Mostly, yes. The court said that using the title to describe herself is okay because she's just telling the truth about her past, and there's no other easy way to say it. As long as she just uses the words and adds the year '1981,' it's clear she's talking about a past honor and that Playboy isn't sponsoring her website now. However, the court decided that using 'PMOY '81' as the background wallpaper was going too far because it wasn't necessary just to identify herself; it was more like decoration.

Yes, it was mostly okay for Welles to use Playboy's trademarks because she needed them to describe who she was, and she wasn't trying to make it look like Playboy supported her now. The court used a special three-part test and found that (1) Welles couldn't describe herself well without the trademarks, (2) she only used what she needed, and (3) she didn't make it seem like Playboy agreed with her using the marks now. She even had a note saying Playboy wasn't involved. But, using 'PMOY '81' as a background picture was not okay and needs a closer look.

The court cannot weigh the evidence or determine the truth but may only determine whether there is a genuine issue of fact.

—holding that the use of the terms "Playboy," "Playmate," and "Playmate of the Year 1981" on the website masthead and banner ads and in the metatags of the website of a former Playmate of the Year were nominative fair uses because they served to identify the defendant and did not imply current sponsorship or endorsement

For the defense to apply, three criteria must be satisfied: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest …

In Welles, for instance, we applied our nominative fair use analysis to a former playmate's use of the Playboy mark to describe herself and her website.

—explaining that "[w] hen a defendant uses a trademark nominally, the trademark will be identical to the plaintiff's mark, at least in terms of the words in question," and use of the three-part test is necessary because "application of the Sleekcraft test, which focuses on the similarity of the mark used by the plaintiff and the defendant, would lead to the incorrect conclusion that …

"In cases in which the defendant raises a nominative use defense,[a] three-factor test should be applied instead of the test for likelihood of confusion."

—use of metatags containing plaintiff Playboy's mark permissible where defendant, a former playmate, could not identify the content of her site selling photos of herself without referring to plaintiff's marks, "Playboy" and "Playmate," and where "[p] recluding their use would have the unwanted effect of hindering the free flow of information on the internet

—holding that defendant's repeated use of the abbreviation "PMOY'81" meaning "Playmate of the Year 1981" on the background/wallpaper of her website failed to establish nominative fair use because "[t] he repeated depiction of" PMOY'81 "is not necessary to describe [the defendant

"Unlike a traditional fair use scenario,[nominative fair use occurs when] the defendant... us [es] the trademarked term to describe not its own product, but the plaintiff's."

In order to be nearly identical, two marks "must be `similar enough that a significant segment of the target group of customers sees the two marks as essentially the same.'"

No, with the exception of the wallpaper use. A former award recipient's use of a trademarked title is a permissible nominative use and does not constitute trademark infringement or dilution, provided it meets a three-part test. The court reasoned that most of Welles's uses were permissible because she could not readily identify herself without using the trademarked title 'Playmate of the Year.' She used only the words necessary for identification, not PEI's distinctive fonts or logos. Furthermore, her use of the year '1981' and an explicit disclaimer prevented any suggestion of current sponsorship or endorsement. However, the court found that the repeated use of 'PMOY '81' as website wallpaper was not necessary for identification and therefore failed the nominative use test, requiring remand on that specific issue. The court also held that a valid nominative use cannot, by definition, dilute a trademark because it refers to the trademark holder's own product rather than associating the mark with a new one.

Yes, Welles' use of the trademarked terms 'Playboy' and 'Playmate' is a permissible nominative use because the use does not imply current sponsorship or endorsement by PEI, and the terms are necessary for Welles to identify herself as a former Playboy Playmate of the Year. Applying the three-factor test for nominative use, I conclude that (1) Welles has no practical way of identifying herself without using the trademarked terms, (2) she uses only so much of the marks as reasonably necessary, such as in headlines, banner advertisements, and metatags, and (3) she does nothing in conjunction with the marks to suggest PEI's sponsorship or endorsement, and even includes a clear disclaimer. However, I find that Welles' repeated use of the abbreviation 'PMOY '81' as a watermark fails the nominative use test and may constitute infringement. Therefore, I would affirm the district court's summary judgment for Welles on all claims except for the use of the 'PMOY '81' watermark, which should be remanded for further analysis.

Playboy Enterprises, Inc. v. Welles

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