Legal action?

[arlene2]

Seems Kwplaymates and TorontoPlaymates are not alowed to use the word Playmates.
Recently I received ANOTHER letter regarding this. They would like for me to hand over my domain to them. Sound weird to you guys?
Here is what was written. They obviously emailed me instead. first one said kwplaymates.

June 20, 2006
BY EMAIL AND REGISTERED MAIL WITHOUT PREJUDICE



Re: Infringement "www.torontoplaymates.com”
Our file no.: PLBO 44902-0237
Dear r:
We act on behalf of Playboy Enterprises International, Inc. of Chicago, Illinois with respect to intellectual and industrial property matters in Canada.
Our client is the owner of the very well known RABBIT HEAD DESIGN and PLAYBOY trade-marks as well as the Canadian trade-mark PLAYMATE which is also well known. Without limiting the foregoing, our client is the owner of Canadian trade-mark registration No. 419,150 for PLAYMATE, registered on November 5, 1993 in association with a wide range of “entertainment services”.
By virtue of Section 19 of the Trade-marks Act, R.S.C. 1985, c.T-13 (hereinafter referred to as the “Act”), our client enjoys exclusivity in the RABBIT HEAD DESIGN, PLAYBOY and PLAYMATE marks throughout Canada and any advertising or use of one or more of our client’s marks or trade-marks confusing therewith constitutes trade-mark infringement under Section 20 of the Act. Our client has expended considerable funds and resources over many years to develop and protect its marks in Canada. As a result, these trade-marks have acquired considerable recognition and goodwill and are therefore a very valuable asset of our client.
It has recently been brought to our client’s attention that your company is the registered owner of the domain “www.torontoplaymates.com”, which belongs to a platform on which “companion services” are advertised. The respective photos of the “companions” leave no doubt as to the nature of the services offered. Representative pages from your website are attached.
It is obvious that the choice of the trade name “Toronto Playmates” was made with the intention of creating an association with our client’s marks. The registration of the domain “torontoplaymates.com” also has the effect that internet users who search for our client’s web site by means of key words are diverted to your company’s site. Due to the adoption of the term “playmates” which was coined by our client, the general public will also associate your company’s services with our client and infer that these services were authorized or somehow endorsed or sponsored by our client. You are certainly aware that our client has offered entertainment services under the trade-mark and trade name PLAYMATE for many years.
The operation of the web site www.torontoplaymates.com as well as the use of this term as a trade name constitutes a blatant infringement of our client’s marks as well as a passing off under Section 7(b) and (c) of the Act. Further, you are wilfully attempting to benefit from the goodwill generated by our client and your sales and the content displayed will have the effect of depreciating the value of the goodwill attached to our client’s registered trade-marks as well as the trade name in contravention of Section 22 of the Act.
We were informed that you have been corresponding with our client’s Senior Manager for Intellectual Property Enforcement, Mary Ball. While you indicated a general willingness to remove the infringing content from the website and transfer the domain to our client, the deadlines set for your compliance with our client’s demands expired without the promised results. The contents of your website are still accessible and the domain transfer has not been initiated. Our client is unwilling to accept any further delays as its legal position is quite clear. In order to avoid legal action, we therefore demand that you immediately deactivate the website and effect the transfer of the domain. Ms. Ball has repeatedly asked you to provide her or her contact at our client’s domain registrar with the necessary contact details needed to initiate transfer proceedings. Alternatively, you may contact your own registrar and request transfer of the domain to www.register.com and our client’s account.
Please also note that the legal implications set out above equally apply to the domain name “www.torontocenterfolds.com”, which seems to be the alternative you suggested to Ms. Ball. Our client owns a number of registrations for “Centerfold” formative trade-marks, including, amongst others, Canadian registration No. 540257 PLAYBOY CENTERFOLD and US registration no. 2322825 PLAYBOY CENTERFOLDS for services including “online entertainment”. Please consider yourself informed and warned about the legal consequences should you chose to adopt this domain name.
Apart from the immediate deactivation of the site and transfer of the domain “torontoplaymates.com”, we hereby demand within seven (7) days of the date of this letter that you will:
1. Cease forthwith all use of the name “Toronto Playmates” as a trade-mark, domain name, trade name or in any other context;
2. Immediately deliver up to our attention any products, publicity, leaflets, stationary, business cards, or other printed material which features one or more of our client’s marks, or any confusingly similar trade mark; and
3. Immediately provide us with an accounting of all sales and profits generated while using the PLAYMATE mark and domain name.
Our client expects to receive your confirmation that the transfer of the domain has been initiated and any and all actions required on your part carried out at the latest within the above mentioned seven (7) days. In the absence of any reply to this letter and/or compliance with the demands made herein within seven (7) days, we will recommend to our client to initiate such further proceedings as we deem appropriate, without further notice to you.
DO GOVERN YOURSELVES ACCORDINGLY
Lapointe Rosenstein, L.L.P.
Per:
Ian MacPhee
Attorney, Member of the Ontario Bar
Telephone: (514) 925-6323
Facsimile: (514) 925-5023
ian.macphee@lapointerosenstein.com

IM/lr (932383)
Encl.

 

[dsc]

Alot of this is going on right now. Ford's lawyers clamped down on FoMoCo and I know of one website that had to shutdown.

 

[Rigel7]

Debb,

From what I have heard in the past, these guys are serious. Not very nice people.

 

[CambridgeSteve]

I knew that Playmates was registered but I never understood the legal workings of mixing words. Are you questioning if it is possible to do this? I agree that alot of companies have been going after others with the same wording in the past. P&G is one you do not mess with also. George Lucas years ago bought all the rights to the various versions of spelling "Star Wars" and the different words that could be substituted in their place.

 

[dreamer]

I do not know if you want to fight this but you do have a good chance of winning.

Playboy has been successful going after sites that purposely use their trademarks in a confusing manner, however you can use the term "playmate" in a discriptive or nontrademark way to describe your services.

First, playmate is a defined word in the dictionary, so you can use it in that context. If your site was used to provide similiar services or ads for similiar services to Playboy then you would be in trouble. However your site is providing escort services, which Playboy does not provide. You are not purposely trying to trick people to come to your site thinking it has something to do with Playboy, in fact you only want people to come to your site who are interested in KW escorts.

Here is an interesting read, http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-1156.html

Note the three elements that all have to be proved. In my opinion you are not using the name in bad faith.

Playboy only owns the trademark "playmate" in the context of their business and they cannot prevent others from using the term "playmate" if it is used in a descriptive manner that has nothing to do with that business.

The websites who do run into trouble are ones that use the term to cause those searching for Playboy to find their site instead and they are then offered paid memberships to adult websites.

You are using the term "playmates" to describe the girls who work with you.

Here is another good read, specifically

The fair use doctrine is somewhat analogous to the fair use doctrine of copyright law, which considers whether a defendant's use of copyrighted material is reasonable despite not having the copyright owner's permission to use the work, or is at least unlikely to negatively affect the copyright owner's economic interest in his copyright. [22] As well stated by the Fifth Circuit Court of Appeals, "the 'fair use' defense [of trademark law] … forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods" [23] The fair use defense "[allows] a junior user … to use a descriptive term in good faith in its primary, descriptive sense other than as a trademark." [24] In these cases, the court must distinguish between the use of a trademark in a strictly descriptive or informative sense from its use in an infringing sense.
A defendant asserting the fair use affirmative defense need only prove that he is not using the term as a mark, but rather as a fair and good faith description of the good attached to it. [25] In order to support this argument, a defendant may offer testimony and tangible evidence that shows the fair use of the term. The fair use defense implicates six competing interests: three in favor of trademark protection, and three in favor of the fair use defense.

First, the public has an interest in not being deceived about the goods or services available in the marketplace. Second, the public also has an interest in encouraging the production of quality goods in a competitive market. Third, mark-owners have an interest in preserving the integrity of their marks and not allowing others to trade upon their good will. Fourth, the defendant has an interest in being able to describe accurately his product in order to compete effectively in the marketplace. Fifth, the public has an interest in receiving accurate information about products and services available for purchase. And sixth, the public also has an interest in not allowing individuals to create monopolies or other barriers to competition by improperly using trademark law to remove words, symbols, or product features from general use



​

http://www.bc.edu/bc_org/avp/law/st_org/iptf/articles/content/2006011001.html

 

[bOOTyMaN]

Make em pay you for that domain.
Mikerowesoft.com werked for awhile and finally Billy paid the kid for it..

I don't think playmate is an owned word (i.e kid has playmates at school)

Frig em,ask em how much$$$

 

[far_too_crazy]

their whole intension is to beat you with threats and money. they have no hope of winning... laws are different in Canada then in the states from which they operate.
as far as I know they only have legal right to Playboy Playmates... not to KW Playmates.

but they will try to drive you broke defending yourself... best to rename yourself gracefully.

KWP is not in their repetoire.

 

[far_too_crazy]

Make em pay you for that domain.
Mikerowesoft.com werked for awhile and finally Billy paid the kid for it..

I don't think playmate is an owned word (i.e kid has playmates at school)

Frig em,ask em how much$$$

be very careful on how you make the overture... to make it sound like you bought it to extort them make you lose automatically.

Remember... Mikerowesoft was owned by Mike Rowe not Joe Nobody.

 

[radius]

I do not know if you want to fight this but you do have a good chance of winning.

Playboy has been successful going after sites that purposely use their trademarks in a confusing manner, however you can use the term "playmate" in a discriptive or nontrademark way to describe your services.

(first, I'm not a lawyer and this isn't legal advice. blahblahblah )

There might be a chance of winning against Playboy, but I think you are mixing up a few concepts here.

1) Whether or not you need to hand over a domain is not the same as whether you have infringed on a trade-mark.

2) In general, trade-marks may be infringed if the use of one mark causes confusion with another mark in the same geographical area. Or in other words, if a consumer could be mislead into thinking that the wares sold under the first mark are produced/distributed/sold/etc. by the owner of the second mark.

Note that although the class of wares/services/etc. is one factor in deciding whether there is confusion, it is not a necessary condition. This is usually the case where a trade-mark is very famous, and "playmates" might be famous enough.

3) In Canada, under common law, there is also a tort of passing-off. Which requires that a) the plaintiff have good will/reputation, which Playboy definitely does, and b) a misrepresentation by the defendant (whether
or not intentional) leading customers to believe that the goods or services are those of or those authorized by the plaintiff, and c) damage suffered by the plaintiff. If points a) and b) are proved, the damage is presumed.

Whether or not there is a misrepresentation in this case, I'll leave up to lawyers to argue.

4) In terms of your fair use point, that means you can't prevent other people from using a word descriptive of the goods/services you are offering. I don't think that it is all that easy to argue that "playmates" and companions or escorts are the same thing. At least, if Playboy had never used that word, how many people would associate the word playmates with anything sexual?

AFAIK, the fair use defence means if you have a garage that works on German cars, you can put "BMW repairs" on your sign without getting in trouble from BMW.



To far_too_crazy,

if you read their letter, Playboy registered the mark "PLAYMATES" in Canada, not "PLAYBOY PLAYMATES".

 

[bOOTyMaN]

Cease and desist order i assume they sent you.
Go online and look up intellectual property....blackberry,crackberry...Playmate too PlaytimeMate...or PlayMatee...

Playboy i can understand the TM on it...but Playmate...Not likely i guess..they are sabre rattlin,tell em you will offer to sell your domain to them for $$$ and a few bunnies aswell....or we go to court pro boner (Counsellor Asspirate yer Honor)

Attorney, Patron of the Ontario Bar &Strip Club

 

[dreamer]

but I think you are mixing up a few concepts here.

No, I actually think I covered it all

The first part of my post deals with turning over domain names, the wipo reference, and I do not think kwplaymates are acting in bad faith. WIPO deals with turning over domain names based on trademark infringement.

The second part of my post deals directly with trademark law.

I believe your point b) above would fail, as kwplaymates are obviously a local KW escort service and in no way is confusing with Playboy. In fact if I go to their site I am thinking of "playmate" according to the dictionary term and Playboy never enters my mind. Maybe they should register kwpaymate.com instead and trademark the term "paymate" for use in the escort business.

And you are right and wrong in your fair use example, in that you only covered half of it. The half you missed is the use of a descriptive term, which is what the "playmate" issue is about. Your example deals with a definite trademark, BMW, and how it can be used in a fair use example.

If kwplaymates.com was an adult member site then I think they are infringing. However, they are not, they are using the term "playmate" to describe their attendents using the dictionary definition. There is nothing confusing about their site.

 

[bred2win]

I agree with DREAMER and I too believe you have a good case. The decision whether to fight or not is another subject, especially when you consider legal costs. But Dreamer's arguments are sound.

Radius is also correct. Playboy would basically have to prove that your intent was to mislead the public, into believing that the goods or services you provide where authorized by Playboy.

I once worked for a large "fashion" manufacturer as Director of Sales and we always went after anyone who even remotely infringed on our trademarks.
Basically we found that the majority just backed off in fear of legal action. I think Playboy would have a tough job convincing a court that the name KWPLAYMATES was an infringement.

Either way good luck !

 

[LKD]

lol what a joke! Even if it's true, who does he take to court? Does he even know who you are? whether you're a he/she? lol I'd just ignore the idiot. If it was true, the first thing he'd do is get your web service provider to shut down your site, rather than go through the trouble of taking you to court.

just tell him to "fuck off". If you do go to court, I'm sure the judge will make you shut down the site before punishing you. lol it's not like you've disobeyed court order or caused the company million dollar losses selling pirated copies of movies and games on your site

 

[Svend]

I'm guessing you chose the name because you want people to think you have the most attractive women in town - of Playboy calibre.
The word "playmate" is linked in our minds to the centrefold models, some of them are described as exotic dancers and I'd suspect a few are escorts as well.
It's too bad they are going after you, I sympathize.

 

[dreamer]

I'm guessing you chose the name because you want people to think you have the most attractive women in town - of Playboy calibre.
The word "playmate" is linked in our minds to the centrefold models, some of them are described as exotic dancers and I'd suspect a few are escorts as well.
It's too bad they are going after you, I sympathize.

Interesting comment, but I do not know if you are trying to say that they are confusing. In fact, in my opinion, your post is exactly what the concept of the fair use is about, the ability to describe your service without having someone trying to monopolize through trademarks the ability to describe your service. Essentially the fair use rules allow you to uses someone's trademark to describe your service as long as you are not using it as your trademark. And if the trademark is a common word, as is "playmates" then the burden of proof on the trademark holder is even greater.

 

[Svend]

Good points.
"Playmates" as a common word is used for children who play together, if it's for sex then it has an association with Playboy in my mind.

 

[magicmanofmassage]

Hey Debb,

Nothing wrong with going with something slightly different:
KW Laymates
KW Playdates
KW Staylates

it's too early in the morning,but that's a start, lol.

Good luck!

 

[dreamer]

Good points.
"Playmates" as a common word is used for children who play together, if it's for sex then it has an association with Playboy in my mind.

but were you confused when you went to their site?

did you think Playboy was offering escort services in KW?

and the dictionary definition of "playmates" is more than just used for children

http://dictionary.reference.com/search?q=playmate&x=24&y=12

 

[Infidelitme]

Deb; I'm not a lawyer either but suggest you call one:
1. The home of the bunny does not own the word playmates. They own the "style" of it as it appears in their mag in the "playmate of the month" as well as the stylized word "playboy" as a trade mark.
2. They own the rabbit image, which does not and must not appear on your site (as I believe it did on the toronto site).
3. Go down to "the business centre" at Kitchener's city hall and register the name kwplaymates for something like $100. If they let you regisiter the name, it is your proof that the evil bunny is full of shit.
Do not change your name and tell them to go screw themselves... You may recall that during the Atlanta Olympics, the IOC tried to force a local pizzeria called "Olympic Pizza" that had been in business for a few years to change their name. All that got was a black-eye for the IOC in bad press and a 50% increase in the pizza joint's business. Again leave the name alone and if they come after you, all it will likely mean is more biz for you.

 

[producing_stars]

Debb

Deb; I'm not a lawyer either but suggest you call one:
1. The home of the bunny does not own the word playmates. They own the "style" of it as it appears in their mag in the "playmate of the month" as well as the stylized word "playboy" as a trade mark.
2. They own the rabbit image, which does not and must not appear on your site (as I believe it did on the toronto site).
3. Go down to "the business centre" at Kitchener's city hall and register the name kwplaymates for something like $100. If they let you regisiter the name, it is your proof that the evil bunny is full of shit.
Do not change your name and tell them to go screw themselves... You may recall that during the Atlanta Olympics, the IOC tried to force a local pizzeria called "Olympic Pizza" that had been in business for a few years to change their name. All that got was a black-eye for the IOC in bad press and a 50% increase in the pizza joint's business. Again leave the name alone and if they come after you, all it will likely mean is more biz for you.

nice advice but still wrong continue next thread.