Tag Archive for: Infringement

Heaven Hill Distillery Knocks On Bob Dylan’s Door Over His Heaven’s Door Whiskey For Trademark Infringement

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Trademark disputes in the alcohol industries are often times absurd enough to make the comments section question whether everyone involved was simply drunk. While I’m sure the lawyers on all sides tend to be sober, every once in a while you read a claim in a big-boy legal document that makes you pause and wonder. And, then, sometimes the dispute centers around a public figure punning off his own notoriety, making the trademark claims extra ludicrous.

Meet Bob Dylan. Bob used to be a counterculture folksinger hero that eschewed the trappings of materialism and sang as one of the original social justice warriors. Present day Bob sings songs on car commercials and owns a Whiskey brand. And, hey, Bob’s allowed to make money, no matter how jarring this might be to those born decades ago. His Heaven’s Door Whiskey is, sigh, allowed to exist. It’s also allowed to fight back against the absurd trademark lawsuit brought by Heaven’s Hill Distillery over its logo and trade dress.

Heaven Hill Distillery has filed a trademark infringement lawsuit against Heaven’s Door Spirits, a whiskey line co-owned by Dylan that was released earlier this year. The company’s name is a reference to Dylan’s 1973 song Knockin’ on Heaven’s Door.

The lawsuit, filed Friday in U.S. District Court in Louisville, argues that the Bardstown-based company was founded by the Shapira family shortly after prohibition ended in the 1930s and has used the trademark for more than 80 years. A Heaven Hill attorney sent a cease-and-desist letter to Chicago-based Heaven’s Door in April, saying the start-up distillery’s use of its trademark “will create a likelihood of confusion” with the Kentucky bourbon brand’s products. The letter specifically notes that Heaven’s Door has introduced a “stacked” logo similar to the one used by Heaven Hill.

Dylan’s company responded saying it didn’t believe there would be any public confusion over the logos and trade dress and that it wasn’t going to be making any of the changes requested. When it comes to these disputes, it’s useful to actually put the entire products next to one another to see how similar they are. Simple logos can sometimes be squinted at and seen as similar, but on the question of confusion in the marketplace you really have to put the products side by side and imagine yourself in a store trying to decide between the two. I’ve done that for you below.

It’s frankly hard to imagine how anyone is going to be confused between these two liquor brands. The bottle shape is different. The label placement is different. The fonts aren’t the same and neither are the color schemes for the labels. Even the logos themselves aren’t particularly similar, stacked or otherwise. And, of course, there is the mockup of the ironwork sculpting on Dylan’s bottle, modeled after his own iron sculpting artwork. Even the name of the brand is a reference to Dylan. How any of this adds up to market confusion is beyond me.

And, yet, Heaven Hill essentially wants to scuttle Dylan’s whiskey business altogether.

The lawsuit is asking a judge to grant a temporary injunction prohibiting Heaven’s Door from producing, distributing or marketing until the lawsuit is concluded. In addition, attorneys for Heaven Hill want a judge to force Heaven’s Door to “deliver up for destruction or other disposition all goods, packaging, containers, advertisements, promotions, signs, displays” with their company name.The suit is also seeking unspecified monetary damages.

Somehow, despite this suit, I would guess that Dylan’s whiskey will continue to be released.

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In-N-Out Sends Punny Cease And Desist Over Fairly Clear Trademark Infringement

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You may have heard the general mantra that “puns are the lowest form of comedy.” Heathens say that, because puns are great and, if I had my way, there would be a legal requirement to use at least one in every legal document this country produces. They can also be used to lighten up what would otherwise be heavy legal actions. Such is the case with In-N-Out Burger, which decided to respond to what is pretty likely trademark infringement with a pun-laden cease and desist.

We’ll start with the product that was likely infringing on In-N-Out’s trademarks, which itself involves some punnery.

The back and forth banter all started on July 12 when Seven Stills took to Instagram and posted a photo of its soon-to-be-released “barrel aged neopolitan milkshake stout.” The beverage’s logo featured In-N-Out’s famous red palm tree lining, arrow logo and the phrase “In-N-Stout Beer.”

In case you’re wondering just how clearly Seven Stills’ use of In-N-Out’s trade dress was, here is the brewery’s own Instagram post.

Barrel aged neopolitan milkshake stout coming soon. @innout

A post shared by Seven Stills of SF (@sevenstills) on

In case you’re somehow unaware of In-N-Out’s log and cup design, the In-N-Stout effort above is a very clear play on it:

So, yeah, despite the two companies being in different markets, this sort of use could still cause some kind of confusion and create an impression of affiliation between the two entities. If you really want to argue any of that, I suppose you can, but this is probably trademark infringement.

In-N-Out, which we have criticized in the past for some dodgy trademark behavior, deserves some credit here instead for firing off a cease and desist that certainly didn’t take itself too seriously.

After In-N-Out caught wind of the idea, its legal team crafted a cease and desist letter jam-packed with puns related to beer making.

“Based on your use of our marks, we felt obligated to hop to action in order to prevent further issues from brewing,” part of the letter read.

The C&D actually had way more puns than just those, however. Given the gentle and congenial nature of the C&D, in fact, Seven Stills made a point to post the entire thing to its Instagram account, as well as agreeing to alter its beer’s trade dress to remove In-N-Out’s branding from the can.

We count 9. Can you find them all?

A post shared by Seven Stills of SF (@sevenstills) on

If you can’t see that, it reads:

Dear Seven Sills Brewery & Distillery,

We at In-N-Out Burgers (“In-N-Out”) received multiple reports of your “In-N-Stout Beer” featured on your social media pages. The In-N-Stout Beer label features In-N-Out’s trademarks including our palm tree and arrow logos along with a substantial similarity to In-N-Out’s brand name. Based on your use of our marks, we felt obligated to hop to action in order to prevent further issues from brewing.

In case you are not already aware, In-N-Out owns multiple trademark registrations in these marks. As you may expect, we tap into a lot of effort in protecting our marks, which includes limiting their use by others.

Please understand that use of our marks by third parties ales us to the extent that this could cause confusion in the marketplace or prevent us from protecting our marks in the future. We hope you can appreciate, however, that we are attempting to clearly distill our rights by crafting an amicable approach with you, rather than barrel through this.

Accordingly, we request that you refrain from further use of In-N-Out’s marks by not selling or promoting items featuring our marks, and removing images of “In-N-Stout” and any other items featuring our marks from your website and social media pages. Please contact us as soon as possible, so this does not continue to ferment. Thank you for your time and consideration, and we look froward to resolving this in good spirits.

The lesson here isn’t that there wasn’t some other way to work this out beyond a cease and desist notice. No, the point here is that trademark issues can reach amicable ends if only companies are congenial with one another… and use as many puns as possible.

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Sony Finds Itself In Court After Bullying Film Studio Over Supposed ‘Slender Man’ Copyright Infringement

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The last time we discussed Slender Man on this site, it was when two young girls stabbed their friend and blamed it on this internet ghost story, leading to the site Creepypasta feeling it needed to remind everyone that fiction is fiction and not the writings of a Satanic cult. Only briefly discussed in those writings was the origin of the Slender Man meme, which started as a Lovecraftian ghost story on the Something Awful forums by Eric Knudsen, who produced two photoshopped images of people being stalked by a faceless slender creep-bomb and added some fake quotations to make something of a story out of them. From those two photos and brief captions, the internet essentially took over, building entire stories and lore around Slender Man to the point where the whole thing is a wildly popular internet meme and ghost story staple.

So of course Sony Pictures bought the rights to the story from Knudsen and will now presumably ruin it all in a major motion picture. And that would be only mildly irritating, except Sony is also trying to bully a smaller studio, Phame Factory, out of producing its own horror movie, claiming it now has the copyright and trademark rights for Slender Man. This has resulted in Phame Factory suing Sony to get a court to declare its work not infringing.

The plaintiff in the case is Phame Factory, which had planned to digitally distribute a movie titled Flay only to get served with several cease-and-desist letters from Sony, which alleges that the main character in Flay blatantly copies the mysterious Slender Man, its bigger-budget horror flick set to be released Aug. 10. Phame Factory is now seeking a declaratory judgment that its promotion, distribution and advertisement of Flay doesn’t infringe Sony’s trademarks and copyrights. What’s more, Phame Factory asserts that Sony’s IP rights “are either indefinite, encompass free to use by all public domain property or lack the requisite legal requirements to be protectable and enforceable.”

What makes this case so intriguing is the origins of “Slender Man.”

There are all kinds of reasons why the court should side with Phame Factory here. The most straight forward of those reasons is that its own movie, Flay, doesn’t actually directly name or pertain to the Slender Man mystique that Knudsen developed. Yes, it features a similar generic character as the “monster”, a thin, faceless man. But that’s about as generic as it gets in ghost stories. Hell, the whole reason why Knudsen’s minimalist creation took off in wider internet culture was because of how vague a lump of clay it was for the creation of others.

And the creation of others is very much the second factor in all of this, not to mention the question about exactly what Knudsen had the rights to actually sell. The filing itself is essentially a repetition of Phame’s repeated request to Sony to explain what in the hell exactly it thinks is infringing in any of this, where Sony has refused to reply with anything other than, essentially, Flay’s existence. The problem for Sony here is two-fold. The bad guy character in Flay has marked differences with the Slender Man character other than a generic creepy appearance. On top of that, of all of the lore around Slender Man and that character archetype, the vast majority of it was not created by Knudsen, the person who signed over the rights to Sony.

If the Phame Factory case goes far, there could perhaps be similar exploration about who contributed what — and under what licensing scheme — back in 2009 on a message board. For now, Sony heads into a film release with an intriguing challenge to its intellectual property.

Here’s the summary that can best sum up how absurd Sony’s bullying is. Sony is now in court after threatening the makers of a film depicting a character that isn’t the same, over depictions that aren’t copyrightable generally, and over a character it bought the rights for from a person who barely created it in the first place.

Copypasta.

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Cisco dents Arista again with patent infringement ruling

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A US trade judge ruled today that Arista Networks infringed on two Cisco switch patents – the second important victory the networking giant has won against Arista in their ongoing legal confrontation since it began in 2014.

U.S. International Trade Commission Judge MaryJoan McNamara issued the so-called “initial determination” on the case which now must be reviewed by the ITC. In the end should the ITC find against Arista its switches could once again be banned from import into the US. The ITC you may recall ruled against Arista in another part of this case and between June and August the company could not import those products. In November Arista announced that US Customs has given it permission to resume importing its networking gear in the United States.

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