Ben and Jerry’s Ice Cream has always been a company with a sense of humor.  As Ben & Jerry’s spokesman Sean Greenwood says, “We just do fun.”  With flavors like “Chubby Hubby,” “Cherry Garcia,” “Phish Food,” and “Imagine Whirled Peace,” who could disagree?  At times, the company has even been accused of having a little too much fun.  Some of its racier-named flavors include “Karamel Sutra,” and, of course, the controversial “Schweddy Balls.”  The latter flavor was inspired by an Alec Baldwin SNL skit and opposed by groups like One Million Moms, which said, “[t]he vulgar new flavor has turned something as innocent as ice cream into something repulsive.”

Perhaps attracted to the scent of something innocent and pure being defiled, a North Hollywood pornographer called “Caballero Video,” recently released some stomach-churning titles under the moniker, “Ben & Cherry’s.”  The pornographer’s lascivious exploits include:  Harry Garcia (Cherry Garcia); Boston Cream Thigh (Boston Cream Pie); Chocolate Fudge Babes (Chocolate Fudge Brownie); New York Super Fat & Chunky (New York Super Fudge Chunk); and Peanut Butter D-Cups (Peanut Butter Cup).  The complete list of saucy titles (including those too racy for even this blog to reprint) is available in this court order.  And of course, pictures of the films’ bawdy packaging that couples the traditional pastoral Ben & Jerry’s theme with NSFW pictures are available for those who “have learned to work the Google on the Internet machine.” (Note:  That link points to the IMDB page for Blades of Glory, not pornography.  What kind of blog do you think this is?)

Now, Ben & Jerry’s has filed suit in New York federal court against Caballero Video, alleging federal trademark dilution, federal trade dress dilution, federal trademark infringement, federal trade dress infringement, federal unfair competition, common law unfair competition, dilution and injury to business reputation, and deceptive trade practices.  The Court has already issued a temporary restraining order, ordering Caballero Video to stop offering the 10 allegedly infringing titles, remove all online mention of the X-rated films, and stop using the trademarked Ben & Jerry’s packaging — at least until a final decision is rendered in the case.

But did the Court err in issuing the temporary restraining order?

Looking at Precedent

Ben & Jerry’s probably filed the lawsuit in New York because that’s where Ben & Jerry’s parent company, Unilever, is located.  Another reason it may have done so is to take advantage of a potentially important case which potentially has precedential value to a New York federal court.

In 1979, the Second Circuit Court of Appeals decided a well-known case called Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.  The case involved a movie theatre which began showing a film called “Debbie Does Dallas,” described in the words of the court as:

“…a gross and revolting sex film whose plot, to the extent that there is one, involves a cheerleader at a fictional high school, Debbie, who has been selected to become a ‘Texas Cowgirl.’  In order to raise enough money to send Debbie, and eventually the entire squad, to Dallas, the cheerleaders perform sexual services for a fee.  The movie consists largely of a series of scenes graphically depicting the sexual escapades of the ‘actors.’  In the movie’s final scene Debbie dons a uniform strikingly similar to that worn by the Dallas Cowboys Cheerleaders and for approximately twelve minutes of film footage engages in various sex acts while clad or partially clad in the uniform.  Defendants advertised the movie with marquee posters depicting Debbie in the allegedly infringing uniform and containing such captions as ‘Starring Ex Dallas Cowgirl Cheerleader Bambi Woods’ and ‘You’ll do more than cheer for this X Dallas Cheerleader.’  Similar advertisements appeared in the newspapers.”

The Pussycat Cinema defendants argued that there was no trademark infringement because there was “no likelihood of confusion” — the sine qua non in trademark infringement cases.  The defendants also argued that their work was entitled to the protection of several First Amendment concepts such as parody and fair use.  The Court of Appeals rejected these defenses based reasoning that fluctuated between poor and non-existent and affirmed the district court’s grant of a preliminary injunction.

At first blush, it seems like Caballero Video is in big trouble.  Not only did Ben & Jerry’s just win a temporary restraining order against Caballero Video, but the Dallas Cowboys case — one of the most factually similar cases on the books, from the jurisdiction where Ben & Jerry’s filed — affirms the exact type of relief Ben & Jerry’s just won.

On closer inspection, however, it has been said that, “the continued validity of the Dallas Cowboy holding is questionable.”  In a nutshell, the Dallas Cowboys case may have provided a comforting result in a case involving a decidedly icky use of one of America’s most beloved brands (sounds familiar…), but it also gave short shrift to the First Amendment and conflated trademark dilution law with trademark infringement law.

Then Who Should Win?

With respect to trademark infringement, is anyone really going to believe that Ben & Jerry’s sponsors or is affiliated in any way with a pornographic film?  Even if Caballero Video uses Ben & Jerry’s distinctive packaging on the cover?

No.  Remember, although parody is not a defense to trademark infringement, it is relevant to show that there is little likelihood of confusion. And here, these pornographic parodies are not going to confuse anyone.  (Trust me; I’ve seen the film packaging.)

So Ben & Jerry’s should probably lose its trademark and trade dress infringement claims.

Trademark dilution is more complicated.  To prove dilution by tarnishment, Ben & Jerry’s needs to prove that the reputation of its trademarks will be harmed.  Typically, this occurs when a defendant uses the same or similar marks in a way that creates an undesirable, unwholesome, or unsavory mental association with the plaintiff’s mark.  And I can scarcely think of anything more undesirable, unwholesome, or unsavory than the phrase “Hairy Garcia.”

Unsurprisingly, even in the absence of such (absolutely disturbing) punnery, courts considering dilution claims have shown consistent squeamishness about pornography.  For example, when Victoria’s Secret sued the proprietors of a small shop called Victor’s Little Secret — which sold “a wide variety of items, including adult videos, ‘adult novelties,’ and lingerie — the court described the situation as “a classic instance of dilution by tarnishing (associating the Victoria’s Secret name with sex toys and lewd coffee mugs)….”  I know, right?  The nerve of tarnishing VS by associating it with s-e-x!

But not so fast.

Trademark dilution does not apply to “non-commercial speech.”  That includes expressive works such as films.

So do pornographic films count?  In at least one case, an animated pornographic film called Starballz, which parodied George Lucas’ Star Wars, was considered to be a parody and a form of non-commercial speech “not affected by the Federal Trademark Dilution Act.”  That court cited to the example of the “Barbie Girl” song which (allegedly) tarnished the “Barbie” mark through its sexual or degrading lyrics, but which also fell within the “noncommercial use of a mark” exception to the federal dilution statute, and so was not subject to a trademark dilution claim.

If the New York court follows the reasoning of the more recent and better-regarded “Barbie Girl” case, rather than the highly-questioned “Debbie Does Dallas” case, Caballero Video could soon have its “Ben & Cherry” series back on the shelves of a very seedy corner video store near you — and I don’t even want to know what title they come up with as a play on “Chunky Monkey.”