Linking, Framing, and Metatagging
Playboy Enterprises, Inc. v. Terri Welles, 7 F.Supp. 2d 1098 (S.D. Cal. 1998)
This is the only known case where a defendant in a metatagging suit has, thus far, prevailed. In this case, Playboy Enterprises, Inc. sued its 1981 Playmate of the Year, Terri Welles, for using certain of its marks, including "PMOY" as a watermark and "playboy" and "playmate" as hidden text metatags on her web site, www.terriwelles.com. In its Complaint, Playboy alleged that Welles' use of these marks infringed and diluted Playboy's marks. Welles defended primarily on fair use grounds.
Playboy moved quickly for a preliminary injunction, which was denied. In essence, the court found that Welles' watermark and metatags were a fair use of those terms because they accurately described her. Playboy, after all, had bestowed those terms on Welles in 1981 and had never objected to Welles' use of the marks until the launching of her web site. In addition, the court found that Welles was not trying to deceive, mislead or confuse consumers through her use of the marks or metatags. Welles' web site contains a disclaimer which states clearly there is no relationship with Playboy and web site references to the term "playboy" are minimal.
In February 1998, Playboy Enterprises, Inc. ("PEI") filed suit against Terri Welles ("Welles"), the "Playmate of the Month" in December 1980 and "Playmate of the Year" in 1981 and who has appeared in various Playboy print publications over thirty times, claiming that Welles' use of various Playboy related trademarks on her web site constituted trademark infringement, dilution, false designation, and unfair competition. In her answer, Welles asserted that her use of titles given to her by PEI was fair use that did not deceive the public or dilute PEI's trademarks.
In June 1997, Welles began operating a web site, "www.terriwelles.com," at which she provides autobiographical information, posts photographs of herself and hosts a fan club posting board, and has a fee based members section. Welles' links page contains links to various adult oriented web sites and several such web sites maintain banners on her web site. The web site heading is "Terri Welles--Playmate of the Year 1981" and the links page contains a similar title. On each page the abbreviation "PMOY '81" is used as a watermark. The web site metatags include the terms "Playboy" and "Playmate." The majority of the web site's pages include a disclaimer which states that the web site is not affiliated, sponsored or endorsed by PEI and that PLAYBOY PLAYMATE OF THE YEAR and PLAYMATE OF THE MONTH are registered trademarks of PEI.
Prior to opening the web site, Welles contacted PEI to discuss its design and creation. Welles claims that PEI, through various communications and correspondence, initially encouraged her to use the titles bestowed on her in 1981. Sometime after the web site went online, PEI advised Welles that use of their trademarks was restricted. PEI offered Welles the opportunity to join its "Cyber Club" which would have placed her web site under the PEI umbrella. Welles declined and then PEI demanded that Welles remove the "PLAYMATE OF THE YEAR" title from her home page and the "PMOY '81" watermark from all pages. Welles refused.
Shortly after filing suit, PEI moved for a preliminary injunction seeking to enjoin Welles' use of the PEI trademark, the "PMOY '81" watermark, and the terms "Playboy" and "Playmate" in Welles' web site's metatags.
On April 21, 1998, the court denied PEI's motion finding that Playboy had failed to demonstrate that it was likely to succeed on the merits of its claims at trial. The court noted that PEI uses its trademarks as titles that are given by PEI to its models and that PEI does not contractually restrict its models from use of those terms. In Welles' case, for example, PEI apparently had no objection to her use of the terms to describe herself until she launched her web site. PEI nonetheless contended that Welles' prominent use of the trademark terms on her web site and in the web site metatags infringes and dilutes its trademarks because it distracts and confuses Internet consumers.
The court denied the injunction, siding with Welles. In essence, the court agreed with Welles' contention that her use of the trademarks was a fair use because it accurately described and identified her. The court held further that Welles' web site makes no effort to trick or confuse consumers into believing that Welles' web site is somehow related to Playboy. The court noted that Welles uses the disclaimer, minimizes the web site references to Playboy, does not use "playboy" or any related term in the domain name, and employs a different font than Playboy's well recognized magazine font.
Referring specifically to Welles' use of the terms as metatags, the court stated that "there [can] be no trademark infringement where a defendant has used the plaintiff's trademarks in good faith to index the content of her web site." The court analogized metatags to the subject index of a card catalog because search engines reference metatags to provide the websurfer with an indication of the content of a web site. Since the terms used by Welles accurately and fairly identified and described her, the metatags were appropriate and not deceptive. Moreover, according to the court, PEI conceded that Welles was free to use its trademark in an editorial fashion and the use of the term as a metatag legitimately described the content of the web site in an editorial fashion.
Playboy subsequently appealed the ruling to the Ninth Circuit Court of Appeals which affirmed the lower court's ruling.