II.     April 21, 1998: Playboy Enterprises, Inc. v. Welles, 98-413. U.S. District Court Judge Judith Keep denied a preliminary injunction sought by Playboy to stop (former Playboy Playmate) Terri Welles from using the terms PLAYBOY, PLAYMATE OF THE MONTH, and PLAYMATE OF THE YEAR - all of which have been registered trademarks of PEI since 1961. In referring to Ms. Welles use of metatags, the Court Order states: "She has also used the terms Playboy and Playmate as meta tags for her site so that those using search engines on the Web can find her website if they were looking for a Playboy Playmate. The problem in this case is that the trademarks that defendant uses, and the manner in which she uses them, describe and identify 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 where the mark is used only to describe the goods or services of a party or their geographic origin, trademark law recognizes a fair use defense."

    Other facts which distinguish the Welles matter from PEI v. Calvin Designer Label, include Welles's use of a URL or webpage address of: www.terriwelles.com. In addition, in PEI v. Calvin Designer Label where the defendant had no connection whatsoever to PEI, in the Welles case the court found compelling Ms. Welles resume of PLAYBOY titles, including Playmate, Playmate of the Year 1981, her appearance in 13 issues of Playboy magazine, as well as 18 newsstand specials published by PEI. This supported the court's position that Ms. Welles could descriptively set forth these titles as part of her resume on her web site. Thus, the court said that if Welles could fairly describe herself as Playboy's Playmate of the 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 to the meta tags, the court finds there to be no trademark infringement where defendant has used plaintiff's trademarks in good faith to index the content of her website." As a result, the ruling allows Welles to maintain her site's metatags which include PLAYBOY and PLAYMATE. Author's note: In checking 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 web surfers to your website merely the permissible descriptive use of a third party'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 false designation of origin or unfair competition?

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

    Welles stuffed the key words "Playboy" and "Playmate" in her site's meta tags -- portions of the Web site's source code that are invisible to regular 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 tags lead to an unfair result. If a consumer performs a Web search using the word "Playmate," for example, the resulting hit list on the search engine would include Welles' site, and a potential "Playboy" consumer would be hijacked."

    Are there any legal commentators to support the position of PEI. As a matter of fact, in the most current update materials to McCarthy on Trademarks (Release #5, March 1998, shipped in April, 1998), at Section 25:69, page 25-107, Prof. McCarthy indicates his opinion and position on the propriety of the use of 'metatags' as follows: "The result is that the trademark is used so as to confuse and divert someone looking for a web site that is sponsored by the owner of that trademark." In addition, at Section 25:69, page 25-108, Prof. McCarthy further states: "Infringement can be based upon confusion which creates initial customer interest, even though 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 a result of confusion and deception intentionally caused by the defendant who knows the limitations of the searching device used by the potential visitor."