A district court judge in California in August ruled against a cannabis company in a trademark dispute, ordering that Steven Mata of edibles company OC420 infringed on copyrights held by the WM Wrigley Jr. Company and must not only cease and desist but pay the candymaker $2 million per counterfeit mark as well as “all profits, gains, and advantages obtained by Mata from his unlawful conduct.”
The suit centers around Mata’s violation of Wrigley’s trademark for Skittles and Starburst in his products labeled “Medicated Skittles” and “Medicated Cannaburst Gummies” and in the “Munchies Edibles Deal” that included the Cannaburst Gummies. The products not only use the original products’ names, but use similar looks and designs on the packaging as the Wrigley originals.
The judgment, written by District Judge John W. Holcomb, found that Mata’s behavior constituted trademark infringement, trademark dilution, unfair competition and deceptive act, dilution under California statutes and counterfeiting.
Along with the monetary judgments, which include paying Wrigley’s attorneys fees, Mata is also required to recall any products that have been shipped and to provide them, as well as all other packaging with the counterfeit marks. Mata’s behavior was also deemed “willful and malicious” and is therefore non-dischargeable if he files for bankruptcy.
Attorney Jihee Ahn, writing on the Harris Bricken Cannalaw Blog, called the decision “one of the harshest judgments we’ve seen in a while.”
“A final judgment recently rendered in WM. Wrigley Jr. Company v. Roberto Conde, et al., is nothing short of a cautionary tale and a powerful reminder to cannabis companies: Parody is NOT a defense to trademark infringement in this type of commercial context,” Ahn wrote.
— Brian Beckley