Intellectual Property, Copyright & Cocktails

[daisy17]

Also, while it's easy to be angry at Pusser's (and I love the guys behind Painkiller too), from a trademark law perspective ONLY, if they do not enforce their marks and try to prevent others from infringing on them, their own mark is considerably weakened.

[Dakki]

US trademark law is irremediably broken - see the recent dustup between the Navy and Disney (of all people) over who should own the rights to the "SEAL Team 6" name.

[mkayahara]

Thanks for clearing that up for me, daisy17. Does prior art enter into it here, given that the drink was apparently invented and named before Pusser's bought it?

[Dakki]

"Prior art" applies to patents, not trademark.

Trademark is simply a name, logo, etc. that uniquely indicates a certain entity, for example McD's "golden arches." Its purpose is (or was, anyway) to impede other entities from trading under that entity's good name.

[daisy17]

Happy to help, Matt. A prior existing trademark or service mark could serve to block someone from registration, and could be the basis of an infringement lawsuit, but only if it was being used as such. (The USPTO does do common law searches (i.e., searches of marks that aren't registered but are used as trademarks) in determining whether to permit registration of a mark.) But I'd argue that the name of a cocktail, without more, isn't a trademark. It has to be used by someone in connection with the offering of goods to be considered a trademark. You'd make a factual inquiry into how the mark was being used by that third party.

[mkayahara]

Thanks for putting up with my slowness on IP law issues. I actually should have known about prior art being patent law, not trademark. But there's something about trademarking a name you didn't come up with for a drink you didn't invent that just seems wrong to me somehow. (Edit: Wrong morally; obviously they're in the right legally.)

Am I correct in understanding, though, that PKNY will be able to continue serving their drink without Pusser's rum as long as they don't call it a Painkiller? What if they called it an Analgesic instead? (Or a "Pusser's Made Us Change the Name of This Drink"?)

Edited June 10, 2011 by mkayahara (log)

[ScoopKW]

Am I correct in understanding, though, that PKNY will be able to continue serving their drink without Pusser's rum as long as they don't call it a Painkiller? What if they called it an Analgesic instead? (Or a "Pusser's Made Us Change the Name of This Drink"?)

We're making a Steam beer this year for limited release. Thanks to the lock on the style, we're VERY close to calling it "212f Vaporized H2O" beer.

The gubment wants the label to read "California-Style Common Ale." We'd be OK with "California Common Style Ale." But if they refuse, we're going the "vapor" route.

[haresfur]

We're making a Steam beer this year for limited release. Thanks to the lock on the style, we're VERY close to calling it "212f Vaporized H2O" beer.

The gubment wants the label to read "California-Style Common Ale." We'd be OK with "California Common Style Ale." But if they refuse, we're going the "vapor" route.

Cool! I think there is a lot of prior use of the term California-Common as a beer style in the home-brew and beer judging works so I don't see their drama about using that.

Companies can trademark drink names (Bacardi cocktail - at least that has their company name). My personal protest is to use the name with whatever ingredients I want for personal use, and never order the drink by name when I go out. Take that Dark 'n Stormy!

[EvergreenDan]

Daisy17 -- It occurred to me that Pussers needs to defend their mark. Could they not have licensed it to the bar for, say, $1/year? They wouldn't be holding a bag of frozen peas on their eye right now.

[daisy17]

Thanks for putting up with my slowness on IP law issues. I actually should have known about prior art being patent law, not trademark. But there's something about trademarking a name you didn't come up with for a drink you didn't invent that just seems wrong to me somehow. (Edit: Wrong morally; obviously they're in the right legally.)

Am I correct in understanding, though, that PKNY will be able to continue serving their drink without Pusser's rum as long as they don't call it a Painkiller? What if they called it an Analgesic instead? (Or a "Pusser's Made Us Change the Name of This Drink"?)

Was Dark N Stormy a cocktail name before Gosling's trademarked it? Am curious. Recipes are not protected by copyright (except in a very limited way the description of how the ingredients are put together) and so I don't see a problem with them making the drink with a different rum and calling it whatever they want.

Daisy17 -- It occurred to me that Pussers needs to defend their mark. Could they not have licensed it to the bar for, say, $1/year? They wouldn't be holding a bag of frozen peas on their eye right now.

Yes, you are absolutely right, they could have licensed it to the bar - actually talked about this with a friend tonight - and the idea made me wish I knew the whole backstory on the litigation. Trademark owners manage trademark portfolios in a wide variety of ways - some more aggressively than others - and the lawyers who advise them also can take a range of positions in term of how aggressively the marks are defended. There can be legitimate business reasons for not taking the license route. This seems to me to be a shortsighted and kind of ironic move - their argument of likelihood of confusion between the marks is underscored by the fact that they've really pissed off a lot of the same potential consumers of their rum.

[thirtyoneknots]

The Barbancourt is a great rum @ $20. I also think that Doorley's XO @ $15 (here in NJ) and Pusser's @ $22 are spectacular rums. All three are always on my shelf!

Wow, somebody is still buying Pusser's?

[EvergreenDan]

There was an interesting thread on the Pussers v. PKNY drama brewing on Chowhound. Before it was moderaped, someone posted the Pusser's side of the story. I don't know any of the parties or the details, but it made me less sure of my stance re Pussers.

Anyone have any good insight?

BTW, having briefly read about trademarks, I think that Donna Karan may have a claim against PKNY for trademark dilution.

[Sunny&Rummy]

Matt over at Rumdood posted an informative writeup on the Pussers-PKNY kerfuffle.

I hate but understand the need for trademark protection, though I sure wish it was unnecessary. None of this unfortunate saga changes my opinion that Charles Tobias makes some great rums, although it doers leave a bit of a bad taste in my mouth. I might have to make my next Painkiller with a mix of Smith & Cross, Appleton 12, and El Dorado 5 as a symbolic protest though.

Actually, that looks like it would make a killer Painkiller. . .

[thirtyoneknots]

I have only ever bought one bottle of Pusser's about 6 years ago, and I still have it, with some of the original rum in it. I never finished it off or bought any more because I just didn't think it was as interesting as the marketing copy behind it would suggest--certainly not enough to justify a price tag that at the time placed it in the higher bracket of available rums. Since then I've taken a broader approach to my brand allegiances, and dropping proofs or age statements is usually enough to turn me off of something (Pusser's dropped their proof). I don't have a dog in the fight over PKNY but it certainly seems like it could have been handled better.

Just my 2 dashes.

[KD1191]

BTW, having briefly read about trademarks, I think that Donna Karan may have a claim against PKNY for trademark dilution.

I actually made this same comment, in jest, when discussing this topic with Daisy17 when we ran into each other at The Violet Hour a few weeks ago. Unless Donna is working on a designer vodka, it wouldn't really apply. The industries don't really overlap.

[Sunny&Rummy]

I have only ever bought one bottle of Pusser's about 6 years ago, and I still have it, with some of the original rum in it. I never finished it off or bought any more because I just didn't think it was as interesting as the marketing copy behind it would suggest--certainly not enough to justify a price tag that at the time placed it in the higher bracket of available rums. Since then I've taken a broader approach to my brand allegiances, and dropping proofs or age statements is usually enough to turn me off of something (Pusser's dropped their proof). I don't have a dog in the fight over PKNY but it certainly seems like it could have been handled better.

Just my 2 dashes.

Well, they didn't drop their proof so much as they stopped exporting the 95.5 to the US. I think the 42% works better in a Painkiller #2 anyway, but I do miss the 95.5 proof in a big rummy Navy Grogs. I have just a bit of a bottle of 95.5 left that I found on a dusty liquor store shelf last year that I think will end up in a nice grog to commemorate Black Tot Day next month.

[thirtyoneknots]

Well, they didn't drop their proof so much as they stopped exporting the 95.5 to the US.

Same net effect. Same reaction from me.

[EvergreenDan]

Unless Donna is working on a designer vodka, it wouldn't really apply. The industries don't really overlap.

Google Copyright dilution, not copyright infringement. There is no requirement that the industries overlap or that there is any reasonable chance of confusion. Copyright dilution is what keep you from creating Exxon sports drink, for example.

No jest. I don't see how Donna Karan doesn't have a case, should they wish to pursue it.

[KD1191]

Unless Donna is working on a designer vodka, it wouldn't really apply. The industries don't really overlap.

Google Copyright dilution, not copyright infringement. There is no requirement that the industries overlap or that there is any reasonable chance of confusion. Copyright dilution is what keep you from creating Exxon sports drink, for example.

No jest. I don't see how Donna Karan doesn't have a case, should they wish to pursue it.

The argument would be for trademark dilution, not copyright. Donna's trademark is on DKNY. If she'd been born Patty, she'd have a very good case, but as it stands it'd be a very tough argument to win. Similarly, if I made Axxon energy drink, Exxon would be fighting an uphill battle. Unless the mark being used is identical to the 'famous mark', you generally have to show actual confusion in the market, which is not a simple task. Now, if PKNY decides to re-style itself a 'Fashion Bar' and installs a runway and clothing racks, it's playing with fire. Similarly, if I advertised Axxon with oil-related imagery, it could tilt the case toward Exxon. But, as it stands, I don't see a case Donna could win. I'm not a lawyer, but I work for a couple hundred IP attorneys, so I tend to have a pretty good grasp of such subjects.

Edited July 1, 2011 by KD1191 (log)

[daisy17]

Unless Donna is working on a designer vodka, it wouldn't really apply. The industries don't really overlap.

Google Copyright dilution, not copyright infringement. There is no requirement that the industries overlap or that there is any reasonable chance of confusion. Copyright dilution is what keep you from creating Exxon sports drink, for example.

No jest. I don't see how Donna Karan doesn't have a case, should they wish to pursue it.

The argument would be for trademark dilution, not copyright. Donna's trademark is on DKNY. If she'd been born Patty, she'd have a very good case, but as it stands it'd be a very tough argument to win. Similarly, if I made Axxon energy drink, Exxon would be fighting an uphill battle. Unless the mark being used is identical to the 'famous mark', you generally have to show actual confusion in the market, which is not a simple task. Now, if PKNY decides to re-style itself a 'Fashion Bar' and installs a runway and clothing racks, it's playing with fire. Similarly, if I advertised Axxon with oil-related imagery, it could tilt the case toward Exxon. But, as it stands, I don't see a case Donna could win. I'm not a lawyer, but I work for a couple hundred IP attorneys, so I tend to have a pretty good grasp of such subjects.

Nailed that! (I think that for famous marks it's a likelihood of confusion inquiry, but much easier to prove b/c of the familiarity with the mark.) I think DKNY would have a hard time getting them to stop, but they would have an argument.

[EvergreenDan]

Yes, trademark dilution, not copyright. My brain typo. Wikipedia on Trademark Dilution

The names are graphically, rhythmically, alphabetically, and phonetically similar. I don't think there is any doubt that the intention was to play on the name recognition of DKNY. You'd think a prudent entrepreneur smarting from an IP suit would have chosen a different name.

Edited July 2, 2011 by EvergreenDan (log)

[daisy17]

Yes, trademark dilution, not copyright. My brain typo. Wikipedia on Trademark Dilution

The names are graphically, rhythmically, alphabetically, and phonetically similar. I don't think there is any doubt that the intention was to play on the name recognition of DKNY. You'd think a prudent entrepreneur smarting from an IP suit would have chosen a different name.

Unfortunately, it's not that simple. You'd want to know what other "KNY" marks exist currently. The bar would have an argument that "NY" stands for New York, and they are a NY bar, and that DKNY can't claim exclusive use to the initials of a state. You have no idea what their intent was - in fact, they'd probably argue that PK just stands for Painkiller and it has nothing to do with DKNY. Also, PKNY is using a design mark that looks nothing like DKNY's use. They'd have many arguments to make. A trademark infringement or dilution analysis is a multi-layered, complex, factual analysis - of facts that we don't have. All I can tell you is that it's rarely a simple analysis.

[EvergreenDan]

Are you really saying that you think the choice was prudent, given that a little company like Pussers just forced them to change their name and Donna Karan must be a big company with deep pockets?

[Splificator]

Painkiller can also point out that their logo is in no way derived from DKNY's and in fact is meant not to echo that or trade on it but rather the common NYC hardcore punk graffiti/logo/rallying symbol from the 1980s and 1990s, HCNY, with the letters grouped around an X in the same way.

[Eldictator]

Take advice from Homer Simpson and the flaming Moe