Ben & Jerry’s fights for naked truth

Ben & Jerry’s Ice Cream is not being so sweet to a film company it says is infringing on its trademarks.

A Massachusetts court has granted a request from Ben &  Jerry’s for a temporary restraining order against a company that makes pornographic films.

The ice cream company took issue with Cabellero Video for giving its films titles that were a little too similar to trademarked ice cream flavors.

The film company took names like “Chocolate Fudge Brownie,” “Peanut Butter Cup” and “Boston Cream Pie” and gave them a racy twist — “Chocolate Fudge Babes,” “Peanut Butter D Cups” and, yes, “Boston Cream Thighs.”

Whether ice cream plays a role at all in these cinematic endeavors is unknown but, needless to say, the Vermont-based ice cream company is not pleased about the 10 DVDs that Cabellero has released in its series.

Ben & Jerry’s argues that the porn packaging even sports the company’s signature cows and clouds design from its ice cream cartons. The ice cream maker said in a statement that it

acted to protect its company, brand, products and image. This is a clear cut issue where the video company is imitating Ben & Jerry’s logo, flavor names and trade dress to sell their products. We have taken prompt legal action to stop the manufacturing and sale of these materials.

The film company is due in court Tuesday to show cause as to why a permanent injunction should not issued.

Law blog roundup

Welcome to a new week and the return of double-digit temperatures. Here are a few news items to accompany your Monday.

SCOTUSblog examines how cable networks got the Affordable Care Act decision wrong.

– Be careful when tweeting in Bahrain.

– Lawyers for the president’s campaign say “‘‘O’ no you don’t” to merchandise website.

– Supreme Court receives constitutional challenge to the federal Defense of Marriage Act’s benefits exclusion.



Denise Whiting, meet Pat Riley

Most of us basketball fans know Pat Riley as the former head coach of the Los Angeles Lakers, New York Knicks and Miami Heat. Think Armani suits, hair gel, “Showtime” and a decidedly less elegant brand of hoops once he moved east. He’s also the current Heat team president, the man responsible for luring LeBron James and his talents to South Beach.

The guy’s also won five NBA titles and is in the sport’s Hall of Fame, so even an avowed Boston Celtics fan like me pays him his proper respects.

What does this have to do with Denise Whiting and “Hon,” the local term of endearment she’s trademarked to the consternation of many around town? Well, Riley’s also behind a corporate entity known as Riles & Co. Inc. that first trademarked the phrase “three-peat” back in 1989 and continues to hold the trademark today. It’s active for shirts, jackets and hats, meaning anyone selling memorabilia with the phrase needs to kick some coin to Riles & Co.

Its attorney, David R. Shaub of Los Angeles-based Shaub & Williams LLP, will no doubt see to that. Shaub’s bio describes him as an experienced intellectual property and business litigator and has a sub-speciality in patent and transnational litigation, having litigated over 1,000 cases and tried over 100.”

Riley’s move set off similar derision in sports circles back in the late 1980s.

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The search for Funky Black Chick

Remember the federal trademark infringement case of Funky Brown Chick v. Funky Black Chick?

Well, for all the publicity that attended the lawsuit’s filing in November, next to nothing has happened since.

Not that the four big-firm lawyers who have entered their appearances on behalf of New York writer Twanna Hines, their paralegal, two process servers and the U.S. Postal Service have been idle.

For nearly four months, Funky Brown Chick Corp. or its agents have tried to officially notify Funky Black Chick Yesha Callahan of the pending suit against her. But despite following up numerous home and work address leads and eventually reaching Callahan by phone, they have not properly pinned her down. (Maybe “fungkeblakchik” could change her name to Elusive Black Chick and the whole thing could be settled?)

With a Mar. 13 deadline looming, Hines’ attorneys at Fish & Richardson P.C. filed a motion Monday for alternative service — by the U.S. Marshals! — so they can get on with the substance of their claim against the Odenton defendant.

If you thought this was a frivolous dispute between two bloggers that has spawned a sillier cat-and-mouse game, think again: the plaintiff’s motion detailing the exhaustive efforts to serve Callahan is 132 pages long!

Make no mistake: when it comes to policing her brand, this plaintiff’s not faking the funk.

BRENDAN KEARNEY, Legal Affairs Writer

It’s no secret: ‘Tarnished’ Victoria wins trademark suit

The name was changed eight years ago, and even a Supreme Court victory in 2003 didn’t bring it back. Now, a federal judge has ordered “Victor’s Little Secret” to remain under wraps forever.

To recap: Victor’s Little Secret was an adult novelty and lingerie store operated by Cathy and Victor Moseley in Elizabethtown, Ky., not far from Louisville. Mega-retailer Victoria’s Secret learned of the store and, in true Victorian fashion, was not amused. It went to court and obtained an order blocking the Moseleys from operating under Victor’s name.

The Moseleys changed the name to Cathy’s Little Secret. But they also fought all the way to Supreme Court, which ruled in their favor and remanded the case to the 6th Circuit, with instructions to send it back to the federal court in Louisville for a new ruling.

A funny thing happened on the way to the remand, though. For reasons that aren’t specified, the 6th Circuit sat on the case for awhile. For FOUR YEARS, in fact — until July 2007.

Meanwhile, due in large part to the Supreme Court’s 2003 decision, Congress rewrote the law in a way more to Victoria Secret’s liking. The Trademark Dilution Revision Act took effect in 2006.

Thus, by the time the 6th Circuit sent the case back to the trial court, the rules had changed. While the Moseleys cried foul, U.S. District Judge Charles Simpson [PDF] applied the new standard and ruled in favor of Victoria’s Secret.

“The use of the remarkably similar ‘Victor’s Secret’ or ‘Victor’s Little Secret’ in connection with the sale of intimate lingerie along with sex toys and adult videos tarnishes the reputation of the Victoria’s Secret mark,” Simpson wrote.

No word yet on whether the Moseleys will continue their fight.

BARBARA GRZINCIC, Managing Editor/Law