Fenwick & West IP & Technology Litigation partners Rodger Cole and Jennifer Kelly, and associates Rachael Samberg, Songmee Connolly and Leslie Kramer, have been retained by the Burlingame Museum of Pez Memorabilia to represent the museum and its co-founders in a lawsuit brought against them by PEZ Candy Inc. of New York and its parent, Switzerland-based Patrafico AG. The Burlingame Museum of Pez Memorabilia features every one of the more than 550 Pez dispensers created over the years.
PEZ Candy, Inc., headquartered in New York, filed the lawsuit in U.S. District Court in San Jose in June 2009, asserting trademark infringement, trade dress infringement and unfair competition. PEZ Candy claims that a giant dispenser topped with a snowman's head—that has been recognized by the Guinness record keepers as the world's largest dispenser of Pez—violates state and federal intellectual property laws, and that the Museum's use of the candy company's trademark products "deceive(s) the public into thinking that the museum is operating under the authority of PEZ."
Rodger Cole states, "The Museum, its store and its website are clearly not affiliated with PEZ Candy, Inc. There is no likelihood that the so-called trademark infringement or trade dress infringement results in possible customer confusion."
PEZ seeks unspecified damages, and demands the destruction of a 7’10" snowman that was built especially for the museum. The suit also requests the discontinuation of the museum’s "Got Pez?" memorabilia and demands that the museum's "curators," Gary Doss and Nancy Yarbrough Doss, turn over all profits from the museum’s 14 years in business. "As lifetime fans of Pez ourselves, we were dismayed to hear that anyone would try to shut down a museum honoring its history, much less ask for its memorabilia to be destroyed," said Jennifer Kelly. "We will do everything in our power to make sure that does not happen."
"From a branding perspective, I think PEZ should embrace the Dosses and the museum, instead of trying to attack them," said Rodger Cole.
Fenwick & West attorneys have handled some of the most prominent IP litigation over the past two decades, including securing one of the largest IP litigation settlements of 2005—a $400M settlement for its client Compuware against IBM—and one of the largest patent verdicts of the past eighteen months, a $74.7M patent litigation verdict for client Asyst Technologies against Jenoptik. The firm is ranked by Managing Intellectual Property as one of the top five West coast firms for IP litigation, by IP Worldwide as one of the top dozen firms that Fortune 500 companies relied on for IP litigation, and was recently awarded "Most Innovative Use of Technology by a Law Firm" by American Lawyer Media for the firm's proprietary electronic discovery tools.