Porn Valley- A U.S. appeals court ruled on Wednesday that Playboy Enterprises Inc.’s trademark terms “playboy” and “playmate” should be protected even in Internet searches that prompt pop-up advertisements.
In 1999, Playboy sued Excite Inc. and Netscape, which used Excite technology, claiming the Internet companies had infringed the trademark on “playboy” and “playmate.”
Playboy objected to the inclusion of those two terms in a list of 400 words, many of them explicit sexual expressions, that would trigger sex-oriented banner ads unrelated to Playboy but not identified as sponsored by others.
In its decision, the 9th Circuit Court of Appeals — which first heard the case on Sept. 11, 2001 — found that a lower court wrongly decided the case against Playboy and sent it back for reconsideration.
“The above 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,” Thomas Nelson wrote for the three-judge panel.
Playboy attorney Barry Felder said that he would still seek damages against Excite even though the company has since gone into bankruptcy protection.
Netscape is now owned by Time Warner Inc.
“The decision makes clear that the rules apply in the actual world with equal force to the virtual world,” Felder said. “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.”
Bill Norvelle, a patent attorney in Houston, said the 9th Circuit ruling was a logical extension of existing law.
“All we’re seeing is a testing of old and established rules of law as they apply to a new form,” he said. “Is the use of a second name or mark, I should say, likely to confuse consumers…as to the source or origin of those goods?”
Another attorney, Thomas Zellerbach in Menlo Park, California, said the court objection was principally against banner ads that hide their origin.
“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 OK,” he said.
Also potentially significant in the 9th Circuit ruling on Wednesday was a concurring opinion from Judge Marsha Berzon that objected to the court’s 1999 Brookfield Communications v. West Coast Entertainment ruling against the use of trademarked metatags.
Metatags are unseen code words attached to Internet documents to allow search engines such as Google to find them.
“There is a big difference between hijacking a customer to another Web site by making the customer think he or she is visiting the trademark holder’s Web site (even if only briefly), which is what may be happening in this case when the banner advertisements are not labeled, and just distracting a potential customer with another choice,” she wrote.
Such remarks are good news for Google, Zellerbach said.
“If her views are shared by other members of the court, you know, eventually Brookfield will probably be overturned or its ruling modified in some way,” he said.