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Daily Dicta: Dude. Bong Maker’s Case Against Counterfeit Pipes Goes Up in Smoke

Ah German engineering. You see its prowess in cars, in medical equipment, in machinery. And also apparently in water pipes a.k.a. bongs.

A German company called RooR makes hand-blown glass bongs that—I kid you not—can sell for more than $30,000, though most of them seem to retail for a couple hundred dollars. “In our workshops, the highest level of workmanship and material meet design and decades of experience in craftsmanship,” the company boasts, adding that the brand’s “unwavering use of quality materials … facilitate a superior smoking experience.”

Given RooR’s price and reputation, it’s not surprising that it’s found cheap, counterfeit water pipes to be a problem.

But to be clear—just because RooR is a bong maker, that doesn’t mean it’s mellow about trademark infringement. To the contrary. It’s downright harsh.

Since 2018, RooR and its exclusive U.S. licensee Sream have filed almost 300 trademark infringement suits in federal courts in Florida, California, Texas, Louisiana and Indiana against smoke shops and convenience stores, according to records in Pacer, sending undercover investigators on sting operations to buy knock-off bongs.

Jenna Greene
Jenna Greene

RooR counsel Jamie Sasson from the Ticktin Law Group in Deerfield Beach, Florida say the suits are necessary to clean up the marketplace, which has been flooded with fakes. “If it wasn’t for bringing the lawsuits, there would be no more RooR,” he said.

But Wayne Schwartz of Boca Raton’s Lee & Amtzis, who last week handed RooR its second-ever loss (according to Sasson) at trial, sees the litigation as an attempt “to shake down innocent retailers like my client, who didn’t have any idea who RooR was.”

The complaints do appear designed to scare the bejesus out of small-time operators like Schwartz’s client Julia Poteet, a retired civil servant who opened the Smokers Edge in West Palm Beach to supplement her income post-retirement.

Shortly after she opened the store, Poteet said she unknowingly bought a counterfeit RooR bong from now-defunct H&H Distributing for $10. A few weeks later, she sold it for $15.90 (including sales tax) to RooR’s undercover investigator.

In its complaint filed in U.S. District Court for the Southern District of Florida, RooR accused Poteet and her husband of intentionally misleading consumers “by offering them low grade products that free ride on the goodwill of the RooR brand, and in turn, the defendants reap substantial ill-gotten profits.”

RooR sought up to $2 million in damages for willful trademark infringement, plus an asset freeze, injunctive relief and legal costs.

Sasson said RooR doesn’t normally take its cases to trial—nor does it want to. It prefers to settle using what amounts to a carrot and a stick. The offending retailer pays a penalty, but also becomes an authorized RooR distributor, with special discounts to get started. “They can make their money back,” Sasson said. “We try to make it as painless as possible.”

Schwartz said his client was also eager to settle—but RooR was “so stubborn and adamant about demanding a certain amount of money that we decided to present our case as we saw it at trial.”

Last week, U.S. District Judge Donald Middlebrooks after a bench trial sided with the Poteets.

The judge did seem suitably impressed with the quality of RooR’s products. “RooR utilizes glass made in Germany which is highly heat resistant and virtually indestructible,” he wrote. “RooR pipes are never constructed with rubber grommets, rather RooR uses only ‘glass on glass'’ fittings to build its pipes.”

Julia Poteet, who until she retired was a code enforcement officer with Palm Beach County, testified she knew nothing about bongs before she opened her shop. As a result, she was oblivious to what the judge found was obvious: “The authentic RooR product and the counterfeit one sold by defendant are both water pipes, however that is where the similarity ends,” Middlebrooks wrote. “The two water pipes are not remotely similar in design, construction or quality, as plaintiffs' own witnesses made clear.”

Indeed, RooR was apparently not aided by its witness, who testified that “no customer who knows anything about pipes or smoking would mistake the counterfeit pipe sold by The Smokers Edge with an authentic RooR water pipe.”

So much for consumer confusion.

The judge also noted that “the price at which it was offered was so far below market value, that there would be almost no likelihood that any person would be deceived, aside from the most naïve consumer.”

Still, RooR argued that the fact that Poteet herself said she didn’t know difference was a reason to find the infringement was intentional.

Middlebrooks didn’t buy it. “I reject plaintiffs' argument that intent ought to be ‘imputed’ to defendant by virtue of the Poteets' negligence in opening a smoke shop without any fundamental knowledge regarding smoking accessories.”

“Based on the evidence adduced at trial,” Middlebrooks concluded, “l find that plaintiffs did not establish that the defendant's sale of a single counterfeit RooR water pipe created any likelihood of consumer confusion. He also invited the defendants as the prevailing party to seek attorney’s fees.

With more than at least 100 cases still pending, does Middlebrooks’ decision give pause to RooR’s litigation strategy? Not really, Sasson said, arguing that consumer confusion can still be a winning argument if buyers think the counterfeit pipes represent a lesser, lower-end RooR brand. “I feel pretty confident going forward we will be successful,” he said.