Playboy v. Welles

Citation: Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), aff’d, Playboy Enterprises, Inc. v. Welles, 30 Fed. Appx. 734 (9th Cir. 2002).

Factual Background
Welles was the Playboy Playmate of the Year in 1981, and that is what "PMOY '81" stands for. Welles also used the terms "Playboy," "Playmate" and "Playmate of the Year" on pages of her website and as metatags. Playboy sued her for doing so, but never had much success with the case.

Trial Court Decision
Federal District Judge Judith Keep denied Playboy's request for a preliminary injunction, and the Court of Appeals affirmed in an unpublished four-paragraph order. Then, Judge Keep granted Welles' motion for summary judgment, dismissing Playboy's case entirely. In a separate unpublished ruling, Welles' defamation and emotional distress counterclaims against Playboy were dismissed as well. Both sides appealed.

Appellate Court Decision
the Court of Appeals most of both rulings. That is, the appellate court affirmed the dismissal of Playboy's trademark infringement and dilution claims against Welles based on her use of Playboy trademarks in the headlines, mastheads and metatags of her website and in various banner ads. Judge Nelson concluded that these uses were non-infringing "nominative" uses, because they did not imply that Playboy sponsored or endorsed her site, they merely served to identify Welles as the past "Playboy of the Year" she was, and she only used trademarked words, not the font or symbols associated with Playboy's marks.

On the other hand, the Court concluded that Welles' repeated use of "PMOY" in the wallpaper of the pages of her website failed the "nominative use" test. The appellate court therefore remanded the case to the District Court, so it could determine whether "PMOY" is a protected trademark.

In a separate opinion, marked "not appropriate for publication" and "not [to] be cited," the appellate court also affirmed the dismissal of Welles' counterclaims. It affirmed the dismissal of her defamation counterclaim, on the grounds that she is a public figure and had not shown that Playboy recklessly made false statements about her. It also affirmed the dismissal of her infliction of emotional distress counterclaim, because even though Hugh Hefner's conduct towards Welles was "reprehensible," it wasn't "outrageous" enough to justify such a claim.