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by Jamie Fitzgerald

Last year a California porn studio, Caballero Video, paid dubious homage to Ben & Jerry’s®   (“B&J”) when it launched a “Ben & Cherry’s” film series.  Even the less explicit titles in the series, such as BOSTON CREAM THIGH and HAIRY GARCIA, (a la B&J’s BOSTON CREAM PIE and CHERRY GARCIA®), evidence an intention to evoke B&J.

Caballero had fun with the B&J trade dress as well. It substituted “PORNO’S FINEST” for VERMONT’S FINEST®, printing it in the familiar B&J stylized font:

Ben and Jerry's labelBen and Cherry's label

 

 

 

Even B&J’s bucolic container theme –

 Ben and Jerry's cow

– provided inspiration for Ben & Cherry’s print material, which featured naked men and women in lieu of naked cows, on a hazy background of wafting clouds. The writer is loath to reproduce it here; think Dante’s Second Circle of Hell.

B&J, no stranger to puns, (IMAGINE WHIRLED PEACE® and KARAMEL SUTRA® are personal favorites), was not amused and sued Caballero in the Southern District of New York. In the absence of a federal cause of action for really bad puns, it claimed trademark and trade dress infringement, dilution and tarnishment.  Ben & Jerry’s Homemade, Inc. and Conopco, Inc. v. Rodax Distributors, Inc. d/b/a Caballero Video et al., 1:2-cv-6734-LAK (SDNY 9/6/12.) Faster than it takes a pint of CHUBBY HUBBY® to melt, the Court issued a temporary restraining order requiring the recall and destruction of all DVDs and related materials in the Ben & Cherry’s series. Caballero mounted no defense, and the case concluded with a consent judgment this past summer.

In the early 1960’s, far milder puns were found to be inexcusable. The Fifth Circuit was apoplectic over Chemical Corporation of America’s slogan, “Where there’s life… there’s bugs,” a takeoff on the then-ubiquitous Budweiser slogan, “Where there’s life… there’s Bud.” Chem. Corp. of Am. V. Anheuser-Busch, Inc., 306 F.2d 433 (5th Cir. 1962.) Chief Judge Tuttle, channeling  Cotton Mather, was scathing:

“[A]ny conduct that is of such nature as to fairly reek with unfairness and a callous indifference to the damage that might occur to others from the action taken by it will naturally be examined most carefully… to determine whether such conduct falls afoul of any established legal principles.”

306 F. 2d at 437. The Judge* conveniently found himself  “… not reluctant to conclude that what is here morally reprehensible is also legally impermissible ” due to “the peculiarly unwholesome association of ideas when the word ‘bugs’ was substituted for the word ‘Bud,’ referring to a food [sic] product.”  Rather an over-the-top reaction to what some might characterize as parody.

More than half a century later but only a few years before B&J v. Rodax, the Fourth Circuit took a more indulgent view of corny puns, in Louis Vuitton Malletier  S.A. v. Haute Diggity Dog, LLC et al., 507 F.3d 252 (4th Cir. 2007). The defendant sold plush pet toys with names tweaking famous luxury brands — CHEWY VUITON, CHEWNEL NO. 5 and SNIFFANY & CO.. Vuitton couldn’t take a joke, contending that this furry little ten-dollar CHEWY VUITON handbag would confuse the public and tarnish one of Vuitton’s most successful designs:

Chewy Vuiton

 

Why, then, should Ben & Cherry’s HAIRY GARCIA for porn be deemed an infringement, but not CHEWY VUITON for a dog toys? Is it because HAIRY GARCIA “fairly reeks,” while CHEWY VUITON is just cute?  Surely not, but the 4th Circuit’s analysis of whether CHEWY VUITON created a likelihood of confusion with Vuitton’s  expensive bags was perhaps not the best approach either.

Surely a far less tortured way to judge the permissibility of marks such as CHEWY VUITON, the “bugs” slogan and BEN & CHERRY’S is simply to ask whether the ostensibly infringing mark and trade dress comprise  a legitimate parody protected by the First Amendment. The unequivocal definition of parody minimizes subjective judgments. Thus, a pun on a famous mark is not parody per se. To be protectable parody, the pun and its graphic equivalent, whether brilliant or sophomoric, whether amusing or salacious, must go beyond mere wordplay.  The parodied product or service must be the very target of the pun.  Only then is the allegedly infringing mark or trade dress speech warranting protection.  When one asks whether the claimed infringement is mere wordplay, or a legitimate commentary on the imitated  product and its owner, the simplicity and rightness of the parody analysis crystallizes. IA court’s reasoning need not deteriorate into tortuous likelihood-of-confusion rationales to fit an I-know-it-when-I see-it prejudgment.

Thus, CHEWY VUITON, CHEWNEL NO. 5 and SNIFFANY & CO., however unsubtle – or perhaps because of their very obviousness – amusingly puncture the hauteur of pricey status symbols. Parodying a must-have Vuitton bag with a deliberately look-alike toy, one that a dog will inevitably destroy with its owner’s blessing, is a way of saying that the emperor has no clothes. As such, it is a form of speech warranting protection. In contrast, BEN & CHERRY’S, HAIRY GARCIA, 7 LAY-HER BAR et al., do absolutely nothing to deflate B&J and its ice cream, just as “Where there’s life… there’s bugs” does not target Budweiser beer. Simply riding on the coattails of marks that became successful due to their owners investment in them is not parody, and is actionable.

__________

* Despite C. J. Tuttle’s entomophobia, he had no anthrophobic prejudices. In the years after Brown v. Board of Education, he was a stern defender of civil liberties, ruling against segregationists and racist voter registrars in the South.

Alleged Patent Troll Targeted by Vermont Attorney General

September 25, 2013
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Previously, we posted about Governor Peter Shumlin signing into law Vermont’s first-in-the-nation (and so far only-in-the-nation) patent troll legislation helping Vermont businesses protect themselves from bad faith patent infringement claims. 9 V.S.A. §§4195-4199 (effective July 1, 2013). In the meantime, the Vermont Attorney General is pursuing patent troll claims against MPHJ Technology Investments, LLC under [...]

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3D Printing and Utility Patents: Will 3D Printers Lead to Widespread Infringement of Utility Patents?

September 11, 2013
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by Kevin McGrath This article is the next in a series of posts discussing IP issues surrounding 3D printing.  As discussed in the last post, some types of 3D printing technology have become affordable enough for home use.  This has led to increased concerns that the printers’ capability to make “perfect replicas” will lead to [...]

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Protecting Your Brand by Registering with the New gTLD Trademark Clearinghouse

August 21, 2013
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By Cathleen Stadecker Why a new Trademark Clearinghouse? In June of last year, the Internet Corporation for Assigned Names and Numbers (ICANN) announced it had received nearly 2,000 applications for approximately 1,400 unique new gTLDs or “strings,” for example .app, .llc, .auto, .realty, and .law. This is a huge number compared to the 22 gTLDs [...]

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Seed of Patent Infringement Germinates Between Organic Farmers and Monsanto

June 25, 2013
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Organic farmers throughout the U.S. have worried for years that agricultural powerhouse Monsanto, might someday show up at their garden gate with a lawsuit for patent infringement because their crops were “inadvertently” contaminated with Monsanto biotech seed, a GMO or genetically modified organism, growing in neighboring fields. They were so worried, in fact, that in [...]

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Fractured Federal Circuit Invites the Supreme Court to Once Again Weigh In On Patentable Subject Matter – What Computer Software Patent Applicants Should Do in the Interim

May 28, 2013
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By Kevin McGrath On May 10, 2013, the Federal Circuit issued its en banc decision in CLS Bank International et al. v. Alice Corporation Pty, Ltd., (2011-1301).  At a high level, the issue in CLS Bank was whether software, business method, financial system, and some computer implemented inventions are eligible to even be considered for [...]

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Vermont Approves Legislation Prohibiting Bad Faith Patent Infringement Claims

May 23, 2013
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By Peter Kunin The Vermont House and Senate have approved a first-in-the-nation bill that provides a legal tool for Vermont companies who face extortionate claims of patent infringement from “patent trolls.”  In brief, the legislation gives Vermont companies the ability to bring a lawsuit against patent owners who – acting in bad faith — threaten [...]

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Will Patent Classification Harmonization Based On The Cooperative Patent Classification System Strike A Chord?

April 29, 2013
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By Morgan Heller II As mentioned in my previous post on the Cooperative Patent Classification system (CPC), the International Patent Classification system (IPC), on which the CPC is based, is used by more than 100 patent offices around the world, so that the choice of starting with an IPC-based classification system, i.e., the European Patent Classification [...]

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Employers Just Get No Satisfaction: NH Enacts Law Restricting Use Of Non-Compete Agreements

April 22, 2013
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By Beth Rattigan Employers in New Hampshire now must comply with further restrictions on their ability to enforce non-compete and anti-piracy agreements.  Venturing further into the already murky area of the enforceability of such agreements, New Hampshire recently enacted  N.H. R.S.A. 275:70, which  requires employers to provide non-compete and non-piracy agreements to applicants and employees [...]

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The New Age of Patent Enforcement in the United States: The Brave New World Post-AIA is NOT First to File – It IS Post Grant Proceedings

April 10, 2013
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Sure, First-to-File is new here, but the rest of the world has been dealing with it forever and the sky has not fallen on technological innovation elsewhere.  And it won’t fall on it here either under a First-to-File system. But consider patent enforcement for a moment if you will.  As a patent owner who wants [...]

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