Transcript Social Science in Trademark Cases

Social Science in
Trademark Cases
Moseley v. Victoria Secret Catalogue Inc.
537 U.S. 418 (2003)
SUPREME COURT OF THE UNITED
STATES
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
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
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.
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.
Bottom Line
• Neither an absence of a showing of
competition nor of a likelihood of
confusion is a defense against diluting a
trademark.
Social Evidence Relied
Upon
• Evidence Used
• Influence It Had
• 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.
•
•
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
Indianapolis Colts, NFL v.
Metropolitan Baltimore Football
Club, Canadian Football League
31 U.S.P.Q.2d 1811, 7th Cir.(Ind.) (1994)
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”
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
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.
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
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