A federal judge on Monday ordered Republic Brands, makers of OCB rolling papers, to pay $1.5 million to HBI International, makers of RAW rolling papers, for infringing on the RAW copyright and trade dress. The ruling concludes a seven-year court battle between the two companies.
In a statement, Josh Kesselman, RAW founder, said the company was “pleased with the outcome, but that doesn’t make this any less frustrating.”
“Republic has persistently filed lawsuit after lawsuit against our company, perhaps because of our success. We intend to donate the net proceeds we will receive, now that this case is resolved, to organizations working to help small businesses in the cannabis field, particularly businesses that are startups involving individuals who were previously convicted of nonviolent cannabis related crimes. We’re hopeful that Republic will now cease its relentless effort to destroy our business and focus, like us, on helping the emerging cannabis industry achieve greater equity in the marketplace.” — Kesselman in a press release
The case in question began in 2016 when HBI contacted Republic to point out the similarity between RAW’s Organic Hemp product packaging, which was launched in 2009, and Republic’s OCB Organic Hemp paper packaging, which debuted in 2011. Republic introduced the OCB Organic Hemp product in the U.S. in 2014 and HBI reached out to Republic about the marketing and packaging similarities soon after. HBI asked for the companies to discuss the matter but Republic sued its rival in federal court in Illinois, seeking a declaratory judgment saying it had not infringed on anything.
HBI counterclaimed for infringement, and then Republic brought a series of allegations that RAW products and marketing materials contained various misstatements. Republic accused HBI of false advertising under the federal Lanham Act, deceptive trade practices, and unfair competition under Illinois state law, and alleged that RAW papers and cones were illegal products because of their association with cannabis and celebrity smokers.
That dispute came to a close in February, when Republic won a permanent injunction in a federal lawsuit against HBI, which required HBI to cease the sale of certain products and stop making certain promotional statements.
In 2021, however, a jury concluded that Republic had willfully infringed on RAW Organic Hemp trade dress, including its copyrighted “Sold Here” sign and awarded the company over $1 million. The jury also found that none of RAW’s product statements violated the Lanham Act, but found for Republic on the Illinois Deceptive Trade Practices Act and the claim for unfair competition based on the same factual allegations.
In a statement referencing the recent press release by HBI International, a Republic Brands spokesperson called it a “new and misleading spin on an old ruling,” and an “attempt to deflect” from the fact that HBI was found guilty in February of “violating the Illinois uniform deceptive trade practices act and the law of unfair competition by constantly making false and misleading statements for more than a decade.”
“BBK Tobacco (dba. HBI International) is not a victim or a victor in this matter — a federal jury found BBK Tobacco guilty of violating the Illinois uniform deceptive trade practices act and the law of unfair competition by consistently making false and misleading statements for more than a decade.”
Editor’s note (6/7/23): This article was updated to include additional information and the Republic Brands representative’s statement.
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