(The Return of) Ignatz, by Sam Heldman

Friday, November 08, 2002

Supreme Court

Next case up for prediction in the Supreme Court sweepstakes is Moseley v. Victoria's Secret, presenting this Court with its first opportunity to discuss the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c). Others, in writing about this case, will giggle about lingerie. Not me; I find it titillating occasionally, but rarely worth giggling about. (I did, however, really like Raymond Carver's poem "Lingerie". I saw him read it once, in person. He was very awkward in person at that time. But I digress).

This statute – which is different from and more recent than the more general Trademark laws – allows the owner of a trademark (e.g., a brand name like "Victoria's Secret") to get an injunction against someone else's use of a similar mark, even without proving that consumers would be likely to get confused as between the two marks. General trademark law allows suits if there is that sort of likelihood of confusion; for instance, I probably couldn't start a website called "www.walmart1.com" and start selling stuff on it, because I would be tricking people into thinking that I was Wal-Mart. (That's the theory, at least). But this new law, as I said, allows an injunction even without proof of confusion, so long as the holder of the older famous "mark" can prove that the newcomer's mark "causes dilution of the distinctive quality" of the famous mark.

And this case, nominally, is supposed to resolve a circuit split as to what you have to prove, as the plaintiff, in order to prove that the newcomer's mark (as in this case, "Victor's Little Secret" for a store selling lingerie, adult toys, and whatnot) "causes dilution of the distinctive quality" of the mark "Victoria's Secret." Some courts have said that you have to have objective proof of actual current injury to the economic value of the famous mark. The Sixth Circuit, in its opinion in this case, disagreed, and did not require objective proof of current actual injury. Instead, the Sixth Circuit sort of said, "Well, duh, any reasonable person can see that having a cheesy store selling somewhat similar, but cheesier, merchandise will 'taint' the distinctive value of the 'Victoria's Secret' mark with a bad association; even if no consumer is actually confused, it will make them subconsciously think 'cheesy' when they see 'Victoria's Secret' from now on." That's not really what the Sixth Circuit said, precisely, but it's the gist of it.

There are, as you can see from looking at this page from Findlaw and scrolling down, lots of bigwig amici weighing in on the side of Victoria's Secret in this case; The Establishment takes this very seriously, because BRANDS are near-deities these days it seems.

How will the Court decide the case? Here's what I think: the Court won't impose a requirement of "objective" proof of actual current impact on the economic value of the mark in all cases, as the Moseleys want – to that extent, Victoria's Secret and its allies in The Establishment will win. Does this mean "affirm"? I probably should say so – after all, the expert law profs at the Wash. U. site have all predicted affirmance, and most of them predict unanimous affirmance – but I have a sneaking suspicion that the Court might end its opinion by saying something along the lines of "Well, we've just told you that you don't really need the sort of ironclad proof of current effect that the Moseleys argued for, but in the course of this opinion we've clarified what the governing law is, and it's not exactly like the standard that the lower courts applied in this case, and the best thing to do in this case, all things considered, is to let the parties go back to the lower courts and argue about how our new standard applies to the facts in this case." So, recognizing that this is a risky play on my part, I'm saying "REVERSE".

posted by sam 2:51 PM 0 comments


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