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Playboy Enters. v. Welles - 279 F.3d 796 (9th Cir. 2002)

Rule:

Federal appellate courts review a district court's grant of summary judgment de novo. Viewing the evidence in the light most favorable to the nonmoving party, the appellate courts must determine whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law. The courts must not weigh the evidence or determine the truth of the matter but only determine whether there is a genuine issue for trial.

Facts:

Terri Welles was on the cover of Playboy in 1981 and was chosen to be the Playboy Playmate of the Year for 1981. During the relevant time period, Welles' website offered information about and free photos of Welles, advertised photos for sale, advertised memberships in her photo club, and promoted her services as a spokesperson. A biographical section described Welles' selection as Playmate of the Year in 1981 and her years modeling for the defendant, Playboy Enterprises, Inc (PEI). PEI complains of four different uses of its trademarked terms on Welles' website: (1) the terms "Playboy "and "Playmate" in the metatags of the website; (2) the phrase "Playmate of the Year 1981" on the masthead of the website; (3) the phrases "Playboy Playmate of the Year 1981 "and "Playmate of the Year 1981" on various banner ads, which may be transferred to other websites; and (4) the repeated use of the abbreviation "PMOY '81" as the watermark on the pages of the website. PEI claimed that these uses of its marks constituted trademark infringement, dilution, false designation of origin, and unfair competition. After the lawsuit began, Welles included discussions of the suit and criticism of PEI on her website and included a note disclaiming any association with PEI. The district court granted Welles’ motion for summary judgment. PEI appeals the grant of summary judgment on its claims of trademark infringement, unfair competition, and breach of contract against Welles.

Issue:

Did the district court err in its decision to grant Welles’ motion for summary judgment on Playboy Enterprises, Inc.’s claims of trademark infringement, unfair competition, and breach of contract?

Answer:

No, as regards trademark infringement, trademark dilution, and breach of contract. Yes, as to Welles’ the use of the abbreviation "PMOY”.

Conclusion:

The appellate court concluded that the Welles' uses of the publisher's trademarks were permissible, nominative uses. The use of the phrase "Playmate of the Year 1981" implied no current sponsorship or endorsement by the publisher. Instead, the appellate court agreed that the marks served to identify Welles as a past "Playmate of the Year." The court reasoned that Welles' use of the marks did not suggest sponsorship or endorsement by the publisher and that Welles affirmatively disavowed any sponsorship or endorsement on her website. Specifically, Welles was merely identifying herself as a one-time recipient of the title "Playmate of the Year." Such nominal identification did not serve to diminish or dilute the title. However, Welles' use of the abbreviation "PMOY" on the wallpaper of her site was not nominative because the abbreviation's use was not necessary to describe the model. As such, the district court's grant of summary judgment in favor of Welles as to the publisher's claims for trademark infringement, trademark dilution, and breach of contract was affirmed. However, as to the use of the abbreviation "PMOY" summary judgment was reversed.

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