Ben and Jerry's Sues Porn Company Over Adult Film Titles

Vermont-based Ben & Jerry's Ice Cream, a subsidiary of Unilever, is known for its creative flavors with names such as “Schweddy Balls” and “Karamel Sutra.”

The ice cream company was not amused, however, when an adult entertainment company used the name “Ben & Cherry’s” to sell X-rated DVDs that intentionally mimicked the ice cream maker’s titles and distinctive trade dress.

Ben & Jerry’s filed a trademark/trade dress infringement and dilution complaint in U.S. District Court for the Southern District of New York against the maker of adult entertainment titles such as “Boston Cream Thighs,” “Peanut Butter D-Cups” and “Chocolate Fudge Babes.”  The District Court has entered a Preliminary Injunction against the Defendant’s further use of the brand names.

Adult entertainment companies have faced similar trademark and trade dress litigation before, and enjoyed only mixed results when asserting the parody/free speech defense in response to the Plaintiff's assertion that the parodies are too close, and are likely to confuse consumers and dilute their famous brands.

For example, in the late 1970's, the Dallas Cowboy's Cheerleaders sued various distributors of "Debbie Does Dallas."

In the Dallas Cowboys v. Pussycat Cinema, an adult theater in New York City that was showing the films was enjoined by the District Court.

The Dallas Cowboys Cheerleaders successfully argued that their famous uniforms were copied by the film's producers and used in advertising without their permission in a manner that was likely to cause confusion and dilution.  The ruling was affirmed by the Second Circuit Court of Appeals.

However, in 2001, George Lucas sued the producers of a Star Wars parody titled Starballz.  The District Court in California held that "the Star Wars films are so famous that it is extremely unlikely that consumers would believe that Starballz is associated with Star Wars or Lucasfilm."

The mixed rulings have only emboldened the adult film industry to press its luck in recent years, making such sophisticated "parodies" even with celebrity lookalikes, as depicted below: