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Monday, November 11, 2002
No. 01-1015 Mosley v. Victoria Secret Catalog, Inc.

This case can be characterized both as a sexy claim of copyright dilution and as a claim of dilution of a sexy copyright. The petitioner opened a store called "Victor's Secret," selling lingerie and sex toys. Victoria's Secret, the well-known maker of women's lingerie, sent Mosley a letter insisting he stop using that mark. Mosley responded by changing the name of his store to "Victor's Little Secret." Vickie's sued to enjoin the use of "Victor's Little Secret," claiming that it dilutes their mark, "Victoria's Secret."

Personally, I have always wondered about people who open sex shops. Do they sit around thinking, "What this town really needs is a place to buy blow-up love dolls!"? Further, a male, naming his sex shop should, in most cases, be unwilling to use a name that tends toward the diminutive. Shoppers in the mall where Mosley operates his store could be expected to note the name change thusly: "Oh look! Turns out 'Victor's Secret' is actually only a little secret."

In any case, the question here is whether a plaintiff must show actual dilution in order to enjoin the use of a mark. That is, whether Victoria's Secret must show that it is actually harmed by "Victor's Little Secret," or whether it is enough that consumers mentally associate the mark in question with the famous mark.

It seems to me that behemoth companies with incredibly famous trademarks would be hard pressed to show actual harm from small-time diluters. That is, the effect of "Victor's Little Secret," is likely to be pretty small compared to Victoria's Secret's overall business. Nevertheless, the catalog should be able to enjoin this use. If actual economic harm is required, protecting trademarks would become that much more difficult, and would leave trademark owner's with a hobson's choice. If they attempt to enjoin the use, they could lose because they could not show present economic harm. If they decide to wait, they could be charged with failing to protect their mark. For these reasons, I think the Court will AFFIRM.