A case of Victor vs. Victoria

SUN JOURNAL

Dispute: The Supreme Court is to decide this fall whether a pricey lingerie brand is tarnished by a lower-end Kentucky shop with a similar name.

May 06, 2002|By Gail Gibson | Gail Gibson,SUN STAFF

ELIZABETHTOWN, Ky. - The lingerie and adult novelty store Victor Moseley opened four years ago as Victor's Secret is not easily mistaken for the international retail chain with the similar-sounding name. There are no super models with angel wings. No plush pink carpet or pricey, diamond-encrusted Miracle Bras.

Unlike at lingerie leader Victoria's Secret, you can find a wide selection of men's thong underwear, nurse and schoolgirl costumes, even feather boas, wigs and body butter at Moseley's shop in Houchens E-Town Plaza. The store's motto: "Everything for the romantic encounter. "

From the start, though, Victor's Secret has been caught up in a long-running legal entanglement with Victoria's Secret. Now the two have a date before the U.S. Supreme Court. The high court has agreed to hear the Victor-Victoria case to settle the decidedly no-frills question of whether owners of famous brand names and trademarks must show they have suffered economic harm before trying to block sound-alike ventures.

Victor and Cathy Moseley say their mom-and-pop store is no copycat and, more important, is hardly hurting business at the 750 Victoria's Secret stores in shopping malls across the country. The Moseleys say their store got its name as something of an inside joke as they tried to keep its launch a secret from Vic Moseley's former employer. When Victoria's Secret objected, they quickly agreed to alter the name to Victor's Little Secret.

"There was never any intention to play off them or anything else," Victor Moseley says on a recent sunny afternoon as a mix of bearded biker types and suburban housewives browse through rock posters, scented candles and garter belts. "To me, Victor and Victoria are just two totally different names."

Says Moseley's Louisville attorney, James R. Higgins Jr., "They made a movie out of that, didn't they?"

The issue before the Supreme Court is not whether the two stores could be confused, but whether the Victoria's Secret brand, famous for its high-end unmentionables, could be tarnished - or diluted - by the existence of Victor's Secret and its lower-end offerings.

The Federal Trademark Dilution Act, passed by Congress in 1995, was intended to protect companies with famous names in such circumstances. But courts across the country have differed on the question of whether the better-known company must show economic loss before it can ask a judge to block an upstart business with a similar name.

Ruling in the Moseleys' case last spring, the 6th U.S. Circuit Court of Appeals in Cincinnati said that was not necessary. The appeals judges called the situation with the two lingerie stores a "classic instance" of dilution of the Victoria's Secret name because it had been tarnished and blurred by Victor's Secret.

"While no customer is likely to go to the Moseleys' store expecting to find Victoria's Secret's famed Miracle Bra, consumers who hear the name Victor's Little Secret are likely automatically to think of the more famous store and link it to the Moseleys' adult-toy, gag gift and lingerie shop," the appeals judges said in their decision.

The unsympathetic appeals court added, "The Moseleys' claim that the marks are `two-thirds different' is particularly unpersuasive."

Attorneys for Victoria's Secret say in papers filed with the Supreme Court that the 6th Circuit's decision was proper and should be upheld. The Moseleys' attorney says the decision is based on an inaccurate portrayal of his clients' shop.

"They have portrayed it like it's some kind of sex shop in the Tenderloin district of San Francisco, or worse," says Higgins, an intellectual property rights attorney who will be arguing his first case before the Supreme Court. "You should not be able to sway a federal court just by using negative terms to describe your opponent."

Other courts have held that there must be a showing of actual harm before the lesser-known venture should be ordered to stop or change its name, slogan or brand.

The 4th U.S. Circuit Court of Appeals in Richmond, Va., ruled in 1997 that the state of Utah could use the tourism slogan, "The Greatest Snow on Earth," over the objections of the Ringling Bros. and Barnum & Bailey Circus, with its long-standing slogan, "The Greatest Show on Earth."

"That economic harm inevitably will result from any replicating [lesser-known] use is by no means that certain," the 4th Circuit panel said. "Indeed, common sense suggests that an occasional replicating use might even enhance [an existing trademark's] magnetism."

Across the country, major corporations and industry groups have come down on the other side of the argument. At a congressional hearing in February, those groups urged the House Judiciary Committee for a legislative fix to the 6-year-old trademark dilution law, to make it clear that businesses do not have to show economic losses to hold off similar start-ups.

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