Academic journal article Santa Clara High Technology Law Journal

Playboy Enterprises, Inc. V. Welles: Former Bunny's Use of Trademarked Terms Is Permissible, as No Other Practical Way to Describe Her Exists

Academic journal article Santa Clara High Technology Law Journal

Playboy Enterprises, Inc. V. Welles: Former Bunny's Use of Trademarked Terms Is Permissible, as No Other Practical Way to Describe Her Exists

Article excerpt

There is no other way that Ms. Welles can identify or describe

herself and her services without venturing into absurd descriptive

phrases. To describe herself as the "nude model selected by Mr.

Hefner's magazine as its number-one prototypical woman for the

year 1981" would be impractical as well as ineffectual in

identifying Terri Welles to the public. (1)

I. INTRODUCTION

A trademark is a limited property right in a word, phrase, or symbol which protects the identification of the source of a particular good or service. (2) One goal of trademark law is to prevent competitors from misappropriating a rival's mark and capitalizing on its goodwill. (3)

When a trademark also describes a person, place, or attribute of another's product, trademark law recognizes what is traditionally known as the "fair use" defense. (4) The fair use defense carves out an exception to a trademark holder's exclusive use of a word, phrase, or symbol in situations where a defendant uses that holder's mark fairly and accurately to describe characteristics of its own goods or services. (5) Courts have held that a defendant relying on the fair use defense must establish that its use is not likely to cause, or did not lead to, consumer confusion as to the identification of the source of the goods or services in question. (6)

The Ninth Circuit Court of Appeals has recognized another exception to a trademark holder's exclusive use of a word, phrase, or symbol. (7) This different type of fair use, however, does not implicate the source identification function, because there is no comparison of marks. (8) This type of fair use is described as a "nominative use." (9) In a nominative fair use scenario, the defendant is nominally using the trademarked term because the plaintiff's trademark is the only word, phrase, or symbol reasonably available to describe a particular good or service, and because the defendant's use actually describes the plaintiff's good or service rather than its own. (10)

In the traditional fair use context, courts examine the similarity of the mark used by the defendant to the plaintiff's protected trademark to determine the likelihood of confusion. (11) If the likelihood of confusion exists, the defendant's use will be deemed unfair. (12) However, the Ninth Circuit recognized that the application of the likelihood of confusion test in nominative use scenarios would invariably lead to the incorrect conclusion, that virtually all nominative uses are confusing because the defendant intends to use the plaintiff's trademark to describe the plaintiff's goods or services. (13) In response, the Ninth Circuit adopted an alternative three-factor test that more appropriately analyzes the likelihood of confusion in such cases to determine whether that use is permissible. (14)

In Playboy Enterprises, Inc. v. Welles, the defendant used Playboy's trademarked terms on her Web site to describe herself as a former "Playboy" model and "Playmate of the Year." (15) The Ninth Circuit applied the nominative fair use test and concluded that Welles' use of Playboy's trademarked terms was permissible when there was no other practical way to describe herself as a recipient of those titles. (16) This Case Note examines the nominative fair use test and its application in the Welles case.

II. FACTUAL AND PROCEDURAL BACKGROUND

In 1981, Terri Welles appeared as a cover model for Playboy magazine and received the "Playboy Playmate of the Year" award. (17) Many years later, she launched her own Web site in an effort to promote her services as a spokesperson and model. (18) Welles' Web site offered free photographs of herself, advertised the sale of additional photographs, solicited memberships in her photo club, and promoted her spokesperson services. (19) The biographical section of the Web site described her status as a former Playboy model and as Playmate of the Year in 1981. …

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