This case was brought by the Hormel Foods, makers of SPAM processed meat product, against Jim Henson Productions, producers of the Muppets based on allegations of infringement by the character Spa’am, a pig puppet.
HORMEL FOODS CORPORATION, Plaintiff, -against- JIM HENSON PRODUCTIONS, INC., Defendant.
95 Civ. 5473 (KMW)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
36 U.S.P.Q.2D (BNA) 1812
Decided – September 22, 1995
The Court opinion states:
This lawsuit is sparked by the prospective appearance of a new Muppet who joins Kermit, Miss Piggy and others in the movie “Muppet Treasure Island,” due to be released in about four months. The creators of the Muppets, Jim Henson Productions, Inc. (“Henson”), hope to provoke laughter by naming the new Muppet (an exotic, wild boar) “Spa’am”; they believe that the association between the exotic, wild boar and the tame, familiar luncheon meat, SPAM, will cause viewers to laugh. Hormel Foods Corporation (“Hormel”) which manufactures SPAM, finds nothing humorous in the association, and fears that the use of the Spa’am character will cause a drop off in the consumption of SPAM, and a drop off in the consumption of SPAM tee-shirts and other SPAM-related merchandise. Although Henson has urged Hormel, effectively, to “lighten up,” and to see the parody as a positive development for Hormel (especially in light of the fact that SPAM is regularly subjected to much more negative portrayals, Hormel insists on its right to a legal determination of whether Henson’s use of the Spa’am character and name are lawful.
Specifically, Hormel alleges that Henson’s proposed use of the Spa’am character and name in the motion picture and on related merchandise constitutes trademark infringement and false advertising in violation of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a) (1988). Additionally, Hormel raises state law claims of common law unfair competition, trademark dilution, N.Y. Gen. Bus. Law § 368-d (McKinney 1984), and deceptive practices, N.Y. Gen. Bus. Law § 349 (McKinney 1988). For the reasons stated below, Hormel’s claims are all denied.
Two of the dozens of examples of negative jokes involving SPAM submitted by Henson are noted below.
1) An article from the Austin American-Statesman describing “Spampers, one of the entries in Spamarama (an annual contest among cooks where the dishes must include SPAM), which “involved a mother and her 3-month old baby girl, a diaper pail and a SPAM [pate].” According to Spamarama’s founder, “A lot of the judges became ill.” (Def. Ex. W10, Austin American-Statesman, Mar. 30, 1995, at 61.)
2) An excerpt from the television cartoon “Duckman,” in which Duckman uncovers “the secret ingredient to SPAM.” What the secret ingredient may be is left to the viewer’s imagination as Duckman is shown at “Murray’s Incontinent Camel Farm” observing camels in diapers on a conveyor belt heading into what is, presumably, the SPAM factory. (Def. Ex. W5.)
As Henson notes, there are three issues before the court: (1) the use of Spa’am in the motion picture; (2) the use of the Spa’am likeness on merchandise; (3) the use of the Spa’am name on merchandise. With respect to the third issue, Henson has stated that it has shelved its past plans to use the Spa’am name on merchandise, pending a decision by this court as to their lawfulness. It has introduced several examples of how it would like to use the Spa’am name in the future. Hormel has objected to the court’s ruling on the third issue because Henson has stated that it has no current plans to use the Spa’am name on merchandise, absent court approval. Thus, Hormel argues, if the court were to reach the issue, it would be issuing an advisory opinion in violation of the “cases or controversies” clause of the Constitution. U.S. Const. art III, § 2, cl. 1. Because the alternative to opining now is to place the parties in the position of reacting hastily to last-minute decisions by Henson, I believe that the parties’ interests are served by the court’s considering the proffered, hypothetical plans. The court’s view will, of course, be dictum.
Evidence included expert testimony about consumer behavior and children’s literature:
Dr. Laura A. Peracchio, an expert in consumer behavior, states in her report that Spa’am is unappealing and will lead to negative associations on the part of consumers because he has small eyes, protruding teeth, warts, a skull on his headdress, is generally untidy, and speaks in a deep voice with poor grammar and diction. I am, however, persuaded by the report and testimony of Anne Devereaux Jordan, an expert in children’s literature, who notes that children (and adults) often have positive associations with characters that may not appear classically handsome. Among other examples, Ms. Jordan points to “Pumbaa,” the good-natured warthog in Walt Disney’s film The Lion King, and “Splinter,” the aging rat who acts as teacher and father-figure to the “Teenage Mutant Ninja Turtles.” Furthermore, a boar sharing some of the characteristics that Dr. Peracchio relies on has been used successfully as the image of meat products. See Def. Ex. VV (label from “Boar’s Head Brand” beef frankfurters showing boar with small eyes and protruding tusks). I agree with Ms. Jordan that a narrow focus on Spa’am’s physical appearance is insufficient to determine whether consumers, of any age, will have positive or negative associations with Spa’am.
Master Splinter from Teenage Mutant Ninja Turtles:
Pumbaa from Lion King:
Spa’am – Pig Chief – muppets action figure:
And so again we have a Federal Court mentioning the Teenage Mutant Ninja Turtles in a case that doesn’t really involve the Turtles, and dismisses claims of intellectual property.
Previous NinjaLaw cases about the Ninja Turtles:
– First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991
– Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992
– Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992
– First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng et.al. – April 29, 1994
– Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994