| In Bulleit
Bottle Trade Dress Trial Deutsch Mocked
Cork Now Detailed Post Trial Order
By Matthew
Russell Lee, Patreon Maxwell
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BBC-Guardian
UK - Honduras
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NY
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SDNY COURTHOUSE,
Sept 7 –A rare whiskey bottle
trademark trial has concluded
before U.S. District Court for
the Southern District of New
York Judge Louis L. Stanton
and Inner City Press covered
it, exclusively.
Diageo
North America, Inc. beyond
Smirnoff, Guinness and Johnnie
Walker has Bulleit brand
whiskey as one of its flagship
products.
It is name after
Augustus Bulleit who sold
high-rye whiskey from a tavern
from 1830 to 1860, described
in the complaint at the days
of the "Old West."
Deutsch during the trial
claimed, among other things,
that its Redemption's cork is
more prominent.
The jury verdict
was mixed - no likelihood of
confusion or bad faith found,
but yes, dilution in the value
of trade dress under both
Federal and New York State
law.
Later on June 1,
this: "Hi
Matthew,
We have noticed your previous
coverage of the Bulleit trial
and we wanted to share with
you a statement regarding the
verdict attributable to a
Diageo spokesperson: 'The jury
concluded that Diageo’s
Bulleit trade dress is valid
and protectable, and that the
packaging, including its
iconic bottle, is famous and
Deutsch’s Redemption packaging
diluted Bulleit’s famous trade
dress. In finding
in favor of Diageo on these
claims, the jury rejected all
of Deutsch’s
counterclaims.
'Based on this
verdict, Diageo intends
promptly to pursue all
available legal remedies,
including the entry of an
injunction to halt use of any
advertising, promotion or sale
of the current packaging, and
to require a packaging change
for the accused Redemption
line of products.'"
On September 7
from Judge Stanton, this:
"OPINION, ORDER &
INJUNCTION re: [450] MOTION
for Permanent Injunction /
Plaintiff Diageo North
America, Inc.'s Notice of
Motion for a Permanent
Injunction. filed by Diageo
North America, Inc.
Accordingly, IT IS HEREBY
ORDERED THAT: Deutsch Family
Wine & Spirits and
Bardstown Barrrel Selections
LLC, their agents, and any
third parties who are in
active concert or
participation with the
manufacture, sale, or
promotion of Redemption who
receive notice of this
injunction are permanently
restrained and enjoined
nationwide from, directly or
indirectly, manufacturing,
selling, offering for sale,
distributing, licensing,
importing, exporting,
advertising, promoting,
displaying, or using in
commerce, including in stores,
online, and in physical,
digital, or recorded
advertisements or promotional
materials, the Diluting
Redemption Packaging at issue
in this litigation and any
other colorable imitation
thereof, except for the
product that on the date of
entry of this Order has
already been transferred to
distributors, retail stores,
bars, or restaurants.
That product in
the Redemption packaging that
has been transferred by the
date of entry of this Order
may continue to be sold, but
none thereafter.
Defendants are
directed to undertake a change
to the Redemption glass bottle
and packaging that will convey
a substantially different
commercial impression, but may
retain those unchallenged
aspects of the package like i)
the brand name Redemption or
terms such as "pre
prohibition" or "rye revival;"
ii) the label, other than its
border; iii) the embossed rye
"frond;" and iv) the concave
back of the bottle.
If defendants do
not create a meaningfully
changed Redemption Packaging,
such that it cannot dilute the
Bulleit trademark and trade
dress, Deutsch may be directed
to use its present upper-tier
barrel-proof Redemption
whiskey bottles, with only
minor changes sufficient to
signify that the bottle does
not contain its present
premium product. This Court
shall retain jurisdiction over
the parties and the subject
matter of this litigation for
the purpose of interpretation,
enforcement, or modification
of this Permanent Injunction.
(Signed by Judge Louis L.
Stanton on 9/7/2022)." We'll
continue to follow this.
On the witness
stand on May 16 was the bottle
and label's designer, cross
examined by counsel for the
defendants Deutsch and
Bardstown Barrel Selections,
LLC.
The line
of questioning should to show
the civil jury that the
designer had in essence copies
the design from a bottle in a
museum.
But the design
said he, he had modified the
design. He went to the museum,
he said, to learn about the
history of American
whiskey.
There was a
dispute about what constitutes
an oblong versus flask-shaped
bottle.
The courtroom was
surprisingly full.
On May 17, on the
stand was a witness from
Deutsche, responding on emails
about the placement in liquor
stores in Minnesota and New
Jersey (Super Buy Rite of
Williamstown, NJ) of
Redemption next to Bulleit.
The witness said he was not
aware of customer confusion
but he understand Diegeo
alleges it.
On May 18 there
was cross-examination about
the "trade dress" of Bulleit,
St. Peter's, Gilbey's and a
photo of Fireball was flashed
to the jury. There were an
array of bottles on the
witness stand, as in a bar.
On May 19 Ms.
Kilgore of Deutsch described
the Redemption bottle as
"manly" as they found people
wanted this whiskey, a bottle
with broad shoulders. Also, a
visible cork to show it's
premium. She dissed Bulleit.
On May 20, it was
expert versus expert. A slide
entitled "Problems with Mr.
Reilly's Calculations" was
shown to the jury. The witness
said, Inventory is an asset.
One of the jurors, on the top
row, nodded. Deageo wants $21
million.
On May 23, the
witness on the stand laughed
when handed a large document
she had previously signed. She
said she knew they had an
agreement on the intellectual
property of the Redemption
bottle, but didn't remember
the patent application.
Questioning got into the
embossing.
On May 24, on the
stand was a market research
expert, Matthew G. Ezell, who
conducted an "evergreen" study
about Bulleit's trade dress
and possible customer
confusion. Meanwhile the
parties agreed to withdrawn
some exhibits.
On May 25, on the
stand was a witness testifying
to a summary chart created
from Redemption's sales
numbers, before and after the
new label / bottle.
On May 26, there
was video testimony of an
expert on trademark law and
process. He said has reviewed
the papers in the case, and
know about trademark
applications being denied for
lack of distinctiveness.
On May 31 in
closing argument Deutsch's
counsel told the jury that
Diageo had lost any right to
claim trade dress protection,
as it had not similarly gone
after Fireball. He noted that
other products once trademarks
now aren't, pointedly
mentioning kerosene as an
example.
The case is
Diageo North America, Inc. v.
W.J. Deutsch & Sons, Ltd.,
et al., 17-cv-4259 (Stanton)
***
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