Stop copying me! Stop copying me! Imitation is the sincerest form of flattery. Except when someone sees it as juvenile trolling or an infringement upon their corporation’s name or logo image, in which, they’ve invested large amounts of time, money, and company resources. Cases of the latter tend to be the instances where legal entanglements ensue. Both parties end up in a courtroom with each side attempting to persuade the judge to rule in their favor. If the offending party ends up losing the case, the financial repercussions alone can be devastating. Definitely a more consequential outcome than being yelled at to stop pestering your sister.
According to the federal courts, “For trademark purposes, “[a] ‘parody’ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner…A parody must convey two simultaneous—and contradictory—messages: that is original, but also that it is not the original and is instead a parody…parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.”
Parodies have protections under trademark law in the U.S., but they are not blanket rules, and each case has to be analyzed individually to determine whether or not the accused party has indeed infringed upon a registered trademark. Even before the modern cannabis industry began procuring famous brand labels to modify and attach to their product, trademark and copyright infringement cases were making their way in and out of American courtrooms for decades. The laws that were, in the past, applied to businesses in no way associated with the marijuana industry are now starting to be directed at cannabis companies. Companies from seed to sale, who have decided to toe the trademark line over the past few years. It’s something that is to be expected as the versatile plant steps out from the shadows of the underground world and gains legal status in an ever-increasing number of states across the nation. Caution is advisable when tempting fate in the realm of parodies of established marks.
Hershey vs. TinctureBelle & Conscious Care Cooperative
In 2014, The Hershey Company filed a federal trademark infringement lawsuit against Colorado-based cannabis product manufacturers, TinctureBelle LLC, and TinctureBelle Marijuanka LLC. In the lawsuit, Hershey alleged that the company’s edible packaging for their Ganja Joy, Hasheath, Dabby Patty, and Hashees edibles too-closely resembled that of their own products, Almond Joy, Heath Bar, York Peppermint Patties, and Reese’s Peanut Butter Cups.
Also in 2014, Hershey filed a separate lawsuit against the Conscious Care Cooperative in Seattle, Washington after learning that the dispensary was selling Reefer’s Peanut Butter Cups and Mr. Dankbar edibles. In both of the candymaker’s lawsuits, the offending companies agreed to discontinue selling the parody products and destroy any remaining inventory. TinctureBelle’s settlement also barred the company from making “false or disparaging statements” about The Hershey Co. and required them to take down a website asking for legal defense funds.
Starbucks vs. Hitman Glass
In June 2016, the Starbucks Corporation raised a lawsuit against Hitman Glass for manufacturing and marketing dab rigs in the shape of the famous plastic dome-topped Frappuccino cups; complete with a green straw for the mouthpiece. The side of the rigs also bore a parody version of the Starbucks mermaid logo in frosted glass. In the suit, Starbucks claimed that glass artist James Landgraf and the online Hitman Glass store stole their intellectual property and “willfully intended to create an association with the Starbucks Marks and to capitalize on the success and popularity of the Starbucks Marks to sell products…Starbucks has made significant investments to develop our brand and intellectual property over the past 45 years. We have an obligation to protect our intellectual property from infringement in order to retain our exclusive rights to it.” When the trial date for the case came around, Landgraf was absent from the courtroom, and consequently, the judge ruled in favor of Starbucks by default. As part of the ruling, the glass artist was ordered to pay Starbucks $410,580 in damages.
Toronto Maple Leafs vs. Snoop Dogg
When rapper Snoop Dogg filed the first of multiple trademark applications with the U.S. Patent and Trademark Office in 2015 for his company Leafs By Snoop, the Toronto Maple Leafs objected to his logo and use of the word ‘Leafs.’ Feeling that there were enough similarities between the two leaf-based logos, the Maple Leaf Sports & Entertainment (MLSE) filed for and was granted, a 90-day request to investigate the trademark registration in June 2016. Over a year later, there is little-to-no evidence of the MSLE pursuing the case any further.
Gorilla Glue vs. GG Strains
In 2012, Nevada medical cannabis cultivator, Josey Wales was busy trimming a new plant when he got a phone call. Upon picking up, the resin that had accumulated on his hands quickly formed a tight bond between his skin and the phone. The strain he was trimming was a mix of Sour Dubb, Chocolate Diesel, and Chem’s Sister, and became known as Gorilla Glue #4 thereafter. Upon its release to the public, it was a hit with the cannabis-consuming crowd and quickly became a very popular strain.
But on March 24, 2017, the Ohio-based Gorilla Glue Company filed a 140-page federal trademark infringement lawsuit against GG Strains LLC. In the suit, they claim “trademark infringement, dilution, unfair competition, and cybersquatting,” and accuse the defendant of “unlawfully advertising and selling products and services under a confusingly similar name to Gorilla Glue’s trademarks, in violation of Gorilla Glue’s trademark rights.”
The Gorilla Glue Company was clear that the complaint had nothing to do with cannabis itself, but more with the fact that the brand name they’d invested over two decades into had been diluted. They state “This lawsuit is not a comment on any federal or state policy matters, medical or pharmaceutical issues, or choices in recreation.” As evidence, the suit includes screenshots of a Facebook search for ‘gorilla glue’ that yielded mixed results of cannabis flower images and pictures of things repaired with Gorilla Glue. An attorney for the adhesive company notes that GG Strains should have to abide by the same branding standards as other companies, stating that they intentionally traded on Gorilla Glue’s quality adhesive reputation.
The Gorilla Glue Company has allegedly agreed to settle the case out of court, but the proprietors of GG Strains have stated that they are not ready to simply roll over. In a statement on released on gorillaglue4.com, VP of Marketing, Cat Seven says “We are asking for a change in venue due to major health concerns for Josey, and no jurisdiction in Ohio, the Adhesive company baited us to file in their home conservative state, they played very dirty to get jurisdiction in Ohio.” Until the case concludes, they are marketing the controversial strain under the name “GG #4.”
ISU Students vs. Iowa State University
In 2014, attorneys for Iowa State University students, Paul Gerlich and Erin Furleigh filed a federal lawsuit with the U.S. District Court after the school banned them from using its Cy the Cardinal mascot on NORML t-shirts in 2012. A photo featuring the group’s then-president holding one, and wearing another one of the red t-shirts was printed in the Des Moines Register and didn’t sit well with some school officials who thought the logo made it look like they endorsed marijuana.
In a statement, spokesman John McCarroll said “Student organizations at Iowa State University have the right to express their views, but they can’t attribute those views to the University…Iowa State has the right and obligation to manage the use of our university trademarks.”
In January 2016, the U.S. District Court ruled in favor of the plaintiffs, stating that “Defendants are hereby permanently enjoined from enforcing trademark licensing policies against Plaintiffs in a viewpoint discriminatory manner and from further prohibiting Plaintiffs from producing licensed apparel on the basis that their designs included the image of a similar cannabis leaf.”
Since the initial ruling, the university attempted to appeal the decision twice in 2017. After losing the first appeal of the case in February, they tried again and lost again in June. After the appeals court heard the case for the second time, they decided that the administrators violated student rights and could be sued for damages.
Girl Scouts vs. Magnolia Dispensary
On January 6, 2017, the Girl Scouts USA issued a cease and desist order to the Magnolia medical cannabis dispensary in Oakland, California. The letter demanded that they immediately stop selling any products branded as Girl Scout Cookies, a name to which the non-profit company has exclusive rights.
Within an hour of receiving the notice, products were renamed, pulled from shelves, or returned to suppliers with a memorandum explaining the situation. Executive director, Debbie Goldsberry admitted that it was a clear trademark issue and that she regretted not taking action sooner.
Girl Scouts USA has also reportedly visited at least one dispensary in Colorado. A representative was said to have shown up at a marijuana outlet and informed the owner of the company’s request that “Girl Scout Cookies” and other associated names such as “Thin Mints” no longer be used.
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Take a look around your favorite grocery store, department store, or another retailer that stocks everyday items. You may notice that parody brands are virtually nowhere to be found. Generics have mastered the art of looking similar enough to the major brand to convey what the product is and what it’s supposed to be imitating without actually infringing upon anyone’s intellectual property. But the majority of brands on the shelves have distinguishing logos, trademarks, slogans, product names, and packaging that all help to establish and convey their own unique identity. For example, the words super, krazy, and gorilla have all been successfully used by separate companies to express the strength of their adhesive product without crossing any legal barriers.
And while it takes a certain measure of artistic skill and creativity to alter an existing logo image and parody it, it must reasonably take some greater amount of thought and ability to create something from nothing. Cliché as it may be, the notion that cannabis increases creativity and expands the imagination is widely accepted; and not without reason. Artists, writers, musicians, and other creative types are known for using marijuana for its inspirational properties. Perhaps some of that inspiration could be used to help avoid future legal problems.
Though imitation may be a sincere form of flattery, large corporations continuously demonstrate through lawsuits and legal orders that they aren’t prone to seeing it as a tribute. They are more than likely going to take it as intellectual theft when another company, cannabis-producing or otherwise, takes a mark that time and money have been invested in and makes it their own. A logo is part of a company’s identity, so when they raise a lawsuit, they are alleging that that identity has, to at least some degree, been stolen. It’s not an unreasonable idea, and it has legal backing.
Any business choosing to parody an existing brand name or logo rather than design their own from scratch would be wise to proceed with caution. It’s not impossible to do, but a company with an established brand and a registered mark is likely going to have an easier time in court protecting their intellectual property than the defendant who has to prove that they didn’t steal it. As more states decide to legalize cannabis, the companies within the industry will have to play by the same branding rules that the rest of the retail brand world does. And after all, knowing the rules is a big part of winning the game.
