Best of 2007: Trademark “crime”?

Published November 20, 2007.

Anthony Tambourino reports this odd item:

Hershey’s at it again (click here)

Hershey, the largest candy maker in the U.S., has filed suit inIndianapolis, charging a Pennsylvania apparel-maker with infringing on its trademark.

Bloomberg News reports today that the suit against X-it! Activewear Inc. accuses the company of selling counterfeit products and, under Indiana’s Crime Victims Act, Hershey is seeking triple damages.

Crime Victims Act — trademark infringement?

I don’t find the concept entirely offensive. Some kinds of counterfeiting, such as raw knockoffs and counterfeits, really are crimes, and should be treated as crimes. Using victim statutes this way could be a fair balance to the tendency of law enforcement to ignore this stuff.

But the facts here don’t seem to bear the use to which Hershey — which tends to be litigious, and heavy-handed — is putting the law. More from the Indianapolis Star:

Hershey claimed X-it! made a derogatory parody of Hershey’s famous slogan for its Almond Joy candy bar: “Sometimes you feel like

10 Years of LIKELIHOOD OF CONFUSION®
10 Years of LIKELIHOOD OF CONFUSION®

a nut! Sometimes you don’t!”

Hershey was issued a registered trademark for those words in 1990.In the suit, Hershey says X-it! changed the word “nut” to a derogatory term used to describe a sexually promiscuous person, and sold that saying for use on T-shirts.

Do they mean “slut“? Boy, that is some family newspaper — bless the Midwest!

But this is not a crime. This sounds like a trademark infringement by a company that, like so many others, does not understand the difference between parody and satire. Criminalization of this would surely be unconstitutional, as would, I think, application of a civil law premised on criminality.

Why would Hershey’s lawyers want to make such a sticky, chocolatey mess of what could be, in other contexts, a very useful remedy?

UPDATE:  Case was settled on July 1, 2008 (per PACER).  No details, of course.

Ron Coleman

I write this blog.