Brewery Law ❘ A Beer Law Blog from a Beer Lawyer

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Helping Shield Yourself From Secondary Liability for Copyright Infringement: Registering an Agent

Posted on | April 7, 2014 | No Comments

CopyrightWebsites and blogs are a great way for breweries to interact with devoted fans and earn new ones, too. And, for the most part, if you’re the one pushing out information, photos, and whatnot to the public, then it’s easy to make sure things are squared away from a copyright perspective. But, if you solicit comments or photographs from others and display that user-generated content on your website, you could actually be on the hook for your users’ copyright infringement.

Realizing that sites rich with user content, like what we now know as YouTube, could never exist with a super-rigid law, Congress passed the Digital Millennium Copyright Act (DMCA) back in 1998. The good news is, the law helps to protect website owners from secondary liability for someone else’s copyright infringement. In other words, if someone uploads an infringing video onto YouTube, then YouTube has a way out of getting hit with a legit lawsuit every time a copyright owner finds infringing material. But, there’s a bit of a caveat.

Protection from someone else’s copyright infringement isn’t automatic. The DMCA requires that you take certain measures to get that protection, and one measure is registering a designated agent with the U.S. Copyright Office. It’s worth it if you’re even borderline uncertain about whether your website does, or might soon, feature user-generated content. Should a copyright owner ever find objectionable user-generated material on your website, they’d be required to contact that registered agent with specific information about the infringing material and where it’s located. Then, as long as you take it down expeditiously, and take a few other measures, the law would protect you. However, if you don’t designate an agent, you can’t get that shield.

If you’re ever curious about how to get in touch with a website that lacks clear contact info, the US Copyright Office’s list of registered agents can actually be pretty helpful. You can check it out here. To find out more about designating a registered agent, head over to this website. But, keep in mind that there are other requirements you must follow to get that DMCA protection, so it’s always best to check in with your lawyer to make sure you’ve absolutely covered all your bases.

Schlafly Goes to Trial with Sense of Humor Intact

Posted on | April 4, 2014 | No Comments

SchlaflyBeerSchlafly, brewing out of St. Louis, has been hitting headlines over conservative activist Phyllis Schlafly’s opposition to their trademark application. We reported on the dispute a couple of weeks back, and will note that the Trademark Trial and Appeal Board has how decided to let this case go through to a full-on trial.

Still, despite what must be a somewhat financially and even emotionally draining dispute (the Schlafly co-founder is actually Phyllis Schlafly’s nephew), it’s nice to see that Schlafly Beer can handle it all with a sense of humor. Evidently, the brewery always loves a good April Fools joke, and this year, it’s clear the pendent trademark dispute was on their minds.

Check out this YouTube video, where Schlafly co-founder Tom Schlafly explains their new registration for the word “Bee®.” They also posted the tongue-in-cheek photo above, warning brewers that they better “lawyer up,” and including the hashtag “CeaseAndDelish,” which they also kid about being a registered trademark.

Over the coming months, the parties to the proceeding will be working to prove that Schlafly either is or is not primarily just a surname. The TTAB’s currently scheduled discovery, disclosure, and trial dates have the Schlafly brewers ensnared in litigation all the way through to the end of November. Hopefully, they can keep that sense of humor intact through it all.

Protecting Your Brewery’s Tap Handles as Trade Dress

Posted on | April 2, 2014 | No Comments

Tap handles are potentially protectable under trademark law as trade dress. For fun, here's a link to one writer's list of interesting tap handles, many of which would be protectable: http://www.thrillist.com/drink/nation/the-best-craft-beer-tap-handles-in-america

Tap handles are potentially protectable under trademark law as trade dress. For fun, here’s a link to one writer’s list of interesting tap handles, many of are potentially protectable.

 

The Alamo v. Texian brewery dispute we reported about on Monday raised interesting issues, including the protectability of tap handle designs. It’s true, tap handles can be eligible for trademark protection, and they’re protected as what’s known as “trade dress.” Just like you can file a federal registration for your brewery’s name or beer names, you can also register certain kinds of your brewery’s trade dress for the utmost in protection. Depending on your tap handle designs, you really might consider doing it.

Trade dress is basically a symbol or device that is capable of carrying meaning, identifying the source or origin of a product. Think about the shape of a bottle of Jack Daniels, for example. There are a gazillion options for liquor bottles, but when we scan the back bar and see that square shape on a shelf, many consumers instantly think Jack Daniels. In fact, there’s been a recent Jack Daniels lawsuit about this very issue.

For breweries, there’s not much variance in bottle shape and size, so things like brewery names, beer names, and logo designs do much more branding work. Yet, we all know that many consumers first encounter a brewery when scanning an array of tap handles. If you’re seeking to register a basic wooden shape, it may not be protectable. The key considerations are whether the design is merely functional and also whether it’s distinctive. For example, if you’ve ever seen Goose Island’s 312 Urban Wheat tap handle, you’ll probably remember it. It’s an old-school hand-held phone receiver. Sure, it’s functional in that it’s easy to grab onto, but no more functional than a carved piece of plastic, metal, or wood. Another way of thinking about functionality is whether competitors would be put at a disadvantage because they can’t use the design feature—not something you can say about phone receivers. Likewise, Redhook’s Audible Ale features a distinctive microphone-styled tap handle. Putting the technicalities of the law aside, you can imagine the confusion if consumers went to a different bar, saw a phone or microphone tap handle behind it, but neither 312 nor Audible were on tap. That’s the sort of thing trademark law is designed to safeguard against.

Ultimately, tap handles are a great way to make a brewery stand out to consumers, also making them a prime candidate for brand protection. If you’re using unique tap handles, or thinking about it, it’s worth having a conversation with your lawyer about whether your design is eligible for trademark protection as registrable trade dress.

New Brewery Trademark Lawsuit in Texas: Alamo Beer Company, LLC v. Old 300 Brewing, LLC (Docket Number 5:14-cv-00285)

Posted on | March 31, 2014 | No Comments

On Friday, a new brewery v. brewery lawsuit was filed in the Western District of Texas. This dispute raises interesting issues, and also highlights again the importance of early clearance and registration of your desired brewery name and related materials, including your logo and even the look of your tap handles.

The dispute is between Alamo Beer Company and Texian Brewing Co., docket no. 5:14-cv-00285. Here’s a link to the complaint.

Alamo Beer Company, LLC v. Old 300 Brewing, LLC (Docket Number 5:14-cv-00285)

From the complaint, above is Alamo Beer Company’s original logo, below is their current logo.

 

Alamo Beer Company, LLC v. Old 300 Brewing, LLC (Docket Number 5:14-cv-00285)

Left is Texian Brewing Co.’s registered logo, right is the brewery’s tap handle design.

Alamo has been selling beer under the Alamo brand since late 1997. Since then, Alamo has used a silhouette of the Alamo as a part of its logo. Other Alamo-esque and very Texas imagery (stars, cannons) and phrasing (“Remember”) also help form the look and feel of the Alamo logo and trade dress. Alamo never registered its logo, but does have a registration for the word mark ALAMO (Reg. No. 74607465).

Sometime in 2011 or 2012, Texian Brewing began using a logo that features a silhouette of the Alamo. Likewise, the tops of Texian Brewing’s tap handles are carved into the silhouette of the Alamo, and they also feature a cannon, star, and other Texas imagery.

The complaint observes that on May 22, 2013, Alamo Beer Co. contacted Texian about the matter. Evidently, Texian didn’t reply to this first email and the next day, on May 23, 2013, went ahead and filed a trademark application for TEXIAN BREWING CO. along with a design mark for their logo, which again featured the silhouette of the Alamo. Note that in the application’s description of the mark, the brewer made no reference to the Alamo and generically referred to the silhouette as “a black and white design of a stylized roof outline.” This mark registered on January 21, 2014 (Reg. No. 85940608).

It’s unclear whether Alamo was aware of Texian’s trademark filing because Alamo never opposed Texian’s mark when it was published, though Alamo and Texian had been in contact during that time. Perhaps waiting until now was a strategic maneuver. We can’t know. But, the lawsuit does raise interesting issues.

Because Alamo has registered its ALAMO word mark, confusion about the silhouette could stem from that. Consider, for example, if a brewery were called Blue Octagon Brewing Company and another brewery started using blue octagons in its logo and on tap handles. Of course, this silhouette is not as tidy as that example, but for consumers in Texas—currently both breweries’ primary trading territories—that distinctly Alamo silhouette could have that same kind of significance.

We believe Alamo would have a much stronger case, and maybe could have avoided litigation in the first place, if it had registered its logo with the silhouette back when the brewery first started using it. Still, Texian’s registration is not a slam dunk for Texian. If the court finds consumer confusion likely between the two due to the logo, because Alamo is an unregistered senior user (unregistered at least with respect to the silhouette), Alamo technically would have superior rights in its existing trading territory—which sounds like most of Texas. Indeed, in its complaint, Alamo seeks to cancel Texian’s registration, and they have grounds, because technically Texian should have carved out Alamo’s existing trading territory when applying for its trademark. Of course, had Texian properly done so, Texian would have obtained a federal registration to use its Texas-themed logo…just not in most of Texas.

This is messy stuff, made messier because unfortunately the two breweries could not privately resolve this matter. And, though we can’t know for sure, it seems that early trademark clearance and early trademark registration could have prevented this costly dispute. As always, we will be following this lawsuit and will let you know how it progresses.

Referencing Celebrities in Beer Names and Labels: The Ozzy Dispute

Posted on | March 28, 2014 | No Comments

Ozzy LabelThis week, Black Sabbath rocker Ozzy Osbourne sent a cease and desist to a Baltimore-based brewery, Brewer’s Art. The letter involves a belgian strong ale the brewery refers to as Ozzy Ale. Had the “Ozzy” use been limited to the name, the C&D might have been a stretch. Here, however, the beer’s label art features an outstretched fist with O-Z-Z-Y spelled across the knuckles, just like the famous Ozzy’s real-life tattoo. The lettering/packaging is consistent with Sabbath-styled art, and the label also includes artwork of bats, a reference, no doubt, to the rocker’s certain onstage stunt.

We haven’t seen this dispute get picked up with too much commentary, and what commentary is out there tends to focus on potential federal trademark issues. It’s true that if consumers would likely be confused as to whether this beer originates from Ozzy Osbourne or is otherwise endorsed/sponsored by the rocker, there’s a trademark issue here. And, given the label art, the trademark claim has teeth. Had the brewery featured artwork of, say, a Black Lab with a story about their beloved childhood pet “Ozzy,” this sort of confusion claim wouldn’t be as tenable—of course, it would be important to know whether Ozzy-the-rocker holds a federal trademark and, if so, in what categories—if not, whether he has entered the beer or related markets. We can also imagine that Ozzy Osbourne’s C&D included a mention of trademark dilution, contending that his “Ozzy” mark is famous and this use on beer, even if unlikely to cause confusion, would dilute his branding firepower.

Potential Lanham Act claims aside, this is a good chance to mention another sort of right involved here that the C&D no doubt referenced: the Right of Publicity. Famous folks, and even you and I, have a right to exploit our likenesses for commercial advantage. One classic case in this area involves Samsung and Vanna White. In advertisements, Samsung was showing its VCRs (we said the case was classic) in futuristic settings. The ad depicted a robot dressed in a wig, gown, and jewelry specifically selected to resemble Vanna White’s hair and dress, and was posed next to a game board that’s instantly recognizable as the Wheel of Fortune game show set. The problem with the ad is that it wasn’t meant to depict just any letter-turning gal in a dress, it was meant to depict Vanna White; Samsung’s ad impermissibly appropriated her identity—at least enough so that the 9th Circuit overturned an earlier summary judgment entry in Samsung’s favor.

Turning to the Brewer’s Art and Ozzy Osbourne matter, it’s possible that Brewer’s Art genuinely wanted to pay homage to Osbourne and thought Osbourne’s spunky personality befit its fiercely spunky brew. But, good faith aside, the name along with the label art arguably went too far, capitalizing on Osbourne’s fame and/or perceived affiliation to help brand and sell the beer. Hopefully, the two sides can work this one out, because the label art is pretty rad, the beer sounds pretty good, and maybe the dispute’s publicity could be a win for all parties involved.

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