Court Denies Ben & Jerry’s Request to Stop Unilever’s Already-Consummated Sale of Ice Cream Maker’s Israeli Business

Court Denies Ben & Jerry’s Request to Stop Unilever’s Already-Consummated Sale of Ice Cream Maker’s Israeli Business

On August 22, Judge Andrew L. Carter, Jr., denied Ben & Jerry’s motion for an injunction in its lawsuit against its corporate owner, Unilever.

We’ve previously covered the controversy here:

• Ben & Jerry’s To Boycott “Occupied Palestinian Territory” Including Ancient Jewish Quarter of Jerusalem
• Ben & Jerry’s Co-Founders Defend Boycotting Israel, But Won’t Boycott Texas and Georgia
• Illinois Divests Pension Funds From Unilever Over Ben & Jerry’s Israel Boycott
• Breaking Up Is Hard to Do: Israeli Company Sues Ben & Jerry’s and Unilever To Maintain License
• Anti-Israel Boycott Defeat – Ben & Jerry’s Ice Cream Will Continue Being Sold Throughout Israel
• Ben & Jerry’s Sues Corporate Parent Unilever To Thwart Sale Of Branded Ice Cream In Jewish Quarter of Old City, Judea and Samaria
• Ben & Jerry’s Case: Judge Skeptical About Claim Of Irreparable Harm

To recap briefly, Ben & Jerry’s “brand integrity” board sued Unilever to stop it from selling the ice cream maker’s business in Israel to its long-term Israeli licensee/manufacturer/distributor, Avi Zinger and his company, American Quality Products Limited (AQP). This, despite the fact that Ben & Jerry’s didn’t raise the issue in the same case or even sue in the same court adjudicating Zinger’s suit against – and now settlement with – Unilever.

Unilever completed the sale to/irrevocable license with Zinger in June. So what’s the rush? The judge found that there wasn’t any.

During an August 8 telephonic hearing on the motion for a preliminary injunction, the judge seemed underwhelmed by Ben & Jerry’s claim that it might create a new flavor to which Zinger might give a different interpretation, all of which might cause Ben & Jerry’s fan club to look askance at it.

The judge wanted to know more about the ice cream company’s claim there was imminent danger Unilever would sell rights to its normal, English-language trademark to Zinger. (Zinger had been sold or irrevocably licensed the right to use Ben & Jerry’s name in Hebrew and Arabic, not in English.) Because the issue was first raised during the hearing, Unilever was caught a little flat-footed.

Its lawyers followed up the next day with a letter to the judge, explaining a sale of rights to the English-language trademark wasn’t in the offing:

This firm represents Defendant Conopco, Inc. (“Conopco”) in the above-titled matter. During oral argument, Your Honor asked how past distribution of Ben & Jerry’s ice cream in Israel would compare to future distribution, and I was unable to provide a complete answer as to past practice. What I can now tell the Court is that: historically, the Ben & Jerry’s name (and other variant names used in the business, e.g., Chunky Monkey) have only appeared in English on the packaging used to sell Ben & Jerry’s ice cream in Israel and the West Bank. Under the new business arrangement, Ben & Jerry’s products in Israel and the West Bank will be labeled only with the Hebrew or Arabic language Ben & Jerry’s trademark, and not with English trademarks. What’s more, there is no contemplation of transferring any English trademarks to Mr. Zinger, as those trademarks were expressly excluded from transfer under the Business Transfer Agreement, nor is there contemplation of granting Mr. Zinger any future licenses. Unilever has sold off, and Mr. Zinger is now the owner of, the Ben & Jerry’s business in Israel and the West Bank under the Hebrew and Arabic trademarks; his website will be updated accordingly.

Letter from defense counsel to court. [Click on image to see document.]

At the August 8 hearing, Plaintiff identified two examples of irreparable harm. First, Plaintiff stated that in the absence of an injunction, the new owners of Ben & Jerry’s products in Israel and the West Bank would have “the ability to undermine [Ben & Jerry’s ability to protest certain issues by launching products] by launching [the] exact same quality products with the exact opposite social mission stance.” Tr. 12:5-7. According to Ben & Jerry’s, the new owners would be able to direct the marketing in Israel and the West Bank of new mission-driven products such that the new owners could represent a contrary message when marketing the products. See Tr. 11:12-12:8. Second and relatedly, Ben & Jerry’s argue that the injunction is needed to prevent “customer confusion as to who owns Ben & Jerry’s social mission.” Tr. 13:12-13.

Neither reason suffices. Such purported harm is too speculative to constitute irreparable harm. The injunctive relief sought cannot issue on the basis of a hypothetical scenario involving several speculative steps, namely that (1) new products will be introduced, (2) those products will seek to convey a particular message, and (3) the new owners then will market those products to convey a contrary message.

The harm of customer confusion regarding Ben & Jerry’s positions is also remote. Ben & Jerry’s has offered no evidence of such confusion or the impact of the alleged confusion. If anything, media reports and this very lawsuit evince Ben & Jerry’s position on the issue. Further, the products sold in Israel and the West Bank will use no English trademarks, instead displaying new Hebrew and Arabic language Ben & Jerry’s trademarks. ECF No. 49. Thus, the products sold in Israel and the West Bank will be dissimilar from other Ben & Jerry’s products, mitigating, if not eliminating, the possibility of reputational harm.

Because Plaintiff fails to establish irreparable harm, the Court does not consider its remaining arguments.

Court order denying Ben & Jerry’s request for an injunction against Unilever. [Click on image to see document.]

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