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:

The Fuzzy Line Between Blogging and the Real World

Some commentators and active readers of our blog have asked us why we haven't covered certain noteworthy and topical stories that are related to brand protection and intellectual property in the news recently.

For example, we deliberately haven't blogged about the Apple / Samsung case, the Zephyrs / Victoria's Secret litigation, and several other major cases in the news that relate to brand protection.

The reason is simple:  We may be (or were at some point) involved in those cases as litigation counsel and/or consultants to the parties, and our clients understandably prefer that we confine our statements about those cases to the courtroom or to client-approved press releases.

To be sure, the dividing line between new forms of social media/blogging and being a practicing lawyer can become blurry.

Bar Associations have struggled with offering guidance to practitioners as to when and how to use blogs and social media with respect to cases they are directly involved in.  The ABA Journal notes that blogging can be dangerous and can even lead to serious ethics violations.

As a general matter, we have found that the best solution is for us to confine our blogging and commentary to cases that we are not directly involved in.  Thank you for your understanding!

Julia Child's Legacy: Trademark Litigation Over Her Oven Preference

Julia Child's Kitchen on Display at the Smithsonian

Julia Child's foundation and a home appliance-maker have filed dueling lawsuits over whether the maker of the Thermador oven can use the legendary chef's name and image without violating trademarks.

BSH Home Appliances, which makes Bosch, Thermador and Gaggenau appliances, sued the Julia Child Foundation for Gastronomy and the Culinary Arts in Boston Federal Court on August 24.


Child's foundation responded Tuesday with two federal lawsuits in Los Angeles, one against BSH and the other against the DGWB Advertising firm.


BSH seeks a declaratory judgment that it can use Child's name and image in its advertisements without violating her trademarks.
 

It claims that "Ms. Child's preference for and use of Thermador products, both on the set of her popular television show 'the French Chef' and in her personal kitchen, is well-known and widely documented.  Plaintiff is informed ... that Ms. Child's personal kitchen was donated to the Smithsonian Institution in Washington, D.C., upon her passing, and remains on display to this day much as it appeared in her Massachusetts home, including her Thermador oven.


"The Plaintiff has used images of Ms. Child and references to the well-known historical fact of her use of Thermador products in various media, including on its website and on its social media pages. These uses do not state or imply any endorsement by Ms. Child of Thermador products.  Rather, plaintiff's use of these photos and references to Julia Child's name and use of Thermador products reflect on the long history, significance and influence of Thermador products on American society and culture, and Ms. Child's documented and well-known use of these products."
     

BSH claims it filed its complaint in response to a letter from Child's foundation, in which the foundation "claimed exclusive ownership and control of the name, image, likeness and celebrity identity of the late Julia Child ... [and that] plaintiff's use of the Child publicity rights and Child IP rights constitutes copyright infringement, trademark infringement and a post-mortem violation of Julia Child's right of publicity."
     

But BSH claims that its "use of the image and name of Julia Child are not directly connected to the sale of any merchandise, but rather are factual references to Julia Child's well-known use of Thermador products, placed in proper context, including on a timeline chronicling the company's history and in the 'Our Heritage' section of the Thermador website."
     

The complaint continues: "The timeline on Thermador's website chronicles important events in the company's history, dating back to its founding in 1916. The reference to Ms. Child appears around the 1970 mark of the timeline, and states that 'Julia Child uses Thermador in her critically acclaimed PBS TV Series.'  

It is accompanied by an image of Ms. Child on the set of her PBS television show.
     

Another reference on the timeline states: '2001 - Julia Child donates her kitchen to the Smithsonian, further cementing the brand's place in popular American culture.'
     

BSH seeks a declaratory judgment that its use of Child's name and image does not infringe upon any trademarks or copyrights, and that because Child lived in Massachusetts when she died, Massachusetts state law should be applied to any future claims of infringement.


The Evil Dead: Consequences By Default

Sam Raimi’s Renaissance Pictures has won a default judgment in a trademark infringement lawsuit filed in California federal court against an unauthorized sequel to The Evil Dead, called Evil Dead 4: Consequences.

The Evil Dead is a horror film franchise started by Sam Raimi.  The original movie was produced in 1981, which led to the release of The Evil Dead II in 1987 and Army of Darkness in 1992.  

The successful series spun off Evil Dead-related stories in other formats such as video games and comic books.  An authorized remake of the original film is reportedly in the works and will be released around Halloween 2013.

Independent film studio Award Pictures had been in production of Evil Dead 4: Consequences, when Raimi filed a trademark infringement lawsuit, alleging that the unauthorized sequel was likely to cause consumer confusion.

However, Award Pictures’ president Glenn MacCrae failed to respond to the Complaint, leading to the entry of a default judgment in Raimi's favor.

The default judgment includes a permanent injunction stopping Award Pictures from using Renaissance’s “Evil Dead” trademark for their film or using any marketing that is likely to confuse the public into believing the film is an authorized sequel.

MacCrae told The Hollywood Reporter that he was unable to pay for a lawyer to respond in court due to Raimi’s interference allegedly “destroying” a financing deal with Anchor Bay Entertainment. 

According to MacCrae, attorneys were demanding “tens of thousands of dollars” to take on the case. 

However, MacCrae has now reportedly hired a lawyer and claims that he is "very definitely contesting Renaissance’s lawsuit."

Kanye West Even Stronger After Winning Appeal

Kanye West Performing / Matthew Field

Kanye West has won the appeal of a dismissal of a copyright case filed against him by producer Vincent Peters.

In Vince Peters, p/k/a “Vince P.” v. Kanye West, et al., recording artist Kanye West and music companies Roc-A-Fella Records, LLC and UMG Recordings, Inc. had been accused of copyright infringement involving West’s Grammy Award-winning song Stronger.

Peters alleged that they had infringed his copyright by copying portions of Peters' song Stronger, including the well known maxim “that which does not kill me makes me stronger.” 


Defense counsel moved to dismiss the case on the grounds that there were no protectable similarities between the two songs at issue.  

The District Court of the Northern District of Illinois agreed and granted West's motion to dismiss on March 9, 2011. 


The Court also rejected Vince P.’s argument that the original combination of the five words and phrases was protectable.

Lastly, the Court reviewed the two sets of lyrics and determined that lyrics were not substantially similar, and that, “just as a photographer can not claim copyright in the use of a particular aperture and exposure setting,” a common rhyme scheme does not qualify as original expression.  


On August 20, 2012, in a decision written by Judge Wood, the U.S. Court of Appeals for the Seventh Circuit affirmed the District Court's decision, finding that none of the allegedly similar words and phrases contained in the songs were protectable under copyright law.  

The District Court had noted that the phrase was a hackneyed one, tracing it back to 19th century German philosopher, Friedrich Nietzsche:

"Although the fact that both songs quote from a 19th century German philosopher might, at first blush, seem to be an unusual coincidence, West correctly notes that the aphorism has been repeatedly invoked in song lyrics over the past century."

MTV Tries to Put a Stop to The Situation

From "OfficialSituation.com" Website

Viacom has filed a formal complaint with the Trademark Trial and Appeal Board (TTAB), asserting a legal opposition to Mike "The Situation" Sorrentino's attempt to register federal trademarks for certain catchphrases such as "twinning" and "GTL" ("Gym, Tan, Laundry") that he made popular on MTV's hit show Jersey Shore.


According to Viacom's TTAB filings, on June 22, 2009, Sorrentino signed a detailed written "Participant Agreement" assigning all rights to any "ideas, gags, suggestions ... and other material" he originated on Jersey Shore to the show's producers, and saying he would not use his quotes on T-shirts and other promotional items.  A copy of the agreement was attached as an exhibit to the complaint, but was heavily redacted to remove any extraneous information.

Additionally, to clearly demonstrate priority (seniority) of use, lawyers for Viacom included images of t-shirts, hats, mugs, mousepads and other paraphernalia that have been offered by Viacom's official store on Zazzle.com.  The printouts show use in commerce well before the date of Sorrentino's.

The only class of goods for which there may still be room for negotiation are GTL laundry bags, which are currently being sold by the Situation, at a discount.