125(c)(4). See New
Kids, 971 F.2d at 306 (noting that the "fair use" defense arises when
the trademark also describes a person, a place or an attribute of a
product). Terri Welles was and is the "Playmate of the Year for 1981."
Plaintiff has conceded this fact and has not submitted any evidence for
the Court to conclude that PEI may prevent defendant from using that
term to identify herself and her award; as noted above, PEI conceded
that there are no contractual agreements between it and defendant which
restrict her use of any of the marks. Thus, defendant has raised a "fair
use" defense which must be overcome by the plaintiff before a potential
infringement under Section 43(a) of the Lanham Act or trademark dilution
under Section 43(c) of the Lanham Act may be found.
In a case where the "mark is used only to describe the goods or services
of [a] party, or their geographic origin," trademark law recognizes a
"fair use" defense. Id. (quoting 15 U.S.C. § 1115(b)(4)). Title 15
U.S.C. § 1115(b)(4) states the following:
That the use of the name, term, or device charged to be an infringement
is a use, otherwise than as a mark, of the party's individual name in
his own business, or of the individual name of anyone in privity with
such party, or of a term or device which is descriptive of and used
fairly and in good faith only to describe the goods or services of such
party, or their geographic origin.
Id. '"The 'fair use' defense, in essence, forbids a trademark registrant
to appropriate a descriptive term for his exclusive use and so prevent
others from accurately describing a characteristic of their goods.'" New
Kids, 971 F.2d at 306 (quoting Soweco Inc. v. Shell Oil Co., 617 F.2d
1l78, 1185 (5th Cir. 1980)). In the case at bar, Ms, Welles has used the
trademark term Playmate of the Year to identity and describe herself. As
the court noted above, Ms. Welles earned the title of "Playboy Playmate
of the Year" in 1981 and has used that title ever since, without
objection from PEI.
From the exhibits submitted with the parties' papers and presented at
oral argument, it is evident that Ms, Welles has minimized her
references to Playboy on her website and has not attempted to trick
consumers into believing that they are viewing a Playboy-endorsed
website. In Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350,
352 (9th Cir. 1969), the Ninth Circuit held that the defendant was able
to advertise that he repaired Volkswagen vehicles as long as he did not
do so in a manner "which is likely to suggest to his prospective
customers that he is part of Volkswagen's organization of franchised
dealers and repairmen." Id. In the case at bar, Ms. Welles has not
created a Playboy-related website. She does not use Playboy or Playmate
in her domain name, she does not use the classic Playboy bunny logo, she
inserted disclaimers which clearly state that the website is not
endorsed by PEI, and the font of the Playmate of the Year 1981 title is
not recognizable as a Playboy magazine font.
It is clear that defendant is selling Terri Welles and only Terri Welles
on the website. There is no overt attempt to confuse the websurfer into
believing that her site is a Playboy-related website. In this case,
then, defendant's use of the term Playmate of the Year 1981 "is
descriptive of and used fairly and in good faith only to describe
[herself]." 15 U.S.C. § 11 15(b)(4). As such, the use of the
abbreviation PMOY '81 is also permissible since it makes reference to
her title as Playmate of the Year 1981. Since the court finds that PMOY
81 'is a fair description of Ms. Tern Welles, it is not necessary to
rule on whether the abbreviation PMOY is a protected trademark.
With respect to the meta tags, the court finds there to be no trademark
infringement where defendant has used plaintiffs trademarks in good
faith to index the content of her website. The meta tags are not visible
to the websurfer although some search engines rely on these tags to help
websurfers find certain websites. Much like the subject index of a card
catalog, the meta tags give the websurfer using a search engine a
clearer indication of the content of a website. The use of the term
Playboy is not an infringement because it references not only her
identity as a "Playboy Playmate of the Year 1981," but it may also
reference the legitimate editorial uses of the term Playboy contained in
the text of defendant's website. Plaintiff conceded, both in its papers
and in oral argument, that defendant may properly use the term Playboy
in an editorial fashion (i.e. in reference to the Playboy Mansion).
Therefore, the court finds that defendant has not infringed on
defendant's trademarks by using them in her website meta tags.
Since defendant is entitled to the fair use" defense pursuant to 15
U.S.C. § 1115(b)(4), it is not necessary to determine the likelihood of
confusion in this case. However, even if the Court were to determine the
likelihood of confusion in this case, it does not appear that there is a
likelihood that websurfers would think that Ms. Welles' website is
endorsed or sanctioned in any way by PEI. Even if Ms. Welles were not
entitled to the fair use defense, plaintiff has failed to demonstrate
that there is a likelihood of confusion for websurfers. Certainly, the
PEI trademarks are strong and are used by PEI to sell adult
entertainment on the Internet. Defendant claims she is selling a
different class of goods since she is offering her promotional services
and related goods like her line of cigars. However, it appears that PEI
and Terri Welles are in competition for websurfers who pay money for on-
line erotica, regardless of what the underlying promotion is.
Other factors weigh in defendant's favor. Though she is using the
trademarks, she has done nothing else to make her use identical to the
Playboy trademark. There is no bunny logo, the font for the terms is
different, and there is no other indication that PEI is sponsoring the
website. Plaintiff has presented no empirical evidence to show that
there is actual confusion among consumers. Though not necessary, the
lack of any such demonstration weighs in defendant's favor. Finally, it
appears that defendant has used the trademarks in good faith. She has
removed some of the references per PEI's request, has not used the bunny
logo, and has added a disclaimer to the vast majority of her free web
pages. See Consumers Union of U.S. v. General Signal Corp., 724 F.2d
1044, 1053 (2d Cir. 1983)
("Disclaimers are a favored way of alleviating consumer confusion as to
source or sponsorship."). This indicates good faith in the use of the
trademarks and weighs in favor of defendant. Hence, even if the court
were to apply the Ninth Circuit's eight-factor test, plaintiff has
failed to demonstrate that it would likely succeed in proving that
defendant's use of the trademarks causes a likelihood of confusion for
the consumer. As the court has already noted, the Terri Welles web page
appears to promote Terri Welles only and makes no attempt to connect
itself with Playboy or PEI.
C. Dilution Claim
Given that the court has found that defendant is entitled to the "fair
use" defense pursuant to 15 U.S.C. § 1115(b)(4), plaintiff cannot make a
sufficient dilution claim under 15 U.S.C. § 1125(c) to warrant the
granting of a preliminary injunction. Dilution is defined as "the
lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of... (2)
likelihood of confusion, mistake, or deception." 15 U.S.C. § 1127. Title
15 U.S.C. § 1125(c)(1) provides the following:
The owner of a famous mark shall be entitled, subject to the principles
of equity and upon such terms as the court deems reasonable, to an
injunction against another person's commercial use in commerce of a mark
or trade name, if such use begins after the mark has become and causes
dilution of the distinctive quality of the mark, and to obtain such
other relief as is provided in this subsection.
Id. The section provides factors the court may consider in determining
whether a mark is distinctive and famous. See 15 U.S.C. § 125(c)(1)(A-
H). Though PEI's marks are arguably famous, their distinctiveness does
not preclude defendant from the fair use of those items.
Under the Federal Trademark Dilution Act, a dilution claim is not
actionable if there is a "[f]air use of a famous mark by another person
in comparative commercial advertising or promotion to identify the
competing goods or services of the owner of the famous mark." 15 U.S.C.
§ 1125(c)(4)(A). As the court has indicated, Ms. Welles' use of the
terms Playmate and Playmate of the Year constitute identification of
herself. The use of those terms, in the website and in the meta tags,
allows websurfers and potential customers to identify her services,
whether it be her line of cigars, her promotional services, or her nude
photographs. 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. In
cases where the trademarked term must be used to identify the individual
or a good, infringement and dilution laws do not apply. See New Kids,
971 F.2d at 306 ("In such cases, use of the trademark does not imply
sponsorship or endorsement of the product because the mark is used only
to describe the thing, rather than to identify its source.").
Accordingly, plaintiff has failed to show that there is a likelihood of
success on the merits of its dilution claim.
IV. CONCLUSION
In Prestonettes v. Coty, 264 U.S. 359, 368 (1924), Justice Holmes
explained the purpose of trademark protection and noted that "[w]hen the
mark is used in a way that does not deceive the public, we see no such
sanctity in the word as to prevent its being used to tell the truth. It
is not taboo." In this case, Ms. Welles has used PEI's trademarks to
identify herself truthfully as the Playmate of the Year 1981. Such use
is not "taboo" under the law. Based on the foregoing analysis, the court
finds that plaintiff has failed to demonstrate that a preliminary
injunction is warranted since there is not a strong likelihood of
success on the merits. Consequently, the Court cannot find that the
balance of harm tips strongly enough in plaintiff's favor to overcome
the lack of meritoriousness the court has found. See Stokely-Van Camp
Inc. v. Coca-Cola Co., 2 U.S.P.Q. 2d 1225, 1227 N.D. Ill.1987). In
addition, it is unclear that irreparable harm would ensue from the
continued operation of Ms. Welles' website since plaintiff has not
demonstrated that there is a likelihood of confusion, As such, the
court, hereby DENIES plaintiff's Motion for a Preliminary Injunction.
IT IS SO ORDERED.
/s/Judith N Keep
United States District Court, Southern District of California
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| Chris Owen - chr...@OISPAMNOlutefisk.demon.co.uk |
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| THE TRUTH ABOUT L. RON HUBBARD AND THE UNITED STATES NAVY |
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