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Victoria’s Secret, the lingerie retail giant, may have slinked its way to victory before the Supreme Court Nov. 12 in a trademark dispute with a Kentucky adult sex toy store coyly named Victor’s Little Secret. At issue in the case, Moseley v. V Secret Catalogue, No. 01-1015, is whether Victoria’s Secret has to prove it suffered actual economic harm to make a claim of trademark dilution against the Elizabethtown, Ky., store — which has been temporarily renamed Cathy’s Little Secret pending the outcome of the case. The establishment is owned by Victor and Cathy Moseley. After ads for the store appeared in a newspaper at nearby Fort Knox in 1998, an Army lawyer wrote to Victoria’s Secret, which went to court to force the store to change its name. The U.S. Court of Appeals for the 6th Circuit sided with Victoria’s Secret, finding that the Victor’s Secret name was likely to dilute the Victoria’s Secret mark. Victoria’s Secret lawyer, Walter Dellinger — who acknowledged leafing through its catalog as he prepped for the case — seemed to carry the day when he argued that owners of “very famous marks” should not have to wait for measurable economic harm before they take action. “You can’t unring the bell,” said Dellinger, a partner in the D.C. office of O’Melveny & Myers and former acting U.S. solicitor general. Raising the specter of a chain of Victor’s Little Secret stores spreading though the country, Dellinger said, “If you don’t stop the first use, how can you stop the fourth or the fifth or the 500th?” Dellinger dismissed the argument that his client and others asserting trademark dilution need to prove their case through consumer surveys that measure perceptions of the dueling marks. “I trust federal judges more than sociology graduate students to make this judgment,” said Dellinger. Congress, he said, had made the judgment that trademark dilution should be stopped even if no economic harm has occurred. Dellinger also seemed to stun Chief Justice William Rehnquist and others by asserting that Victoria’s Secret distributes 39,000 catalogs a year in Elizabethtown — a community with 20,000 residents located in Hardin County, which has 92,000 inhabitants. The pervasiveness of the catalogs could help the company make the case that allowing the adult products store to keep its name in Elizabethtown could cause residents to blur the two merchants in their minds. But if Dellinger does win, it may be by a narrow margin from a Court clearly struggling over the definition of dilution as articulated in the Federal Trademark Dilution Act of 1995. The Victoria’s Secret case is the high court’s first chance to interpret the law. Justices offered up real-life examples of overlapping trademarks that do not seem to dilute each other — such as Delta Air Lines and Delta Faucets — as well as a series of hypotheticals, from Buick aspirin to Kodak shoes. The most elaborate what-if was Justice Stephen Breyer’s “Bugweiser bug spray.” A small shop offering such a product with the slogan “Where there’s life, there’s bugs” might cause no discernible economic harm to Budweiser beer, Breyer said. But it could cause consumers to think, in Breyer’s words, “Budweiser: Yuck.” James Higgins Jr. of Louisville’s Middleton Reutlinger, lawyer for the Moseleys, struggled to keep up with the hypotheticals, but insisted that Victoria’s Secret would have to prove an “economic component” to its dilution claim, though he stopped short of saying there had to be “economic harm.” Asked by Justice David Souter if Kodak would have to show that the marketing of “Kodak wrenches” would harm its trademark, Higgins said, “They would not have to prove that Kodak lost sales.” That led justices to press Higgins repeatedly on what a primary trademark holder would have to prove. Identifying a single trademark with two different sources would suffice, Higgins said. “A consumer is used to seeing only one Kodak, and now he sees two.” That standard also left justices dissatisfied. “Your client doesn’t come off too well in this case,” said Rehnquist. Deputy Solicitor General Lawrence Wallace also argued as amicus curiae on behalf of the Moseleys, asserting that a “mere mental association” between two products is not in itself dilution. “The harm has to be that consumers are diminished in their capacity to recognize the mark,” he said. The government entered the case to defend the law, but took a middle position: agreeing that dilution means more than mental association, but that economic harm does not need to be proved to win a dilution claim. Wallace, who will retire in January, was making his 157th and final argument before the justices — more than any other person now living. Before Wallace spoke to the Court, Rehnquist made note of Wallace’s retirement and his “many years of quality advocacy.” The chief justice paused and added, “That doesn’t mean we’re going to rule in your favor.” Also on Nov. 12, the justices granted review in United States v. American Library Association, No. 02-361, a test of the Children’s Internet Protection Act. The act requires public and school libraries receiving federal funds to install filtering software on all publicly accessible computers. The law was struck down by a three-judge federal court panel in Philadelphia on First Amendment grounds. MEGAN’S LAWS: UNCONSTITUTIONAL? So-called Megan’s laws, enacted in all 50 states and the District of Columbia to alert residents to convicted sex offenders in their midst, appeared likely to survive two constitutional challenges argued before the Supreme Court on Nov. 13. Most of the justices appeared largely untroubled by the laws, which vary from state to state but generally publicize names, addresses, and photos of convicted sex offenders on the Internet. More than half the states try to limit the law’s reach to those who have been assessed to be the most dangerous, but the rest do not — instead listing all offenders convicted of specified categories of crimes. Congress passed a law in 1996 encouraging states to enact the laws, and another federal law took effect last month that requires states to notify the public about sex offenders enrolled or working at college campuses. The laws were named for Megan Kanka, a seven-year-old New Jersey girl raped and killed in 1994 by a convicted sex offender who lived nearby. The laws of Connecticut and Alaska — which do not make individualized determinations before posting names — were before the Supreme Court Nov. 13 in Connecticut Department of Public Safety v. John Doe, No. 01-1231, and Otte v. Doe, 01-729. Signaling the Bush administration’s interest in defending the laws, Solicitor General Theodore Olson argued as amicus curiae in support of both state laws. Posting “public truths” about sex offenders on the Internet is a “reasonable and relatively minimally intrusive way” of informing the citizenry, Olson asserted. In one of the most skeptical questions posed during the two hours of argument, Justice John Paul Stevens asked Olson whether states could go a step further and require sex offenders to wear a badge informing everyone they meet of their convictions: “What’s wrong with that?” Olson answered that forcing offenders to wear badges would likely be unconstitutional in part because it would require individuals to communicate the government’s message — unlike the Internet posting. Justice Souter also challenged Olson and the lawyers for the states to articulate why an “escape hatch” should not be required to allow sex offenders to demonstrate they are no longer dangerous and should not be listed. Olson said neither procedural nor substantive due process require it. Other justices cast the laws as a routine form of public notice. Chief Justice Rehnquist analogized the postings to the Federal Bureau of Investigation’s 10 Most Wanted List, on view in post offices. He asked skeptically whether those on the list should be entitled to a hearing to seek removal of their names. Shelley Sadin of Sadin, Zeldes, Needle & Cooper in Bridgeport, Conn., representing two Connecticut offenders, replied that the FBI’s 10 Most Wanted suspects will, in fact, have hearings, in the form of trials when they are caught. She also noted that the FBI list is individualized, whereas the Connecticut roster is not. Connecticut Attorney General Richard Blumenthal defended his state’s law, arguing that everyone on the registry has had a trial or a hearing that resulted in a conviction: “This is information that the citizens of Connecticut and the 50 states need and demand.” While the issue in the Connecticut case is due process, the Alaska law was challenged as a violation of the Constitution’s bar against ex post facto laws. Two offenders who had already served prison terms by the time Alaska passed its Megan’s Law in 1994 said that by posting their names on the Internet, Alaska was imposing a new punishment. John Roberts of D.C.’s Hogan & Hartson, representing Alaska, argued that the law had a regulatory intent rationally related to a government interest and was not, therefore, punitive. Roberts did acknowledge that a regulation could be so burdensome that one could question the regulatory intent. As an example, Roberts said that a law that called for cutting off the hands of safecrackers “might be rationally connected, but excessive.”

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