## Facts

- Playboy Enterprises, Inc. (PEI) owned copyrights in *Playboy* photographs and registered trademarks in “PLAYBOY” and “PLAYMATE.”
- George Frena operated a subscription computer bulletin board service (BBS) accessible by modem for paying users.
- Users could browse directories to view images on the BBS and download digital copies to their own computers.
- PEI identified 170 image files on the BBS copied from PEI photographs appearing in 50 copyrighted *Playboy* magazine issues.
- Frena admitted the images were displayed on his BBS, were substantially similar to PEI’s photographs, and were made available without PEI’s authorization.
- PEI alleged the PLAYBOY and PLAYMATE marks were used in file descriptions and that PEI identifiers were removed from some images and replaced with Frena’s identifiers.
- Frena argued the images were uploaded by subscribers, he lacked intent to infringe, and he removed the images after learning of PEI’s complaint.

## Issues

1. Whether the BBS operator was directly liable for copyright infringement based on unauthorized public display and distribution of copyrighted photographs, even if subscribers uploaded the files.
2. Whether use of the “PLAYBOY” and “PLAYMATE” marks in BBS file descriptions and related presentation constituted trademark infringement under 15 U.S.C. § 1114.
3. Whether removing PEI identifiers and presenting the images in a manner suggesting affiliation constituted false designation of origin and unfair competition (including reverse passing off) under 15 U.S.C. § 1125(a).
4. Whether PEI was entitled to partial summary judgment because no genuine dispute of material fact existed on these claims.

## Decision

- The court granted PEI’s motions for partial summary judgment against Frena.
- The court held Frena directly infringed PEI’s copyrights by publicly displaying and distributing PEI photographs through the BBS without authorization.
- The court held Frena infringed PEI’s PLAYBOY and PLAYMATE trademarks under 15 U.S.C. § 1114.
- The court held Frena violated 15 U.S.C. § 1125(a) by creating a false impression of sponsorship/affiliation and by reverse passing off through removal of PEI identifiers and substitution of his own.

## Legal Principles

- Copyright infringement is established by showing ownership of valid copyrights and unauthorized copying; intent or knowledge is not an element.
- Making copyrighted works available for subscribers to view and download through a subscription BBS constitutes infringement of the copyright owner’s exclusive rights of public display and distribution under 17 U.S.C. § 106.
- A BBS operator’s liability for direct infringement is not avoided by asserting that subscribers uploaded the infringing files.
- Commercial exploitation of copyrighted works through unauthorized dissemination weighs strongly against a fair-use defense.
- Unauthorized use of identical registered marks in connection with a related commercial service can establish trademark infringement where likely confusion exists as to source, sponsorship, or affiliation.
- Removing a producer’s identifiers and presenting the product as one’s own can constitute reverse passing off and support liability for false designation of origin under 15 U.S.C. § 1125(a).

## Conclusion

The court ruled that a subscription BBS operator who enabled users to view and download unauthorized copies of copyrighted photographs was directly liable for copyright infringement, and that using Playboy’s marks and presenting the images in a way implying affiliation or substituting identifiers violated the Lanham Act’s trademark and false designation provisions.


Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993)