Best Answer?

Suppose for a moment that you’re in charge of an international company that has spent many years developing and promoting your branded products. It’s not the biggest or most profitable product line in the world, but it’s yours and you’ve paid the money to make it what it is. How would you react if you found out that there was a tourist attraction in the San Francisco Bay Area that was making money off of your brand without your permission, and without bothering about royalties or licenses or anything like of the sort? Would you file an injunction, tell them to cease and desist, possibly demand that they stop using your trademarked properties and turn over whatever they’ve made on the unlicensed usage over the years? If so, would you expect to be excoriated in the local press? Because that’s what seems to be happening…

A story being reported in the Mercury News online edition this week details the legal action being taken by the Pez Candy Company against the Museum of Pez Memorabilia in Burlingame, California. It seems that for the past 14 years this microscopic shrine to all things Pez (they have every one of the 550-plus dispensers that the company has marketed over the years) has been making a modest living displaying (and selling) various Pez-related products. It wasn’t until word got out about the Museum’s custom-built 7-foot 10-inch snowman Pez dispenser, billed as the largest Pez dispenser in the world, that the company finally heard about the museum and started legal action. Upon which they were immediately jumped on by the Mercury News and several other local media outlets…

It’s one of those questions where it’s all too easy to see the company’s side of the dispute: the people who own the Museum are making money off of a trademarked product that belongs to someone else, and they have made no effort to get permission from the legal owners, let alone purchase the appropriate usage rights. If the Pez Candy Company does not enforce the trademark in this case, it will be all but impossible for them to do so the next time someone rips off their intellectual property without permission, and within a few years their brand will be worth nothing at all. However, that doesn’t change the fact that the Museum is a tiny local operation that has, if anything, helped to increase awareness of the Pez product lines and improve sales through the company’s legitimate distribution channels over the years. Which, in turn, means that attempting to destroy it (and its custom-made giant snowman Pez dispenser) may not be the best possible answer to the problem…

Unfortunately, according to the story in the link, the owners of the Museum are insisting that they’re not doing anything wrong, and the only legal defense cited in the article is that since the Museum is actually helping develop the brand, the Company should embrace it. We can only hope that their trademark attorney comes up with a better idea, because that argument does not address the trademark infringement in the first place; the Pez Company is the injured party in the case, and saying that they “should” do anything you’d like them to do is entirely pointless. Offering to give them the difference between what you’ve made by infringing their trademark and the extra sales they’ve gotten because of your efforts might be an idea; suggesting a license fee for using the name and other elements (retroactive to whenever the Museum first started turning a profit, perhaps) would be an even better idea. Treating the situation the way you would a neighborhood dispute over use of something you’ve borrowed (without permission) is asinine, however…

Without the full facts of the case, of course, we can’t be sure how unpleasant the company is being. It’s entirely possible that they aren’t offering any options beyond cease and desist, or for that matter that they wouldn’t listen to any. I just hope that some party associated with the case suggests some before it’s too late…