Playboy Enterprises v. Netscape and Excite 

UNITED STATES DISTRICT
COURT CENTRAL DISTRICT OF CALIFORNIA
SOUTHERN DIVISION

PLAYBOY ENTERPRISES, INC., Plaintiff,
V.
NETSCAPE COMMUNICATIONS CORP.,Defendant.

PLAYBOY ENTERPRISES, INC.,Plaintiff,
V.
EXCITE, INC.,Defendant.

SA CV 99-320 AHS (EEx)
Related case:
SA CV 99-321 AHS (EEx)

I.

PROCEDURAL BACKGROUND

On April 15, 1999, plaintiff Playboy Enterprises, Inc. ("PEI") filed a Motion for preliminary Injunction against defendant Netscape Communications Corp. and against defendant Excite, Inc. On May 10,1999, defendants filed a joint opposition. PEI filed its reply on May 17, 1999. The Court heard oral argument on the motion on May 24, 1999. At the end of the hearing, the Court took the matter under advisement, and ordered the parties to lodge proposed Findings of Fact and Conclusions of Law. Plaintiff lodged its proposed Findings on June 1, 1999; defendants lodged theirs on June 8, 1999. The Court has considered all of the parties’ submissions, as well as arguments presented at the hearing.

II.

FACTUAL BACKGROUND

Defendants operate search engines on the Internet. (1) When a person searches for a particular topic in either search engine, the search engine compiles a list of sites matching or related to the user’s search terms, and then posts the list of sites, known as "search results."

Defendants sell advertising space on the search result pages. Known as "banner ads," the advertisements are commonly found at the top of the screen. The ads themselves are often animated and whimsical, and designed to entice the Internet user to "click here." If the user does click on the ad, she is transported to the web site of the advertiser.

As with other media, advertisers seek to maximize the efficacy of their ads by targeting consumers matching a certain demographic profile. Savvy web site operators accommodate the advertisers by "keying" ads to search terms entered by users. That is, instead of posting ads in a random rotation, defendants program their servers to link a pre-selected set of banner ads to certain "key" search terms. Defendants market this context-sensitive advertising ability as a value-added service and charge a premium.

Defendants key various adult entertainment ads to a group of over 450 terms related to adult entertainment, including the terms "playboy" and "playmate." Plaintiff contends that inclusion of those terms violates plaintiff’s trademarks rights in those words.

III.

PARTIES’ CONTENTIONS

Plaintiff has a trademark on "Playboy®" and "Playmate®." plaintiff contends that defendants are infringing and diluting its trademarks (1) by marketing and selling the group of over 450 words, including "playboy" and "playmate," to advertisers, (2) by programming the banner ads to run in response to the search terms "playboy" and "playmate" (i.e., "keying"), and (3) by actually displaying the banner ad on the search results page. As a result, plaintiff contends, Internet users are diverted from plaintiff’s official web site and web sites sponsored or approved by plaintiff, which generally will be listed as search results, to other adult entertainment web sites. Plaintiff further argues that defendants intend to divert the users to the non-PEI sites. Plaintiff does not contend, however, that defendants infringe or dilute the marks when defendants’ search engines generate a list of Web sites related to "playboy" or "playmate."

Defendants respond that while plaintiff may have a trademark on "Playboy®" and "Playmate®" defendants do not actually "use" the trademarks qua trademarks. Moreover, even if defendants do use the trademarks, defendants argue that a trademark does not confer an absolute property right on all uses of the protected terms, and that defendants’ use of the terms is permitted. Finally, defendants dispute that they have any intent to divert users from clicking on search results (such as PEI’s) to clicking on banner ads.

IV.

DISCUSSION

A. Legal Standard for Preliminary Injunction

In order for plaintiff to obtain a preliminary injunction, it "must show either (1) a combination of probable success on the merits and a possibility of irreparable harm, or (2) the existence of serious questions on the merits and the balance of hardships weighing heavily in its favor." PEI v. Welles, 7 F.Supp.2d 1098, 1099 (S.D.Cal. 1998), aff’d without opinion, 162 F.3d 1169 (9th Cir. 1998)

B. Law and The Internet

"The Internet is ‘a unique and wholly new medium of worldwide human communication."’ Reno v. ACLU, 521 U.S. 844, 117 S.Ct. 2329, 2334 (1997) (citation omitted) . The parties and the Court are conversant with the workings of the Internet, as well as with the constantly expanding body of law that seeks to craft a legal contour for it. The Court is mindful of the difficulty of applying well-established doctrines to what can only be described as an amorphous situs of information, anonymous messenger of communication, and seemingly endless stream of commerce. Indeed, the very vastness, and manipulability, of the Internet forms the mainspring of plaintiff’s lawsuit.

C. Trademark Use

Integral to plaintiff’s success on the merits of its case, on either the infringement or dilution theory, is a showing that defendants use plaintiff’s trademarks in commerce. See Memorandum of Points & Authorities [Excite], pg. 13 (e.g., "Excite is deriving substantial and direct revenue by selling banner advertisements keyed to the PEI marks"); Memorandum of Points and Authorities [Netscape], pg. 14 (same). Plaintiff does not so show. Rather, plaintiff can only contend that the use of the words "playboy" and "playmate," as keywords or search terms, is equivalent to the use of the trademarks "Playboy®" and "Playmate®.Il However, it is undisputed that an Internet user cannot conduct a search using the trademark form of the words, i.e., Playboy® and Playmate®. Rather, the user enters the generic word "playboy" or "playmate." It is also undisputed that the words "playboy" and "playmate" are English words in their own right, and that there exist other trademarks on the words wholly unrelated to PEI. Thus, whether the user is looking for goods and services covered by PEI’s trademarks or something altogether unrelated to PEI is anybody’s guess. Plaintiff guesses that most users searching the Web for "playboy" and "playmate" are indeed looking for PEI sites, goods and services. Based on that theory, plaintiff argues that since defendants also speculate that users searching for "playboy" and "playmate" are looking for things related to Playboy® and Playmate®, defendants use the trademarks when they key competing adult entertainment goods and services to the generic "playboy" and "playmate."

Plaintiff has not shown that defendants use the terms in their trademark form, i.e., Playboy® and Playmate®, when marketing to advertisers or in the algorithm that effectuates the keying of the ads to the keywords. Thus, plaintiff’s argument that defendants "use" plaintiff’s trademarks falls short.

D. Trademark Infringement and Dilution

Even if use of the generic "playboy" and "playmate" were construed to be use the trademark terms Playboy® and Playmate®, plaintiff still must show that the use violates trademark law. plaintiff has asserted two theories, trademark infringement and trademark dilution.

1. Infringement

"The core element of trademark infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely to confuse customers about the source of the products." Official Airline Guides. Inc. v. Goss, 6 F.3d 1385, 1391 (9th Cir. 1993) . Assuming arguendo that defendants’ use of "playboy" and "playmate" is use of plaintiff’s marks, plaintiff must still show that confusion is likely to result from that use. Plaintiff has not so shown.

Rather, plaintiff relies on the recent case from the Court of Appeals for the Ninth Circuit, Brookfield Communications. Inc. v. West Coast Entertainment Corp., - F.3d -, 1999 WL 232014, *22~*24 (9th Cir. 1999) , for the proposition that defendants cause "initial interest confusion" by the use of the words "playboy" and "playmate." Initial interest confusion, as coined by the Ninth Circuit, is a brand of confusion particularly applicable to the Internet. Generally speaking, initial interest confusion may result when a user conducts a search using a trademark term and the results of the search include web sites not sponsored by the holder of the trademark search term, but rather of competitors. Id. The Ninth Circuit reasoned that the user may be diverted to an un-sponsored site, and only realize that she has been diverted upon arriving at the competitor’s site. Once there, however, even though the user knows she is not in the site initially sought, she may stay. In that way, the competitor has captured the trademark holder’s potential visitors or customers. Id.

Brookfield is distinguishable from this case, and where applicable, supportive of defendants’ position.

First, the trademark at issue in Brookfield was not an English word in its own right. In Brookfield, the Court compared Brookfield’s trademark "MovieBuff" with competitor West Coast’s use of the domain name "moviebuff.com," and found them to be "essentially identical" despite the differences in capitalization, which the Court considered "inconsequential in light of the fact that Web addresses are not caps-sensitive... Id. at *14. However, the Court held that West Coast could use the term "Movie Buff" (or, presumably, "movie buff") with the space, as such is the "proper term for the ‘motion picture enthusiast’.... It cannot, however, omit the space." Id. at 26. On the other hand, "[i]n light of the fact that it is not a word in the English language, when the term ‘MovieBuff’ is employed, it is used to refer to Brookfield’s products and services, rather than to mean ‘motion picture enthusiast.’" Id. at *26.

As English words, "playboy" and "playmate" cannot be said to suggest sponsorship or endorsement of either the web sites that appear as search results (as in Brookfield) or the banner ads that adorn the search results page. Although the trademark terms and the English language words are undisputedly identical, which, presumably, leads plaintiff to believe that the use of the English words is akin to use of the trademarks, the holder of a trademark may not remove a word from the English language merely by acquiring trademark rights in it. Id.

Second, the use by defendant of plaintiff’s trademark in Brookfield was more suspect because the parties compete in the same market — as online providers of film industry information. See Id. at *l6~*l7 ("[n]ot only are they not non-competitors, the competitive proximity of their products is actually quite high"). The Ninth Circuit analogized the capture of unsuspecting Internet users by a competitor to highways and billboards:

Suppose West Coast’s competitor.. .puts up a billboard on a highway reading — "West Coast Video: 2 miles ahead at Exit 7" — where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s store will pull off at Exit 7 and drive around looking for it. Unable to locate West, Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there.

Brookfield, at *24. Although the customer is not confused as to where she ultimately rents a video, Blockbuster has misappropriated West Coast’s goodwill through causing initial consumer confusion. Id. The customer has been captured by the competitor in much the same way that defendant in Brookfield captures Internet users looking for plaintiff’s web site.

Here, the analogy is quite unlike that of a devious placement of a road sign bearing false information. This case presents a scenario more akin to a driver pulling off the freeway in response to a sign that reads "Fast Food Burgers" to find a well-known fast food burger restaurant, next to which stands a billboard that reads: "Better Burgers: 1 Block Further." The driver, previously enticed by the prospect of a burger from the well-known restaurant, now decides she wants to explore other burger options. Assuming that the same entity owns the land on which both the burger restaurant and the competitor’s billboard stand, should that entity be liable to the burger restaurant for diverting the driver? That is the rule PEI contends the Court should adopt.

2. Dilution

Trademark dilution is defined as "the lessening of the capacity of a famous mark to identify and distinguish goods or services." 15 U.S.C. § 1127. However, dilution is "not intended to serve as a mere fallback protection for trademark owners unable to prove trademark infringement." I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 48 (1st Cir. 1998).

To establish dilution, plaintiff must show that "(1) [defendants have] made use of a junior mark sufficiently similar to the famous mark to evoke in a relevant universe of consumers a mental association of the two that (2) has caused (3) actual economic harm to the famous mark’s economic value by lessening its former selling power as an advertising agent for its goods and services." Ringling Bros. - Barnum & Bailey Combined Shows Inc. v. Utah Div’n of Travel Dept., 170 F.3d 449, 459 (4th Cir. 1999). Dilution generally occurs through the blurring of a famous mark or tarnishment of the mark, but is not limited to these categories. See Panavision Int’l, L.P. v. ToeDpen, 141 F.3d 1316, 1326 (9th Cir. 1998) . plaintiff has not shown blurring of its marks, which would occur if defendants used the marks to identify defendants’ goods or services. Id. at 1326 n.7. First, as discussed supra, plaintiff has not shown that defendant use its marks Playboy® and Playmate®. Further, plaintiff has not presented any evidence that defendants’ use of the words "playboy" and "playmate" causes any severance of the association between plaintiff and its marks Playboy® and Playmate®, much less in the minds of Internet users.

Plaintiff has also failed to show tarnishment, which occurs when a famous mark is associated improperly with an inferior or offensive product or service. Id. at 1326 n.7. Plaintiff contends that because the content of the banner ads is more sexually explicit that PEI’s content, PEI’s marks are being tarnished. Again, plaintiff’s argument is based on the incorrect assumption that defendants use plaintiff’s marks, rather than the generic words "playboy" and "playmate." But even if the defendants could be said to use plaintiff’s marks, plaintiff would still be required to show that associating marks admittedly famous for adult entertainment with other purveyors of adult entertainment somehow harms plaintiff’s marks. Whether PEI is a cut above the rest, as it contends, is undercut by the fact that PEI’s marks are associated with other purveyors of adult entertainment in other marketing channels, as defendants’ exhibits graphically establish. Adoption of plaintiff’s tarnishment would secure near-monopoly control of the placement of plaintiff’s marks and the associated goods and services on the Internet, where, arguably, "placement" is a nebulous concept. A greater showing of harm is required.

V.

CONCLUSION

Accordingly, and for the foregoing reasons, the plaintiff’s motion is denied. The Court hereby adopts and issues the parties’ proposed Findings of Fact and Conclusions of Law, as modified, appended hereto.

IT IS SO ORDERED.

Dated: June 24, 1999.

ALICEMARIE H. STOTLER
UNITED STATES DISTRICT JUDGE


I.

FINDINGS OF FACT

The findings and conclusions are cumulative to the foregoing opinion and may therefore be of only marginal interest. But see No. 49.

A. PEI and its Trademarks

2. PEI has made substantial investments to promote its goods and services. In fiscal year 1997, PEI spent approximately $46,500,000 in advertising. That same year, PEI recorded $296,623,000 in net sales for various goods and services under the PEI Marks. Id. at ¶ 3.

7. Because of the duration and extent of PEI’s advertising, use and publicity of the trademarks Playboy® and Playmate®, these trademarks have acquired significant recognition and goodwill worldwide, have become inherently distinctive and have acquired secondary meaning. This worldwide recognition has made both Playboy® and Playmate® famous marks which the public associates with PEI’s adult entertainment goods and services. Further, consumers worldwide associate the Playboy® and Playmate® marks with PEI and are aware that PEI creates Playboy® and Playmate® products and services. Id. at ¶ 7.

10. Defendant Excite, Inc. ("Excite") operates a portal site on the World Wide Web that offers users the ability to, among other things, search the Internet using Excite’s search engine. See Carpenter Decl., ¶¶ 2-3.

11. Defendant Netscape Communications Corp. ("Netscape") operates Netcenter, a World Wide Web portal that offers users the ability to, among other things, search the Internet using a Netscape search engine, which is co-branded with Excite and programmed by Excite. See Beckwith Decl., ¶¶ 2-3.

12. Because the Internet contains an almost infinite number of Web pages, Internet search engines provide a critical tool for Internet users. Without search engines, Internet users would be unable to locate all but the most obvious Web sites. See Carpenter Decl., ¶ 5.

13. Search engines generally use algorithms to assess the relevance of Web sites to a search query by, among other things, looking at the words used on the site. Web pages that contain the list of Web sites generated by a search engine are called the "search results pages." Soffer Decl. [Excite] ¶ 22. Some search engines look in particular for words that are invisible to the user but are nonetheless embedded in the site’s software code so that the site will be picked up by search engines. Such words are called metatags. Soffer Decl. [Excite] ¶ 22; Declaration of John S. Naumann, dated May 14, 1999 ("Naumann Decl.") ¶ 9.

14. Although this case is about the use of computer technology on the Internet, and although it is about an Excite product that is made possible by an Internet user’s use of the Excite search engine, the case is not literally about search engines or the use of metatags by Web sites seeking to be picked up by a search engine.

C. Banner Advertisements

15. Many web sites, including those operated by Excite, Netscape, and PEI, contain advertisements known as "banner ads." See McKinley Decl., ¶ 3.

16. An Internet user who executes a search using Excite’s or Netscape’s search engine is presented with a Search Results page containing a variety of information, including a list of search results, recommended sites, and one or more banner advertisements. See R. Naumann Decl., ¶¶ 3-29.

17. The advertising product at issue here is Excite’s "banner ad" product. A banner ad is an advertisement that stretches across the top and sometimes the bottom of a Web page which contains a link to the sponsor’s Web site. j~ at ¶ 16; Naumann Decl. ¶ 4. A user clicking on the ad will be brought to the advertiser’s Web site. Soffer Decl. [Excite] ¶¶ 25, 36.

18. Some banner advertisements on Excite and Netscape are programmed to appear on the search results pages in a random or "general" rotation that is completely unrelated to the search query typed by the user. Other banner advertisements are programmed to be displayed only in response to specific search queries. For example, Honda might prefer that its banner advertisements be displayed only when a user had typed in a search query related to automobiles or cars but not when the user had typed in search terms related to gardening. See McKinley Decl., ¶ 4.

19. Regardless of whether a banner advertisement is displayed as part of the random "general" rotation or displayed in response to the user’s search query, there is no difference in the appearance of the banner advertisement that is displayed to the user or its placement on the search results page. See McKinley Decl., ¶ 5.

20. In May 1998, Excite and Netscape began selling advertising inventory for banner advertisements to be displayed in response to a pre-selected package of search queries to advertisers that operate adult entertainment Web sites. The words "playboy" and "playmate" are two of the words in this package of over 450 words. If an Excite or Netscape user enters one of the over 450 words in this package, then the search results page will display a banner advertisement from one of these advertisers. Because there are several advertisers which purchased banner advertisements triggered by the search queries in this package, the banner advertisements from the various advertisers are displayed on a rotating basis. See McKinley Decl., ¶ 11.

21. Excite and Netscape sell banner advertisements on a "per impression" basis, i.e., Excite and Netscape receive advertising revenue from displaying a banner advertisement, regardless of whether or not an Internet user "clicks" on the banner advertisement. See McKinley Decl., ¶ 7.

D. Search Results Pages

22. The search results pages displayed on Excite and Netscape in response to a user’s search for "playboy" or playmate" contain a variety of information, including links to PEI’s web sites, a list of search results, suggested search, recommended web sites, news articles related to the search term, and one or more banner advertisements. See R. Naumann Decl., ¶¶ 3-29, and Exhs. 1, 3, 4, 6 thereto.

23. A user of Excite or Netscape who seeks PEI’s web sites can easily find them on the Search Results pages for "playboy" and "playmate." See Id.

24. The banner advertisements on the Search Results pages do not contain the words "playboy" or "playmate," nor do these advertisements claim or suggest that PEI is the source, sponsor, or affiliate of the advertisers’, their web sites, or their goods or services. See Id.

E. Excite and Netscape Do Not Use The Words "Playboy" or "Playmate" To Identify Goods or Services Or To Suggest Sponsorship By Or Affiliation With PEI

25. Excite and Netscape are not competitors of PEI; Excite and Netscape offer Web portal services, while PEI publishes adult entertainment. See Carpenter Decl., ¶¶ 2-3; Beckwith Decl, ¶¶ 2-3; Lindeman Decl., ¶ 2. Indeed, at oral argument, PEI admitted that it was not a search engine. See Transcript of May 24, 1999 Hearing at p.33.

26. Excite and Netscape do not use the words "playboy" or "playmate" to identify any goods or services. See R. Naumann Decl., ¶¶ 6, 9, 10, 16, 21-23, 29 and Exhs. 1, 3, 4, 6 thereto.

G. There Is No Evidence Of Confusion

33. PEI has presented no evidence of confusion.

34. PEI has not presented a consumer survey of likelihood of confusion, despite having (a) significant financial resources to pay for such a survey (in fiscal 1997, PEI had approximately $300 million in net sales and spent almost $50 million in advertising), see Lindeman Decl., ¶ 3, and (b) plenty of time to conduct such a survey, See Marhull Decl., ¶ 1 (PEI hired expert witness in November 1998, but did not move for preliminary injunction until April 1999).

35. Neither Excite nor Netscape have received any complaints or comments from consumers who believed that a banner advertisement on the Excite or Netscape search results page was a PEI advertisement or was somehow endorsed by, sponsored by or affiliated with PEI. See Beckwith Decl., ¶¶ 8-9; Gross Decl. ¶¶ 3-5.

36. Neither Excite nor Netscape have received any complaints or comments from consumers who were confused in any way by a banner advertisement on the Excite or Netscape search results page that resulted from a search for the words "playboy" or "playmate." See Id.

H. There Is No Evidence of Dilution

37. PEI has presented no evidence of any lessening of the capacity of its marks to identify and distinguish goods and services as a result of any conduct by Excite and/or Netscape.

I. PEI Uses Its Marks In Connection With Sexually Explicit Material

38. PEI’s Web site (Playboy® Online) includes banner advertisements for sexually explicit material, and offers reviews of sexually explicit Web sites. See R. Naumann Decl., ¶¶ 30-47, 18 75-77, Exhs. 7-17. 33-34 thereto.

39. PEI offers sexually explicit programming on its "Playboy Channel." See Annes Decl., ¶¶ 38-39.

40. PEI uses the "Playboy®" mark on publications (including Playboy® Magazine) that specifically instruct readers on how to find explicit sexual content on the Internet. See R.Naumann Decl., ¶¶ 51-64, 68-74, Exhs. 20-27, 29-32 thereto. 25

41. PEI’s goods bearing its "Playboy®" and "Playmate®" marks are frequently sold and displayed near sexually explicit material of others. PEI makes no attempt to discourage or inhibit this practice. See Annes Decl., ¶¶ 3-35, Exhs. 1-11 thereto; Campbell Decl., ¶¶ 2-9.

CONCLUSIONS OF LAW

C. A Trademark is a Limited Property Right Not a Monopoly

48. A trademark is a word, symbol or device which identifies the source of goods or services. See 1 U.S.C. § 1127 (a trademark is used by a person "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of those goods . . . ."); Mattel. Inc. v. MCA Records, Inc., 28 F.Supp.2d 1120, 1141 (C.D.Cal. 1998) ("[T]he purpose of trademark has ‘remained constant and limited: Identification of the manufacturer or sponsor of a good or the provider of a service.’").

49. A trademark is not an omnibus property right or a monopoly on the use of the words in the trademark. See New Kids on the Block v. News America Publishing. Inc., 971 F.2d 302, 306 (9th Cir. 1992) ("A trademark is a limited property right in a particular word, phrase or symbol."); see also S.Rep.No. 1333, 79th Cong., 2d Sess. (1946) ("Trade-marks are not monopolistic grants like patents and copyrights"), cited in Sebastian Internat’l. Inc. v. Longs Drug, 53 F.3d 1073, 1075 n.5 (9th Cir. 1995).

50. "[O]ne can capitalize on a market ... created by another provided that it is not accomplished by confusing the public into mistakenly purchasing the product in the belief that the product is the product of the competitor." International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir. 1980), cert. denied, 452 U.S. 941 (1981) (defendant permitted to manufacture jewelry bearing plaintiff’s mark).

51. PEI is not entitled to the entire commercial utility of the words "playboy" and "playmate." See HMH publishing Co.. Inc. v. Brincat, 504 F.2d 713, 717-18 (9th Cir. 1974) ("[T]he mere registration of the word ‘playboy’ as a trademark can not entitle the registrant to capture the entire commercial utility of such a widely known concept."). (4)

52. A trademark holder may not bar all use on the Internet of words in the English language. See Brookfield Comm. Inc. v. West Coast Entertainment Corp., - F.3d -‘ 1999 U.S. App. LEXIS 7779, *84 (9th Cir., April 22, 1999) ("The term ‘MovieBuff’ is a descriptive term, which is routinely used in the English language . . . . The proper term for the ‘motion picture enthusiast’ is ‘Movie Buff,’ which [defendant] certainly can use.").

53. There are numerous cases in the Ninth Circuit in which a defendant has been allowed to "use" plaintiff’s "trademark" without plaintiff’s consent. -

54. For example, it is well established that a party may "use" another’s trademark for purposes other than to identify the source of products. See, e.g., PEI v. Welles, 7 F.Supp.2d 1098, 1103 (S.D. Cal.) (former Playboy Playmate could use the words "playboy" and "playmate" in her advertising on the Internet; PEI’s motion for preliminary injunction denied), aff’d without opinion, 162 F.3d 1169 (9th Cir. 1998); New Kids on the Block v. News America Publishing. Inc., 971 F.2d 302, 309 (9th Cir. 1992) (newspaper could have announcement that contained musical band’s trademarked name to advertise newspapers’ "900" line for public to vote for favorite members of musical band without consent of band; "the trademark laws do not give [plaintiffs] the right to channel their fans’ enthusiasm (and dollars) only into items licensed or authorized by them"; summary judgment); Mattel. Inc. v. MCA Records. Inc., 28 F.Supp.2d 1120, 1152 (C.D. Cal. 1998) (defendant could distribute song "Barbie Girl" without consent of toy company which had "Barbie" trademark; summary judgment).

55. A competitor may also use another’s trademark in its own advertising, as long as there is no confusion. See, Ag. EquiP.. Inc. v. Orchard-Rite. Ltd., 592 F.2d 1096, 1103 (9th Cir. 1979); Saxony Prods.. Inc. v. Guerlain, In~, 513 F.2d 716, 722 (9th Cir. 1975) ("[defendant] could use [plaintiff’s] trademark SHALIMAR to apprise consumers that Fragrance S is ‘LIKE’ or ‘similar’ to SHALIMAR."); see also Calvin Klein Core v. Parfums De Coeur. Ltd., 824 F.2d 665, 668 (8th Cir. 1987) (phrase "If you like OBSESSION you’ll love CONFESS" did not infringe) ; Penthouse v. PEI, 663 F.2d 371, 391 (2d Cir. 1981) ("No reasonable person reading Penthouse’s ... advertisements could be deceived ... into believing that Penthouse magazine was the same as a copy of Playboy.").

56. An unauthorized retailer may sell trademarked products without the trademark holder’s consent. See Sebastian Internat’l. Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 1076 (9th Cir. 1995) (this principle is "not rendered inapplicable merely because consumers erroneously believe the reseller is affiliated with or authorized by the producer").

57. The sale of a trademark by itself, unattached to a product, is not infringement. or example, an unauthorized jeweler may manufacture and sell jewelry encompassing another’s mark without the consent of the holder of the mark. See International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir. 1980) , cert. denied, 452 U.S. 941 (1981)

D. Excite and Netscape Are Not Using the Words "Playboy" Or "Playmate" As Trademarks

66. A higher showing of confusion is appropriate where, as here, First Amendment interests are at stake. See Mattel. Inc. v. MCA Records. Inc., 28 F.Supp.2d 1120, 1152 (C.D.Cal. 1998) ("The First Amendment interests at stake outweigh the possibility that some people . . . might be confused."); Restatement (Third) of Unfair Competition § 20, comment g.

67. A higher showing of confusion is required here to prevent (a) PEI from obtaining a monopoly to the words "playboy" and "playmate"; and (b) Internet users from losing their ability to obtain information about words which also happen to be trademarks.

(3) The First Amendment Protects the Publication of Information Regarding an Internet User’s Search

72. Excite and Netscape’s publication of value-added information to aid the searches of Internet users is protected by the First Amendment. (8) See New Kids, 971 F.2d at 308, 312 ("While plaintiffs’ trademark certainly deserves protection such protection does not extend to rendering newspaper articles, conversations, polls and comparative advertising impossible."); Cher v. Forum Int’l, 692 F.2d 634, 639 (9th Cir. 1982). Constitutional protection extends to the truthful use of a public figure’s name and likeness in advertising which is merely an adjunct of the protected publication.... [S]uch usage is protected by the First Amendment."); Montana v. San Jose Mercury News. Inc., 34 Cal.App.4th 790, 797, 40 Cal.Rptr.2d 639 (1995) ("the First Amendment protects the [newspaper’s] posters [of Joe Montana, which were sold to the public] ... because the posters themselves report newsworthy items of public interest...")

(4) The First Amendment Protects the Publication of Advertisements Keyed to Words in the English Language

73. Parties may not leverage their rights in certain intellectual property to infringe the First Amendment rights of others.

74. For example, copyright protects expression. However, in situations where an idea can be expressed in only a limited number of ways ~ (a) there is a "merger" of the idea and the expression of the idea or (b) the expression is of a common or "stock" scene, a concept known as "scenes a faire"), the First Amendment rights of others to express ideas "trump" the copyright. See, e.g., Harper & Row v. Nation Enterp., 471 U.S. 539, 556, 105 S.Ct. 2218, 2228, 85 L.Ed.2d 588 (1985) ("copyright’s idea/expression dichotomy ‘strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author’s expression. ‘ ... No author may copyright his ideas or the facts he narrates."); Allen v. Academic Games, 89 F.3d 614, 617-18 (9th Cir. 1996) ("the notions of idea and expression may merge from such ‘stock’ concepts that even verbatim reproduction of a factual work may not constitute infringement.").

75. Here, PEI is seeking to leverage its trademarks "Playboy®" and "Playmate®" (which cannot be searched on the Internet) into a monopoly on the words "playboy" and "playmate." Indeed, by seeking a prohibition on all advertisements that appear in response to the search words "playboy" and "playmate," PEI would effectively monopolize the use of these words on the Internet. This violates the First Amendment rights of (a) Excite and Netscape; (b) other trademark holders of "playboy" and "playmate"; as well as (c) members of the public who conduct Internet searches. (9) See generally See Bally Total Fitness Corp. v. Faber, 29 F.Supp.2d 1161, 1165 (C.D.Cal. 1998) ("prohibiting [defendant] from using [plaintiff’s] name in the machine readable code would effectively isolate him from all but the most savvy of Internet users")