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In Bulleit Bottle Trade Dress Trial Deutsch Mocked Cork Now Detailed Post Trial Order

By Matthew Russell Lee, Patreon Maxwell Book
BBC-Guardian UK - Honduras - ESPN NY Mag

SDNY COURTHOUSE, Sept 7 –A rare whiskey bottle trademark trial has concluded before U.S. District Court for the Southern District of New York Judge Louis L. Stanton and Inner City Press covered it, exclusively.  

 Diageo North America, Inc. beyond Smirnoff, Guinness and Johnnie Walker has Bulleit brand whiskey as one of its flagship products.

It is name after Augustus Bulleit who sold high-rye whiskey from a tavern from 1830 to 1860, described in the complaint at the days of the "Old West."   Deutsch during the trial claimed, among other things, that its Redemption's cork is more prominent.

The jury verdict was mixed - no likelihood of confusion or bad faith found, but yes, dilution in the value of trade dress under both Federal and New York State law.

Later on June 1, this: "Hi Matthew,     We have noticed your previous coverage of the Bulleit trial and we wanted to share with you a statement regarding the verdict attributable to a Diageo spokesperson: 'The jury concluded that Diageo’s Bulleit trade dress is valid and protectable, and that the packaging, including its iconic bottle, is famous and Deutsch’s Redemption packaging diluted Bulleit’s famous trade dress.   In finding in favor of Diageo on these claims, the jury rejected all of Deutsch’s counterclaims. 

'Based on this verdict, Diageo intends promptly to pursue all available legal remedies, including the entry of an injunction to halt use of any advertising, promotion or sale of the current packaging, and to require a packaging change for the accused Redemption line of products.'" 

On September 7 from Judge Stanton, this: "OPINION, ORDER & INJUNCTION re: [450] MOTION for Permanent Injunction / Plaintiff Diageo North America, Inc.'s Notice of Motion for a Permanent Injunction. filed by Diageo North America, Inc. Accordingly, IT IS HEREBY ORDERED THAT: Deutsch Family Wine & Spirits and Bardstown Barrrel Selections LLC, their agents, and any third parties who are in active concert or participation with the manufacture, sale, or promotion of Redemption who receive notice of this injunction are permanently restrained and enjoined nationwide from, directly or indirectly, manufacturing, selling, offering for sale, distributing, licensing, importing, exporting, advertising, promoting, displaying, or using in commerce, including in stores, online, and in physical, digital, or recorded advertisements or promotional materials, the Diluting Redemption Packaging at issue in this litigation and any other colorable imitation thereof, except for the product that on the date of entry of this Order has already been transferred to distributors, retail stores, bars, or restaurants.

That product in the Redemption packaging that has been transferred by the date of entry of this Order may continue to be sold, but none thereafter.

Defendants are directed to undertake a change to the Redemption glass bottle and packaging that will convey a substantially different commercial impression, but may retain those unchallenged aspects of the package like i) the brand name Redemption or terms such as "pre prohibition" or "rye revival;" ii) the label, other than its border; iii) the embossed rye "frond;" and iv) the concave back of the bottle.

If defendants do not create a meaningfully changed Redemption Packaging, such that it cannot dilute the Bulleit trademark and trade dress, Deutsch may be directed to use its present upper-tier barrel-proof Redemption whiskey bottles, with only minor changes sufficient to signify that the bottle does not contain its present premium product. This Court shall retain jurisdiction over the parties and the subject matter of this litigation for the purpose of interpretation, enforcement, or modification of this Permanent Injunction. (Signed by Judge Louis L. Stanton on 9/7/2022)." We'll continue to follow this.

On the witness stand on May 16 was the bottle and label's designer, cross examined by counsel for the defendants Deutsch and Bardstown Barrel Selections, LLC. 

  The line of questioning should to show the civil jury that the designer had in essence copies the design from a bottle in a museum.

But the design said he, he had modified the design. He went to the museum, he said, to learn about the history of American whiskey. 

 There was a dispute about what constitutes an oblong versus flask-shaped bottle.  

The courtroom was surprisingly full.

On May 17, on the stand was a witness from Deutsche, responding on emails about the placement in liquor stores in Minnesota and New Jersey (Super Buy Rite of Williamstown, NJ) of Redemption next to Bulleit. The witness said he was not aware of customer confusion but he understand Diegeo alleges it.

On May 18 there was cross-examination about the "trade dress" of Bulleit, St. Peter's, Gilbey's and a photo of Fireball was flashed to the jury. There were an array of bottles on the witness stand, as in a bar.

On May 19 Ms. Kilgore of Deutsch described the Redemption bottle as "manly" as they found people wanted this whiskey, a bottle with broad shoulders. Also, a visible cork to show it's premium. She dissed Bulleit.

On May 20, it was expert versus expert. A slide entitled "Problems with Mr. Reilly's Calculations" was shown to the jury. The witness said, Inventory is an asset. One of the jurors, on the top row, nodded. Deageo wants $21 million.

On May 23, the witness on the stand laughed when handed a large document she had previously signed. She said she knew they had an agreement on the intellectual property of the Redemption bottle, but didn't remember the patent application. Questioning got into the embossing.

On May 24, on the stand was a market research expert, Matthew G. Ezell, who conducted an "evergreen" study about Bulleit's trade dress and possible customer confusion. Meanwhile the parties agreed to withdrawn some exhibits.

On May 25, on the stand was a witness testifying to a summary chart created from Redemption's sales numbers, before and after the new label / bottle.

On May 26, there was video testimony of an expert on trademark law and process. He said has reviewed the papers in the case, and know about trademark applications being denied for lack of distinctiveness.

On May 31 in closing argument Deutsch's counsel told the jury that Diageo had lost any right to claim trade dress protection, as it had not similarly gone after Fireball. He noted that other products once trademarks now aren't, pointedly mentioning kerosene as an example.

The case is Diageo North America, Inc. v. W.J. Deutsch & Sons, Ltd., et al., 17-cv-4259 (Stanton)  


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