Re: playboy case

On Fri, 23 Jul 1999, Derric G. Oliver <derric[_at_]mill.net> wrote:
>
> judge stotler also said that "...playboy offered no evidence that
> consumers would be sufficiently confused over the relationship between
> playboy and a banner ad for a pornography site."
>
> but, isn't trademark tarnishment also actionable? counsel for playboy
> claimed that '...this form of advertising [could] tarnish its
> reputation, because some of the ads were for more explicit pornography
> than playboy offers." might this contention (of playboy's) hold up upon
> appeal?
>

I have edited out Derric's criticism of the judges conclusion that people may be searching playboy as a generic term. I think he is right that that is unlikely, though for other trademarks ("apple"?) it might be very different.

But I simply don't see how a claim for tarnishment can be made out here. The point of my argument in the press report was that consumers simply don't assume there is a relationship between ads and content (or between ads and other ads, for that matter).

Consider two other examples:

(1) If a magazine sold advertising space to both Playboy and a competitor, there wouldn't be an action for trademark infringement or dilution, because the two are not necessarily associated in the minds of consumers.

(2) If Excite didn't use keyword buys at all, but sold advertising space to the other porn site, that ad would pop up randomly in searches for playboy or lots of other trademarks. Surely it doesn't follow that there would be a dilution cause of action here? But note that what the consumer sees is the same in both cases.

Of course, I may be overestimating the intelligence of consumers. But I don't think so. I think people have a very clear idea of what is an ad and what isn't, and that they don't necessarily connect the two.

Mark A. Lemley
Marrs McLean Professor of Law
University of Texas School of Law
Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

Information on UT's Intellectual Property program, as well as my publications and courses, can be found at http://www.utexas.edu/law/faculty/mlemley/index.html Received on Tue Jul 27 1999 - 15:35:34 GMT