Originally posted 2007-11-20 15:57:39. Republished by Blog Post Promoter

Anthony Tambourino reports this odd item:

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 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.

By Ron Coleman

LIKELIHOOD OF CONFUSION blog author Ron Coleman is a member of Dhillon Law Group in their New York City and Montclair, New Jersey offices. He is a graduate of Northwestern University School of Law and Princeton University.

4 thoughts on “Trademark “crime”?”
  1. You are nto the only one wondering how this case fits under Indiana’s Crime Victim’s Statute. I have used the statute quite often and I know a little bit about trademarks, but I do not see the intersection. The Crime Victim’s Statute is more often called the Treble Damages Statute. It gets a lot of use for bad checks and conversion (it has a provision for attorney fees that common law conversion lacks). The citation for the statute is IC 34-24-3-1 (http://www.in.gov/legislative/ic/code/title34/ar24/ch3.html). I will try to post a table of the criminal statutes involved. I would like to take a look at the complaint but that will have to wait till Monday.

  2. Oh don’t get me started on that knee-jerk parody/satire distinction, a theory that might be relevant to copyright law but that shouldn’t be imported wholesale into trademark law, where there is an entirely different policy basis, Constitutional origin and statutory framework. There’s only one question – is there a likelihood of confusion? I am fairly sure that everyone gets that Hershey’s has nothing to do with the apparel.

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