Former Playboy Model Wins Right to Use Keywords. A federal judge has given a former Playboy model and Internet entrepreneur what may be a final victory in her hard-fought legal
battle for the right to use the terms "playboy," "playmate" and "Playboy
Playmate of the Year 1981" to promote her Web site.
In a closely reasoned 48-page decision, Judge Judith N. Keep of the
United States District Court for the Southern District of California in San
Diego dismissed Playboy Enterprises' 1998 lawsuit against Terri Welles,
its former employee. The company's suit, which has been closely
watched by Internet law experts, accused Welles of violating trademark
laws by using Playboy's trademarks in the visible and invisible portions of
her Web site.
In granting Welles's motion for summary
judgment on Dec. 1, Judge Keep found that
Welles's use of the words "playboy" and
"playmate" in the text portion of her site and in
her meta tags -- hidden labels in a Web page
that can include keywords to help draw the
attention of Internet search engines -- were a
"fair use" of Playboy's trademarks because they
fairly described and identified her achievements.
Welles, currently a self-employed model, was
featured as a "Playmate of the Month" in
Playboy's December 1980 issue. She was
named "Playmate of the Year" in June 1981.
"What the judge said, basically, is that if you can fairly use someone's
trademark in the visible portion of your Web site, then it's also fair to use
the same marks in meta tags, which index the content of the site," said
David Noonan, Welles's lawyer.
Playboy, which continues to believe that Welles's use of its trademarks is
unfair and illegal, has vowed to continue the fight. The company "is
extremely surprised and disappointed that the judge took away our right"
to have the case heard by a jury, said Cindy Rakowtiz, a Playboy
spokeswoman. "We are in the process of appealing that decision."
In general, meta tags are a type of HTML code that is not designed to be
read by humans. Rather, the tags are designed to provide
machine-readable information about the contents and display of a Web
page.
In the Welles case, the meta tags at issue were "meta descriptors" and
"meta keyword tags" -- both of which allow page authors to define the
content of their page for the benefit of software robots used by search
engines. For example, the operator of a used car site might include the
words "automobile" and "bargain" in the keyword meta tag of the site's
home page, hoping that a search engine would produce a link to the site
when a Web surfer typed in "auto bargain."
Welles used "Playmate of the Year 1981" and other phrases in her meta
descriptor tag. She also used the words "playboy" and "playmate" in her
keyword meta tag, along with model, models, semi-nudity, naked, breast
and other similar terms. Welles used the meta tags so that Web surfers
searching for the phrase "Playboy Playmate" would find her site.
In its court papers, Playboy argued that
Welles's meta tags had the effect of sneakily
diverting potential Playboy customers who used
search engines to seek officially sanctioned
Playboy pictures or services. In response,
Welles and her lawyers argued that the meta
tags merely served to index the contents of the
Welles site, which accurately noted that she was
a former Playboy model.
In her ruling, Judge Keep noted that Playboy
had failed to introduce compelling evidence of
actual consumer confusion over the arms-length relationship between
Welles's site and Playboy. And the judge also seemed to strike a note in
favor of a consumer's right to make effective Web searches.
"The World Wide Web is a commercial marketplace and a free speech
marketplace," Judge Keep wrote. "To give consumers access to it, the
court must also be careful to give consumers the freedom to locate
desired sites while protecting the integrity of trademarks and
tradenames."
The judge's opinion included a quote from Supreme Court Justice Oliver
Wendell Holmes Jr. in a 1924 case: "When 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."
In May 1998, Judge Keep denied Playboy's request for a preliminary
injunction in the Welles case. Later the United States Court of Appeals
for the Ninth Circuit affirmed that decision.
In a separate decision late last month, Judge Keep dismissed Welles's
countersuit against Playboy, in which she claimed that the company had
defamed and injured her and her business. The court found that there
were no genuine issues of fact involved that would merit a trial. Welles
said she is weighing the possibility of an appeal.
Welles, a San Diego resident who is the mother of a teen-age daughter,
said in a telephone interview that she was "thrilled" by the court's
decision. "I've been completely vindicated," she said, noting that she had
spent over $100,000 in legal fees. Her lawyer said he hopes to recoup
the costs from Playboy in the future.
Welles's site, which she launched in 1997, features photographs of
herself and others both clothed and nude, biographical notes about her
fun-filled days at the Playboy Mansion and a calendar of personal
appearances. She said she has about 400 subscribers who pay about
$10 per month for access to a special photo collection. The site also
features banner ads that link to more explicit pornographic sites.
Bret A. Fausett, a lawyer who specializes in Internet
law and intellectual property at Fausett, Gaeta &
Lund, a Boston law firm, said he thought Judge Keep
made the right decision. "My initial thought in all this
was that Playboy was overreaching, trying to argue
that any use of the word 'playboy' anywhere on
[another] Web site is forbidden," he said. "But that's
not the way trademark law works.... This was
absolutely a fair use."
David H. Bernstein, an Internet law expert at New York's Debevoise &
Plimpton, said the court's ruling would give a measure of certainty to the
controversial area of meta tag law.
"My view is that you don't analyze meta tags any differently than you do
the use of a visible mark on the page," he said. "If it's fair use to have a
prominent headline that says someone is a Playmate of the Year, then it's
equally fair to use that term in a meta tag."
Bernstein noted that Playboy has been more aggressive than most
companies about protecting its trademarks on the Internet.
"I can understand why they feel the need to do that -- to ensure that the
Playboy brand has meaning on the Internet and doesn't get lost in the
clutter of all the other adult entertainment sites," he said. He noted that if
the company didn't try to stop Welles from making use of its famous
phrases, "it would obviously invite all the other past playmates to come
up with similar sites using fair-use meta tags, which may be the end result,
if the court's decision stands."
In a related trademark case involving Playboy, the United States Court of
Appeals for the Ninth Circuit late last month affirmed a district court's
denial of the company's motion for a preliminary injunction against
Netscape and Excite.
In its trademark lawsuit against those two portal and search-engine
companies, Playboy objected to the companies' practice of selling to
advertisers the rights to certain words, including "playboy," that when
used as part of an ordinary search would trigger the display of a
particular banner ad -- not necessarily Playboy's. Lawyers for the parties
said they were preparing for a trial.
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