Rule 34 and Trademark Dilution

The popular internet meme known as Rule 34 states: “If it exists, there is porn of it. No exceptions.”  In actuality, there probably are a few exceptions to this rule (or at least I’d like to think so), but probably not many.

VictorsLittleSecLogo-apr03At the same time, courts have become increasingly willing to product the owners of famous trademarks from having their trademarks associated with prurient or sexually charged content. The primary method for enforcing this protecting is the Federal Lanham Act’s provisions against “dilution by tarnishment.” In this context, “tarnishment” means an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”

A growing consensus of courts across the nation agrees that the anti-dilution “law [is] designed to protect trademarks from any unfavorable sexual associations. Thus, any new mark with a lewd or offensive-to-some sexual association raises a strong inference of tarnishment.” That quote comes from the U.S. Court of Appeals for Sixth Circuit, which governs the state where I reside and practice, and that has adopted an express presumption that prurient use of a famous mark automatically tarnishes it. This holding–which found that an adult novelty shop called “Victor’s Little Secret” tarnished the famous mark of Victoria’s Secret–is the strongest word on this topic to date, but several other courts have reached similar conclusions.

If your company owns a famous trademark, then, a logical corollary of Rule 34 is that your mark is probably being tarnished by being used with sexually charged content. Thanks to decisions like the Victor’s Little Secret case, though, you don’t need to accept this as inevitable. Instead, anti-dilution law provides a powerful tool for rooting out this content and protecting your brand’s good image.