1. Social Science in Trademark Cases Moseley v. Victoria Secret Catalogue Inc. 537 U.S. 418 (2003) SUPREME COURT OF THE UNITED STATES

2. Moseley v. Victoria Secret Catalogue Inc. FACTS Petitioners’ store in Kentucky is called “Victor’s Little Secret.” The store sells adult novelties, adult videos, gifts items, and lingerie. Respondents sue under the FTDA, federal unfair competition law, and federal and state trademark infringement laws. PROCEDURAL HISTORY The district court granted summary judgment for the petitioners on the infringement and unfair competition charges. It held for the respondents regarding dilution => injunction against using “Victor’s Little Secret.” The court of appeals affirmed. Petitioners appeal to USC PROCEDURAL HISTORY The district court granted summary judgment for the petitioners on the infringement and unfair competition charges. It held for the respondents regarding dilution => injunction against using “Victor’s Little Secret.” The court of appeals affirmed. Petitioners appeal to USC

3. Relevant Definitions Dilution: The term “dilution” means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception

4. Questions for the Court 1. Whether a plaintiff seeking an injunction under the Federal Trademark Dilution Act of 1995 must establish present dilution or whether a showing of a likelihood of future dilution is sufficient. 2. Whether a showing that consumers mentally associate the defendant ’ s mark with the plaintiff ’ s mark because of their similarity is sufficient to establish actionable dilution. 3. Whether a showing that the defendant ’ s mark has caused economic harm to the plaintiff is necessary to establish actionable dilution.

5. Holding 1. A plaintiff seeking an injunction under the FTDA does have to show actual dilution BUT the effects of it do not have to proved. Actual dilution is shown. 2. A showing among consumers that the junior mark is associated with the famous mark is not sufficient to establish actionable dilution. The junior mark must diminish the ability of the famous mark to identify its goods. Tarnishing effect. 3. A showing of economic harm or the famous mark is not necessary.

6. Bottom Line Neither an absence of a showing of competition nor of a likelihood of confusion is a defense against diluting a trademark.

7. Social Evidence Relied Upon Evidence Used One consumer associated the two marks BUT his view of VS was not changed by associating the stores’ respective names together. Nor was there evidence that VS was disadvantaged at distinguishing its goods. Influence It Had Holding did not give large effect to the single consumer’s opinion. This sort of case seems to beg of a customer survey: –A randomized sample may be possible-- compiling a list of consumers from hundreds of stores’ listings across the nation. –Such a group would be interviewed for confusion. –A control group asking about confusion between VS and other lingerie stores. –Interviewing by objective, hired researchers to avoid the expectations-states effect Influence It Had Holding did not give large effect to the single consumer’s opinion. This sort of case seems to beg of a customer survey: –A randomized sample may be possible-- compiling a list of consumers from hundreds of stores’ listings across the nation. –Such a group would be interviewed for confusion. –A control group asking about confusion between VS and other lingerie stores. –Interviewing by objective, hired researchers to avoid the expectations-states effect

8. Indianapolis Colts, NFL v. Metropolitan Baltimore Football Club, Canadian Football League 31 U.S.P.Q.2d 1811, 7th Cir.(Ind.) (1994)

9. Indianapolis Colts, NFL v. Metropolitan Baltimore Football Club, Canadian Football League FACTS The respondents are a Canadian Football League (CFL) team which plays in Baltimore, MD under the name the “Baltimore CFL Colts.” The petitioners, the Indiana Colts, were once the Baltimore Colts until 1984 when the team moved to Indianapolis. Petitioners sue and gain an injunction prohibiting respondents from using the word “colts” in their team name. Petitioners assert that respondent’s use of the name the “Baltimore CFL Colts” is confusingly similar to their old name the “Baltimore Colts”

10. Indianapolis Colts, NFL v. Metropolitan Baltimore Football Club, Canadian Football League HOLDING The petitioners’ consumer survey was rightfully relied upon by the district court The injunction against using the name “Baltimore CFS Colts” was proper: the finding of a likelihood of confusion was correct

11. Indianapolis Colts, NFL v. Metropolitan Baltimore Football Club, Canadian Football League COURT’S ANALYSIS The court finds that adding “CFL” in respondent’s name does not deter confusion. “Subsequent use of an abandoned mark may evoke a continuing association with the prior use” SOCIAL EVIDENCE RELIED ON The court relied on the petitioner’s consumer study: –100s of mall goers in 24 malls all over the nation were interviewed –Subjects are shown merchandise with Baltimore CFL Colts logos and asked about confusion –A control group is used in which identical questions are asked about a hypothetical team, the Baltimore Horses. SOCIAL EVIDENCE RELIED ON The court relied on the petitioner’s consumer study: –100s of mall goers in 24 malls all over the nation were interviewed –Subjects are shown merchandise with Baltimore CFL Colts logos and asked about confusion –A control group is used in which identical questions are asked about a hypothetical team, the Baltimore Horses.

12. Indianapolis Colts, NFL v. Metropolitan Baltimore Football Club, Canadian Football League RESULTS The control group rendered much less confusion than did the experimental group Among football fans 64% thought that the CFL Colts was either the old NFL Baltimore Colts or the Indianapolis Colts 59% of those who watch football on TV displayed the same confusion, even 58% of football audiences who watch cable football games were confused and this audience is considered “more educated” on average A minority of those not confused, 21 to 34%, still thought the team was sponsored or authorized by the NFL or the Indianapolis Colts

13. The Indianapolis Colts, NFL v. Metropolitan Baltimore Football Club, Canadian Football League POSSIBLE IMPROVEMENTS & EVALUATION –The survey could be improved by ensuring that the control and experimental groups are similar-- increased confidence that the independent variable, the CFL name, was the cause of confusion, and not any external factors –Making use of available subjects such as those in a mall is very risky-- it is only representative of mall goers in the mall, on that day, who consent to participate –The questions asked seem to avoid expectations-states theory effects as does the fact that the interviewers are hired by a surveying company and are likely objective towards the results