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It happened in Palm Bay, Fla. It could not have happened in Mims. Mims is too far from Palm Bay. It was in a convenience store close to I/95. The kind of high-traffic area, always the choice of the self-promoting, self-styled, and undocumented practitioner of the law, who in this case is also an undocumented entrant, enjoying a long, but suspicious visit in a misguided attempt to better himself in the only American way he knew, or perhaps had.

In a scheme to make a living and nothing more, the hero of our story, grew up in a country with considerably less wealth but with a higher regard for the mere possession of pack of Marlboro cigarettes, even without the cigarettes. He decided to sell his own locally packed discounted Marlboro packages knowing his customers would gladly buy the locally made product at his cheaper price rather than the product put out on the market by the legitimate but remote Marlboro trademark owner, the Lorillard Company.

Yes, it is true. The quality of the cigarettes in the local product was far from what our Lorillard’s Marlboro Man would smoke. However, that was an advantage. The object was to market a cheaper box of Marlboros, whose value was not in the tobacco product it might contain, but in the box itself with its distinctive name Marlboro, and its distinctive red and white trade dress, and its evoking of a older American on horseback, something like the American way.

In this kind of story, there is always a lawyer where least desired. Here the lawyer is performing a regular lawyer activity of advising against a course of conduct which by chance may succeed, but which the Rules of the Florida Bar would label at least as bad as unethical, perhaps willful, as it would any other quick buck schemes that seeks an easy path to riches through what may perceived as the legal loopholes of the law.

This lawyer told our hero his plan would be stopped by Lorillard using the legal powers of its Marlboro trademark. Now, not every one who hasn’t passed a bar exam is legally ignorant or unable to grasp legal subtleties. Some of our best legal minds are presently studying their own ways to financial success, usually finishing with the conclusion “they will never catch us,” emphasis on the “will.” Or better yet, “I have a good case if we are sued,” emphasis on the “if,” “which will never happen anyway.” No question mark at the end of that one. Once, having had explained that Marlboro’s mark protects the identify of the source of the product, in this case Lorillard, as the sole source of the Marlboro package, our enterprising and ambitious for success student of Adam Smith and proponent of the free and unregulated market as the best way to be an American, decided he would sell the fake Marlboro packs at one-half the price, advertising that his fake packs were not the Lorillard Marlboro packs and not for smoking but just for personal decoration as in “Look everyone, I smoke Marlboros.” Not the kind of use that would infringe the Marlboro mark for tobacco products, or as the Marlboro Man would say “smokes.”

What could be simpler? Lorillard could not accuse our Palm Bay experiment, conducted at the fringes of trademark law, of violating the Marlboro mark. After all, trademarks protect the consumer’s right to the identity of a product as shown by its trademark. The reason is the consumer, laying down the high price for Marlboros, would get the genuine article, and not something made in Mims by our entrepreneur’s brother-in-law, from something like dried swamp cabbage.

The involvement of the Mims brother in law was to arrange for the fake Marlboro boxes and to stuff them with the cheapest of cheap no name cigarettes. While the fakes looked like the real thing, there was a sign prominently placed over the convenience store’s Marlboro display, stating in no uncertain terms, in English, Spanish, French, Creole, and in several Asian and African languages and dialects (nothing was left to chance), that the Marlboros, in the display were not Lorillard Marlboros but fakes made by the seller’s brother-in-law in Mims. And while the cigarettes contained therein could be smoked, the quality was not to be compared with the real Marlboros, as in the older Marlboro Man. To be sure the message was clear that the Mims/Palm Bay Marlboros were not the real stuff, the sign added that these fake Marlboros were not intended for smoking, but for wearing, with the only benefit being the high-esteem for the owner of a Marlboro pack.

This practice by comparison is not any different that the growth in the use of trademarks as prominent product decorations and symbols of the good taste and liquidity of the owner or wearer. Easy examples are Louis Vuitton, Rolex, and the Paiget, among others. Automobiles come to mind with Lexus, Mercedes, Infiniti, and BMW. What’s the use of having money if it can’t be spent to produce a little status among friends?

The key to success was in a simple plan to sell Marlboros, not for the good “smokes” that went into the pack sold with the registered mark Marlboro, but for the pack itself and a use of the mark as a decorative piece of wearing apparel and clearly not within Lorillard’s U.S. Patent & Trademark Official Principal Register listed goods as tobacco products.

As we say in the law, equity will not tolerate a wrong without a remedy, and to our judicial system trained in protecting the rights of trademark owners, something was wrong and had to be corrected. In this case, the court found Lorillard’s petition for an injunction, just the kind of action in equity offering a clear path to a remedy, at least as clear and as direct as the I/95 route from Palm Bay to Mims.

In any action, a court must find an irreparable harm before it can grant an injunction. But there was no harm in the sale to the convenience store consumer, who was plainly and directly told “do not believe these are the real Marlboros, which they are not because these fake Marlboros are made by my brother-in-law in Mims.”

Because equity will not tolerate a wrong without a remedy, and for no better reason, the court, not willing to permit this injury to go unpunished, was left with a dilemma. Trademark law is designed to stop consumer confusion at the point of sale, and in this case there was none. Our convenience store owner made sure of that by his sign clearly stating, “These are not Lorillard Marlboros.” Not to be deterred, this equity court did what equity courts are expected to do, namely come up with a new doctrine, this time the Doctrine of Downstream Harm.

The Doctrine of Downstream Harm is directed to goods after their point of sale entry in commerce. It rests on several principles; first the viewing public and subsequent purchasers may be harmed if the fakes can’t be identified from the real Marlboros. Second, the wide spread adoption of the fakes may make the mark too familiar and familiarity breeds contempt. Third, on the theory of “if you can’t beat them, join them,” Lorillard may decide to reduce its Marlboro quality to compete with the knockoff fake Marlboros, harming consumers of high quality tobacco products (that’s hard to believe). Fourth, the inferior quality of the knockoffs may damage the reputation of the real Marlboros, causing consumers to switch to a more reliable brand (while that is believable).

The list, built on the imagination of well paid corporate lawyers, goes on, but these few examples make the point, enough to stop our plan but not far enough to put the brother in law out of business. “How about,” he says, “printing an adhesive backed, ‘Marlboro wrapper that can be bought to wrap around a pack of Lucky Strikes?’”