Monday, February 4, 2002
Ex-Playmate Didn’t Infringe ‘Playboy’ Trademarks on Website—Court
By a MetNews Staff Writer
A former “Playmate of the Year” may continue to use “Playboy” and other trademarked words on a website she uses to sell erotica, the Ninth U.S. Circuit Court of Appeals ruled Friday.
“[W]e conclude that [Terri] Welles’ uses of [Playboy’s] trademarks are permissible, nominative uses,” Judge Thomas G. Nelson wrote. “They imply no current sponsorship or endorsement by [Playboy]. Instead, they serve to identify Welles as a past…‘Playmate of the Year.’ ”
Welles is a former flight attendant, model, and sometime actress who was married in the 1980s to Charlie Simmer, then a high-scoring forward on the Los Angeles Kings hockey team. The marriage “did not go into overtime,” Welles says on her website.
U.S. District Judge Judith Keep granted Welles summary judgment on Playboy’s infringement claim, holding that the 1981 Playmate of the Year had made “fair use” of that descriptive title and related words in the meta tags invisible labels that draw the attention of Internet search engines as well as the rest of the site, www.terriwelles.com.
The Ninth Circuit panel Friday agreed.
Nelson cited New Kids on the Block v. New America Publ’g, Inc.., 971 F.2d 302 (9th Cir. 1992), which held that a well-known band could not sue newspapers for using its name in connection with a poll as to which members of the band were most popular.
The court held in that case that use of a trademark was “nominative,” and thus protected, where the product or service could not be readily identifiable without reference to the trademark; use was made only to the extent necessary to identify the product or service; and the user did nothing that would suggest sponsorship or endorsement by the trademark holder.
Welles has a disclaimer on her home page explaining that her website “is neither endorsed, nor sponsored by, nor affiliated with Playboy Enterprises, Inc.,” and that “PLAYBOY®, PLAYMATE OF THE YEAR® and PLAYMATE OF THE MONTH® are registered trademarks of Playboy Enterprises, Inc.”
Welles’ attorney, David Noonan of San Diego, said the appellate panel applied New Kids correctly.
His client was only making “fair use of her [Playmate] title, which is something that she’s contended since Day 1.” Noonan said. The panel ruling “simply reaffirms that fair use is fair use whether it’s in…the usual media or on the Internet.”
The panel reversed Keep on one aspect of the case, saying Welles’ use of the repeated abbreviation “PMOY `81” in the background, or wallpaper, of her site was not a nominative use. The court remanded so that Keep may determine whether “PMOY” is a protected trademark.
Noonan said that issue was a minor one.
Welles also had a counterclaim, alleging she was defamed in a newspaper interview that quoted a Playboy lawyer as saying she had “hijacked” the company’s site. Keep rejected the counterclaim, ruling that Welles was a public figure and had not proven actually malice.
Welles appealed that portion of the judgment, saying she was not a public figure but was drawn into the controversy involuntarily when Playboy sued her. The appeals panel said in Friday’s opinion that it had disposed of the issue in an unpublished disposition, but a copy could not be obtained Friday and lawyers in the case said they were unaware of its content.
Anthony Glassman, a Beverly Hills attorney for Playboy Enterprises, said he could not comment Friday because he had not yet read the opinion.
The case is Playboy Enterprises, Inc. v. Welles, 00-55009.
Copyright 2002, Metropolitan News Company