Ice Cream Giant Ben & Jerry's Asks Court to Recall Porn

Sep 5, 2012 4:45 PM PST

NEW YORK — Ben & Jerry's is seeking a recall, but this time it's not ice cream — it's porn.

Caballero Video was sued by the ice cream giant this week after the adult studio debuted a line of porn videos marketed under the name "Ben and Cherry's."

The trademark infringement and trade dress dilution suit, which seeks a temporary restraining order and recall order, points out that not only is the "Ben & Jerry's" name allegedly being illegally exploited, but so are its ice cream flavor names and artwork in Cabellero's videos and boxcovers.

Ben & Jerry's, a brand founded in 1978 and now a division of the British-Dutch Unilever conglomerate, said in the suit that Caballero has created some confusingly similar names, including "American Cream," borrowed from Ben & Jerry's flavor "American Dream"; "Hairy Garcia" like its "Cherry Garcia" flavor; and "New York Super Fat and Chunky" similar to its "New York Super Fudge Chunk."

Ben & Jerry's counsel said the restraining order and recall is justified particularly since Caballero "will only suffer minor inconvenience because the infringing Ben & Cherry's DVDs were only recently released."

"However, if defendants activities are not enjoined, plaintiffs will suffer incalculable and irreparable damage to the plaintiff's Ben & Jerry's brand, goodwill and reputation as a result of the unsavory association with defendants and their products," the suit said.

Ben & Jerry's attorneys further said that parody is not a defense in this case because a fair-use defense applies only where the use of another's mark offers commentary or criticism of the parodied mark, rather than where a defendant's use merely market a product.

"The parody defense fosters social commentary, criticism and creative expression for its own sake, but it does not protect a purveyor of pornography who chooses to appropriate the goodwill of a famous brand to boost its sales," Ben & Jerry's counsel said.

The suit, filed at U.S. District Court in New York, seeks the recall and restraining order, as well as unspecified  damages and attorneys fees.

Caballero Video executive Daniel Mamane, who is named in the suit, did not immediately return XBIZ calls for comment.

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