Sipp’n Corn Bourbon Law Update – Jack Daniel’s v. “Bad Spaniels” Dog Toy.

Ever since Old Crow and Old Taylor aggressively protected their trademarks in the 1800’s, setting the stage for current-day trademark law, whiskey has kept trademark attorneys busy. Brown-Forman’s Jack Daniel’s brand and VIP Products’ “Bad Spaniels” dog toy now have the opportunity to establish…

Ever since Old Crow and Old Taylor aggressively protected their trademarks in the 1800’s, setting the stage for current-day trademark law, whiskey has kept trademark attorneys busy.

Brown-Forman’s Jack Daniel’s brand and VIP Products’ “Bad Spaniels” dog toy now have the opportunity to establish limitations on how far an alleged “parody” use of another’s famous brand and trade dress can go before it becomes illegal infringement.  On January 31, the Supreme Court of the United States set oral argument for March 22, 2023 in this epic legal battle.

Basically, VIP sells a dog toy that is shaped like a bottle of arguably the most famous brand of American whiskey and makes all sorts of “poop jokes” on the toy.  It is indisputable that the dog toy’s look, design, and words are intended to trade on the brand recognition of Jack Daniel’s, but VIP insists that it’s all in good fun.  In fact, in a brief filed with the Supreme Court where it tried to convince the Court that it should not even consider the case, VIP smugly argued that “It is ironic that America’s leading distiller of whiskey both lacks a sense of humor and does not recognize when it—and everyone else—has had enough.  [Jack Daniel’s] has waged war against [VIP] for having the temerity to produce a pun-filled parody…”  And when famous brands are made fun of, “the world did not end.”

Jack Daniel’s argues that the dog toy tarnishes its brand and is likely to confuse consumers.  The First Amendment was never intended to protect speech that confuses and misleads consumers, and the Lanham Act restricts commercial use of protected Marks, so no matter how funny poop jokes might be, it’s no laughing matter to violate the law.  Jack Daniel’s insists that it likes dog and jokes—including jokes at its expense—but VIP is mimicking Jack Daniel’s iconic trade dress to mislead consumers and to profit off of Jack Daniel’s goodwill.  Plus, Jack Daniel’s doesn’t want its customers confused or have them “associating its fine whiskey with dog poop.”

The United States District Court in Arizona (where VIP is based) sided with Jack Daniel’s, but the Ninth Circuit Court of Appeals reversed, setting the stage for the Supreme Court to rule on whether anyone can use famous trademarks to sell dog toys or whatever else they want, as Jack Daniel’s suggests—“sex toys, drinking games, or marijuana bongs, … all in the name of just having fun.”

Sipp’n Corn Bourbon Law Update – Sazerac Hits Republic National with Friday the 13th Lawsuit.

News broke on January 3 that Sazerac was terminating its distribution relationship with Republic National Distributing Company and moving to numerous smaller distributors in about 30 states.  This was such a massive change in the industry that a few days later, we covered it…

News broke on January 3 that Sazerac was terminating its distribution relationship with Republic National Distributing Company and moving to numerous smaller distributors in about 30 states.  This was such a massive change in the industry that a few days later, we covered it on the Bourbon Community Roundtable.

Now, just days after the release of that Roundtable episode, Sazerac sued Republic in federal court in Louisville on January 13.  Sazerac came out of the gate with allegations that Republic has refused to pay for tens of millions of dollars for Sazerac products, has stopped payment on nearly $40 million of wholesale products, and that Republic has “bad-mouthed Sazerac in the marketplace.” 

As we speculated on the Roundtable, Sazerac also complains and alleges that Republic failed to sufficiently promote Sazerac products to retailers and that Republic “would oftentimes improperly condition the availability of certain high-end (and highly sought after) Sazerac products, such as Pappy Van Winkle, to its retail accounts on the purchase of non-Sazerac products, commonly known as ‘tie-in’ sales.”

Although not mentioned in the Complaint, Sazerac and Republic had expanded their relationship as recently as 2019 when Sazerac bought 19 brands from Diageo.  Republic added those new brands to its portfolio in seven states.  According to its website, Republic serves almost 90% of the U.S. market volume and it uses its national reach to help supplies build relationships and reach their target consumers, which sounds like precisely what a large producer like Sazerac would need.

One new fact revealed by the Complaint is that Sazerac and Republic entered into a new global distribution agreement in 2021 and it was really Republic who terminated that Agreement, and that happened in summer 2022 (without any news splashes).

In total, Sazerac asks the Court to award it $38.6 million in damages through January 12, 2023, and that continued breaches will result in “at least an additional $48 million in damages.” Remember, Complaints only present one side of the story and Republic has not yet had an opportunity to tell its side of the story.  The case is Sazerac Company, Inc. v. Republic National Distributing Company, LLC, No. 3:23-cv-00025.

Sipp’n Corn Book Review – Lawyerly Libations

I found a new book to add your personal collection or holiday gift list—Lawyerly Libations, Concoctions for the Counselor, Apéritifs for the Attorney, Elixirs for the Esquire, and Additional Alcoholic Anecdotes: A Cocktail Compilation for the Burgeoning Barrister’s Bar, by Michael J. McCormick. While…

I found a new book to add your personal collection or holiday gift list—Lawyerly Libations, Concoctions for the Counselor, Apéritifs for the Attorney, Elixirs for the Esquire, and Additional Alcoholic Anecdotes: A Cocktail Compilation for the Burgeoning Barrister’s Bar, by Michael J. McCormick.

While the title is a mouthful, and maybe only funny to a lawyer, don’t be dissuaded.  The title is a tongue-in-cheek prelude to McCormick’s witty style, through which he showcases cocktail history while diving into related (sometimes tenuously related) legal stories and even more historical context.  Better yet, the legal stories often wryly mock the absurdity of lawyers and the law, just like the title.

Lawyerly Libations tells a different story in each of its 21 Chapters (a shout out to the 21st Amendment) paired with 21 classic cocktail recipes.  Chapter 7 has one of the best explanations of the Whiskey Rebellion with fun citations to Hamilton: An American Musical along with robust citations and footnotes for anyone interested in a more scholarly approach.  Secretary of the Treasury Alexander Hamilton wanted to fund the nation’s debt by taxing domestic whiskey production—the infamous Whiskey Tax—which spawned rebellion in western Pennsylvania in 1791, and McCormick tells the rest of the story.

Plus, because using law as a resource wouldn’t be complete without raising a dispute, Lawyerly Libations tees up a fight for the first “American” cocktail.  There’s a case to be made for the Old Fashioned, with its sheer simplicity and a recipe contained in the first U.S. cocktail recipe book in 1862.  A better case is made for the Mint Julep, with its roots as a Persian tonic (گلاب / gulāb) and its arrival on our shores in the late 17th Century, the innovation of Virginia colonists who made it with mint leaves, and then through the mid-1800’s when ice became more readily available and it became more recognizable to what it is today.  And a seemingly weaker case can be made for the Sazerac®, but in typical legal fashion, it’s the Sazerac that secured trademark protection for “America’s First Cocktail®.”

Lawyerly Libations is an entertaining and fast-paced read that has been impeccably researched.  Consider it for at-home bartenders, drinks enthusiasts, history buffs, and, of course, lawyers in your life.

Lawyerly Libations, Concoctions for the Counselor, Apéritifs for the Attorney, Elixirs for the Esquire, and Additional Alcoholic Anecdotes: A Cocktail Compilation for the Burgeoning Barrister’s Bar
Author:  Michael J. McCormick
Published:  July 9, 2022
Purchased on Amazon for $13.99.

Sipp’n Corn Bourbon Law Update – Bulleit forces a redesign for Redemption.

Ever since Old Crow and Old Taylor aggressively protected their trademarks in the 1800’s, setting the stage for current-day trademark law, bourbon brands have kept trademark attorneys busy. Diageo’s Bulleit brand and W.J. Deutsch & Sons’ Redemption brand have been locked in litigation for…

Ever since Old Crow and Old Taylor aggressively protected their trademarks in the 1800’s, setting the stage for current-day trademark law, bourbon brands have kept trademark attorneys busy.

Diageo’s Bulleit brand and W.J. Deutsch & Sons’ Redemption brand have been locked in litigation for years, but as of last week, the federal district court in the Southern District of New York entered a permanent injunction against Redemption.  In sum, the court ordered Redemption to change its bottle and trade dress immediately.

In 2017, Bulleit sued Redemption, claiming that Redemption’s 2016 packaging redesign was “strikingly similar to that of Diageo’s Bulleit whiskey and copies the same vintage style and appearance,” and alleging that this infringed on Bulleit’s trademark and trade dress rights.  Redemption responded with bluster, stating that Bulleit’s complaint “is devoid of any merit whatsoever” and asserted its own claims against Bulleit, even alleging that Bulleit had obtained its trademark fraudulently by making knowingly false statements to the Trademark Office.

Earlier this year, the parties went to trial in New York, with Redemption losing its counterclaims against Bulleit, but without Bulleit being awarded any damages.  While Bulleit was not able to convince the jury on the issue of damages, the jury concluded that Bulleit’s trade dress is valid and protectable and that its packaging is famous, which paved the way for Bulleit to ask the court to enter an injunction.

That’s just what Bulleit did after the trial, and the court agreed that an injunction against Redemption was warranted.  On September 7, 2022, the court recounted Bulleit’s use of its iconic bottle for 21 years, that it was nationally famous, and that Bulleit spent $56 million advertising in the five years before Redemption’s bottle redesign in 2016 (a year in which the court noted that Bulleit had $150 million in sales).  It probably did not help that Redemption’s witnesses admitted that “consumers already know and love” Bulleit.

The jury’s conclusion that Bulleit’s trade dress was diluted by the Redemption packaging created a presumption that Bulleit was irreparably harmed, but Redemption still argued that Bulleit failed to prove a loss of any goodwill or erosion of its trade dress.  The court disagreed, finding instead that Bulleit had provided “ample evidence show[ing] a loss of goodwill and the whittling away of the distinctiveness of Bulleit packaging to the detriment of its reputation and its ability to signify to the public that it is a unique product…  .”  When Redemption introduced its new packaging, Bulleit’s growth declined from the high 20’s, to 10 percent, and then single digits, while Redemption earned over $21 million in profits.

So, what does this mean for Redemption?  First, although it might appeal, Redemption has been ordered to stop using its current packaging that looks like Bulleit’s.  Whatever Redemption bottles had been sold by the brand as of September 7 can be sold to consumers, but there can be no new sales to distributors.  Second, Redemption was ordered to redesign its packaging to “convey a substantially different commercial impression.”

While Bulleit’s victory was not nearly as convincing as Brown-Forman’s legendary triumph over Barton in the Woodford v. Ridgewood case, it continues a long line of authority that should keep new brands cautious and should act as a warning to marketers who push for brand redesign to capture the look and feel of popular brands.  Originality is the safest way to avoid expensive lawsuits.

Sipp’n Corn Tasting Notes: W.H. McBrayer Kentucky Straight Bourbon.

This is a story that I love because it combines bourbon, history, and law.  Sound familiar? Judge William Harrison McBrayer wrote a letter to E.H. Taylor, Jr. on November 10, 1870, concerning their discussions about Taylor purchasing some of the Judge’s whiskey.  The back…

This is a story that I love because it combines bourbon, history, and law.  Sound familiar?

Judge William Harrison McBrayer wrote a letter to E.H. Taylor, Jr. on November 10, 1870, concerning their discussions about Taylor purchasing some of the Judge’s whiskey.  The back side of the letter contained the Judge’s mash bill, and now, about 150 years later, the Judge’s descendants used that very mash bill to revive the family legacy.  But they used more than a recipe—they used local heirloom grains and 105 barrel-entry proof, harkening back to the bygone era.

Judge McBrayer’s distillery in Anderson County was wildly popular, with the value of his distillery and “Cedar Brook” easily making him a multi-millionaire in today’s dollars.  McBrayer’s Ex’r v. McBrayer’s Ex’x, 16 Ky.L.Rptr. 18 (1894) tells the story of how the Judge’s legacy was almost extinguished after his death in 1888. 

Before he died, Judge McBrayer had contracted with Levy & Bro. of Cincinnati to sell all of his existing barrels and all future distillery production through December 1, 1891.  So, the distillery essentially had to be operated to fulfill the production contract.  The Judge wrote in his will that the distillery could only be operated for three years after his death, at which such time he ordered that his name should be stricken from the business.  He also wrote in his will that his wife should be given the most prominent role in deciding the affairs of his estate if the Executors were ever in disagreement.

The Judge’s only heirs were his widow and three grandchildren (children of his only daughter, who had died earlier), and the lawsuit set up a fight between grandmother and grandchildren.  The Judge’s widow wanted to enforce the provision stripping the McBrayer name from the distillery and prohibiting her granddaughters from using the valuable Cedar Brook trademark, while the granddaughters wanted to continue to use the McBrayer and Cedar Brook names.  The court engaged in linguistic gymnastics to rule that Judge McBrayer was so wise, and was such a savvy businessman, that what he really meant was that he did not want the distillery to be operated by the estate for more than three years, but it would be just fine for the granddaughters to form a new entity to operate the distillery, and of course the valuable McBrayer and Cedar Brook names should continue to be used.  Essentially, the court held that the McBrayer and Cedar Brook names were just too valuable to let them go to waste.

W.H. McBrayer Tasting Notes

Bourbon:        W.H. McBrayer Kentucky Straight Bourbon Whiskey
Distillery:       Contract distilled at Wilderness Trail
Age:                Unstated, but four years and four months old
Mash Bill:      88.4% corn; 5.8% rye; 5.8% malted barley
ABV:              51.8% (103.6 proof)—Barrel Strength
Cost:               $100

Appearance:
Peach tea.

Nose:
Butterscotch galore and chocolate, with a slight alcohol sting.

Taste:
Butterscotch carries through on the flavor too, with honey and a buttery mouthfeel.

Finish:
Short-ish but flavorful finish that is predominantly sweet.

Bottom Line

Start with a story, follow the old ways, and then close with a great bourbon.  Far too many brands make up stories just to hustle us with the same old sourced whiskey that we can all buy for half as much from the real brand.  Here though, McBrayer did it right.  My only surprise is that McBrayer didn’t produce a Bottled-in-Bond bourbon, at least for historical accuracy.

Be on the lookout for future McBrayer releases!

Disclaimer: The brand managers kindly
sent me a sample for this review,
without any strings attached. 
Thank you.

Sipp’n Corn Poll—Which Bourbon “Facts” Do You Doubt?

For all of the absolute facts that exist with bourbon, there has always been a surprising amount of debate over everything from grand concepts (like President Taft ruling on what is whiskey) to pure minutia (like whether whiskey should be spelled with, or without,…

For all of the absolute facts that exist with bourbon, there has always been a surprising amount of debate over everything from grand concepts (like President Taft ruling on what is whiskey) to pure minutia (like whether whiskey should be spelled with, or without, the “e”).

Practically since the first drop of this majority corn distillate almost 250 years ago, bourbon has embraced half-truths, tall tales, and marketing gimmicks, along with balancing, using, and abusing legal requirements.  Why should it be any different today?

So, I selected a few “facts” that people tend to like to disagree about, and posed a Twitter poll to ask which one of these people doubt most of all:

Each one of these “facts” can be false, at least to varying degrees.  And from another viewpoint, each option could range from absolutely true to close enough to be accepted as truth.  Which of these facts do you most doubt?

Does Tennessee Whiskey qualify as Bourbon?

I started with the biggie.  Even when distillers of Tennessee Whiskey say that their whiskey is bourbon, and even when trade law equates the two, purists dispute it.  It’s a never-ending debate that neither side will concede.

Federal law provides the Standards of Identity for bourbon.  Tennessee Whiskey—which is defined by Tennessee state law—meets all the federal requirements with a single possible exception, which forms the basis of the ongoing debate:  after distillation, but before barreling, the distillate passes through sugar maple charcoal.

Here’s how Jack Daniel’s—the most famous Tennessee Whiskey—describes it:

Once distilled to 140-proof, we send our clear, un-aged whiskey on a painstaking journey. Drop by drop, it crawls through our handcrafted charcoal at a pace dictated by gravity and nothing else. The trip takes 3-5 days to complete and once it’s done, the whiskey is transformed. Might even say blessed.

It’s this extra step that imparts the distinctive smoothness folks expect from Jack Daniel’s. And part of what makes our whiskey what it is—a Tennessee Whiskey and not a bourbon.

“Charcoal can accomplish in days what the barrel takes a couple of years to accomplish”, says Master Distiller Jeff Arnett. And the added time and cost it takes to give our whiskey that head start before it goes into the barrels is well worth it.

So, Jack Daniel’s is telling the world that its charcoal mellowing is an accelerated aging technique intended to do what a barrel does, only faster.  But the larger point is that bourbon cannot contain any flavoring or color additives.  If sugar maple charcoal mellowing imparts any flavor or any color from the char, it cannot be bourbon.

The real purpose is probably more subtractive, though, and scientific study has found that charcoal mellowing removes certain odors and flavors.  But it might actually remove too much to be called bourbon.  The science of charcoal mellowing was studied by Trenton Kerley and John P. Munafo, Jr. in “Changes in Tennessee Whiskey Odorants by the Lincoln County Process,” Agric. Food Chem. 2020, 68, 36, 9759–9767 © American Chemical Society.  The authors found that charcoal mellowing decreased the concentration of 31 odorants including dropping those associated with fatty, rancid, foxy, and roasty aromas to below detection levels.  “Concentrations of lipid-derived aldehydes, organic acids, and other odorants decreased between 13 and >99%.” 

This means that charcoal mellowing could be filtering too much out of the whiskey for it to be called bourbon.  Federal law (27 C.F.R. § 5.27(c)) prohibits filtering out characteristics generally associated with bourbon or, when dealing with straight bourbon, that “results in the removal of more than 15 percent of the fixed acids, volatile acids, esters, soluble solids, or higher alcohols.” 

Is this enough to question the factualness of the statement?  A respectable 19% of respondents said so.

Is there really a Bourbon shortage?

The sky has been falling for years for the bourbon enthusiast.  The bourbon boom turned once-“regular” brands that sold for $26 into allocated products commanding top dollar.  Distilleries have cried that they can’t keep up with demand because, of course, bourbon needs to age before it’s ready.

But now we’re six or so years into all distilleries running at full capacity, several distilleries doubling their own capacity with new stills, and massive warehouses springing up across the Bluegrass like dandelions in the spring.  Yet some bourbon brands are still impossible to find, with the shortage still to blame, and in the meantime new sourced brands keep cropping up every week.  With 10 million barrels of aging bourbon just in Kentucky, how can there be a bourbon shortage?

Understandably, exactly half of all respondents agreed that the shortage myth was the bourbon “fact” that they doubted the most.  The people have spoken:  just bottle some of it already and loosen up the allocations.

On the other hand, if bourbon markets open in India and China, we’ll have a shortage overnight, even with all of the recent production.

Is Col. E. H. Taylor, Jr., really a hero?

In today’s world of marketing exaggerations, Col. Taylor receives practically all the credit for passage of the Bottled in Bond Act of 1897, he is given credit for turning distilleries into showpiece tourist destinations, and he is perhaps the most venerated name from the pre-Prohibition era.

While Col. Taylor was undoubtedly a critical figure in the history of bourbon, he was no hero.  He defrauded customers and business partners.  He cheated.  He sued everybody.  And when he died, his heirs wasted no time in selling off his estate and brushing him under the rug of history.

Only 9% of the respondents were most bothered by Col. Taylor’s hero status, which tells me that more people need to read Bourbon Justice.

Was Elijah Craig the first to char oak barrels?

Heaven Hill refers to Elijah Craig as the “Father of Bourbon” because, in 1789, he was “the first distiller to age his whiskey in new charred oak barrels.”  As questionable as this might sound at first blush, there is some support for the claim.  The History of Kentucky, a book published in 1874, connects the dots between Rev. Craig and “the first Bourbon Whisky made in 1789, at Georgetown.”

Whether he really was the first to char barrels (and especially whether it was accidental, a fortuitous barn fire, or intentional) might be a bit more toward the legend side, but Rev. Craig was undoubtedly one of the very earliest bourbon distillers in Kentucky.

The second-highest percentage of the respondents doubted Heaven Hill’s claim the most, so perhaps this is a good lesson for brands to not take legends too far or too seriously.

the Perks of being a book lover

Happy Derby Week! I was so pleased to talk with Amy Smalley and Carrie Vittitoe about what led to Bourbon Justice, books that have influenced us, and what we’re reading. The Perks of Being a Book Lover is a radio show about books, people…

Happy Derby Week! I was so pleased to talk with Amy Smalley and Carrie Vittitoe about what led to Bourbon Justice, books that have influenced us, and what we’re reading. The Perks of Being a Book Lover is a radio show about books, people who read and how reading can be a social experience. Enjoy!