Playboy Enterprises won one from the 9th Circuit Court of Appeals January 14, a three-judge panel of the court ruling that the terms "playboy" and "playmate" should be protected even in Internet searches that prompt popup ads.
The ruling upholds Playboy's suit against Netscape and Excite, whose technology Netscape used, for infringing the trademark on the magazine's name and the famous monthly centerfold model, and sends it back to the lower court that originally ruled against Playboy.
Playboy argued against Netscape and Excite's using "playboy" and "playmate" in a list of 400 words that might trigger sex-oriented banner ads having nothing to do with Playboy but unidentified as having other sponsorship. "The… evidence suggests, at a minimum, that defendants do nothing to alleviate confusion, even when asked to do so by their advertisers, and that they profit from confusion," wrote Thomas Nelson for the 9th Circuit Court panel.
Nelson rejected Netscape's argument on behalf of "functional use," writing that Netscape had designed its searches to identify consumers who like adult entertainment so "some percentage" of them might be drawn to competitors' Websites and helping Netscape draw advertising revenues.
"Thus, defendants might conceivably be unable to trademark some of the terms used in their program because those terms are functional within that program," he continued. "Because we are not dealing with (Netscape's) wish to trademark their computer program, but with (Playboy's) ability to protect the trademarks it already uses to identify its products, the doctrine of functional use does not help (Netscape) here."
The lower court rejected another Playboy argument, that Netscape using the two terms in their trigger list amounted to trademark dilution. But Nelson upheld Playboy on that ground, writing that by Playboy's fame alone that there's little if any evidence that most people would confuse "playboy" or "playmate," when looking for adult materials, for anything other than the magazine and its famed centerfold models.
"The decision makes clear that the rules apply in the actual world with equal force to the virtual world," Playboy Enterprises attorney Barry Felder told Reuters after the ruling. "In the Internet as in the actual world, trademarks are not to be used in a way that is confusing or that dilutes the value of the mark."
Felder told reporters he would continue seeking damages against Excite despite the company going into bankruptcy protection.
A Menlo Park, California attorney, Thomas Zellerbach, told Reuters he thought the 9th Circuit Court panel's real objection was mostly against banner ads hiding their origins.
"The court in a number of places in this opinion strongly suggests that if the banner ads identified their source then the use of those key words ... to trigger those ads would be okay," he told the news wire.
