"Ben and Cherry’s" Adult DVDs to be Destroyed - Fordham Intellectual Property, Media & Entertainment Law Journal
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“Ben and Cherry’s” Adult DVDs to be Destroyed

“Ben and Cherry’s” Adult DVDs to be Destroyed

Earlier this month, Ben and Jerry’s filed suit against pornography producer Rodax Distributors, known to the public as Caballero Video, alleging trademark and trade dress infringement and dilution, tarnishment of its business reputation, and other related claims.  Rodax created a line of ten adult videos named “Ben and Cherry’s,” which featured titles imitative of Ben and Jerry’s flavor names and packaging graphics similar to the famous ice cream company’s.  On September 11, 2012, the defendants consented to an injunction which orders the recall of its DVDs, and the destruction of all products, labels, and marketing materials that allegedly infringe on Ben & Jerry’s trademarks.  The federal consent order describes the process of eliminating the films from the marketplace.

Previous to the consent injunction, U.S. District Judge Kaplan had issued a temporary restraining order halting the sale of the films.  The injunction on consent is a strong indication that Ben and Jerry’s is likely to win the pending trademark suit, as likelihood of success on the merits is a central requirement for a preliminary injunction.

The line of films to be destroyed features titles such as “New York Super Fat & Chunky,” a play on “New York Super Fudge Chunk,” “Hairy Garcia,” which spoofs “Cherry Garcia,” and “Americone Cream,” which mocks “Americone Dream.”  (A full list of the spoofed names may be found in the complaint, which may be accessed on Westlaw at 2012 WL 3835830).

The packaging for the videos looks like photoshopped Ben and Jerry’s labels, featuring the same font and the same background graphics of cows, green pastures, and fluffy clouds.  The only major differences are, of course, the addition of nude men and women, and the replacement of wholesome slogans with racy ones.  A recent NYPost.com article displays a censored (but still quite risque) example of Ben and Cherry’s packaging.

Ben and Jerry’s complaint alleges trademark and trade dress dilution and infringement of its famous federally registered Ben and Jerry’s trademark and logo, its “Vermont’s Finest” mark, flavor marks, and inherently distinctive trade dress.  Ben and Jerry’s complaint includes a trademark infringement claim under Section 32(1) of the Lanham Act, and trade dress infringement and unfair competition under Section 43 of the Lanham Act.  The lack of proximity between the marketing channels and relatedness of the goods is notable.  It is doubtful that there would have been any likelihood of confusion in violation of Section 32(1) for a consumer looking for Ben and Jerry’s ice cream in the supermarket.  However, the trademarks and trade dress used by the alleged infringer may possibly be in violation of Section 43, which specifies confusion as to the sponsorship or affiliation of the goods.  As disparate as the ice cream and pornography industries may be, the striking similarity of the marks, logos, graphics, and slogans may confuse an unsuspecting consumer as to whether Ben and Cherry’s is affiliated with Ben and Jerry’s.

Ben and Jerry’s trademark dilution claim is also particularly interesting.  Ben and Jerry’s has a strong argument that Ben and Cherry’s could harm its reputation by tarnishing its mark.  Trademark tarnishment arises if a product sold by an alleged infringer is distasteful or unsavory, or may cause the original mark to lose its ability to serve as a “wholesome identifier” of the mark owner’s product.  Although Ben and Jerry’s itself has toed the line with flavor names such as “Karamel Sutra” and “Schweddy Balls,” Ben and Cherry’s “Boston Cream Thigh” arguably crosses the line of wholesomeness.  Whether Ben and Cherry’s blurs the Ben and Jerry’s marks, however, seems somewhat debatable.

An issue in a trademark blurring claim is whether an association between marks is likely to impair the distinctiveness of the famous mark.   The similarity between the Ben and Cherry’s marks and the Ben and Jerry’s marks are clear, Ben and Jerry’s has acquired distinctiveness as a famous mark and was engaging in exclusive use of the marks, and Cabellero clearly intended to create an association with the famous marks.  However, it is debatable whether a consumer would have a weaker association between the Ben and Jerry’s trademark and Ben and Jerry’s Ice Cream after encountering Ben and Cherry’s.  After all, ice cream and adult films are very, very different.

The consent injunction can be found here, and the original complaint is available on Westlaw at 2012 WL 3835830.

Nancy Liu

Nancy Liu is a 2L at Fordham, graduating in February 2014. She was born and raised in New York City, and attended CUNY Hunter College for her undergraduate studies. In her free time, she enjoys cooking, fitness, and playing with her toddler.