Technology &
Internet Law

Trade Marks Law Accommodates The Internet: The Playboy Case

In February 2002, a US Court of Appeal affirmed the landmark 1999 decision to reject a lawsuit filed by Playboy Enterprises Inc against Playboy Playmate of the Year 1981, Terri Welles. Playboy had claimed that Welles violated trade marks law by using her titles "Playboy Playmate of the Month" and "Playboy Playmate of the Year 1981" within the metatag on her website.

A metatag is a label in computerised language (HTML) that describes some aspect of the contents of a website. The information that is provided in a metatag is used by search engines to index a page so that someone searching for the kind of information the page contains will be able to find it. In Welles' case, when a search engine is used and the words "playboy" or "playmate" is typed in, the results include Welles' site.

The Federal Judge had found that Welles used her titles in good faith to describe and identify herself and her website. It was observed that Welles had 'used (Playboy's) trademarks to identify herself truthfully as the Playmate of the Year 1981.'

Federal Judge Judith Keep said:

'Where a trademark also describes a person, place, or an attribute of a product. the policies of free competition and free use of language dictate that trademark law cannot forbid the commercial use of terms in their descriptive sense.'

It was concluded that that the "Playboy" and "Playmate" titles had become part of Welles' identity to the public and that Welles had not intended to mislead anyone. Moreover, it was found that Playboy had presented no evidence of consumer confusion. Indeed, Welles had added disclaimers to her website (www.terriwelles.com) stating that it was not sponsored by or affiliated in any way with Playboy.

Playboy appealed to the US Court of Appeal (9^th Circuit) which considered the matter afresh. Judge Nelson found that use of a trade mark under US law is permissible so long as it is reasonably necessary to identify the product or service and the user does 'nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.' Since, Welles' use of the Playboy trade mark did not imply current sponsorship or endorsement by Playboy, but merely served to identify Welles as a past "Playmate of the Year", there was no infringement, even though its use was commercial. However, the point was made that such trade mark use (called "norminative use") was permissible only provided that 'no descriptive substitute exists' and no more of the mark than necessary is used.

The Court of Appeal found that 'Welles has no practical way of describing herself without using trademarked terms' (she could, Judge Nelson supposed - tongue in cheek, no doubt - describe herself absurdly, without using the word Playboy, as 'the nude model selected by Mr Hefner's organization....').  In other words, she had no practical way of identifying the content of her website without reference to the Playboy trade mark. Since a large portion of Welles' website discusses her association with Playboy over the years, the trade marked terms accurately describe the contents of Welles' website, in addition to describing Welles.

In the context of the Internet - in which a balance has to be reached with the demands of trade marks law - Judge Nelson concluded as follows:

'Forcing Welles and others to use absurd turns of phrase in their metatags, such as those necessary to identify Welles, would be particularly damaging in the Internet search context. Searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute for trademarks. Similarly, someone searching for critiques of Playboy on the Internet would have a difficult time if Internet sites could not list the object of their critique in their metatags.'

The judge made the point, however, that if Welles' were to have listed the trade marked term so repeatedly (which she did not) that Welles' site would regularly appear above Playboy's site in searches for the Playboy mark, then there might be infringement.

The nub of the decision of the Court of Appeal is that, provided the use of trade marks in metatags does not confuse consumers about whose products or services are being sold on the net, the working of the Internet (which is dependent on search functions) must influence trade marks law to allow use of trade marks without violation.  However, the use of marks that confuse the connection between a trader and his goods or services (and the differentiation of such goods or services from those of other traders) is still prohibited.

In other words, nothing - whether it is the demands of the Internet or other technological innovations - should detract from the fundamental purpose of a trade mark: a trademark is primarily for the identification of the source of a good or service. The whole point being the prevention of unscrupulous traders from free-riding on their rivals' marks and capitalising on their rivals' investment of time, money and resources.

That is likely to be how an English court (in applying the UK Trade Marks Act 1994 in similar circumstances) would also view the matter. It follows, therefore, that if Welles had used the trade marked metatags to sell goods and services in competition to Playboy's, in a way that would create confusion in the minds of net-consumers as to whether the goods or services were Playboy's or not, there would have been infringement. Quite clearly a decision such this, even though it is based on US trade marks law, would be persuasive in an English court were a similar case to arise before it.

Looked at from the perspective of the use of metatags on the Internet, the "moral" of this case is that those who use trade marked metatags in a deceptive manner will not be allowed to do so.  However, those who demonstrate that there is a legitimate reason to use the trade marked terms might be able to continue to do so.

NEED TO KNOW MORE?

For further information on trade mark protection and how it applies to you, contact Maitland Kalton.  Should you prefer to telephone, call us on +44 (0)207 278 1817.

Kaltons Solicitors, Suite 302, Spitfire Studios, 63-71 Collier Street, London, N1 9BE. Telephone +44 (0)20 7278 1817; Fax: +44 (0)207 278 1835.

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