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William E. Maguire

Playboy Cases Provide a Contrast on the 'Tag' Issue

(Published on May 8, 1998 in the Los Angeles Daily Journal; Uneditedoriginal article appears below)

© Copyright 1998, William E. Maguire. All Rights Reserved.


Introduction

"You're It!" was the latest volley by the U.S. District Court inSan Diego, in the game of "Metatags as Trademark Infringement", with it'sruling denying a preliminary injunction sought by Playboy Enterprises, Inc.(PEI) with respect to defendant Welles's use of PEI's trademarks asmetatags on her website. Eight months earlier the District Court inNorthern California had issued a preliminary injunction enjoining the useof PEI's trademarks as metatags on a different defendant's homepage. Thus,today, it is arguable that no one appreciates a 'metatag' as much as PEIsince they have been the metaphoric 'tennis ball' between the Northern andSouthern District Courts in California.


Metatags Defined

"Tags are HTML instructions in web pages which are not visible tovisitors who access a site with a normal browser. Metatags are index wordsinserted in web pages so that the page will be identified when someoneperforms a search engine query for the word. In order to give greaterprominence to a web site when search engine queries are performed, some website developers have inserted the same word multiple times in metatags, sothat a site may appear higher on a search engine list, or have includedwords otherwise unrelated to the site to increase the number of times thesite is accessed." (Ian Ballon, Esq., "Emerging Issues in Internet Law andElectronic Commerce", March-April, 1998 CEB, page 64 - 65). In addition,McCarthy on Trademarks, at Section 25:69, page 25-107 refers to metatags as"hidden code or cyber-stuffing." Prof. McCarthy describes the use of"hidden code" as a trademark issue unique to the internet "in which thetrademark of another entity is used on a web site in a way that is visuallyinvisible to a human reader but is visible to search engines."


The Cases

I.     September 8, 1997: Playboy Enterprises, Inc. v. Calvin DesignerLabel, 44 USPQ 2d 1156 (N.D. Cal. 1997). Plaintiff PEI sued defendants whohad registered and were using the domain names 'playboyxxx.com' and'playmatelive.com' to operate a web site. Among others, PEI owns theregistered trademarks PLAYBOY and PLAYMATE. As a result of theincorporation of PEI's trademarks as metatags on defendant's website, thedefendant's website was able to increase the traffic to its website. TheNorthern District entered a preliminary injunction in favor of Plaintiff onSeptember 8, 1997, enjoining defendants from:

"using in any manner the PLAYMATE or PLAYBOY trademarks, and any other term or terms likely to cause confusion therewith, including PLAYMATELIVE or "playboyxxx.com" or "playmatelive.com", as Defendants' domain name, directory name, or other such computer address, as the name of Defendants' Web site service, in buried code or metatags on their home page or Web pages, or in connection with the retrieval of data or information or on other goods or services, or in connection with the advertising or promotion of their goods, services or web sites."

II.     April 21, 1998: Playboy Enterprises, Inc. v. Welles, 98-413. U.S.District Court Judge Judith Keep denied a preliminary injunction sought byPlayboy to stop (former Playboy Playmate) Terri Welles from using the termsPLAYBOY, PLAYMATE OF THE MONTH, and PLAYMATE OF THE YEAR - all of whichhave been registered trademarks of PEI since 1961. In referring to Ms.Welles use of metatags, the Court Order states: "She has also used theterms Playboy and Playmate as meta tags for her site so that those usingsearch engines on the Web can find her website if they were looking for aPlayboy Playmate. The problem in this case is that the trademarks thatdefendant uses, and the manner in which she uses them, describe andidentify her." The Court then cites the fair use defense in the Lanham Act(15 U.S.C. Section 1115(b)(4)), with Judge Keep commenting, "In cases wherethe mark is used only to describe the goods or services of a party or theirgeographic origin, trademark law recognizes a fair use defense."

    Other facts which distinguish the Welles matter from PEI v. CalvinDesigner Label, include Welles's use of a URL or webpage address of:www.terriwelles.com. In addition, in PEI v. Calvin Designer Label wherethe defendant had no connection whatsoever to PEI, in the Welles case thecourt found compelling Ms. Welles resume of PLAYBOY titles, includingPlaymate, Playmate of the Year 1981, her appearance in 13 issues of Playboymagazine, as well as 18 newsstand specials published by PEI. Thissupported the court's position that Ms. Welles could descriptively setforth these titles as part of her resume on her web site. Thus, the courtsaid that if Welles could fairly describe herself as Playboy's Playmate ofthe Year 1981 on her Web site, then she could say it in the metatags, too.At pages 8 and 9 of the Court's Order, Judge Keep stated: "With respect tothe meta tags, the court finds there to be no trademark infringement wheredefendant has used plaintiff's trademarks in good faith to index thecontent of her website." As a result, the ruling allows Welles to maintainher site's metatags which include PLAYBOY and PLAYMATE. Author's note: Inchecking the metatags on the Welles website I found that the terms'playmate' and 'playboy' were each used once.

    Query: Are the use of metatags to attract customers and websurfers to your website merely the permissible descriptive use of a thirdparty's trademarks? Or is it a use which is likely to cause confusion,mistake or deception (e.g., trademark infringement) and/or is it a falsedesignation of origin or unfair competition?

    The descriptive use of another's trademarks in the text on yoursite would seem to readily fall within the parameters of the fair usedefense, but capturing and attracting business to your commercial sitethrough the use of 'metatags' is, perhaps, a different story. The New YorkTimes, in an article by Carl S. Kaplan, dated April 19, 1998, describedWelles's use of the Playboy trademarks as metatags as follows:

    Welles stuffed the key words "Playboy" and "Playmate" in her site'smeta tags -- portions of the Web site's source code that are invisible toregular viewers but can be read by Internet search engines.

This same article describes the position of PEI as follows:

    "But Playboy officials, according to legal papers filed last month,say the references to "Playboy" and "Playmate" in Welles's meta tagslead to an unfair result. If a consumer performs a Web search using theword "Playmate," for example, the resulting hit list on the search enginewould include Welles' site, and a potential "Playboy" consumer would behijacked."

    Are there any legal commentators to support the position of PEI.As a matter of fact, in the most current update materials to McCarthy onTrademarks (Release #5, March 1998, shipped in April, 1998), at Section25:69, page 25-107, Prof. McCarthy indicates his opinion and position onthe propriety of the use of 'metatags' as follows: "The result is that thetrademark is used so as to confuse and divert someone looking for a website that is sponsored by the owner of that trademark." In addition, atSection 25:69, page 25-108, Prof. McCarthy further states: "Infringementcan be based upon confusion which creates initial customer interest, eventhough no actual sale is finally completed as a result of the confusion.That is, the web user is lured to a web site she is not looking for as aresult of confusion and deception intentionally caused by the defendant whoknows the limitations of the searching device used by the potentialvisitor."

    Taking a position more in line with Welles's use of PEI trademarksas metatags being permissible, however, is Prof. Mark Lemley of theUniversity of Texas Law School, who has reportedly been quoted as stating:"It seems reasonable that if Welles has a right to use Playboy's trademarksin her editorial copy, she has a right to put them where search engines canfind them."


Conclusion:

    The Jury is still out on 'metatags as trademark infringement' inCalifornia with these two divergent rulings. While one can concede thepropriety of visible text/html code on a web site that is clearly'descriptive use of another's trademark' as permissible fair use within theconfines of the Lanham Act, it is arguably a separate inquiry with respectto the propriety of the use of "hidden code" using another's trademarks toincrease traffic and business to your own web site.

    In any event, the stage is now set for the 9th Circuit to resolvethis disparity of rulings with a spokesman for PEI indicating that theywill appeal the ruling in the Welles matter.


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