Tuesday, May 25, 2010

Victor's Little Secret's last stand?

V Secret Catalogue, Inc. v. Moseley, --- F.3d ----, 2010 WL 1979429 (6th Cir.)

Over a vigorous dissent, which seems to me entirely correct, the court here holds that even without any evidence of actual consumer impact, a “semantic association” between a famous mark and a mark used to sell “sexual toys, videos, and similar soft-core pornographic products” is sufficient to establish tarnishment. Because Congress intended to reduce the burden of proof on the trademark holder, there is “a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two.” The majority suggested that this “res ipsa loquitur-like effect … places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment,” which could be surveys or consumer testimony—even though, as the dissent pointed out, the only consumer perception evidence in the case was pretty clear that the consumer at issue didn’t think less of Victoria’s Secret, only of Victor’s Little Secret. Still, “[t]he new law seems designed to protect trademarks from any unfavorable sexual associations. Thus, any new mark with a lewd or offensive-to-some sexual association raises a strong inference of tarnishment.”

Judge Moore’s dissent pointed out that there’s a difference between changing the evidentiary requirement from a showing of actual tarnishment to one of likely tarnishment, which the FTDA did, and putting the burden of production or proof on the defendant, which it did not do. Though there is an association between Victoria’s Secret and Victor’s Little Secret, there was no evidence that this association was likely to harm Victoria’s Secret by altering or undermining its positive associations.

Honestly, as a matter of IP law, I expect no better from dilution cases. I’m more offended as a feminist. Apparently Victoria’s Secret’s “sexy and playful” reputation, which depends on women sexually displaying themselves—on selling women’s bodies as a tease—is to be protected against any suggestion that actual orgasms might be available. Sexualization (represented by Victoria’s Secret’s repeated invocation of “sexy”) is wholesome; “sex” is apparently not.

6 comments:

Anonymous said...

Hear, hear on your last paragraph!! It's ok for Victoria's Secret to dehumanize by sexually objectifying women, but it "tarnishes" them to be associated with sex? I think the court has the legal wrong going the wrong way.

C.E. Petit said...

Absolutely. It reminds me of a priceless line from Spinal Tap, in which Nigel is complaining about the rejection of the band's proposed album cover.
"They said it was too sexy. What's wrong with being sexy?"
"Sexist. Too sexist."

Anonymous said...

Seems a bit like the Dallas Cowboys case, where the court said, "No, No, No! The Dallas Cowboys mark (which is prominently displayed on the Cowboy cheerleaders) could not possibly represent SEX!." I always thought, even if you forget about the cheerleaders, what about all the philandering players who do drugs?

Anonymous said...

Given that the burden shifts to the trademark owner to prove no tarnishment, is the presumption that sex-related use of junior mark = tarnished senior mark even really rebuttable? How would you craft that survey?

Rebecca Tushnet said...

Excellent question. "Do you think less of Victoria's Secret after seeing this?" I suppose, though who knows what the control would be (a VS ad, perhaps) and of course it's also really in conflict with the idea that dilution is an unconscious/inevitable process.

Anonymous said...

Very interesting subject. Hummm, am I stupid, or is the word Sexy(the word Victoria's Secret uses all the time) even with their fragrance line very sexy now, contain and relate to SEX? Even by http://www.merriam-webster.com/dictionary/sexy
: sexually suggestive or stimulating : erotic
I don't think Victor is going to give up with a ruling like that?