Sazerac sues Castle & Key. Castle & Key wins.

[flahute]

I have to admit to being biased in this one as Castle & Key's attorney is a friend of mine. (And a little known member here.)

 

http://www.opn.ca6.uscourts.gov/opinions.pdf/18a0113p-06.pdf

[The Black Tot]

Good to read.

 

I hate it when large companies try to put the boot to small companies acting in good faith.

 

Very disappointing, Sazerac!!! Call off your legal team, give them shovels and hammers, and put them to work speeding up your expansion!

[flahute]

I should point out that the attachment I linked to is the decision from the appeals court which upheld the lower courts ruling.

[GaryT]

Good for them.  With as often as brands/labels have changed hands, not being able to refer to "former" brands would leave it only to the current owners (who don't always provide a transparent history).  

[Harry in WashDC]

ARGHHHHHH!  I call your attention to the second page!  The last sentence of the first paragraph after the centered "I" has no footnote.  I am not surprised because IT IS A FALSE STATEMENT.  Not all bourbon HAS to come from Kentucky.

 

Now, somewhat more calmly, I call your attention the paragraph following that sentence.  OK, then.  The Honorable Judge Sutton clarified and qualified his remark.

 

In the immortal words of Emily Litella from Gilda Radner's Saturday Night Live appearances, "Never mind."

 

Addendum - FWIW, I thought the reasoning in the opinion was sound.  Many years ago, I had some experience with trademark law issues.  Fortunately, I did not have to apply the Sixth Circuit's threshold "trademark test".  I've "always" wondered how it differed from the test(s) applied in other circuits including my environs (USCA for the DC Circuit, the 2nd Circuit (NY) and 4th Circuit (Va.)).  Now, I know.

Edited June 15, 2018 by Harry in WashDC
Addendum after reading the opinion.

[Richnimrod]

Well, I'm gratified to read the final decision rejecting Sazerac's baseless and mean-spirited (my opinion) lawsuit.   They need to stop being such pr_cks and get on with their actual business.    Hopefully, now having been properly chastised they can see the light in that.   As several have noted the the big company has the legal muscle, and capital to screw with smaller "competition"; but that doesn't mean it's a good use of their time or capital; actual or political.

Good for Castle and Key.    Now they can refer to the property they legally own by the commonly used name that it's been known by for many, many decades.    Common sense prevails.    It doesn't always; Lord knows.

[PowderKeg]

Very good news indeed.  Now (hopefully) Saz will go back and focus on boosting production of W12, OWA, ETL, and RHF instead of picking on up-and-comers with legit historical references...

 

Can't wait for C&K to officially open this fall!  Too bad the bourbon is still at least 3 years away.

Edited June 15, 2018 by PowderKeg

[Harry in WashDC]

2 hours ago, Richnimrod said:

Well, I'm gratified to read the final decision rejecting Sazerac's baseless and mean-spirited (my opinion) lawsuit.   They need to stop being such pr_cks and get on with their actual business.    Hopefully, now having been properly chastised they can see the light in that.   As several have noted the the big company has the legal muscle, and capital to screw with smaller "competition"; but that doesn't mean it's a good use of their time or capital; actual or political.

Good for Castle and Key.    Now they can refer to the property they legally own by the commonly used name that it's been known by for many, many decades.    Common sense prevails.    It doesn't always; Lord knows.

Taking a contrary view, sort of - Saz may have seen this as a creeping problem, kind of like Kleenex and Xerox and Bakelite and dozens of other trademark holders have.  Some of those did not aggressively defend their trademarks only to see a Federal court, even the Court of Customs and Patent Appeals, invalidate their trademarks in part because they had not defended them "aggressively".  IOW, they may be keeping the thin edge of the wedge/nose of the camel under the tent/give an inch, lose a mile/etc., from further eroding their CEHT trademark.  I note, for example, that C&K apparently said they have NO intention of putting OTD on their bottle - not even on the back.  Maybe they openly said so because Saz sued.  Or not.

[Harry in WashDC]

1 hour ago, Three quarks said:

Strange intro (in the first several pages) for a formal appellate opinion. Could have cut out most of that and started at the second sentence of Part II. I wonder if Peristyle would have called it "Castle & Key" without the lawsuit? Seems like a good time for all to reach an agreement regarding future use before further appeal to US on that threshold trademark use test. 

I had the same thought.  That first paragraph was almost an,  "Oh Boy!  We got a case that's NOT boring and technical."  Then, they (well The Honorable Judge Sutton) settled in to the legal parts.

[Jazz June]

1 hour ago, Harry in WashDC said:

I had the same thought.  That first paragraph was almost an,  "Oh Boy!  We got a case that's NOT boring and technical."  Then, they (well The Honorable Judge Sutton) settled in to the legal parts.

This is actually somewhat typical of opinions in bourbon trademark cases, at least those coming from the district courts of Kentucky and the 6th Circuit. I have seen opinions go on longer than this one about bourbon and its history. Plus at least in this case, it was more relevant than usual.

 

I'll also point out that Castle & Key's attorney is the author of the Sipp'n Corn (which incidentally sports the circle R indicating federal trademark registration) blog.

[Harry in WashDC]

48 minutes ago, Jazz June said:

This is actually somewhat typical of opinions in bourbon trademark cases, at least those coming from the district courts of Kentucky and the 6th Circuit. I have seen opinions go on longer than this one about bourbon and its history. Plus at least in this case, it was more relevant than usual.

 

I'll also point out that Castle & Key's attorney is the author of the Sipp'n Corn (which incidentally sports the circle R indicating federal trademark registration) blog.

THANKS for that info on the C&K att'y.  AND about the USDC/6th KY cases.  I contribute regularly to Cornell's LII; this gives me a reason to visit it for fun instead of profit. 

[Vosgar]

2 hours ago, Harry in WashDC said:

Taking a contrary view, sort of - Saz may have seen this as a creeping problem, kind of like Kleenex and Xerox and Bakelite and dozens of other trademark holders have.  Some of those did not aggressively defend their trademarks only to see a Federal court, even the Court of Customs and Patent Appeals, invalidate their trademarks in part because they had not defended them "aggressively".  IOW, they may be keeping the thin edge of the wedge/nose of the camel under the tent/give an inch, lose a mile/etc., from further eroding their CEHT trademark.  I note, for example, that C&K apparently said they have NO intention of putting OTD on their bottle - not even on the back.  Maybe they openly said so because Saz sued.  Or not.

I sincerely hope this is the case, Harry. 

[smokinjoe]

3 hours ago, Harry in WashDC said:

Taking a contrary view, sort of - Saz may have seen this as a creeping problem, kind of like Kleenex and Xerox and Bakelite and dozens of other trademark holders have.  Some of those did not aggressively defend their trademarks only to see a Federal court, even the Court of Customs and Patent Appeals, invalidate their trademarks in part because they had not defended them "aggressively".  IOW, they may be keeping the thin edge of the wedge/nose of the camel under the tent/give an inch, lose a mile/etc., from further eroding their CEHT trademark.  I note, for example, that C&K apparently said they have NO intention of putting OTD on their bottle - not even on the back.  Maybe they openly said so because Saz sued.  Or not.

I agree.  These things always sound brutish when the big guy sues the little guy,     but everybody has a right to protect their property if they feel it is being taken, or compromised.  This was just an inexpensive shot across the bow from Saz letting C&K and everybody else know that they’re vigilant.   

[Jazz June]

4 minutes ago, smokinjoe said:

I agree.  These things always sound brutish when the big guy sues the little guy,     but everybody has a right to protect their property if they feel it is being taken, or compromised.  This was just an inexpensive shot across the bow from Saz letting C&K and everybody else know that they’re vigilant.   

Inexpensive? Maybe to Sazerac (despite having used a much higher priced firm), but I would guess Castle & Key disagrees.

 

It will be interesting to see how Sazerac reacts to future uses C&K might make of the Old Taylor name. Similarly, we may see them tangle with Diageo if and when Diageo starts to use the Stitzel Weller name more. If I remember correctly, someone purchased the Old Crow distillery, so Beam may be in this same boat in the near future as well. Although if there were (bourbon trademark) justice in the world, they would be forced to give the OLD CROW trademark to someone who would restore it to its rightful place in bourbon history, instead of crapping on it.

 

The distillers are starting to go through what brewers have been experiencing for a while, an explosion of brands leading to increased trademark disputes. It's probably not as bad because whiskey brands don't turn over as quickly as beer, but still a large number of new entrants is sure to lead to some issues.

[smokinjoe]

1 minute ago, Jazz June said:

Inexpensive? Maybe to Sazerac (despite having used a much higher priced firm), but I would guess Castle & Key disagrees.

 

Precisely my point.  

[kcgumbohead]

I really hope this is the last we EVER hear about Saz pestering C&K over this issue. They need to, as others have pointed out, refocus their energies on thier own distillery. If they are so damn proud and protective of the EHT label maybe they should have crafted a whiskey more representative of what Taylor himself did, not just slap a label on mashbill 1 and rely on warehouse location and barrel selection to differentiate it. Wow way to go, lots of extra effort there Sazerac.

C&K are just getting off the ground, they are rejuvinating a legitimate crown jewel bourbon distillery that was on the fast track to oblivion. They are by all acounts I have read/heard going to great lengths to craft a genuinely unique distillate with a nod to the the history, a very legitimate history, of the specific location they currently occupy. That is something this enthusiast wholeheartedly supports and I am wishing the very best for them. I have been tracking their progress from day 1 and it really pisses me off that any resources of thiers would be diverted to fend off frivolous B.S. like this action from Sazerac. At no time have I ever been confused about who they are or what they are doing anymore than I am about Sazeracs identity. They have never claimed to make or intend to make anything that would be construed as a Taylor branded product. I have only observed them acting in a responsible and respectful manner as stewards of what will hopefully become a celebrated and cherished stop on the bourbon trail. I greatly look forward to thier bib release and a tour once they officially open. I am delighted that the judge sided with them but irritated that it ever got to that point to begin with.

Edited June 16, 2018 by kcgumbohead

[smokinjoe]

For the sake of consistency, I guess no one should have any problem with Diageo pimping the Stitzel-Weller name on their whiskies, distillery, and mammoth marketing efforts, then...

 

 

[flahute]

31 minutes ago, smokinjoe said:

For the sake of consistency, I guess no one should have any problem with Diageo pimping the Stitzel-Weller name on their whiskies, distillery, and mammoth marketing efforts, then...

 

 

Well they do own the distillery so there's no confusion of ownership to be debated.

[kcgumbohead]

3 hours ago, smokinjoe said:

For the sake of consistency, I guess no one should have any problem with Diageo pimping the Stitzel-Weller name on their whiskies, distillery, and mammoth marketing efforts, then...

 

 

Don’t see how that relates to the C&K/Saz topic oulined above. C&K hasn’t to my knowledge pimped Taylor on thier whiskey which won’t be available for a few more years. The Taylor distillery property is owned byC&K, The limestone facade of the main building has a stone sign embedded in it that says “Old Taylor Distillery erected 1887” C&K didn’t put it there, the facility was in fact the EH Taylor Distillery and the marketing as far as I have seen is very C&K centric with any Talor overtones framed as stewards of a historic property. Should that not be the case I would be open to evloving my stance and will if they were to stray off thier path but so far, to my knowledge, they have not. Given the herculean efforts and resources required for C&K to ressurect the property along with how they have conducted themselves thus far, the expensive Saz distraction is unwarranted.

 

Diagio owns the historic SW property but unlike C&K they have been cagey with the use of SW in thier marketing (orphan barrels, I.W. Harper) in ways that I cannot parallel with what C&K has done up to this point. 

[smokinjoe]

2 hours ago, flahute said:

Well they do own the distillery so there's no confusion of ownership to be debated.

Agree.  I’m primarily getting at the idea of the success and size of an entity being part of the equation on whether it’s “right” or “fair” in s lawsuit.

 

tMO, this is just a short skirmish where Sazerac was just putting the line in the sand.  No harm, no foul.  But, we understand each other now....riiiight?  Saves a lot of time and money later.

[StarSurfer55]

As someone that has worked in an industry based on intellectual property, I can tell you that Sazerac won, period.  Whether they won the case or not, they clearly sent the message that they would aggressively protect their property and not allow anyone to devalue it.  Basically, you can walk right up to the line but put one toe over and pay the price.  The judge’s ruling clearly indicated that as long as C&K refers to EHT in regards to historical or geographical frames, then the are not crossing the line but cross any further and you are in violation of the copyright.

 

 

[smokinjoe]

2 minutes ago, Three quarks said:

 

 

Bottom Line: Time to reach a settlement, as follows: (1) Leave it on the building ("historic location" [and free advertising]); and (2) leave it OFF the eventual C&K product. I am happy to serve as mediator (with payment being CEHT and/or future C&K).

Or, remove it from the buildings, but put up official state/national historical marker out front like this.  No mention on bottles, of course.

[lcpfratn]

I’m going to side with C&K on this, and add that if Sazerac wanted to keep anyone else from using a historical reference to the Old Taylor Distillery, they could have bought that distillery years ago before the investors in C&K bought the facility. If I had been the judge, I would have made Sazerac pay the legal fees incurred by C&K to defend against this frivolous lawsuit.

[PaulO]

On 6/16/2018 at 12:33 PM, kcgumbohead said:

I really hope this is the last we EVER hear about Saz pestering C&K over this issue. They need to, as others have pointed out, refocus their energies on thier own distillery. If they are so damn proud and protective of the EHT label maybe they should have crafted a whiskey more representative of what Taylor himself did, not just slap a label on mashbill 1 and rely on warehouse location and barrel selection to differentiate it. Wow way to go, lots of extra effort there Sazerac.

...

Yeah, Sazerac owns the name "Taylor" now.  I was rather underwhelmed the first time I tried their version.  I just don't get all the photos people post.  I guess the warehouse location and barrel selection wasn't enough to differentiate it for me.  Beam owned the brand before Sazerac.  The filled it with their standard distillate too (except no big mark up or cardboard tube).

[FacePlant]

On ‎6‎/‎15‎/‎2018 at 8:44 PM, smokinjoe said:

I agree.  These things always sound brutish when the big guy sues the little guy,     but everybody has a right to protect their property if they feel it is being taken, or compromised.  This was just an inexpensive shot across the bow from Saz letting C&K and everybody else know that they’re vigilant.    

I concur with this profound oratory. I don't like the 600lbs gorilla stomping all the monkeys in the cage, but if in the early process of bring back Col. Taylors dormant distillery the new owners continued to call it "Old Taylor" I think that forces Saz to shut down that reference. Just my little ole opinion from a non-attorney.