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:
Even B&J’s bucolic container theme –
– 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:
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.