## Facts

- Playboy Enterprises, Inc. owned registered trademarks including “Playboy,” “Playmate,” and “Playmate of the Year.”
- Terri Welles had previously appeared in Playboy and held the title “Playboy Playmate of the Year 1981.”
- Welles operated a commercial website featuring her photos, membership offerings, and modeling/spokesperson promotions.
- The website used terms such as “Playboy Playmate of the Year 1981,” “Playmate of the Year 1981,” and “Playboy Playmate” in page text, headings, banner ads, and HTML metatags.
- Playboy sued for federal trademark infringement, false designation of origin/unfair competition, dilution, and parallel California common law and statutory unfair competition claims.
- The parties filed cross-motions for summary judgment/summary adjudication.

## Issues

1. Whether Welles’s use of “Playboy,” “Playmate,” and “Playmate of the Year” on her website (including banner ads and metatags) created actionable infringement or false designation of origin under the Lanham Act.
2. Whether the same uses diluted Playboy’s famous marks by blurring or tarnishment under the Lanham Act.
3. Whether the federal analysis required dismissal of the parallel California trademark and unfair competition claims based on the same conduct.

## Decision

- The court granted defendants’ motion for summary judgment on all federal and state trademark and unfair competition claims.
- The court held Welles’s uses were nominative fair use because they truthfully identified her prior title and affiliation.
- The court found insufficient evidence of likely consumer confusion, including in the search-engine/metatag context.
- The court rejected dilution claims, concluding the record did not show actionable blurring or tarnishment from Welles’s descriptive use.
- Because the state-law claims rested on the same alleged misconduct, they failed for the same reasons.

## Legal Principles

- Nominative fair use permits use of another’s mark to identify the trademark owner’s product or a person’s truthful affiliation when: (1) the subject is not readily identifiable without the mark, (2) no more of the mark than reasonably necessary is used, and (3) the use does not suggest sponsorship or endorsement.
- Textual use of trademarks to accurately describe an individual’s prior status or title can be protected nominative use even when the use is commercial.
- Use of trademarks in website metatags may be permissible when it serves accurate identification and does not create a likely confusion as to source, sponsorship, or endorsement.
- Strong and famous marks do not establish liability without a sufficient showing of likely confusion (for infringement/false designation) or statutory dilution (for blurring/tarnishment).
- State trademark and unfair competition claims based on the same challenged uses generally fail where the conduct is non-infringing and non-dilutive under the governing federal standards.

## Conclusion

The court entered summary judgment for the website operator and related defendants, holding that a former “Playmate of the Year” could use Playboy’s word marks on her commercial website and in metatags to accurately describe her past title and history, so long as the use was limited to what was reasonably necessary and did not imply Playboy’s sponsorship or endorsement.


Playboy Enters., Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066 (S.D. Cal. 1999)