A First Look by Tom McCarthy at the Sixth Circuit’s 2010 Victoria’s Secret Tarnishment Decision [Guest Blog Post]

By J. Thomas McCarthy

[Eric's note: Last week, the Sixth Circuit issued a new ruling in the long-running V Secret Catalogue v. Moseley case, this time featuring three opinions from a three-judge panel. Tom McCarthy has generously shared his views on the case:]

After the Supreme Court’s 2003 decision in the VICTORIA’S SECRET versus VICTOR’S SECRET battle, the case finally was decided on remand in 2008, the district court applying the 2006 Trademark Dilution Revision Act. The district court granted summary judgment for Victoria’s Secret, finding that the use of VICTOR’S SECRET for a small store selling men’s and women’s lingerie, adult videos and sex toys was likely to cause dilution by tarnishment of the VICTORIA’S SECRET mark for a large chain of stores selling women’s lingerie and wearing apparel. I found that decision very troubling because the district court based its finding of a likelihood of tarnishment upon the very same testimony that the Supreme Court in 2003 had characterized as not being evidence of tarnishment.

The district court relied on the same Army officer’s testimony that the Supreme Court characterized in its opinion. That is, an Army Officer was offended by the junior user’s use of its name on what he considered to be tasteless goods. The Supreme Court said that: “The officer was offended by the ad, but it did not change his conception of Victoria’s Secret. His offense was directed entirely at [the junior user], not at [the senior user Victoria's Secret].” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003). Yet, on remand, the district court said this same testimony “suggests the likelihood that the reputation and standing of the VICTORIA’S SECRET mark would be tarnished.” This did not trouble the Sixth Circuit, which affirmed the summary judgment. V Secret Catalogue, Inc. v. Moseley, ___ F.3d ___, 1020 WL 1979429 (6th Cir. 2010).

I entirely agree with the position of Judge Karen Nelson Moore in her dissent. I think that the majority’s creation out of thin air of a presumption (or “strong inference”) of dilution by tarnishment if there is an “association” with “sex related products” is wildly misguided. The majority essentially creates a hard edged rule that no one can use a “famous” mark (or one so similar that there is an “association”) as a mark for any product or service that a court thinks is “sex-related.” Of course, neither the 2006 TDRA nor its legislative history contains a hint of anything like this and requires (as the dissent points out) proof from the plaintiff of some likely tarnishment of the famous mark.

A central message of the Supreme Court’s 2004 Microcolor decision is that the burden of proving a likelihood of confusion always remains with the plaintiff. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). This same reasoning should apply with equal force to an anti-dilution case. The Sixth Circuit majority shifted the burden to the defendant. The majority said that the defendants had ample opportunity “to offer evidence that there is no real probability of tarnishment and have not done so.” I thought that it was always the trademark owner’s burden to prove its case.

The decision also raises troubling issues of commercial speech. The majority creates a presumption of dilution by tarnishment if the junior mark appears on “sex-related products,” invoking the tort doctrine of res ipsa loquitur. This sounds like the court is making value judgments about what is “sexy.” As dissenting judge Moore points out, it’s ironic that the “tarnished” plaintiff’s VICTORIA’S SECRET mark itself is widely promoted as a source for “sexy little things” intimate lingerie. See Menashe v. V Secret Catalogue, Inc., 409 F. Supp. 2d 412 (S.D. N.Y. 2006) (Victoria’s Secret claimed “Sexy Little Things” as its trademark)

I predict that the majority’s ruling will provoke a storm of criticism. At least it will be grist for the mill of IP commentators and academics, such as myself.

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