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November 2012 - What’s in a Name?

by Richard W. Millar, Jr.

The answer to the question posed by the title is: a lot.
When I was a young and new attorney, the firm represented a large ticket company that made tickets for all types of companies and attractions, such as Disneyland, and it also made those rolls of tickets that are numbered and are used in drawings or raffles. For reasons which were not clear to me then, and are less clear to me now, a porn movie company used those tickets to advertise its, shall we say, wares. In the center of the ticket which, if I recall correctly, was blank on the rolls that were customarily sold, the porn distributor inserted pictures showing various people doing the various things people in that industry do for fun and money. The one thing that the distributor did not do, however, was elide the name of the ticket company which was shown in very small print along the side of the ticket or, in this case, under the picture. That, in turn, led the ticket company to come to us in high dudgeon claiming its name was being besmirched and concerned that people would think that these “tickets” were the work of the company. They asked us to sue and, of course, we did. Before I could draft the complaint, however, we had to find out who exactly was doing this, which was, as you might suspect, not the easiest task in the world. Once the mystery identity was known, I had to draft a complaint in language that was a combination of specificity and delicacy. It may surprise some of you younger lawyers, but in those days, the late 60s, complaints had a lot more Latin and raw language was frowned upon. In any event, we got our injunction, the ersatz ticket printing was stopped, our client was happy, and the porn distributor went on to other promotional vehicles.
As the French would be fond of saying, if they could speak English: “The more things change, the more they stay the same.”
For years, I’m told (lest anyone erroneously conclude I’m writing from firsthand knowledge), the porn industry has often employed catchy, and I use that word in lieu of a better one, titles which are often parodies of well-known movies, books, and the like. As far as I am aware, and I was forced to spend countless hours of in-depth research for this article, the industry has not parodied brands of ice cream.
That is, of course, until now.
A couple of companies using the name Caballero Video have been distributing films whose names closely, but not exactly, mirror various flavors of Ben & Jerry’s Ice Cream. Ben & Jerry’s, which feels the same way about this as the ticket company did some forty years ago, did what every red-blooded Vermont-based gourmet ice cream maker would do: it sued in federal court. It needed to do so, according to the company, to protect its logo, flavor names, and trade dress to sell its ice cream products. (I thought the problem in this case was trade undress, but I digress.)
Unfortunately for inquisitive reporters like me, the complaint has been sealed. I gather that it may have been because, while the complaint was specific, it was also indelicate, or at least the attached exhibits were.
I confess to not being an ice cream devotee, and I am generally unfamiliar with the flavors offered by Ben & Jerry’s, but they apparently include Chocolate Fudge Brownie, Peanut Butter Cup, Boston Cream Pie, Cherry Garcia, Everything But The . . . , Late Night Snack, and New York Super Fudge Chunk. Ben & Jerry’s also claims the right to, not surprisingly, the name “Ben & Jerry’s” and “Vermont’s Finest.”
The day following the filing of the complaint, the district court issued a temporary restraining order restraining the Caballeros, so to speak, from using the designations “Ben & Cherry’s, Harry Garcia, Everything but the Butt . . . , New York Super Fat and Chunky, Boston Cream Thigh, Coconut 7 Lay-Her Bar, Peanut Butter D-Cups,” and some other names that I will not even attempt to slide by my editor, even though they are in a publically filed court order.
I always thought the likelihood of confusion in the marketplace was an issue in these kinds of things, and I remember worrying about it in the ticket case. I have a lot of trouble believing that people would mistakenly believe that a Vermont ice cream maker would also be a purveyor of pornographic DVDs even if, as Ben & Jerry’s contends, the DVD packaging featured clouds and cows. I, for one, have never seen DVDs of any kind in the frozen food section of either Ralph’s or Pavilions, but then again, I confess to being somewhat of an inattentive shopper.
As I write this, the ink is barely dried on the temporary restraining order, and I have no idea whether Caballero will mount, if you pardon the expression, a defense, but I certainly hope so because the entertainment value will be high no matter what the legal merit.
In the meantime, I am going to check out Baskin Robbins to see if there are 31 more titles for Caballero.

 
Richard W. Millar, Jr. is a member of the firm of Millar, Hodges & Bemis in Newport Beach. He can be reached at millar@mhblaw.net.

 
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