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Playboy Enterprises Inc. has just lost in its appellate effort to stop a former bunny from marketing herself on the Internet as having been associated with Playboy. A federal appellate court in California ruled on Feb. 4 that Terri Welles may continue to refer to herself as “Playboy Playmate of the Year for 1981″ on her Web site terriwelles.com. JUST THE FACTS MA’AM Terri Welles was featured on the cover of Playboymagazine in 1981 and then was selected to be the 1981 PlayboyPlaymate of the Year. Later in life, Welles launched her adult-oriented Web site, terriwelles.com. Her Web site offered free photos and information about Welles, advertised photos for sale, promoted memberships in her photo club, and touted her services as a spokesperson. A biographical section of the Web site described Welles’ selection as the 1981 Playmate of the Year and her former years serving as a model for Playboy. Her Web site specifically used phases and words such as “Playboy Playmate of the Year for 1981.” Welles’ Web site contained a disclaimer, which reads: “This site is neither endorsed, nor sponsored, nor affiliated with Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR AND PLAYMATE OF THE MONTH are registered trademarks of Playboy Enterprises, Inc.” PLAYBOY DROPS THE LEGAL BOMB Playboy was not content to sit back and simply watch as Welles attracted attention on the Internet by using Playboy’s trademarks on her Web site. The company filed suit against Welles in federal court and when the trial court ruled in favor of Welles, Playboy took the case to the next level — the 9th U.S. Circuit Court of Appeals. ARGUMENTS ON APPEAL Playboy complained on appeal about four separate uses of its trademark terms on Welles’ Web site: (1) the terms “Playboy” and “Playmate” in the site’s metatags (hidden words on a site that are not visible that draw traffic from search engines to the site); (2) the phrase “Playmate of the Year 1981″ on the masthead of the site; (3) the phrases “Playboy Playmate of the Year 1981″ and “Playmate of the Year” on banner ads; and (4) the repeated use of “PMOY ’81″ as the watermark on pages of the site (“PMOY” stands for “Playmate of the Year”). WELLES LARGELY WINS Except for the “PMOY ’81″ watermark, the appellate court concluded that Welles’ use of Playboy’s trademarks is permissible, as they “imply no current sponsorship or endorsement” of Playboy, and instead simply “serve to identify Welles as a past Playboy “Playmate of the Year.” It was significant to the appellate court that Welles’ Web site “affirmatively disavows any sponsorship or endorsement” of Playboy. Thus, in essence, Welles simply and accurately was referring to who she was and is. The appellate court approved of and quoted from the decision of the trial court: “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.” According to the appellate court, “forcing Welles and others to use absurd turns of phrases [online], such as those necessary to identify Welles, would be particularly damaging in the internet search context. Searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute trademarks.” As such, “there is simply no descriptive substitute for the trademarks” used on Welles’ Web site, and “precluding their use would have the unwanted effect of hindering the free flow of information on the internet, something which is certainly not a goal of trademark law.” ONE MINOR HICCUP FOR WELLES In terms of the watermark “PMOY ’81,” the appellate court noted that neither Welles nor her likeness appears nearby on her Web site. The appellate court found that the “repeated depiction of ‘PMOY ’81′ is not necessary to describe Welles.” Accordingly, the appellate court sent this issue back to the trial court to consider whether the abbreviation “PMOY ’81″ is entitled to protection under trademark law. To the extent it is, Welles will be directed to remove the abbreviation from her Web site. NEXT STOP: THE SUPREME COURT? Playboy has been aggressive in protecting its trademarks generally and specifically against Welles. No question, effective trademark enforcement is an important goal for many companies and perhaps Playboy will seek review by the U.S. Supreme Court. However, the Supreme Court accepts very few cases, and given the victories by Welles so far, Playboy might get a black eye from the Supreme Court if the case were to go that far. Eric J. Sinrod is a partner in the San Francisco office of Duane Morris, where he focuses on technology and litigation matters. His Web site is sinrodlaw.com and his firm’s site is Duane Morris.Mr. Sinrod may be reached by e-mail at [email protected]

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