Trademark Parody? Ben & Jerry’s Doesn’t Think It’s So Funny ….

Ben & Jerry’s Homemade, Inc. (“Ben & Jerry’s”), the Vermont-based ice cream maker, recently filed a lawsuit in SDNY against adult video company Rodax Distributors, Inc. d/b/a Caballero Video, et al (“Defendants”). The complaint alleged trademark and trade dress dilution and infringement, and related claims arising from Defendants’ production and distribution of a series of hardcore pornographic DVDs whose titles and packaging play upon the names and trade dress of some of Ben & Jerry’s federally registered and famous marks.

Defendants’ allegedly infringing DVD series is sold under the name “Ben & Cherry’s” and includes titles similar to popular Ben & Jerry flavors but, with a colorful twist using pornographic insinuations, as explained in this article. Ben & Jerry’s complaint also sought a temporary restraining order and injunctive relief.

On September 6, Judge Lewis A. Kaplan issued a Temporary Restraining Order against Defendants, and set an expedited briefing schedule for Ben & Jerry’s request for a preliminary injunction.

Late last Tuesday, the parties filed an Injunction on Consent, which the Court entered. This injunction forbids Defendants’ use of the offending porn titles, or any use of Ben & Jerry’s trademarks, trade dress or other proprietary materials. In addition, Defendants must recall all products bearing the infringing titles and cease distribution of the DVDs, as well as provide Ben & Jerry’s with full disclosure of the entities and addresses to whom such DVDs were distributed.

As is the case with most plaintiffs litigating trademark disputes, Ben & Jerry’s had quickly sought temporary restraints and preliminary injunctive relief to prohibit Defendants’ further dilution and infringement. The essence of Ben & Jerry’s argument was that Defendants’ use of the titles on pornographic films would tarnish Ben & Jerry’s trademarks, resulting in a loss of goodwill and damage to its reputation.

Ben & Jerry’s arguments rest on fairly solid ground. While satire or parody may be asserted as a defense to trademark dilution, under the Federal Trademark Dilution Revision Act (2006), trademark owners can claim dilution of a famous mark by tarnishment, that is, by an association that harms the reputation of the famous mark, such as alleged here. Given the nature of the materials bearing the allegedly infringing names and packaging, it is difficult to think of an argument that would allow Defendants to successfully argue a satiric or parodic defense.

This case is also instructive as it highlights the benefits of effectively utilizing preliminary injunctive relief to quickly resolve trademark disputes where the facts and law favor the mark holder.

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