Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Protecting Product Packaging and Product Configuration

By Marcus S. Harris
November 01, 2017

On Dec. 16, 2016, Diageo North America, Inc. (Diageo) sued Sazerac Company, Inc., and Sazerac Brands, LLC (collectively Sazerac) in the United States District Court for the Southern District of New York, claiming, among other things, that Sazerac had committed willful trademark infringement, trade dress infringement, unfair competition and deceptive trade practices. Diageo North America, Inc. v. Sazerac Company, Inc., No. 16 CV 09747 (S.D.N.Y.).

Diageo alleged that Sazerac had redesigned its Dr. McGillicuddy's whiskey bottle and label to knock-off the appearance and unfairly trade on the reputation of Diageo's BULLEIT® brand bourbon and rye whiskey and its distinctive canteen-shaped bottle. According to Diageo, the BULLEIT canteen-shaped bottle, with its embossed lettering and rectangular label (the Bulleit Trade Dress), is intended to evoke the rugged look and feel of the American frontier. Diageo owns incontestable U.S. Trademark Registration No. 3,075,812 for the three dimensional configuration of the BULLEIT canteen-shaped bottle. In addition to injunctive relief, and the destruction of all of Sazerac's allegedly infringing materials such as labels, signs, prints, packages, and advertisements, Diageo sought unspecified money damages.

According to the complaint, Diageo has used its Bulleit Trade Dress since at least as early as 1999, and claimed that the Bulleit Trade Dress is non-functional and inherently distinctive. However, the court never reached a decision because the parties settled the case and dismissed it on April 25, 2017. According to press reports, the settlement required Sazerac to modify its bottle design.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Legal Possession: What Does It Mean? Image

Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.

The Stranger to the Deed Rule Image

In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.