Last week, Ben & Jerry's Homemade Ice Cream
brought a trademark action in the Southern District of New York to
put a stop to its naughty doppelganger, "Ben &
Cherry's XXX Ice Cream." Distributed by Caballero
Video, Ben & Cherry's is a series of pornographic films
with ice cream-themed titles such as "Boston Cream
Thigh," "Hairy Garcia" and "New York Super Fat
and Chunky." On Wednesday, the Southern District of New York
will hear arguments from Caballero as to why a preliminary
injunction should not issue against its continued distribution of
The Court has already granted a temporary restraining order
against Caballero. So is the outcome here a foregone
conclusion? Or will Caballero join the ranks of Larry Flynt, the Mitchell Brothers and other porn-producing
First Amendment anti-heroes? Barring settlement, the outcome
will likely depend on whether Caballero's videos are considered
legitimate trademark parodies or just bad puns.
Trademark parodies are hardly virgin territory for the porn
industry, but they were not always recognized as a legitimate form
of First Amendment expression. For example, in the 1979 case
of Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F. 2d 200 (2d Cir. 1979), the Dallas Cowboys
Cheerleaders sued the distributors of the adult film classic Debbie Does Dallas for trademark
infringement of the cheerleaders' well-known costumes and
dilution under New York State law. The distributor argued that the
film was a parody protected by First Amendment principles, and that
there was no confusion because no reasonable person would believe
that the actual Dallas Cowboys Cheerleaders were associated with
the film. The Second Circuit rejected these arguments out of hand
and held that:
Indeed, it is hard to believe that anyone who had seen
defendants' sexually depraved film could ever thereafter
disassociate it from plaintiff's cheerleaders.
But times change, and circuits sometimes disagree.
In LL Bean Inc. v. Drake Publishers, Inc., 811 F.
2d 26 (1st Cir. 1987), the First Circuit refused to follow the
Debbie Does Dallas opinion and instead held without hesitation that
High Society magazine's parody of the L.L.
Bean catalogue, entitled "L.L. Beam 's
Back-To-School-Sex-Catalog," was protected First Amendment
Today, parody remains a common law defense to trademark
infringement and a statutory defense to trademark dilution. Whether a work is
protected parody will often depend on the likelihood of confusion
analysis. Put another way, it's not infringement if the
consumer is in on the joke. For example, in Burnett v. Twentieth Century Fox Film Corp.,
491 F. Supp. 2d 962 (C.D. Cal. 2007) sued Twentieth Century Fox
over her depiction as a cleaning lady in a porn shop in an episode
of the Family Guy. The Central District Court of
California agreed with Burnett that the depiction was
offensive, but held that the offensive nature of the episode was
precisely why it was protected parody. The court stated:
"The more distasteful and bizarre the parody, the less likely
the public is to mistakenly think that the trademark owner has
sponsored or approved it."
But none of this is to say that Ben & Cherry's is
automatically protected. In order to be a parody, a work must
not simply use a mark to call attention to itself, but must use it
in order to comment on, criticize or ridicule the mark itself or
its owner. Otherwise, it is not a parody. For example, in Dr. Seuss Ent., L.P. v. Penguin Books USA,
Inc., 109 F.3d 1394 (9th Cir. 1997) the Ninth Circuit held that
a book about the OJ Simpson trial, which mimicked the style and
cover of the Cat in the Hat, was not a protected parody. Dr.
Seuss was not the target of the book -- OJ Simpson was. The
book was simply using a pun about the Dr. Seuss mark to call
attention to itself.
So Caballero Video's fate may turn on whether the Ben &
Cherry's series is a protected parody about Ben &
Jerry's Homemade Ice Cream or simply a bad pun. Do these
films actually comment, criticize, or in some way ridicule the ice
cream company? I hope there's a popcorn maker in the
judges' lobby, because the only way to tell will be to watch
every single one of them.
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There are two types of taglines or slogans companies typically seek protection of, taglines tied to an advertising campaign or sales of a good or service, and taglines or slogans that are on merchandise intended to invoke or amuse people and drive them to purchase the merchandise.