Victor, Victoria, Whatever—Just Give Me That WonderBra, Dammit!


In a case that "raises the bar for companies claiming trademark dilution," the US Supreme court ruled in favor of a small-time lingerie shop and against lacy juggernaut Victoria's Secret. Reports USA Today:

WASHINGTON ? Five years ago, an Army colonel at Fort Knox, Ky., saw an ad for a nearby "Victor's Secret" lingerie and sex-toy store and alerted Victoria's Secret that its trademark was being used to promote "tawdry" goods.

Victoria's Secret sued shop owner Victor Moseley for "dilution" of its famous mark. Lower federal courts ruled for the international lingerie company, forcing Moseley to rename the shop.

But in a decision Tuesday that raises the bar for companies claiming trademark dilution, the U.S. Supreme Court ruled unanimously that companies must show "actual" dilution in the quality of their mark, not only that it likely would be weakened.

The real question here–one not addressed by the court–is how a lingerie shop called "Victor's Secret" ever managed to stay in business. After Victoria's Secret originally sued, the owner changed the name to "Victor's Little Secret," which is even worse. (The Elizabethtown, Kentucky store is now called Cathy's Little Secret).

The ruling says that trademark owners don't need to show actual economic damages. They need only show that an infringer screws with the "capacity of a famous mark to identify and distinguish goods or services."

It's an interesting decision coming from a Supreme Court that recently ruled in favor of the big guys in Eldred v. Ashcroft, which OK'ed massive extensions in copyright terms. There may be no consistent judicial philosophy at work here, but at least this new ruling expands expression.


NEXT: A Defeat for Free Speech, a Victory for Property Rights, or Just a Sign That You've Hired Too Many Security Guards?

Editor's Note: We invite comments and request that they be civil and on-topic. We do not moderate or assume any responsibility for comments, which are owned by the readers who post them. Comments do not represent the views of or Reason Foundation. We reserve the right to delete any comment for any reason at any time. Report abuses.

  1. Presumably the producers of ‘Comming to America’ had their lawyers clear it with McDonald’s first. Hollywood often does this name variation game for movies and TV shows. They (McDonald’s) might have a less charitable attitude towards this if someone actually opened a restaurant that competed with them, or perhaps if “McDowell’s” was portrayed in an unflattering manner and could theoretically be confused with the real burger-flipping monolith.

    Of course, these days companies are paying to have their products put in the movies and TV shows, so maybe no one will complain about the free advertising they are getting.

    I’d still like to know who actually made that station wagon used by Chevy Chase in National Lampoon’s “Family Vacation”. That thing was a beast!

  2. Where is the inconsistency between this case and Eldred? A perpetual copyright is unconstitutional; an expansive trademark law is not.

  3. Expansive trademark law can be unconstitutional to the extent that it unnecessarily infringes on free speech or expression. Like copyright law, it can prevent unauthorized appropriation of exact content. Unlike copyright law, an expanded definition of ‘trademark’ can prevent use of similar content. Imagine the hassle that would ensue if authors ‘trademarked’ their writing style or movie studios ‘trademarked’ the style or format of their movies. (The recognizability, and thus the value as intellectual property, of this is virtually indisputable based just on common experience. If someone describes an action-adventure movie as a ‘Schwartzenaeger’ flick, we all know what it means…).

    With regards to the world of ‘real’ products, which are less defensible as examples of legally protected speech, attempts are being made by industries to use this type of definition. For example the lawsuit by GM against Avanti for a vehicle that looks vaguely like a Hummer.

  4. Does this mean that it would be safe to open the McDowell’s franchise, a la “Coming to America?”

  5. EMAIL:
    DATE: 01/26/2004 06:22:27
    Inertia is not limited to matter.

  6. Victoria’s secret may or may not have the law on its side, but, in the light of the Supreme Court’s decision, it seems they have tried to use an atome bomb to kill an ant. I venture it would have been considerably cheaper for Victoria’a Secret to buy the little sex shop that could for an inflated price. This would have saved an enormous amount of vexatious litigation. It seems their lawyers at least have more taste for extended legal costs than common sense and humour.

Please to post comments

Comments are closed.