by Paul Alan Levy
Over the years, we at Public Citizen have been hostile to the doctrine of dilution, and especially dilution by tarnishment, because it distorts trademark law from its legitimate function — protecting consumers from dishonest marketing techniques that try to pass off goods and services as those of another, rather than the more trusted source that the name suggests to them. Even when being used properly, dilution law suppresses truthful commercial speech, and removes terms from the language that would be useful in describing non-competing goods. And tarnishment law in particular is often abused as a theory for suppressing criticism.
Yesterday’s decision by the Sixth Circuit in V Secret Catalogue v. Victor’s Little Secret, presumably the denouement of the Supreme Court case of the same name a few years ago that described the burden of proof in dilution cases, and that produced the Trademark Dilution Revision Act of 2006, reminds us of what tarnishment law has always really been about – the use of marks in a sexual context (and druggie context). The majority opinion tells us that “the new Act creates 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.”
In the end, if tarnishment law applies only or primarily to such uses, it is hard to get too excited about it. But the majority opinion seems to be rather dishonest in one respect — it makes no mention of what it is that Victoria’s Secret sells. Its products are sexy lingerie and the like; and its real product is sexual connotation. To be sure, it sells sex products for middle and upper class customers, not sex products for the lower middle class, to which Victor’s Little Secret presumably caters. At least Judge Moore’s dissenting opinion takes note of this fact, albeit largely in the footnotes.
UPDATE
See comments by Professor McCarthy, guest-posting (!) on Eric Goldman's blog:
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