You may recall the 2003 Supreme Court decision in Moseley v. Victoria’s Secret.  That case began with Victoria’s Secret suing the proprietor of a sex toy shop called “Victor’s Little Secret.” (Actually, the name had been “Victor’s Secret” - it was changed in reaction to the initial demands from the Victoria’s Secret lawyers.)

The focus of the case was trademark dilution.  The issue was not that customers would be confused or mislead into thinking that Victoria’s Secret was now in the business of pushing sex toys and adult videos.  Instead, Victoria’s Secret claimed that due to the unsavory nature of  Victor’s shop, Victoria’s Secret’s otherwise pristine image might be tarnished simply because consumers would go through a thought process something like this: “Oh, look at that – Victor’s Little Secret, a shop for adult novelties – that is a play on Victoria’s Secret, the lingerie store – funny!” And from that point on, every time those consumers saw or thought of Victoria’s Secret, there would be this little voice in the back of their heads that said “remember that sex toy shop called Victor’s Little Secret – funny!”

This thinking, according to Victoria’s Secret, risked tarnishing its image and damaging its brand. So, they sued.  The issue before the Supreme Court was whether Victoria’s Secret had to prove that its mark was actually diluted by Victor’s mark, or rather merely prove a likelihood of dilution.  The Supreme Court’s unanimous holding was that the law required a showing of actual dilution, and not a mere likelihood of dilution.

The decision was seen as a setback by the owners of famous marks, and INTA came to the rescue, leading the campaign to change the results of this decision by legislation.  That campaign bore fruit last week with the passage of Trademark Dilution Revision Act of 2006 by the US House of Representatives.  The House passed the Senate version of the Bill, and the President’s signature is expected shortly.

The new legislation makes it much easier for the owners of famous marks to prevent their use in non-competitive industries.  Although the relationship to technology law might seem a bit of a stretch, it is fair to say that we deal with a lot of issues that involve trademark law in general, particularly in the areas of domain names, keyword advertising, and meta-tags.  This legislation will have an impact in those areas.  In addition, it is always fun to throw in a post with words like “sex toys” to see what it does to the traffic count on the blog ;-)