Much criticism has been levied at lobbyists and “special interests.” Well, some of them have apparently taken time from their socially significant efforts defending wayward politicians and negligent oil companies and coal mine operators to quietly work at amending the U.S. trademark law. The fruits of their efforts can be seen in a recent decision of the U.S. Court of Appeals For The Sixth Circuit, V Secret Catalogue Inc. et al. v. Moseley et al.
For the benefit of those readers who are not from the planet Earth, V Secret is Victoria’s Secret, the lingerie company that promotes its wares through those thoughtful – or thought provoking – and informative catalogues and television commercials which, like the Sears catalogue of yore, many of us eagerly await. Moseley is Victor Moseley, who runs a shop formerly known as “Victor’s Little Secret.” Victor sells what the courts have described as “lewd sexual toys,” a description clearly meant to distinguish his goods from the “sexy and playful” garments touted by Victoria’s Secret.
The dispute began in 1998, when an army colonel wrote to V Secret, informing them of the heretofore unknown existence of Victor’s Little Secret. The colonel – who shall remain unnamed – stated that he was “offended” by Victor’s use of a “reputable company’s trademark to promote the sale of ‘unwholesome, tawdry merchandise’,” giving rise to the present trademark dispute and incidentally to questions pertaining to the proposed revocation of “don’t ask, don’t tell.” Interestingly, both the colonel’s wife and daughter shopped at Victoria’s Secret, which, in the colonel’s view, is apparently wholesome.
At any rate, V Secret, having been made aware of Victor’s Little Secret, sued the Moseleys for trademark dilution. The case ultimately wended its way to the U.S. Supreme Court, where the justices interrupted their study of pornography – “I can’t define it, but I know it when I see it” – to consider the matter. After close study, they ruled that a trademark holder must prove actual harm in order to prevail in a claim of trademark dilution. A “mere likelihood” of harm would not suffice. The Court reversed the injunction issued by the district court and remanded the case for further proceedings. Score one for the Moseleys and purchasers of sex toys.
In the meantime, Congress – bowing to pressure from the aforesaid lobbyists and special interests – passed the Trademark Dilution Revision Act of 2006, which changed the standard for proving trademark dilution to “a mere likelihood” of harm.
Applying the new law, the district court again issued an injunction. The Moseleys changed the name of their business to Cathy’s Little Secret and appealed. The Sixth Circuit Court of Appeals determined that “there is a consensus in the case law that associations between a famous mark and ‘bawdy sexual activity would cause disparagement’” and, hence, create a likelihood of harm. They ruled against the Moseleys, who had failed to introduce any evidence that harm was unlikely. “The new law seems designed to protect trademarks from unfavorable sexual associations. Thus, any new mark with lewd or offensive-to-some sexual association raises a strong inference of tarnishment. It seems clear that the new act demonstrates that Congress intended that a court should reach a different result in this case if the facts remain the same.”
An attorney for the Moseleys said his client, “just a plain old guy who’s Kentucky stubborn and wants to use his name” – and who wouldn’t want his name linked to sex toys – was considering requesting en banc review or another appeal to the Supreme Court (which, no doubt, still has the Victoria’s Secret catalogues and videos from the last appeal).
THE LESSON TO BE LEARNED: Don’t piss off people with connections in Congress.