Keep It to Yourself: Just Desserts?
I scream, you scream, we all scream for hardcore pornography!
Hippie royalty Ben & Jerry were not amused when L.A. smut merchants Caballero Video released a series of dirty DVDs with names and packaging mimicking their wholesome family treats. The naughty flicks have titles like ‘Boston Cream Thighs, ‘New York Super Fat and Chunky’ and ‘Hairy Garcia.’ [Cue my teenage daughter: 'Ewww!'] The line of adult features is promoted under the name “Ben and Cherry’s XXX Ice Cream” (‘Porno’s Finest’) and looks like this:
A lawsuit ensued. I hear my smart, attentive and attractive readers collectively breathing, “So what? Isn’t this just garden variety parody?” Answer: NO. Let’s briefly talk about trademark dilution, specifically tarnishment.
Ahem. Trademark dilution is “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” In plain English, dilution law protects a trademarked product when someone makes a rip-off product, whether or not the public is likely to mistake the rip-off for the original, or whether the rip-off competes with the legit products of the trademark owner. In this case, Ben and/or Jerry make ice cream, not porn movies, so the XXX videos don’t interfere with their business. And, no one would believe that the flesh flicks were shot by the elves in Vermont instead of in some seedy back lot in the Valley. So why the suit? Because of tarnishment, brothers and sisters. Our boys dropped the bongs, strapped on their Birkenstocks and headed to District Court in Manhattan to prevent their popular brand from being tarnished.
A trademark may be “tarnished” when it is shown in an unflattering or unsavory context. (Tarnishment also occurs with knock-offs; the Rolex brand, for example, might be damaged if someone hawked a similar-looking but crappily-made watch line called “Rolecks,” but that’s a different column for a different day. Let’s focus on porn, shall we?) On this particular branch of the trademark tree, the issue is not consumer confusion but potential harm to the trademark owner’s reputation and public image.
Our boys’ federal complaint accused Caballero of making “exploitative, hardcore pornographic films” with titles and themes based on Ben & Jerry’s “well-known and iconic” ice cream flavors. They also griped that the DVD packaging included the familiar cows, green grass and clouds that we’ve come to associate with frozen goodness. And maybe also Frisbees, patchouli oil and bootleg Dead tapes.
I said we’d talk briefly about tarnishment because this sort of infringement gets shot down quickly. The general rule is that “a famous mark is tarnished when its mark is semantically associated with a new mark that is used to sell sex-related products.” That was the holding in a case called Moseley v. V Secret Catalogue, Inc. Ma and Pa Moseley owned a shop in Kentucky called ‘Victoria’s Little Secret’ that sold adult products and porn videos. The preeminent sexy lingerie company sued the Moseleys for all conceivable varities of trademark infringement, including dilution and tarnishment, and the case made it all the way to the Supreme Court, as the saying goes. Victoria’s Secret obtained an injunction barring the Moseleys from using the name ‘Victoria’s Little Secret’ and that’s the same result Ben and Jerry got when they went to court: the sale of Ben and Cherry’s porn movies was enjoined. No more Peanut Butter D-Cup for you, monkey boy!
I’m thinking Benjamin and Jerome may be taking themselves too seriously. Of course, no one wants their organic family business sullied by an association with skanky skin flicks. On the other hand, B&J’s pints of Karamel Sutra and Bonnaroo Buzz — and their respective risqué double entendres — aren’t being yanked off the shelves. The moral? Not sure there is a clean moral this time around. Let’s just say if you decide to shoot and sell a home movie, don’t title it ‘Chubby Hubby’…