Friday, May 11, 2012

The Sixth Circuit: A Federal Court that Knows its Bourbon

On Wednesday, the Sixth Circuit Court of Appeals issued a decision in the case of Maker's Mark Distillery vs. Diageo North America. Maker's Mark, famous for their dripping red was seal, had sued Diageo claiming that the use of a similar red wax seal on its Jose Cuervo Reserva de la Familia Tequila infringed on the Maker's Mark trademark. A federal district court had ruled for Maker's and the Sixth Circuit, which hears appeals from cases originating in Kentucky, Tennessee, Ohio and Michigan, upheld the lower court opinion for Maker's.

The legal rendering itself is not particularly remarkable, though I don't envy Diageo having to defend itself against a beloved bourbon distillery in a court that sits just across the river from Kentucky. What is remarkable is that the Court went out of its way to discuss bourbon and its history.

The opinion opens with a wonderful quote from Supreme Court Justice Hugo Black, "I was brought up to believe that Scotch whisky would need a tax preference to survivie in competition with Kentucky bourbon." The Court then goes on to discuss the origins of bourbon, its history and the specific history of Maker's Mark, even dropping a footnote regarding controversies over the proper spelling of whiskey. The fantastic part is that the Court gets it right, quoting such noted authorities as Chuck Cowdery (not just his book but also articles from his Bourbon Country Reader), Mike Veach and Gary & Mardee Regan. Clearly one of these judges (or one of their clerks) is a bourbon fan who knows his or her stuff.

For those of you who don't read court decisions for a living, they can be mind numbingly boring, but this one is well written and animated. Kudos to the Sixth Circuit as well as Chuck, Mike and the Regans.

You can find the opinion here, and the fun part is on pages 2-7.

UPDATE: See Chuck Cowdery's own report on the case here.


BMc said...

Happy to see that bourbon has fans in high places!

Anonymous said...

Steve, congrats again on the milestone. What I don't quite get is if earlier spirits (or wines) that used to use red wax before Maker's Mark should now sue them in turn? Wouldn't that make sense? We could go back three centuries like that... For examples, there are many old brands of armagnac that have always used red wax and still do... Does all this mean that they can't sell to the US anymore?

sku said...

Good question Serge. It was not just the red wax that was at issue. Maker's Mark has a registered trademark for the dripping wax that appears on their bottles (note the similarity between the two bottles pictured). The dripping element is part of the trademark.

Now, if an Armagnac had a dripping red wax seal, I assume they would have a potential problem in introducing that product into the US market, but the Court looks at numerous factors to determine if a trademark has been infringed upon and each situation is fact specific. The overall issue is whether there is a possibility that the similarity of the products will cause confusion.

I should add that while I am a lawyer, I am not a trademark lawyer and am not familiar with all of the intricacies of that area of law.

sam k said...

Don't mess with the drippin' red wax!

Anonymous said...

Understood, thanks! So it's the dripping. Reminds me of those pizzeria candlesticks ;-) - or dear Jackson Pollock. I think most spirit makers would consider it's a flaw when the wax drips down the neck and would redo the bottle. Fun to make a trademark attribute out of a flaw ;-). - S.

sku said...

Well, Maker's was founded around the time when Pollock was painting. Coincidence? Who knows.