Course No.: 9200 710 801
Course ID:  17261
Tu 6:30-9:30 p.m.
Room W-215
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008   Jay Dratler, Jr.  
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Notes on Playboy Enterprises, Inc. v. Frena

1.  Whereas Hotmail's marks were not registered, Playboy's marks had been long registered.  Indeed, they are among the most carefully maintained marks in all of American business.  What difference, if any, did that make in the legal analysis?   Would Playboy have still had a good cause of action under the Lanham Act if its marks had not been registered?  If so, would the analysis of its claim have differed significantly from analysis of the trademark-infringement claim here?


2.  Did Frena's acts constitute passing off, or reverse passing off?  Does the answer make any difference in the legal analysis?  If so, what difference?


3.  Do you think that visitors to Frena's Website really thought it was run by PEI?  If not, was the court wrong in finding a likelihood of confusion?  If not, what kind of confusion was likely?

Courts addressing cases of alleged trademark infringement and unfair competition recognize a number of different kinds of confusion.  The most well established are confusion as to source or origin of the goods or services and confusion as to sponsorship, affiliation or approval of or with the defendant's activities.  Courts also have recognized "post-sale confusion," which occurs when a potential purchaser sees a good with an infringing trademark in the hands of the initial purchaser (and perhaps attributes its poor quality to the trademark owner) and "initial interest confusion," which diverts a potential purchaser's attention from the trademark owner's goods, services, or premises before the point of sale.  What kind of confusion, if any, was likely in this case?


4.  Could Frena have run his Website, providing the same services to his users, without trademark infringement or unfair competition?  If so, how?  What would you advise him to do or not do?  (PEI also sued Frena for copyright infringement.  That portion of the opinion dealing with the copyright claim is omitted; we will discuss it later in connection with the Netcom case.)