Document Sample

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 No. 01-1015


 Washington, D.C.
 Tuesday, November 12, 2002
 The above-entitled matter came on for oral
 argument before the Supreme Court of the United States at
 11:05 a.m.
 JAMES R. HIGGINS, JR., ESQ., Louisville, Kentucky; on
 behalf of the Petitioner.
 LAWRENCE G. WALLACE, ESQ., Deputy Solicitor General,
 Department of Justice, Washington, D.C.; on behalf of
 the as United States, as amicus curiae, supporting
 the Petitioner.
 WALTER E. DELLINGER, JR., Washington, D.C., on behalf of
 the Respondents.




 On behalf of the Petitioner ORAL ARGUMENT OF
 On behalf of the United States, as amicus curiae,
 supporting the Petitioner ORAL ARGUMENT OF
 On behalf of the Respondents REBUTTAL ARGUMENT OF
 On behalf of the Petitioner 50



 (11:05 a.m.)
 CHIEF JUSTICE REHNQUIST: We'll hear argument

next in Number 01-1015, Victor Moseley and Cathy Moseley
 doing business as Victor's Little Secret versus V. Secret
 Catalogue, Inc.
 Mr. Higgins.
 MR. HIGGINS: Mr. Chief Justice and may it

please the Court, counsel:
 We are here today to obtain a construction of
 the Federal Trademark Dilution Act, FTDA, that will keep
 Federal trademark law in its proper bounds. We submit

that can be accomplished by choosing objective proof over supposition and inference to guide future FTDA cases. 
 This case from the Sixth Circuit involves a non-identical,
 non-confusing trademark operating in the remote reaches of
 the economy that was nevertheless enjoined under the FTDA,
 and demonstrates the dangers of an unchecked FTDA.
 QUESTION: You mean Tennessee is remote, or this

particular business is?
 QUESTION: Kentucky.
 Your Honor, this case actually




came from Kentucky, and --
 QUESTION: Oh, well, Kentucky --
 -- I suppose that's even more


remote than Tennessee in some cases.
 QUESTION: town?
 MR. HIGGINS: this case. There was not at the beginning of
 Was there a Victoria's Secret in this

The closest one was 60 miles away.

We say that the result --
 QUESTION: In Tennessee?

 MR. HIGGINS: We say that the result below is

contrary to the actual words that Congress used in the
 FTDA, namely the plain words, causes dilution. If this

result stands, the FTDA threatens to usher in an
 anti-competitive expansion of trademark law into patent-
 like realm.
 Perhaps the best example of that is the Second
 Circuit's Nabisco decision, urged in part here by
 respondents, which involved a goldfish-shaped cracker, and
 it -- the court there applied the FTDA to grant
 exclusionary rights in an unpatented, uncopyrighted design
 of a product to enjoin a product that they said diluted. 
 That is contrary to this Court's two most recent decisions



involving Federal trademark law, the Wal-Mart decision and
 the TrafFix Devices decision.
 QUESTION: Before you -- just would you spend

one minute -- it would help me a lot if you explained to
 me what dilution is, and I'll be specific. It seems to me

what you have here is a case of what's called tarnishment,
 and what tarnishment -- what I think of is this, is it
 like this, that -- that -- imagine some small shop wants
 to start a bug spray business. It's a funny example, but

it comes from an actual case, and they decide to call
 themselves Bugwiser Bug Spray, and their slogan is, Where
 there's life, there's bugs, all right.
 QUESTION: Now, Budweiser is not going to enter

the bug spray business. 
 Nobody thinks Budweiser, in fact, is the source of the bug spray, but Budweiser has an
 interest because the people who see this ad are going to
 think Budweiser, yuck, and they don't want people to think
 that. Now, is dilution encompassed? Does dilution

encompass that, and my reason for thinking maybe it
 doesn't is, the words of the statute refer to
 distinctiveness of mark. They don't refer to tarnishment. 

But -- is it -- so I want some explanation of what
 dilution here refers to.
 MR. HIGGINS: There's a lot of people who want



explanation of what dilution is, and their tarnishment
 aspect of dilution is part of the legislative history. It

is not expressed in the words that Congress used to define
 dilution. Congress defined dilution as the lessening of

the capacity of a famous mark to identify and distinguish
 the goods or services to which the famous mark --
 QUESTION: QUESTION: But you believe --
 Which wouldn't include tarnishment. 
 I mean, it can still

Which wouldn't include tarnishment.

identify Budweiser beer very, very well.
 MR. HIGGINS: Well, it could identify Budweiser

beer, but the -- the -- our point about this case is that
 there needs to be objective evidence that consumers, in
 fact, identify the accused mark with the famous mark. In

other words, we say that section 43(c)(1) of the FTDA in its words causes dilution, imposes a causal connection
 between the accused mark and the beneficiary.
 QUESTION: All right, excuse me, before you go

back to cause, which is your main point which I want to
 hear, I do -- I'm assuming now that for purposes of this
 case anyway, you concede that tarnishment is part. If you

don't concede that, or even if you do, will you please
 explain as well what this -- what it is, what the injury
 is where you're talking about a lessening of capacity to
 identify and distinguish, what injury is that, if it is



not tarnishment?
 MR. HIGGINS: Okay. The injury in a dilution

case is focused, the courts agree, on the selling power of
 the famous mark and the way that the cases go is that
 everyone agrees that that selling power is the hook that
 the famous mark --
 QUESTION: Okay, then please explain, putting

tarnishment to the side -- there is no tarnishment,
 assume -- how does the fact that you have a tiny, totally
 separate product with the same name ever, ever hurt the
 selling power of the big famous name?
 MR. HIGGINS: of consumer perception. gist of the FTDA. The question becomes, again, one
 All of that is tied up into the

What is being protected is the selling

power of the famous mark -- which the Fourth Circuit in Ringling Brothers referred to as the economic value of a
 trademark -- and I would agree with you, Justice Breyer,
 that if there is no injury there should be --
 QUESTION: No, I don't understand conceptually
 I've got to understand

how there ever could be an injury.

that first, and the reason is, I can imagine an injury
 through tarnishment. I can imagine an injury where the

big product, Kodak, intends to enter the small area, the
 Kodak -- whatever, monkey wrench -- and it is intending to
 enter and draw on the selling power of, everyone thinks



Kodak is good, so I can think of those two things, but
 where they don't intend to enter, where there's no
 tarnishment, what, in principle, is the harm that you say
 we have to show really exists? Unless I know what that is

in principle, I can't tell if you're right.
 MR. HIGGINS: It -- it would show whether or not

consumers would now identify a single mark with two
 different sources, and -- and that is the essence of what
 trademark dilution by the circuit court --
 QUESTION: because?
 MR. HIGGINS: The theory is -- with which we
 All right, and that is harmed

don't totally agree -- the theory is that consumers are
 used to seeing only one Kodak, and now they see two, and
 the theory is that that is the -- among a number of metaphors, that is the first of a thousand cuts that will
 lead to harm.
 Now, our difficulty with that is that not every,
 even identical use of the same trademark ultimately leads
 to the dilution --
 QUESTION: Well, do you say that actual

confusion is relevant to the dilution analysis?
 MR. HIGGINS: Actual confusion is primarily a --

a Lanham Act infringement concept.
 QUESTION: So it's not, in your view, relevant



to the dilution?
 MR. HIGGINS: If there were actual confusion, it

might be relevant, but this case --
 QUESTION: In this case, the other -- the Lanham

Act was thrown out, in effect.
 MR. HIGGINS: That's the main point of this

case, is that the Court has ruled as a matter of law that
 these accused marks by our clients are not going to lead
 to confusion. It is --
 And you say that actual confusion


doesn't matter, then, for purposes of this statute, the
 dilution statute, or it could?
 MR. HIGGINS: circumstances. I say that it could in some

It's not involved in this case at all.
 All right, now --
 You -- you -- go ahead.
 Then what about actual economic harm? 


Is that a requirement, in your view, under this statute --
 MR. HIGGINS: QUESTION: We think that --

-- for the plaintiff?
 We think that the plaintiff in a 


dilution case needs to show objective proof of dilution,
 and that necessarily has an economic component with it.
 QUESTION: Well, but the statute does not, in

defining dilution, speak in terms of economic harm, does



 MR. HIGGINS: The statute does not mention

economic harm per se, but it does say, the lessening of
 the capacity of the famous mark to identify and
 distinguish and, focusing on the selling power of the
 mark, we say the best evidence that would be adduced in a
 case of dilution is surveys of consumer perceptions of the
 impact of --
 QUESTION: That's the best evidence. That's the

best evidence, but let's go back to what is -- causes
 dilution? One can distinguish what the Patent and
 That is, it considers marks before

Trademark Office does.

they're in use, so one might say, oh, the distinction
 between causes dilution and likely to cause is, likely,
 you're looking at the thing before it's ever used. it's used, you're into the causes territory. Once

That would

be a nice clean line to say that all that it means, all
 that the difference in phraseology, causes dilution as
 opposed to likely to cause, is, did it have -- a causation
 case, you have to have a junior mark that's in use, so why
 isn't that a satisfactory line between what's -- what
 causes dilution as opposed to what is likely to cause
 MR. HIGGINS: We think that is not a completely

satisfactory distinction because of the language of the



statute that authorizes the Patent and Trademark Office to
 look at a mark before it begins.
 QUESTION: Yes, well, that's likely to. They

can't judge it, because it's not -- it's not in use.
 MR. HIGGINS: that. Section --
 QUESTION: But I'm asking you, getting out of
 And the statute actually says

that territory, it can look at things before they're in
 use, and now that -- now the junior mark is in use, why
 isn't that enough to satisfy the dilution act?
 MR. HIGGINS: Well, we would agree that the

mark, the junior mark has to be in use, but we would not
 agree that just by merely using a mark that is
 semantically similar to the famous mark, that dilution
 will inevitably result, which is the position of the respondents here.
 QUESTION: But the one thing I think you're

asking for beyond Justice Ginsburg's example is, to take
 the Kodak wrench and the Kodak camera, you're asking for
 some proof that somebody heard the word Kodak and said,
 was it the camera or the wrench? -- and if that proof
 exists you've got your objective proof, and why do you
 have to go to the point of saying that -- proving that
 Kodak lost a sale as a result?
 MR. HIGGINS: We don't suggest that we have to



prove that Kodak lost sales.
 QUESTION: of some kind of --
 QUESTION: heaven's sake.
 QUESTION: -- of economic consequence, and --
 We think --
 That's the point of this, for
 But you're -- you're asking for proof


-- I -- that's the point that I don't

If I understand it, the dilution occurs when -- or

that dilution is the process of lessening the capacity of
 Kodak to identify the camera rather than to identify the
 wrench. If -- if it is shown that that process has

begun -- that it is occurring -- why do you -- what is the
 point of your argument that it has got to be carried
 forward to the point of an economic loss of some sort? MR. HIGGINS: Well, first of all we believe that

consumer surveys do have evidence of economic impact, and
 we don't say that economic damage is required. our position too far. That takes

The actual question that is

certified is whether the plaintiff must show objective
 evidence of harm to the economic value of the famous mark,
 not that it must show economic harm per se.
 I realize that's subtle distinction --
 QUESTION: Well, isn't there -- under the terms

of the statute, isn't that shown simply by the fact that



the consumer stops for a second and says, is it the
 camera, or is it the wrench when the consumer hears the
 word, Kodak?

What further proof of loss of -- what

further economic proof is required to come within the
 MR. HIGGINS: proof. That is not a complete economic

What we say is that not every, even identical use
 Think of --

leads to dilution in the minds of consumers.

as we put in our brief -- Delta Airlines, Delta Faucets. 
 Think of Apple Records, Apple Computers.
 QUESTION: Maybe because those are names that

are generic, like apple.
 Well then, how about Ford Motor Company and Ford Modeling Agency? same result.
 QUESTION: How about Kodak Pianos?
 Kodak Pianos is in the legislative
 You know, that's the

MR. HIGGINS: history as --

Or Dupont Shoes, or Buick Aspirin?
 All of those are identical marks,


and we say that this case presents a non-identical mark. 
 There are semantic differences and there are gender




Well, there is evidence -- or, at
 Someone sees

least, how did this all get started?

Victor's Secret and writes to Victoria's Secret and says,
 you want to stop these people, so we know that one
 consumer, although he wasn't confused, said, they're
 diluting your mark. Now, suppose you had 12 of those who

said, yeah, I passed this shop, Victor's Secret, and I
 thought immediately of Victoria's Secret. proof be sufficient and if not, why not?
 MR. HIGGINS: We say it is not sufficient,
 Would that

because the -- but that is essentially the analysis that
 the Sixth Circuit put in there. The Sixth Circuit said at

page 27a of the petition, the appendix to the petition,
 that they are focusing on what a consumer is, quote,
 "likely automatically to think," unquote, and then link that to the famous mark.
 QUESTION: And what's your answer? What's


What our position is, that that

requires a court to guess whether the association that the
 consumer thinks of is 
 -QUESTION: in place of that?
 MR. HIGGINS: QUESTION: What we would like --
 What do you want? What do you want

What do you want the plaintiff to



 MR. HIGGINS: We want the plaintiff to show that

there is objective proof of consumer perceptions that it
 causes dilution, exactly what the statute says.
 QUESTION: I don't know -- what does that mean,

of consumer perceptions that causes dilution?

proof that a particular consumer, when he saw Victoria's
 Little Secret -- or Victor's Little Secret -- had in mind,
 gee, you know, that's like Victoria's Secret. enough?
 MR. HIGGINS: QUESTION: No, that's not enough. That's --
 Is that

What is enough?

What is enough? 

What does dilution consist of?
 MR. HIGGINS: Dilution consists of a

consumer's -- the -- general consumers, not a single consumer, but general consumer perception that there used
 to be one Victoria's Secret and now, in their minds, there
 are at least two.
 QUESTION: Well, how many consumers do you need? 

You say one isn't enough , and you say general consumer
 perception. enough?
 MR. HIGGINS: Well, the -- the record and the
 I mean, if you had 20 people would that be

briefs reveal some articles by trademark scholars who
 discussed --



QUESTION: particular question.

Yes, but I was asking you a
 Would 20 be enough?
 I don't think so, Your Honor. You


know, this -- we live in an age when consumer surveys,
 voter surveys, public opinion surveys are done over a
 weekend, and in this situation that is the kind of survey
 that we would suggest.
 QUESTION: And what do you ask these consumers? 
 Is that what you want to ask

How many Kodaks are there? them?

No, Your Honor.

 You ask them the scientifically

MR. HIGGINS: designed question.

Which is?
 Which is, you know, do you think


of another famous mark, and do you believe -- as the law
 review article suggests -- do you believe such things as
 whether or not the new entrant had to get permission from
 the famous mark in order to market this product.
 QUESTION: Well, that -- most consumers wouldn't

even understand that question.
 MR. HIGGINS: point, Your Honor. And that's -- that's part of our

If --




This sounds like a lawyer's dream.

 QUESTION: But it seems to me that the owner of

the senior mark is entitled to more protection than that. 
 I -- I just want to make clear, you do not contest that
 tarnishment is a -- a basis for the respondent to prevail
 in this case?

All right.
 As -- per se. What we say is that

MR. HIGGINS: there is --

I -- I don't know why you need

sophisticated, so-called sophisticated polls to determine
 whether there's tarnishment.
 Because, remember, this case is a statute that is wholly different than the common law. has no common law antecedent. It is granting property

rights through Congress' action under the alleged use of
 the Commerce Clause, and we say those property rights that
 are being granted by this statute create rights that go
 well beyond any trade area --
 QUESTION: It's not just beyond, I would have

thought that -- you don't make a point of it, so I might
 be wrong -- there's a pretty significant speech
 interest on -- on your side of the case. That is, if this



statute gets out of hand, advertising is part of --
 whether we like it or not -- our children's, anyway, daily
 communications, and all of a sudden, if there's no real
 harm you're going to cut off what people can say in
 commercial contexts.
 Now, you don't make much a point of that, so
 don't let me put words in your mouth. (Laughter.)
 MR. HIGGINS: We did mention that in our briefs,
 Explain it to me.

but the primary people who are positing that position here
 are the amici, who represent the public interest, and the
 main point about this FTDA is that, other than bumping up
 against the First Amendment, there really isn't a public
 interest that is being expressed or applied here.
 Well, why -- why isn't there a public interest in not having some organization like yours simply
 copy another person's name?
 MR. HIGGINS: Well, we -- if there is that

situation, then that would be a case of trademark
 infringement or copyright infringement. This case does

not involve -- this case does not involve --
 QUESTION: No, Congress has gone further here

and said you can't simply copy someone else's name.

you say there's no -- maybe Congress shouldn't have done
 it, maybe it hasn't done it, but to say there's no public



interest at all on that side doesn't make much sense to
 me. I mean, you -- you don't come -- your client doesn't

come off well in this case.
 MR. HIGGINS: Well, there is a public interest,

but that is addressed primarily on the free speech aspect
 of things. We would agree with that. The problem with

this case is that it requires courts to speculate whether
 the beginning of a semantically similar mark is going to
 inevitably lead to dilution, and that's contrary to the
 words that Congress used.
 QUESTION: You started off saying dilution,

you -- to show dilution, you had to show economic harm. 
 That I can understand. some economic harm. You produce evidence that -- of

That is now not your position.

don't understand what your position is. 
 If it is not a showing of economic harm, you know, the -- the mark is
 worth so much less than it was, what precisely do you want
 to show? I truly don't understand.
 MR. HIGGINS: We do say there is an economic

component, through the proof that we suggest be required
 under the causal relationship that is necessary, and
 the -- we don't abandon the economic --
 QUESTION: Okay, fine, what else do you demand? 
 This --

What is it that you do demand. MR. HIGGINS: We --



QUESTION: you do demand.

I don't understand what it is that

 We do demand that the plaintiffs


show that our mark is harming theirs in a dilution way,
 that it does lessen the capacity of that mark to identify
 and distinguish its goods or services, and that's best
 done by consumer surveys.
 Your Honor, if I may reserve the balance of my


Very well.

Very well, Mr. Higgins.

Mr. Wallace, we'll hear from you.
 Mr. Wallace, our records reflect that this is
 your 157th argument before the Court in the 34 years you
 have been an attorney in the Office of the Solicitor
 Some years ago, you eclipsed the 20th Century record of 140 arguments. I understand that you will soon

retire from Government service, so on behalf of the Court
 I extend to you our appreciation for your many years of
 quality advocacy and dedicated service in the Solicitor's
 Office -- Solicitor General's Office -- on behalf of the
 United States. your favor.
 That doesn't mean we're going to rule in



 MR. WALLACE: Thank you very much, Mr. Chief

Justice, and may it please the Court:
 What constitutes dilution, other than the
 abstraction of the statutory definition perhaps is
 reflected a bit in the examples we've given of consumer
 surveys that might be used to produce evidence in a case
 of this nature. If consumers were asked what products do

you associate with the name Victoria's Secret, and those
 who were aware of Victor's Little Secret answered it
 substantially differently and included items found only in
 that store and not in Victoria's Secret stores, or what
 attributes do you associate with Victoria's Secret, and
 those aware of Victor's Secret were more apt to say
 tasteless rather than tasteful, which would -- might be the response from those familiar with Victoria's Secret.
 QUESTION: not sure any more? occurred?
 MR. WALLACE: It -- it might. All of these -- I
 What if the answer was simply, I'm
 Would that show that dilution had

mean, we don't take the position that a consumer survey is
 necessary in order to prove a case in the first place, but
 I think the way a survey would be designed and what the
 answers would show is illustrative of what constitutes




But you -- you would get that answer

from a consumer if you asked them about the word, Delta,
 what products do you associate with the word, Delta, and
 the consumer would say, airplanes, or air -- you know, air
 travel and faucets, and there wouldn't be any dilution
 there, would there?
 MR. WALLACE: Not unless their -- a conclusion

could be drawn based on other factors that --
 -- a mark had established a


certain distinctiveness that is associated only with the
 particular mark, and now that is being blurred.
 QUESTION: Well, I believe -- are you saying

that the Delta example is only good now, and that when the
 person who made Delta Faucets first came out with a faucet that he called Delta, or Delta Airline -- I don't know who
 came first -- the chicken or the egg, the airline or the
 faucet. Whoever had the name first, are you saying that

when somebody used the name Delta that the senior user of
 Delta could have excluded the faucet-maker from -- from
 MR. WALLACE: Only under the Federal dilution

statute of '95 if the mark is a famous mark, and in the
 Toro case that we cite, the --
 QUESTION: So I can't even have Delta Peanuts? 



Once Delta is famous, just for air travel, I can't use
 Delta for anything else? the Federal statute?
 MR. WALLACE: QUESTION: Well, not automatically, but if --
 That would automatically violate

All you have to do is find a consumer

who knows of Delta Peanuts and says, you know, what do you
 associate the name Delta with, and he says, airlines and
 MR. WALLACE: Well, that would involve an exact

replication of the mark, which are the only examples given
 in the House report or in the legislative history, such as
 Kodak Pianos. Most of the cases, however, are about

similar marks rather than exact replications, and those
 are much more problematical to ascertain whether there is
 the kind of effect we're -- the act is concerned with. QUESTION: Mr. Wallace, at least in some of the

circuits, I'm not sure in the cases of this Court, correct
 me if I'm wrong, I thought that in trademark infringement
 cases, that the circuit court said that they have certain
 de novo authority. Historical facts are clearly

erroneous, but the conclusions that you draw from the
 historical facts give them certain powers of de novo
 review. That's the prevailing rule in many of the

circuits, is it not --




-- in infringement cases, and
 I mean, judges

shouldn't that same rule be applied here?

have the capacity in the trademark area, I should think,
 to know what dilution is or is not if we have certain
 historical facts. I don't know why you need to survey. 
 I mean, you don't have to

The Bugwiser-Budweiser example.

be too tricky a judge to figure out that this is very
 MR. WALLACE: It is very difficult. We don't

say that a survey is needed. are looked to, including --

There are other factors that

Mr. Wallace, may I ask you something
 As I've

to clarify the Government's position on this?

been listening to the argument, Mr. Higgins says you look
 to see, he said, if before you thought there was one Victoria's Secret, now you thought there were two. He's

suggesting that the association -- it's not what you think
 of when you see Victor's Secret. When you see Victor's

Secret, of course you're going to think of Victoria's, but
 what counts is, when you think of Victoria's Secret, do
 you think of Victor's. That's -- that's what dilution is,

and if it's the latter, then it's -- those are two very
 different things, aren't they?
 MR. WALLACE: Yes. Dilution is about dilution

of the famous mark and its capacity to distinguish the



particular goods or services, but we think the court of
 appeals was wrong in saying that mere mental association
 of the two marks by consumers automatically results in
 QUESTION: But the court of appeals was going

on, when you think of Victor's you think of Victoria's. 
 I'm asking you, is the right question -- is the necessary
 question of the customers -- when you think of Victoria's,
 do you think of Victor?
 MR. WALLACE: I think the -- the question is not

do you think of Victor's, but when you think of
 Victoria's, do you think of more than what Victoria's
 Secret --

 -- itself has as its merchandise and image. Is their name now associated with a different

type of product that may change their renown or cachet
 with customers.
 QUESTION: Is there -- what is the extra -- I'm

not -- if you're finished with that question, I'd like
 to -- which I think there's a lot to. particularly the harm? Is -- what is

Is it just that the customer

thinks -- either customer -- thinks of the other even if
 there's no specific tarnishment, and there's no general
 tarnishment? That is, people associate Buick with a good



car, and we can measure whether that's identical before
 and identical after, and it is, so there's no general
 tarnishment, there's no bug example tarnishment, there's
 nothing but the fact that on Justice Ginsburg's question,
 both sides say yes.
 Now, is that harm under this statute? dilution, or isn't it?
 MR. WALLACE: We don't believe that in itself
 Is that

constitutes dilution if there is none of the damage to the
 ability of the mark. QUESTION: The --
 All right, so -- so the ability of

the mark consists either of my bug example, or some
 general weakening of the goodness that inheres in the
 name. Anything else?
 Well, yes -- no, I think -QUESTION: No, okay --
 I think the Fourth --


The answer's no.
 The Fourth Circuit case of
 People might


Ringling Brothers was very illustrative.

associate Utah's use of Greatest Snow on Earth with
 Ringling Brothers' use of Greatest Show on Earth, but if
 they keep the two distinct in their minds, even though
 they recognize that it's a play on the same words, but
 they think the two trademarks refer to different products



and services, then there -- no harm is done to Ringling
 Brothers as the Fourth Circuit held, and the Fourth
 Circuit even suggested that perhaps they even benefit from
 having people think additionally of their mark. That's a

question on which the Patent and Trademark Office has not
 taken a view, but the harm has to be that consumers are --
 are diminished in their capacity to recognize the mark
 that is the famous mark that's being protected.
 QUESTION: That's -- but that's confusion. I

mean, if -- if there's confusion, you don't need this new
 law. I thought that it was the case that if you come out

with a Kodak Piano, even if nobody in the world thinks
 that Kodak, the photography company has anything to do
 with Kodak Piano, the mark has nonetheless been
 diminished. Isn't that right?
 That's true, at least when it's an


identical mark, or one that's so confusingly similar --
 QUESTION: But that goes to the very point

you've just been talking about, and contradicts what
 you've said. It doesn't matter whether there's any

confusion or not, you can't use Kodak.
 MR. WALLACE: There -- there has to be confusion

as to the mark, rather than as to the source of the
 QUESTION: Thank you, Mr. Wallace.



We'll hear argument from you now, Mr. Dellinger.
 MR. DELLINGER: please the Court:
 The question on which the Court granted
 certiorari was whether the plaintiff must demonstrate that
 it has already suffered economic injury as a precondition
 to any and all relief under the 1996 act. The text of the
 Mr. Chief Justice, and may it

act answers that question, and answers it no.

simply no such requirement included in the statute.
 QUESTION: Well, it -- I mean, that's to some
 It depends on what you mean, has
 What your opposing

extent a play on words.

actually suffered economic injury.

counsel says now is that all he means by, has actually suffered economic injury, is, has suffered dilution, has
 actually suffered dilution of the mark, which, of course,
 entails economic injury. If the mark is diluted, the mark

was worth a lot, and it's now diluted, there's economic
 injury. Now --
 MR. DELLINGER: Justice Scalia, we agree that

the act requires a showing of actual, present dilution,
 and that such a showing was, in fact, made below. dilution? What is

A number of you have asked that question.

best understood in light of the fact that this is a very



narrow statute that only protects a few very famous marks. 
 I do not think, for example, Justice Scalia, that Delta
 would qualify as a famous mark because it has been used so
 often in other third party uses. QUESTION: The --

But what about the first time it was

used either for -- what is it, the airline, and what's --
 faucets? Whichever came first. What about the first time

it was used for the second product?
 MR. DELLINGER: Then it would not suffer the

disqualification that would come as to what is present --
 -- about proliferating uses. 


Whether it would otherwise satisfy that would remain to be
 seen. I think that the Court can, and the courts can

narrow the application of this statute by taking very seriously the requirement that it has to be a truly famous
 mark that has.
 Take the example that was given to the House --
 QUESTION: understand it. Airlines. Well, let's -- and keep it so I can

Let's assume the first use was Delta

Everybody recognizes Delta Airlines.

starts advertising Delta Faucets. famous enough --

Was Delta Airlines

I don't know --

-- on your criterion?




-- on those facts.

I'd have to

know whether, if -- as it is today, yes, I would think if
 it --
 QUESTION: All right. Let's assume it's famous

The ads start going out in the magazines for
 There is no proof that Delta Airlines has

Delta Faucets.

suffered any tangible damage at this point, but there is
 proof, let's assume from a survey of magazine readers,
 that when they see the word, Delta, standing by itself,
 they're not sure who the source of the product is. that dilution?
 MR. DELLINGER: If they're not sure who's the

source of the product, it may be infringement, and the
 reason I resist the use of Delta is that a lot goes into a
 determination of whether -- as it did in this case -- as to whether a mark has those special qualities that mean
 that the second or junior user and the third, fourth, and
 fifth are lessening its capacity to communicate these very
 distinctive ideas.
 The example used in the House report was
 Tiffany's, for example. We all know that if another

jewelry store starts as Tiffany's you've got an
 infringement claim, because consumers would be confused,
 but as the House was told, what about a Tiffany's
 Restaurant, and that means that Tiffany's used to stand



for one thing, it now stands for two, but here's the
 absolute heart of the matter, where the FDA comes into
 QUESTION: That was bad? I mean, you see, I am

so far behind understanding you that I don't know whether
 you have just asserted that that's obviously bad. you have. Tiffany's Restaurant is bad.
 I think

 I have, and --

MR. DELLINGER: (Laughter.)

And the difference between Tiffany's

Restaurants and Delta Faucets is what?
 MR. DELLINGER: There may be no difference. I'm

assuming that both -- if you assume that both Delta and Tiffany's are famous marks.
 But here's why Delta Faucets and


Tiffany's -- if the original marks are famous -- both
 constitute the harm of dilution. QUESTION: Dilution --

You mean, just using the name?
 Just using the name --


Is likelihood of dilution enough?
 No, not under the act, and --


and nor is just using the name enough, nor is just



semantic similarity.

You have to make out the statutory

proof that it actually --
 QUESTION: everybody --
 MR. DELLINGER: dilution --
 QUESTION: Is expressed --
 It's creating a mental
 But take an
 It causes dilution, and
 That it causes dilution for

MR. DELLINGER: association.

Similarity is not enough.

example that shows how critically important stopping the
 first use is. If you can have a Tiffany's Restaurant,

then you can also have a Tiffany Shoe Store, a Tiffany Pet
 Store. Very soon Tiffany's no longer --
 QUESTION: Where will it all end?

 Where will it all end? (Laughter.)
 MR. DELLINGER: QUESTION: That is exactly --
 So what? I mean, I

Well, so what?

don't say so what facetiously.

I say so what to get you

to identify the harm specifically that that's likely to
 bring about to the first owner.
 MR. DELLINGER: Exactly. The -- what Congress

saw as the harm, Justice Breyer, for truly famous marks,
 to quote from the House report itself, is that dilution
 applies when the unauthorized use of the famous mark



reduces the public's perception that the mark signifies
 something unique, singular, or particular, so that
 Rolls-Royce, which once stood for one thing, once it's on
 100 products or 1,000 products no longer identifies and
 distinguishes --
 QUESTION: No longer identifies one thing. It

now identifies a thousand things, and that, of course, is
 true by definition, and what I'm trying to get at is, why
 is that bad?
 MR. DELLINGER: was bad because --
 QUESTION: ahead. Why?
 MR. DELLINGER: Congress determined that that
 Just automatically? Oh, no, go
 Congress determined that that

was bad to the extent that the mark no longer stood for something singular or particular, no longer conveyed --
 QUESTION: Then again, that's just another way

of repeating the same thing, and the reason that I think
 it's important is, perhaps we can survive with only having
 one Tiffany's, but let's think of some slogans out of my
 youth, you know. pure. It floats. 99 and 44/100th percent

The beforehand lotion, whatever that meant.

just repeating slogans from old radio programs, and the
 reason that I'm doing it is because I want you to see
 immediately, as soon as you depart from a word like



Tiffany's, which is totally arbitrary or fanciful, and you
 get into actual advertising slogans, you will tie up free
 speech in lawsuits like mad, and that's what's worrying
 MR. DELLINGER: the case. No, I do not -- it is not at all

Congress made it clear that safe harbors were

to extend a wide --
 QUESTION: Yes, the safe harbor is fair use.
 And it --


Fair use, and that's what's again

worrying me, because those two words, fair use to me spell
 lawyers, lawsuits, uncertainty and confusion.
 MR. DELLINGER: If you lose distinctiveness,

what you lose is the selling power of the mark. 
 Rolls-Royce stands for something important. It conveys

something that consumers -- it signals to consumers. 
 Rolls-Royce is very careful about what products it
 allows to --
 QUESTION: Chevrolet doesn't matter. You can

use Chevrolet, because that's --
 QUESTION: easier -- yes.
 MR. DELLINGER: Justice Scalia, it is -- when
 Is that right? Or Edsel, even



you look at whether a mark is famous -- and in this case,
 it's simply not contested. This is a mark that comes in

behind Levi's and ahead of Rolex on the -- on the list,
 but when you contest that, you do look at a number of
 factors, so you can't stand here and pick out any one, and
 that's a -- that's an important gatekeeping function to
 narrow this statute.
 Now --
 QUESTION: When you say it signifies something

distinctive, you don't mean that Buick signifies cars, you
 don't mean that Tiffany's signifies jewelry, you don't
 mean that Rolls-Royce signifies sedans, right?
 MR. DELLINGER: Not just that, but a certain

mark and quality and kind of product is exemplified, and
 that's what makes a mark famous. 
 It gives it this. Now, if -- we know that these marks have value. 
 When -- when companies are acquired, often as much as
 four-fifths of the value may go to use that name. That is

something quite valuable, Justice Breyer, and its value is
 going to be lost --
 QUESTION: Fine. Why not --

MR. DELLINGER: different ones.

-- if there are a thousand

Why not require some proof of that? 

That is, some proof that this mark -- which not only



identifies a wonderful car, but now has come to stand for
 wonderfulness in general -- some proof that because
 somebody's using it on a tricycle, that people think it's
 a little less wonderful.
 Now, that's not -- that's hard to prove one way
 or the other, but not -- I mean, requires some reason for
 thinking that.
 QUESTION: So Pepsodent would lose, or, you

know, just some -- some product --
 MR. DELLINGER: QUESTION: ordinary product. Yes. Yes.

That's just a -- you know, it's an

How can you have an absolutely

wonderful toothpaste?
 QUESTION: Oh, no, you can. You can.

 There's no Tiffany of toothpastes, right?
 MR. DELLINGER: QUESTION: There is no --

So we're only talking about

Tiffany's, Rolls-Royce, a couple of other really, really
 quality names. Is that what the statute was directed at?
 I believe that is the case,

MR. DELLINGER: Justice Scalia, that --

But you don't differentiate between
 Chevrolet would have just

Cadillac and Chevrolet, do you?



much cachet --
 MR. DELLINGER: No, I think they would be on

similar footing, and Chevrolet has its own kind of appeal. 
 It appeals to -- for those of us who live in NASCAR
 country, there is sometimes a more appealing image to
 Chevrolet than to Cadillac. judgments.
 QUESTION: Well, Mr. Dellinger, why isn't it
 I don't mean to make value

useful to think in terms of whether there's proof of some
 diminution of value of the mark?
 MR. DELLINGER: That is a very good question,

and that is Justice Breyer's question for --
 We believe that obviously the


mark does suffer in value if you make out the finding of dilution. actual --
 QUESTION: Well, you -- you wouldn't think we
 The Fourth Circuit would require you show

should just presume a diminution in value, would you,
 because the mark is similar?
 MR. DELLINGER: No, but what you -- what you

presume is that the economic injury that you're talking of
 may not be identifiable -- often would not be
 identifiable -- until it's too late to rectify the harm
 that has been done. If you think of -- we usually use as



examples where there is one other competing user.
 What faces the sort of in-house intellectual
 property counsel for a company with a famous mark is that
 there are users popping up all over the country all of the
 time, so that if the first user, say Victor's Little
 Secret, exists in Elizabethtown, Kentucky, and if you
 can't show that that alone produces the kind of harm
 you're looking -- or that your question would imply one
 might be looking for -- how can you stop the second, the
 third, the 500th use?
 At what point -- there's no privilege for the
 first user, so that by the -- here's what would happen. 
 By the time you could show economic damage to the harm,
 first of all as a matter of law you might have lost the
 status as a famous mark because there are all those users out there.
 Secondly, the -- it is not clear why you would
 prohibit the 500th user of the mark, the 500th different
 kind of store when you allowed the first 499 to go on, so
 that -- you ask the question of whether, at present, this
 use lessens the capacity of that mark to identify and
 QUESTION: Focusing on the present, suppose I'm

a trial judge, and this case comes to me in the pretrial
 conference stage, and I say, you know, it does seem to me



that this second -- this junior user is going to tarnish
 the image of -- of the senior user. Is that all I need to

say, and then I -- what do I put down when I write an
 opinion so that the circuit court can review my thinking? 
 I mean, what -- what do I put down?
 MR. DELLINGER: Well, I think this case is a

very good example, because you have a court which goes
 through a list of factors to reach a conclusion. The

opinion is rather short, but that's because the conclusion
 in this case is so close to being a core example of the
 statute. They -- they mention the fact that it's a very

distinctive mark, the degree of similarity, the proximity
 of the product lines helping to create that association,
 the shared customers -- 39,000 catalogues distributed in
 The suggestion is there are some -QUESTION: 39,000 in Elizabethtown?
 Yes. There are 39,000


Victoria's Secret catalogues distributed in Elizabethtown,
 Kentucky in 1998.
 QUESTION: Elizabethtown?
 MR. DELLINGER: That is a good question, but
 What's the population of

I -- four, he says, but I think that's his guess. don't know. I --



 MR. DELLINGER: substantial. I -- I -- think it is

Now, once you have these other uses out

there, particularly if it's a --
 QUESTION: So what do I -- would this be

appropriate for a summary -- would you urge me to take
 this on summary judgment? MR. DELLINGER: could, Justice Kennedy --
 QUESTION: All I need to know is the number of
 I --
 Absolutely, just as I think you

catalogues, how well-known the mark is, and that's it?
 MR. DELLINGER: QUESTION: tarnishment is?
 No, because here you have -here you have an actual association. What you have in
 What you have to --

And then my own judgment as to what

this case, for example, that the judge relies upon, is not
 a survey. It's proved by actual consumers.
 QUESTION: Well, but suppose right here, to take

this case, that the people who go to Victor's who have
 ever heard of it honestly do not believe the less in any
 respect whatsoever of Victoria's Little Secret, and the
 people who use Victoria's Little -- I mean, why should
 they? -- and the people who use -- go to Victoria's Little
 Secret have never heard of Victor's, so you -- why -- why



suppose they come in and show that?
 QUESTION: QUESTION: confusing the marks. No. You're confusing the marks.
 Now, why -- I understand you're

No, you're not confusing the marks. 

I'm -- he's saying I'm confusing the marks.
 QUESTION: QUESTION: QUESTION: But I -- did I have it backwards?
 Yes, you did. 
 Not Little -- all right. The people

who go -- no, the customers of Victor's do associate
 Victor's with Victoria, but they think nonetheless of
 Victoria. They might even think more of Victoria. I

don't know what they think, but it's not negative in any
 respect, and the people who go to Victoria's, to use
 Justice Ginsburg's example, don't care, or don't know, or they've never heard of Victor's, so although there is --
 in a subset of people -- an association of the name, there
 is no harm of any sort whatsoever, and they will prove
 that. Should they not have the opportunity to prove it?
 MR. DELLINGER: Justice Breyer, Congress simply

did not agree that no harm has been done when the famous
 mark loses its singularity, and remember, if there can be
 one store under Victoria's -- under Victor's Little Secret
 in Elizabethtown, Kentucky, there can be a thousand
 opening the Monday after Superbowl Sunday.




So then in your view, anyone who

starts going around for a commercial reason and using the
 two words, it floats -- it floats -- where they want
 people to think of Ivory Soap, they are open to a lawsuit,
 and they have to rely on a fair use defense, or are there
 other defenses?

Is my example wrong?
 Well, it's -- your example is


that there is a -- you're suggesting a mere mental
 association. I'm not sure your --
 Well, in a commercial context -- in a


commercial context where people are polled --
 MR. DELLINGER: Secondly, I am not -- by no

means -- it would take a lot to persuade me that it floats is a truly famous mark deserving of this protection, but
 Congress believed that the harm is that if you have a
 mark, and Congress identified marks like Buick Aspirin,
 but if you -- the very harm Congress sought to prevent is,
 when a mark stands for one thing -- this narrow set of
 truly famous marks -- and you have replicating uses, it is
 no longer going to stand for anything in your mind, and
 Congress believed, and the market reflects, that that is a
 true loss.
 Now, if you wait to try to -- to where you could



show, as the Fourth Circuit would require, an actual
 revenue loss, you can't unring the bell, particularly with
 tarnishment. If someone opened up --
 Mr. Dellinger, can I just clarify,


then, it doesn't make any difference that this particular
 shop happens to sell sex toys. It could just as well --

Victor's Secret could sell men's underwear and your
 argument would still be the same, am I right? out the tawdriness or the disparagement or the
 tarnishment. It's just -- it's a store, it sells
 So we get

underwear, men's underwear, and it's got the label,
 Victor's Secret.
 MR. DELLINGER: entirely agree with that. Justice Ginsburg, I don't
 We do believe that the dilution

of the Victoria's Secret name through blurring would be sufficient, but in this case, you don't have to rely upon
 that, because the court below did find that there was
 tarnishment when a name not only ceases to stand for one
 thing, but is associated --
 QUESTION: But how does tarnishment fit the
 That's what --

language of the statute? QUESTION:

Yes, I'd like to know that, too.

don't see how tarnishment -- you know --
 QUESTION: mark to identify --
 Does that lessen the capacity of the




Yes, it does, and the --

I thought it just changed the

reaction to the mark, rather than lessening -- I mean, you
 know, you have an unfavorable reaction, rather than not
 knowing what you're talking about.
 MR. DELLINGER: Let me just quote you from the
 One of

treatise, one sentence from the McCarthy treatise.

the classic functions of a trademark is to signify that
 all goods and services sold under the mark are of equal
 quality, or of a special quality. That is part of
 It -- the capacity

identifying and distinguishing a mark. is lessened.

It lessens the capacity to identify and

distinguish a particular mark when that mark is tarnished
 by what the trial court found some customers would find to
 be an unsavory association.
 QUESTION: I don't understand -- you can say it,
 I can still identify and

but I don't understand it.

distinguish Victoria's Secret, but I just think less of

It -- it doesn't -- any -- it isn't

any less identifiable.
 MR. DELLINGER: misstating the statute.
 Justice Scalia, I think you're



MR. DELLINGER: identify and distinguish. QUESTION: Yes.

It's not whether you can
 It's whether the mark's --


-- capacity to identify and

distinguish is lessened, and if it no longer stands in
 one's mind --
 QUESTION: I'll take that.
 If it no longer stands in one's


mind, or in the mind and the public perception for the
 same connotation of quality as it did before the
 association with the unsavory image, its capacity to
 identify and distinguish that quality has lessened, but
 moreover --
 QUESTION: to the statute.
 The statute doesn't contain that
 But you have to add the word quality


The statute uses dilution,

Justice Stevens, as a term of art, and nothing could be
 clearer than that Congress thought that term of art,
 dilution, encompassed both blurring and tarnishment, as I
 think --
 QUESTION: Well --
 I may not persuade Justice




Scalia --
 QUESTION: Nothing could be clearer than that

Congress adopted a definition of what -- of what dilution
 consists of and, to my mind, that definition does not at
 all cover disparaging the other product.
 MR. DELLINGER: otherwise. Well, it -- Congress thought

The House report says that the definition --
 The House committee thought

QUESTION: otherwise.



What Congress thought was the

definition that Congress adopted.
 MR. DELLINGER: And the definition of lessening

the capacity encompasses that, but in any event, since
 blurring is still present, this is thought to be an easy case by the courts below, for -- for good reason. If you

imagine hundreds of different users of the Victor's Little
 Secret mark, the uniqueness, the quality, the public's
 perception is going to be lessened.
 Congress further -- to go back to a question
 asked by Justice Breyer -- made it absolutely clear that
 it wanted the safe harbors read as broadly as possible to
 ensure that there was no restriction on First Amendment
 rights, so the courts are warmly invited to create as
 large a safe harbor for parody. This is a case in which



we have blurring, we have tarnishment, which is a near
 subset of blurring, but the courts below looked at the
 direct customer testimony.
 Colonel Baker, the Judge Advocate -- Staff Judge
 Advocate at Fort Knox -- looks at a Victor's Little Secret
 ad in the base newspaper and writes off to Victoria's
 Secret and says, they're using your name in an unfavorable
 way. His -- his deposition testimony remarks --
 QUESTION: Well, he was concerned about the

tarnishment aspect, and I still have to -- I would like
 you to comment on the -- on Justice Ginsburg's example,
 too, would it diminish the capacity of the Victoria's
 Secret mark to identify its line of goods if some --
 somebody thought they also sold men's pajamas?
 Someone else, I think you

well -- you begin to have the elements of the proof of
 dilution when you show that someone is using the same --
 or a name which reaches mental association because of a
 number of factors. You have the elements of dilution. 

You might not yet have, as you have proof in this case, of
 a really lessened capacity to identify and distinguish.
 Now, another -- the -- nobody sought to
 introduce a survey in this case. I would trust Federal

judges more than sociology graduate students to make this
 kind of determination, and nobody sought to bring before



this Court a fact-bound determination of whether all of
 the judges below were correct when they found that there
 was a strong association, and beyond that, that the use of
 the Victor's Little Secret mark to sell the kinds of goods
 it sells, which some customers find unsavory, and which
 Mr. Moseley himself testified some members of the public
 find -- at least -- extremely offensive, that that has the
 effect of lessening the capacity of a Victoria's Secret
 mark to identify and distinguish those famous goods and --
 and products, and that's --
 QUESTION: But the blurring, then, that you're
 That only

describing now has no quality component to it? comes when you get to the subset?
 MR. DELLINGER: QUESTION: That is correct.

 It -- it only affects the fact


that it doesn't -- no longer singularly stands for
 anything, that if Rolls-Royce were on 100 different
 products, it would no longer -- it would no longer mean
 anything, and would no longer -- they might as well call
 their car a Yugo if it's used on products hither and yon.
 Tarnishment is a particular good example of why
 the lessening itself needs to be remedied, because once
 you've tarnished a product, it's hard to unring that bell
 in the public's mind, if someone had a national program.




Of course, if you're dealing with

Rolls-Royce, I suppose virtually any blurring is also
 going to be tarnishment, which you don't necessarily have
 even in other famous marks.
 MR. DELLINGER: Tarnishment has generally been

restricted so far in the case law to more unsavory
 associations, sex, drugs, and matters of that kind. This

is an act which is more limited than its critics suggest. 
 They -- of course, whether it was a bad policy was a
 matter that should have been addressed to Congress, but it
 can be limited to a few very famous marks.
 A safe harbor is read broadly. People can use

the term, Victoria's Secret, for any purpose they want in
 parody and commentary, on the steps of the courthouse. 
 They just can't make this one use of it, that is a commercial use in commerce that lessens the capacity of
 that mark to carry out its function that Congress so
 clearly had in mind when it passed the Federal Trademark
 Dilution Act.
 That's why I think the courts below saw this,
 like Buick Aspirin and Kodak Shoes, as a core paradigm
 example of precisely what the statute was designed to
 prohibit, and why none of the --
 QUESTION: So, Mr. Dellinger --
 None of the most interesting




questions arise.
 QUESTION: -- is proof, then, submission? If

you've got a very famous, distinctive mark, and you've got
 a -- a very similar use. You have those two things, and

then you get a few colonels to say yes, when they think of
 the junior mark they think of the senior, is that enough
 MR. DELLINGER: It is in this case, Justice

Ginsburg, where the sufficiency of that I think was really
 not challenged.
 QUESTION: Thank you, Mr. Dellinger.

Mr. Higgins, you have 2 minutes remaining.
 Mr. Justice, and may it please the Court:
 There's no evidence in this case that Colonel
 Baker was ever in petitioner's store, and his particular
 affidavit was challenged and disregarded by the trial
 court. What we have here is a choice between two
 Our choice is grounded

standards to interpret the FTDA.

in the actual use, words that Congress used, and the
 respondent's position is grounded in the academic theory
 of dilution which we say is way ahead of the law.
 Our standard is objective and predictable. 



Theirs is subjective, unpredictable, invites the courts to
 substitute its own judgment for consumer perceptions. 
 It's consistent with almost nothing. on measurable consumer perception. Our standard focuses

Theirs focuses at the

beginning on semantic similarity, and a presumption that
 dilution follows from that. Our standard merely puts the

famous mark owner to their proof to show that Congress'
 words, the lessening of the capacity, has been established
 as a matter of proof. They should not get a national

injunction without that.
 Our standard keeps trademark law in its proper
 bounds. fame. Their standard merely rewards the achievement of

Our standard, if applied in this case, should

result in this Court reversing the injunction and
 directing that the petitioners be allowed to use Victor's given name in their business.
 Thank you.
 The case is submitted.
 (Whereupon, at 12:06 p.m., the case in the
 above-entitled matter was submitted.)
 Thank you,


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