V Secret Catalogue, Inc. v. Moseley

forth in Strick- standard set constitutional not demonstrate reports do in the scribed operan- otherwise, “modus compelling the district holding particularly land. been di,” thus have and would thereby legal error and committed court Tagabaris utility impeaching marginal discretion. abused its reason —and For that same truthfulness. on the bearing have no reports because IV. CONCLUSION Frizzell, Delaney, credibility of reasons, not locate did Bergmann if the district George foregoing For the —even introduce them failure to reports, his is RE- a new trial grant court’s Munoz. prejudice at trial did VERSED. triple- Additionally, points Munoz investiga- Diego

hearsay affidavit of San to a man spoken that he had averring

tor currently McCay, who is George

named marijuana importation

incarcerated Tagaban met both claims to have and who INC., CATALOGUE, V SECRET According jail. in a and Munoz California Plaintiff-Appellee, affidavit, McCay “Mr. investigator’s him that Tagaban telling ... rеcalls Mr. However, yet Munoz was innocent.” Mr. Stores, Inc., Plaintiff, Victoria’s Secret nor Mu- Bergmann neither again, because there is no hearing, at the noz testified v. Berg- to conclude in the record basis MOSELEY, Little dba Victor’s Victor It McCay. locate actually mann failed to Cathy Secret; Secret, fka Victor’s knew Bergmann equally plausible Secret, placing Moseley, an incarcer- Little McCay but felt dba Victor’s testify drug importer on stand ated Secret, Defendants-Ap- fka Victor’s drug in a trial would Munoz’s behalf on pellants. drugs in the minds Munoz with associate No. 08-5793. that this would hurt Mu- jury, testimony McCay’s than would noz more Appeals, States Court United him. would not be an unreason- help This Sixth Circuit. McCay’s hearsay judgment, because able only for testimony could have been used 21, 2010. Argued: Jan. Taga- purpose impeaching the limited May Filed: Decided and statement, nоt by prior inconsistent ban i.e., Rehearing En Banc Rehearing and truth the matter for the asserted — innocent.” actually “was that Munoz was Aug. 2010.* Denied 613, 802. For this same See Fed.R.Evid. testimony McCay’s

reason —and because impeach

could not have been used Frizzell,

credibility Delaney, did not locate George Bergmann —even

McCay, Munoz. prejudice this did not Determination

3. Ultimate Strickland represen- Bergmann’s

We conclude minimum than satisfied the

tation more * in her dissent. grant rehearing reasons stated Judge Moore would Colucci, Frank J.

tucky, Appellants. York, York, Umans, New New & Colucci Appellees. MERRITT, MOORE, and Before: GIBBONS, Judges. Circuit MERRITT, J., opinion delivered the 390), GIBBONS, (p. court. J. separate concurring opinion. delivered MOORE, 391-95), (pp. J. delivered a separate dissenting opinion.

OPINION MERRITT, Judge. Circuit by tarnish- In this trademark “dilution case, the Trademark brought under ment” 2006,1 ques- Dilution Revision Act of an interna- plaintiff, is whether the tion that uses the trade lingerie company tional has a designation name “Victoria’s Secret” injunctive against the valid suit for relief or use of the name “Victor’s Little Secret” defendants, by “Victor’s Secret” in a mall Elizabeth- small retail stоre town, Kentucky, that assorted mer- sells chandise, including toys” “sex and other The District sexually products. oriented then injunction. Since Court issued the Spainhour, E. Givhan ARGUED: John under the Kentucky, shop operating has been Shepherdsville, Spainhour, & Colucci, The Dis- “Cathy’s name of Little Secret.” Frank J. Colucci Appellants. ‍​‌‌‌​​‌​​​​‌‌‌​​‌​​‌‌‌​​​‌‌‌​​‌‌​‌​​​​​‌​​​‌‌‌‌​‍for York, York, though that even Umans, Ap- trict Court concluded & New New compete the same Spainhour, parties BRIEF: E. two do pellees. ON John market, “Victor’s Little Secret” Shepherdsville, Ken- Spainhour, Givhan & trade name in provisions commences use of a mark or of the new law 1. The relevant likely by change by cause dilution the test for "dilution tarnishment” commerce that is blurring by an "actual” to a likelihood of dilution tarnishment of or mark, "reputation” "harm” to the of the senior regardless presence or famous confusion, mark: actual absence of injury. competition actual economic or of 1125(c) blurring; by Dilution 15 U.S.C. (2) Definition tarnishment (1) Injunctive relief (1), (C) paragraph "dilu- purposes For Subject principles equity, arising distinctive, tarnishment” is association tion owner of a famous mark that is trade similarity a mark or from the between inherently through acquired distinctive- harms the ness, and a famous mark that name injunction be entitled to an shall who, famous mark. person any time against another famous, added.) (Emphasis mark has become after the owner’s dispar- Congress mark —because it is sex overruled the Court in related — positive tends to reduce the ages and asso- this case. We will then outline our under- “selling power” standing ciations and of the new standards for measur- question mark. The ing “Victoria’s Secret” trademark “dilution tarnishment” plaintiffs case meets the apply whether defi- them to this case. We conclude tar- nitions standards “dilution that the new Act creates a kind of rebutta- set out in the Act presumption, nishment” new which ble very or at least a strong Act, ie., inference, amended the old the Federal that a new mark used to sell sex Dilution Act of products Trademark 1995.2 related tarnish fa- mous mark if there is a clear semantic expressly The new Act was intended association between the two. That pre- Supreme interpretation overrule the Court sumption has not been rebutted in this case, very of the old Act in this same case. Moseley v. Catalogue, V Secret U.S. 123 S.Ct. 155 L.Ed.2d 1 Supreme I. The Opinion Court (6th (2003), Cir.2001), rev’g 259 F.3d 464 and the New Act U.S.P.Q.2d affg (W.D.Ky.2000). Supreme panel The Court reversed a Supreme explained Court that this injunction this Court that had affirmed an case started Army when an Colonel at against by Little “Victor’s Sеcret” issued Fort Knox saw an ad for “Victor’s Secret” the District Court. remand to in weekly publication. On It advertised Supreme District Court from the Court the small store in Elizabethtown sold reversal, after no new evidence adult videos and novelties and lingerie.3 introduced, was and the District Court re- There was no likelihood of confusion be- considered the case based on the same tween the two businesses or the two marks, language evidence but the new in Army used but the Colonel was offend- Supreme new Act which overrules the sexually-oriented ed because the business Court this case. first brief semantically We will the was associating itself with Supreme opinion Court and the reasons “Victoria’s Secret.” explained The Court colonel, provisions pro- 2. The relevant of the old law army An who saw the elties/Gifts.” vide: perceived ad and was offended what he 1125(c)(1). attempt The owner of a famous mark be an reputable company's to use a entitled, subject principles shall be promote trademark to the sale of "unwhole- equity upon such terms as the court some, merchandise,” tawdry copy sent a reasonable, injunction against deems to an respondents. pe- Their counsel then wrote to person’s another commercial use in com- stating titioners that their choice of the name name, merce of a or trade such use selling lingerie “Victor’s Secret” for a store begins the mark has become after famous was to cause confusion with the well- quality and causes dilution the distinctive and, known VICTORIA'S SECRET mark .... addition, was to "dilute the distinctive- They requested ness” of Supreme explained: the mark. the imme- 3. The Court diate discontinuance of the use of the name February In the edition of a week- any "and response, variations thereof.” ly publication distributed to residents of the Knox, petitioners changed military Kentucky, the name installation at Fort of their store to petitioners change advertised the "GRAND OPEN- "Victor's Little Secret.” Because that just Day!” ING in time for Valentine's of their satisfy respondents, they promptly did not nearby store "VICTOR’S SECRET” in Eliza- filed this action in Federal District Court. Linger- bethtown. The ad featured “Intimate (internal at 537 U.S. 123 S.Ct. 1115 woman," every Lighting”; ie "Romantic omitted). citations Dresses”; "Lycra “Pagers”; and "Adult Nov- “Tarnishment,” distinguished ment.” as by blurring” concepts of “dilution that the originated by blurring” was the tarnishment” from “dilution and “dilution Re- the Harvard Law an article in with and is the claim before the Court Schechter, view, “Rational Basis Frank appeal. in this new only claim before us Protection,” 40 Harv. L.Rev. Trademark quote length the relevant Restate- We (1927), history and mean- in the of “tarnishment” explanation ment well ex- were further ing concepts below.4 footnote (Third) of Unfair plained Restatement secondary reviewing a After number (1995). The Re- Competition, Section other than the Harvard Law Re- sources section referred to the Su- statement Restatement, article and the includ- view this new intellectual preme explains Court and a Fourth ing state statutes on dilution §in com- contains 25 a property tort and case, Supreme Court held that Circuit “Liability prehensive statement of Without merely than “actual harm” rather Dilution and Tarnish- Proof of Confusion: protected. a mark subse- The antidilution associations evoked c. Interests against quent may disparage have been invoked two dis- statutes uses that or tarnish of a trademark tinct threats to the interests those associations. The rule stated in Subsec- First, may highly a mark be so dis- (l)(b) owner. applies tion to cases in which the tar- it a tinctive and so well advertised that acts as subsequent a use of the nishment results from may powerful selling a tool. Such mark substantially mark or a similar mark in a posi- among prospective purchasers a evoke differ- manner that associates the mark with exclusively response tive is associated services, goods, Use of ent or businesses. goods or services of the trademark with the actor, by the as a trade- another's mark owner. To the extent that others use the name, ways mark or trade but in other identify goods, trademark to different services prior may disparage or tarnish the user’s businesses, a dissonance occurs that blurs or services, business, governed goods, or is effect of the mark. Thе antidi- this stimulant (2). by the rule stated in Subsection protect against dilution of lution statutes this Any designation that distinctive under the is selling power the distinctiveness and eligible pro- criteria established in 13 is for mark. against disparaging tarnishing tection or use selling power a The trademark also can by subsequent use others. Whenever the by be undermined a use of the mark with business, services, goods, brings to mind the goods drugs por- or services such as illicit or user, potential prior there or mark of is nography image the mark's ''tarnish” images positive for interference with asso- through inherently negative unsavory or asso- prove a ciated with the mark. To case of ciations, goods pro- or or with services tarnishment, prior user must demoristrate negative response duce a when linked in the subsequent likely to that the use is come to purchasers prospectivе minds of with prior prospective the attention of the user's user, goods prior services of the such as or purchasers to under- use is a the use on insecticide of trademark similar damage positive mine or associations previously by one used another on food to by mark. evoked products. Illustration: distinctiveness, Tarnishment and dilution of A, bank, designation a uses the distinct, although conceptually under- both identify to its automatic teller "Cookie Jar” mark, selling power mine the of a the latter opens topless machine. B bar across by disturbing the conditioned association of from A under the trade name "Cookie street prior the mark with the user and the former Although prospective customers of A Jar.” by displacing positive negative with associa- unlikely operates to that A or Thus, are believe tions. tarnishment аnd dilution of dis- bar, subject liability sponsors the B tinctiveness reduce the value of the mark to applicable anti- A for tarnishment under the trademark owner. are dilution statute if the customers g. associate A’s mark or A’s business with the The antidilution statutes Tarnishment. protect positive images have also been invoked to evoked B’s use. Judiciary necessary Report The House Committee “likelihood of tarnishment” purpose new legisla- as follows: states stated its conclusion tion as follows: surveys and other Noting that consumer Moseley standard creates an undue actual dilution demonstrating means burden for trademark holders who con- unreliable, and often re- expensive are diluting test uses and should be revised. their Secret] and spondents [Victoria’s that evidence of an actual argue amid language legislation [pro- The new a famous

“lessening capacity ... specifically that the standard vides] identify distinguish goods mark to proving dilution claim is “likelihood services,” difficult to may be obtain. of dilution” and that both dilution be, however, may ‍​‌‌‌​​‌​​​​‌‌‌​​‌​​‌‌‌​​​‌‌‌​​‌‌​‌​​​​​‌​​​‌‌‌‌​‍It well that direct blurring and dilution tarnishment are as consumer evidence of dilution such actionable. necessary surveys will not be actual reliably proved through dilution can be added.) (Emphasis Cong. U.S. Code & evidence—the obvious circumstantial News, Sess.2006, 109th Cong.2d Adm. Vol. is one where the and senior case 4, pp. 1097. The relevant lan- marks are identical. Whatever Act guage designed carry of the new out difficul- entailed, may they be are proof ties purpose this is recited and underlined acceptable dispensing reason not an 1, supra. footnote The drafters of the proof an essential element with Report special Committee also called at- statutory violation. The evidence tention to the “burden” of persua- sup- not sufficient to present record is placed sion on “trademark holders” summary port judgment on the dilu- Supreme opinion Moseley, sug- Court’s in The is therefore judgment tion count. gesting possible modification in the bur- reversed, and the case is remanded for proof. den of The question us then is proceedings further consistent with this whether ‘Victor’s Little Secret” with its opinion. toys association with lewd sexual creates a “likelihood of dilution tarnishment” of 434, (emphasis 537 U.S. at 123 S.Ct. 1115 Victoria’s Secret mark. added). Application Statutory II. Standard Thus, harm” the Court held that “actual merely question rather than a “likelihood” of harm The in this case specific is whether, surveys in or must be shown Victoria’s Secret or- without consumer evidence, polls that а semantic “associ- prevail der to and that this means other equivalent liability-creating ation” is to a Victoria’s Secret carries the burden “lessening capaci- junior an actual mental “association” of a mark like proving ty identify of the Victoria’s Secret “Victor’s Little Secret” with a famous in distinguish goods or services sold mark like “Victoria’s Secret” that consti- Victoria’s Secret stores or advertised its tutes dilution tarnishment when the catalogs.” Congress toys, In the new law mark is to sell sexual Id. used rejected simple pornographic view that a videos and similar soft-core Court’s clearly products. appears “likelihood” of an association in the con- There to be a law, emerging sumer’s mind of the Victoria’s Secret mark consensus the case aided toys by language §of of the Restate- sexually-oriented with the videos and 25 3d, quoted in footnote of “Victor’s Secret” is insufficient liabil- ment Trademarks 4, that the creation of an “associa- ity. supra, 388 of “The Polo or “Polo mark and lewd or fendants’ use Club” a famous

tion” between and de- an entertain activity disparages Executive Retreat” as adult bawdy sexual trademark); mark and reduces the the famous ment club tarnished POLO files selling power. Prods., Inc., value of its Pillsbury Milky Way commercial v.Co. 124, stems from economic 1402, This consensus U.S.P.Q. 135 1981 WL and how 1981) (defendant’s about consumer taste prediction (N.D.Ga. 24, Dec. sexu con- predicted reaction of conventional ally-oriented variation of the PILLSBURY the eco- sumers in our culture will affect mark); plaintiffs tarnished DOUGHBOY mark. nomic value of the famous Cheerleaders, Inc. v. Pus Cowboys Dallas Cinema, Ltd., sycat F.Supp. eight at least federal There have been (S.D.N.Y.1979) (pornographic depiction of jurisdictions in six that conclude cases Cheerleader-style Cowboys a Dallas cheer its mark a famous mark is tarnished when pro in an film tarnished the leader adult semantically with a new mark associated Cowboys). fessional mark of the Dallas products. is used to sell sex-related exceptions find no the case law We phrase “likely to cause dilu such a new mark associated with sex allow (see tion” used in the new statute footnote Sachs, Inc. v. to stand. See Pfizer 1) changes meaning significantly (defen (S.D.N.Y.2009) 512, 525 F.Supp.2d actual harm” under the law from “causes display at an entertainment dants’ adult preexisting “likely” law. The word riding exhibition of two models a YIAG- “probably,” “likelihood” means Webster’s distributing RA-branded missile and con Dictionary Third New International doms would harm the Dictionary (1963); Black’s trademark); Williams-Sonоma, Law Pfizer’s (1968). important It note also Friendfinder, Inc. v. No. 06-6572 C Report quoted the Committee above seeks (MEJ), at *7 JSW WL (N.D.Cal. 2007) (defendants’ evidentiary pro the “burden” of reduce Dec. use of duction on the trademark holder. The sexually- POTTERY BARN mark on their “by burden-of-proof problem, developing oriented websites to tarnish as (Third) law, sociating those marks for children and case and the Restatement teenager furnishings”); § Foods Hold in (particularly Trademarks 25 subsec Kraft Helm, 942, ings, F.Supp.2d Inc. v. 205 g) interpreted, tion should now be we (N.D.Ill.2002) 949-50 (pornographic think, web pre to create a kind of rebuttable site’s use of “VelVeeda” tarnishes VEL sumption, very strong a or least infer trademark); Cyber YEETA Se ence, that a new mark used to sex- sell P’ship Catalogue, cret Ltd. v. V Secret products related to tarnish a fa Inc., (S.D.Fla. F.Supp.2d mous mark if there is a clear semantic 2001) (defеndants’ internet trade names ipsa association between the two. This res likely to tarnish famous when web loquitur effect is not conclusive but —like sites “will be used for of a entertainment on places the owner of the new the adults”); only lascivious nature suitable coming burden of forward with evidence Mattel, Inc. v. Internet Dimensions probability that there is no likelihood or 973745, U.S.P.Q.2d 1620, 2000 WL in tarnishment. The evidence could be the (S.D.N.Y. 2000) July (linking BARBIE testimony expert surveys form of or pornography adversely with will color the testimony. polls or customer BARBIE); public’s impressions of Polo Schuman, case, Moseleys In Ralph present Lauren L.P. v. (S.D.Tex.1998) (de U.S.P.Q.2d opportunities have had two in the District legal to offer evidence that there is no the effect of the evidence—fails to Court of tarnishment and have probability Congress real concede what seems obvious: They did nоt offer at oral not done so. Supreme overruled the Court’s view of the they that any suggestion could argument above, said, proof. quoted burden of As it showing a or wanted the case make such Moseley “the standard creates an undue The fact that purpose. remanded for burden for trademark holders who contest Congress was dissatisfied with Mose- diluting It uses” seems clear that the new Moseley and the standard of ley result Act Congress demonstrates that intended liability, apparently Moseley as well as that a court should reach different result proof, the view of Vic- supports burden in this case the facts remain the same. present toria’s Secret that the record—in necessarily disagree We do not with our eyes legislative branch —shows a dissenting colleague policy fol- Without evi- likelihood tarnishment. Supreme lowed in Court such cases contrary persuasive dence to the de- may be better. simply We believe that the theory presump- fensive that rebuts the will Congress contrary is to the with tion, given the defendants have us no basis regard in proof this case and with judgment to reverse the of the District regard allocating to the method of do not find sufficient the Court. We de- proof. burden of they should arguments fendants’ have right Moseley’s to use Victor first III. Other Issues name and the effect the association The defendants also contend that Moseleys is de minimis. The do not have applied New Act should not be in them right to use the word “secret” in their (1) this case because the Law of the Case They mark. use it to make the asso- Doctrine means that the Court ciation with the Victoria’s mark. Secret (2) effect, opinion in their favor in remains agree tarnishing We effect of the (3) retroactive, the new Act is not Moseley’s mark on the senior mark is plaintiffs claim does not fit within the have no speculative, somewhat but we evi- language of the Act found in 15 U.S.C. strong dence to overcome the inference 1125(c)(5) which reads as follows: law, Restatement, created the case Congressional dissatisfaction with the Additional remedies burden of used this case Supreme Court. The new law seems de- brought an action under this sub- any signed protect trademarks section, the owner of the famous mark Thus, unfavorable sexual associations. injunctive shall be entitled to relief as any mark with a new lewd or offensive-to- set forth section 1116 of this title. strong some sexual association raises a [Describing requirements in addition to inference of tarnishment. The inference 1125(c)(1) injunctions § normal under to must be overcome evidence that rebuts injunctions obtain in various of kinds that some probability the consumers will disputes.] trademark The owner the find the new both offensive and famous mark shall also be entitled to the reputation harmful to the and the favor- 1117(a) set forth in remedies sections symbolism able of the famous mark. title, [Describing and 1118 of this reme- fees, attorneys damages, in dies for treble dissenting colleague, relying

Our on etc., applicable subject not Supreme here.] the Court treatment of the court example, long quota- principles in this case—for the discretion of the and the concerning equity if— tion the Court (A) that is 114 S.Ct. 128 L.Ed.2d 229 The mark or trade name (1994). by blurring or likely to cause dilution in by tarnishment was first used dilution Applicability 3. ‍​‌‌‌​​‌​​​​‌‌‌​​‌​​‌‌‌​​​‌‌‌​​‌‌​‌​​​​​‌​​​‌‌‌‌​‍of 15 U.S.C. person against the whom commerce 1125(c)(5). § on defendants’ reliance —The injunction sought is after October

the misplacеd. this subsection of the new act is 2006, and Act This subsection of the new refers (B) remedies,” in arising this sub- “Additional not set out in a claim under section-— n 1125(c)(1), injunctive relief section of quoted new Act first section (i) by blurring, by reason of dilution provides footnote 1 above which injunction person against whom the injunction anytime “at after the owner’s sought willfully intended to trade on is mark has become famous” and mark; of the famous recognition mark “that is to cause dilution” is (ii) by reason tamish- re used. The new Act intervened and ment, person against whom the in- quired a of the case on the reconsideration sought willfully intended to junction is fully considered the merits. We have now harm the famous merits, ease on the as well as the defen mark. dants’ other defenses and conclude that did not err in its District Court deci claim somehow that the new Defendants plaintiff, sion favor brought aрplicable Act is claims Secret. that the plain- under this subsection and of a brought

tiffs claims were for use Accordingly, judgment of the Dis- before, trade name used not after October trict AFFIRMED. Court is and hence violation of subsec- (5)(A). GIBBONS, tion JULIA SMITH Circuit concurring. Judge, Law the Case Doctrine.— fully majority opinion I concur in the no The Law of the Case Doctrine has I exception quibble. with the of one small application prospective here to the relief term pre- would use the “rebuttable sought pending because while the case was sumption” to describe the inference that a “controlling authority” (Congress) products new used to sell sex-related law, changed the see v. United States to tarnish a famous mark if there Moored, (6th Cir.1994) 1419, 1421 38 F.3d a clear semantic association between the (“a subsequent contrary view of the law Prаctically speaking, two. what the infer- controlling authority” pending in a ence is called makes little I difference. justifies case disregarding the Law of the agree majority opinion with the Doctrine). Case that, strong inference is a one and to coun- it, 2. Retroactivity. statutes ter some evidence that there is no likeli- —New necessarily probability are not “retroactive” hood or of tarnishment is re- may applied pending quired. endeavoring be But are cases where because we prospective sought interpret a ongoing relief is new law and because intervening legislative history explicit conduct: “When the statute is not on the propriety point authorizes or affects the of modification of the burden of relief, prospective application proof, analysis by of the new I think it best to end our provision an Landgraf characterizing is not retroactive.” the inference as infer- Prods., 244, v. ence. USI Film 511 U.S. 273- MOORE, inquiry dilution-by-

KAREN NELSON Circuit determinative this Judge, dissenting. tarnishment case is whether that associa- likely tion is to harm Victoria’s Secret’s I Secret Because believe 1125(c)(2)(C) (“that § reputation. id. See sufficient evidence to produce failed to has reputation harms the famous Moseleys’ that the use of the name show mark”). Contrary majority’s con- likely to tarnish Little Secret” is “Victor’s clusion, however, given the record before mark, I would the VICTORIA’S SECRET I panel, would hold that Victoria’s Se- court judgment of the district reverse cret has failed to meet its burden to show respectfully and must dissent. Moseleys’ use of “Victor’s Little the Trademark Dilution Revision Under Secret” is to dilute Victoria’s Se- (“TDRA”), Act of 2006 Victoria’s Secret is cret’s mark.2 injunctive Moseleys’ entitled to relief use of “Victor’s Little Secret” as the name Victoria’s Secret’s evidence of tarnish- novelty of their adult-oriented store1 “is nothing ment includes more than the fol- ... likely to cause dilution tarnishment (1) lowing: Army an affidavit from Colonel the” SECRET mark. 15 VICTORIA’S E. stating John Baker that he “was ... 1125(c)(1). § tar- U.S.C. “[Dilution offended defendants’ use of [the] [Victo- is defined as an “association nishment” ria’s trademark to promote Secret’s] ... similarity between a mark arising unwholesome, merchandise,” tawdry such “ or trade name and a famous as ‘adult’ novelties gifts,” and and that of the famous mark.” harms his “wife ... ... daughter since and ... 1125(c)(2)(C). Thus, under Id. Secret, shop at Victoria’s was further [he] statute, to determine whether terms dismayed by [the] defendants’ effort SECRET VICTORIA’S with, image associate itself trade off on the use, by Moseleys’ be tarnished this of, denigrate and in fact a frequented store inquire must as to both the “assоcia- court family,” members of Record on [his] tion” between the two marks and the (“ROA”) (Baker Aff.); Appeal at 267 “harm” that the association causes to the (2) a statement from one of Victoria’s Se- senior mark. corporate cret’s officers that Victoria’s Se- I a agree image

Because there is clear cret strives to that is “maintain[ ] marks, sexy playful” association between the two and one that “avoid[s] 389, sure, variety Maj. Op. at "sell[s] 1. Victor's Little Secret wide 390. To be the House items, videos, including novel- adult adult Judiciary Report highlights Committee Con- ties, lingerie.” Moseley v. v. Secret Cata- gress's pre-TDRA concern with the actual- logue, 537 U.S. 123 S.Ct. standard, read but I do not its con- (2003) (internal quotation 155 L.Ed.2d 1 previous cern that the standard created "an omitted); marks see also id. at n. Congress undue burden” to mean that envi- (listing S.Ct. 1115 numerous other itеms party sioned modification of the that bears sold). Moseley "Victor stated in an affidavit opposed simply the burden of as lingerie represented only that women’s about evidentiary lightening showing. See percent five of their sales.” Id. at 109-23, (2005) ("Witnesses H.R.Rep. No. at 5 S.Ct. 1115. [legislative] hearings the[] focused on the standard of harm threshold articulated in majority’s respectfully disagree with the I Moseley Moseley [sic] standard [sic].... dilution-by-tarnishment conclusion that creates an undue burden for trademark hold- involving cases new marks "with lewd or diluting ers who contest uses and should be association[s]” offensive-to-some sexual revised.”). The tarnishment presumption burden show TDRA establishes a or inference Moseleys must rebut. remains with Victoria’s Secret. of tarnishment that 392 110; Corp., 588 F.3d at see also graphic imagery.” or Id. Starbucks

sexually explicit McCarthy 4 Aff.). McCarthy, Thomas on (Kriss J. at 90 Competition Trademarks and Unfair affidavit, Reviewing Baker’s I believe (4th ed.) McCarthy § on [hereinafter 24:89 a “mental plain that it is that Baker made (discussing tarnishment Trademarks] “Victor’s Little Se- association” between being premised claims on the notion as Moseley v. cret” and “Victoria’s Secret.” “positive associations” of the senior Inc., Catalogue, 537 U.S. V Secret displaced degraded by mark will be or the (2003); 155 L.Ed.2d see 123 S.Ct. mark); negative junior associations of the (Baker Aff.). It is also also ROA at 266 (Third) Competition Restatement of Unfair negative impres- (1995) (“To that Baker held a clear g prove § 25 cmt. a case of tarnishment, of Little See Mose- sion “Victor’s Secret.” prior the user must demon- 1115; ley, subsequent likely at see strate that the use is to U.S. S.Ct. (Baker Aff.). damage ... positive undermine or the as- despite at 267 But also ROA mark.”). fact, evokеd sociations this one negative the clear association of reviewing evidentiary when the exact same individual when confronted with “Victor’s record, Supreme explicitly Court noted Secret,” pre- Little Victoria’s Secret has that Victoria’s offer of in- Secret’s Baker’s, anyone sented no evidence that cluded no evidence that Little “Victor’s else’s, distaste or dislike “Victor’s Little positive impres- Secret” affected Baker’s likely positive opin- ‍​‌‌‌​​‌​​​​‌‌‌​​‌​​‌‌‌​​​‌‌‌​​‌‌​‌​​​​​‌​​​‌‌‌‌​‍to taint their Secret” sions of Victoria’s Secret: Yet perception ion or Victoria’s Secret. The record this case establishes that junior evidence that the mark is to ... army officer did make the mental positive undermine or alter the associa- Secret,” association with but “Victoria’s i.e., tions of the senior evidence mark — it also shows that he did not therefore junior harm any impression form different reputation precisely of the senior mark-—is daughter store that his had wife showing required plain under the lan- patronized. a complete There is ab- 1125(c)(2)(C) guage of 15 U.S.C. any lessening sence of evidence of prove tarnishment. As the capacity of the VICTORIA’S SECRET recently Second Circuit noted Starbucks identify distinguish goods mark to Corp. Borough Coffee, v. Wolfe’s services sold Victoria’s Secret (2d Cir.2009): F.3d catalogs. stores or advertised in its The may That a nega- consumer associate a ad, officer was offended but it did junior tive-sounding mark with a famous change conception his says little of whether the consum- His Secret. offense was directed entire- ly Moseleys], er views the mark as not at harming [the [Victoria’s Moreover, expert Secret]. mark. retained famous by respondents nothing say had about question, purposes more relevant impact Moseleys’] [the name on tarnishment, would have been how a strength [Victoria’s Secret’s] hypothetical negative- coffee [with mark. sounding positive would affect the name]

impressions about the coffee sold Moseley, 537 U.S. at S.Ct. added).3 (emphases Starbucks. majority my pre-TDRA "policy

3. The [of mischaracterizes citation a desire to follow the Supreme evidencing Supreme Maj. Op. the] Court's decision as ... Court.” at 389. decision, Congress" My a refusal to follow the "will of citation to Court's of Little short, poorly has “Victor’s Secret.” See presented In Secret Victoria’s anyone that is probative no evidence Moseley, 537 at 123 S.Ct. 1115. U.S. a result think of Victoria’s Secret as to less record, proba- simply On this it no more is cannot Little Secret” and of “Victor’s that will suffer repu- ble Victoria’s Secret its claim of dilution prevail on therefore tational harm of the Moseleys’ as a result Corp. v. See Hormel Foods tarnishment. use of “Victor’s than it Little Secret” is Prods., Inc., 73 F.3d Jim Henson probable that who are those offended (2d Cir.1996) (“Absent any showing that Little will limit their neg- ‘Victor’s Secret” puppet Spa’am] named Henson’s use [of Moseleys impressions ative and re- negative will associations with the create negative from projecting frain those asso- mark, little of there likelihood [is] SPAM upon ciations Victoria’s Secret. Baker’s dilution.”). of a record developing Instead nothing affidavit to contradict does this at some on remand that contains least conclusion, of given any the absence and reputation Secret’s evidence that Victoria’s family’s opinion indication that his or his of of negative is suffer because the likely to changed following Victoria’s Secret the Little response that “Victor’s Secret” en- Moseleys’ Secret,” use of ‘Victor’s Little panel before the indi- gendered, the record fact, affidavit single may, provide that a individual thinks his cates evidence First, however, thing. party bearing proof. the the burden of does no such as stated This majority’s supported hearings conclusion the previously, con- is to I believe Report change During which the refers. Congress intended Committee that to clusion hearings, those of both the proof i.e., the focus House party the burden of the which has — Representatives and the witnesses was wheth- party put which governing must framework Congress er "maintain an actual should dilu- support position its evidence in of forth —-as standard, i.e., Supreme tion Court as the held in opposed the standard of actual harm — case,” adopt a the Secret "likeli- sup- of not harm versus a likelihood harm —is hood of Trademark Dilu- dilution standard.” legislative history. ported by or the the statute Hearing tion the Revision Act 2005: fact, majority only evidence that In the the of Before Courts, Internet, and Subcomm. on the Intel- support Congress its belief cites in of that Comm, Property lectual H. on the the Judi- place the burden of on the intended to (2005) (statement ciary, Cong. Rep. 109th Report, the House Committee defendant Berman); generally at 1-54. see id. Report majority’s but undercuts the even that certainly recognize Congress changed I argument. paragraph The full which from response concerning law the the majority quotation the draws its states: Moseley, Supreme Court’s decision but the [legislative] hеarings the[] fo- Witnesses Moseley nothing Supreme said Court in about the harm threshold cused on standard changing bearing party the burden Moseley example, [sic]. articulated in For proof and the amended neither does statute. representative of the International Trade- Instead, explicitly states that statute "dilu- ”[b]y mark Association observed that an "association tion tarnishment” is aris- measurable, provable damage to the time ing similarity between a passed, much time has mark has occurred trade name a famous mark harms done, remedy, damage has been reputation mark." famous relief, injunctive added). 1125(c)(2)(C) less effec- which is far (emphasis U.S.C. posi- endorses this concluding tive.” The Committee Secret has failed to that Victoria’s Moseley [sic] standard creates prove tion. The it likelihood of tarnishment because trademark who undue burden for holders present has failed evidence Victor’s diluting uses should be revised. contest Little Secret is harm 109-23, (internal mark, doing nothing at 5 H.R.Rep. No. footnote its am more than I added). emphasis applying plain language It was the of the statute that omitted and threshold,” i.e., Supreme Congress Court’s of harm the show- enacted after "standard certainly approach ing Court decision. This reflects actual harm that concern, Maj. Op. at 389. Congress’s Congress.” "will of employed, was (6th Cir.2003) (“A are to individuals confine then- 446 ‘likelihood’ means a (“The Moseleys. distaste See id. ‘probability’ rather than a ‘possibility’ of confusion.”). ad, Yet, officer was offended but it notes, did majority as the change conception record, his of Victoria’s Se- on the instant “tarnishing ef- entirely cret. His offense was directed Moseley’s fect of the mark on the senior Secret].”). Moseleys], [the not at [Victoria’s mark” is nothing “speculative.” more than Maj. atOp. 388-89. Certainly, possible it is the Mose- leys’ use of “Victor’s Little Despite evidence, Secret” to sell the absence of ma- adult-oriented material and other novelties jority willing is to assume that Victoria’s poorly could reflect on the VICTORIA’S Secret has met prove its burden to SECRET mark and could cause Victoria’s essential element of reputation” “harm to Secret damage “sexy suffer to its and based on the fact that numerous cases playful” reputation, evidentiary but jurisdictions conclude, from other without standard set forth in the statute inquiry, is one of much “that a famous mark is tar- likelihood not mere possibility. Likelihood nished when semantically its mark is asso- probable is based on consequence and ciated with a new mark that is used to sell simple amounts to more than speculation products.” sex-related Id. at I 388. do not as to might possibly what happen. agree. Although See it is true that courts McCarthy on Trademarks 24:115 n. 2 have concluded finding that a of tarnish- “ (indicating that ‘likelihood’ the dilution ment is when a mark’s “likeness is part of the Lanham Act placed has the same in the context of sexual activity, meaning as it does in the traditional in- obscenity, or illegal activity,” Horniel fringement sections of the Lanham 507, Act: as Corp., Foods 73 F.3d at a court cannot synonymous ”); with ‘probability’ ignore see also showing reputational harm Records, Parks v. 437, LaFace 329 F.3d that the statute requires.4 ignore Inc., Nor can the court Friendfinder, (MEJ), character of No. C 06-6572 JSW the senior applying majority's mark when 4973848, (N.D.Cal. 6, 2007 WL at *7 Dec. "rule.” Victoria's Secret sells women's lin- 2007) (likelihood оf tarnishment where and, gerie, admits, readily as Victoria's Secret teenager "marks for children and furnish sex, already its own mark is associated with ings” were pornographic associated "with albeit not with sex novelties. See ROA at 90 websites”); Holdings, Foods Inc. v. Kraft (Kriss Aff.) (noting that Victoria's Secret at- Helm, F.Supp.2d (N.D.Ill.2002) 205 949 tempts "sexy to maintain a playful” and im- (likelihood of dilution where the mark for also, age); e.g., see (depicting id. at 156-57 products cheese was associated with websites Victoria's "sexy Secret advertisements for lit- "depict[ graphic sexuality nudity, ] as things” lingerie, tle urge which customers to well drug as drug illustrations of use and goodness bad peek-a- "[b]e sake[] [i]n paraphernalia”); Mattel Inc. v. Internet Di boo's, accessories,” sexy bras and Santa mensions 2000 WL "[g]ive flirty panties” gifts, as participate U.S.P.Q.2d (BNA) 1620, (S.D.N.Y. July in the "panty fantasy,” store's which it de- 13, 2000) (likelihoоd of tarnishment when the "Very racy. scribes as Very lacy”); id. at 209 BARBIE mark was linked to adult-entertain- (reproducing an magazine article in Redbook websites); ment Ralph Polo Lauren L.P. v. Man,” Things entitled "46 to Do to a Naked Schuman, U.S.P.Q.2d 1998 WL highlights which Victoria's Secret's role in the (BNA) 1046, (S.D.Tex. 9, 1998) contributors). Feb. sexual activities of one (dilution likely essence, Ralph where Polo Lauren’s the VICTORIA'S SECRET mark mark was associated with "an entirely separate is not adult entertain- from the sexual con- business”); mark, Akkaoui, Toys ment text within “R” which the Us Inc. v. "Victor’s Secret,” 772709, U.S.P.Q.2d (BNA) 1836, operates. Little 1996 WL This fact makes the (N.D.Cal. 29, 1996) (likelihood instant many case unlike of the cases that the Oct. Williams-Sonoma, majority cites. Inc. v. toy tarnishment where children's store was Cf. mark, an almost majority sanctions Little Se- assuming that “Victor’s Even and, in evidentiary standard when com- non-existent unwholesome plainly cret” the rе- essentially eliminates process, this Secret to Victoria’s pared some plaintiff provide cases that a quirement to those analogous completely case relies, reputa- main- I still of likelihood majority semblance on which assume on a tar- simply prevail harm in order to improper it is tional tain that claim, a reputation plain language despite harm to the nishment likelihood 1125(c)(2). junior a I dealing with Because be- mark when of 15 U.S.C. senior recounted As has not met its sexual character. Secret mark of lieve connecting Vic- is no evidence above, that ‘Victor’s Little Se- there to show burden “unwholesome” Little Secret’s to dilute the famous mark tor’s cret” is to the senior tarnishment, character “tawdry” sexual dissent. respectfully I way nothing in and there is reputation, mark’s that would TDRA language obli- forgivе party’s a court to

allow the to an element proof as

gation present i.e., the cause of tarnishment action — See reputation.5 harm to likelihood America, UNITED STATES (“Even § 24:115 on Trademarks McCarthy Plaintiff-Appellee, only a likeli- revision when the 2006 after v. judges ... required, of dilution hood LEWIS, Defendant- Franklin Todd evidence persuasive demand should Appellant. proba- Even the likely to occur. dilution is by evi- proven be No. 09-1162. bility of dilution should assumptions dence, by theoretical just Appeals, Court of United States might could occur or possibly what about Sixth Circuit. happen.”). 22, Argued: April 2010. there is suffi- conclusion itsWith 19, May Filed: 2010. Decided and of harm cient evidence mark based SECRET the VICTORIA’S junior the sexual nature

solely on (tarnishment likely where NFL cheerleaders products”); “a line of sexual with associated Ltd., film). Hasbro, Group portrayed pornographic Entm’t Inc. v. Internet were 1479, 84853, (BNA) U.S.P.Q.2d 40 1996 WL 9, (dilution 1996) simply (W.D.Wash. potential problem with assum- Feb. 1480 Candyland game places was junior children’s mark ing where the when the tarnishment site”); sexually explicit Internet to "a linked becomes mark in a sexual context the senior Corp., Express Approved v. Labs. Am. Co. Vibra a different case. apparent one considers 2006, (S.D.N.Y. (BNA) U.S.P.Q.2d 2014 senior What if the holder of sex-related 1989) (tarnishment likely where an American tarnish- levied a ‍​‌‌‌​​‌​​​​‌‌‌​​‌​​‌‌‌​​​‌‌‌​​‌‌​‌​​​​​‌​​​‌‌‌‌​‍claim of charge linked to condoms Express card was against mark that holder of ment store); Milky Pillsbury sex-toy Co. v. and a similarly Would the with sex? was associated Prods., Inc., U.S.P.Q. Way WL willing further to assume without court be 24, 1981) (N.D.Ga. (BNA) Dec. origins despite sexual their similar proof, (likelihood Pillsbury where of dilution necessarily the sen- junior tarnishes "engaging portrayed as dough figures were reasoning, majority’s ior mark? Under fellatio”); Dallas Cow intercourse and sexual assumption appropriate. would be such Cinema, Cheerleaders, Pussycat v. boys Inc. the law. This cannot be 1979), Ltd., (S.D.N.Y. F.Supp. (2d 1979) Cir. 604 F.2d affirmed

Case Details

Case Name: V Secret Catalogue, Inc. v. Moseley

Court Name: Court of Appeals for the Sixth Circuit

Date Published: May 19, 2010

Citation: 605 F.3d 382

Docket Number: 08-5793

Court Abbreviation: 6th Cir.