February 8, 2022
Over the years, spirited disputes have occasionally arisen involving a family name and an alcoholic beverage. There have been cases concerning wine makers (Jordan Vineyard & Winery v. Ehren Jordan Wine Cellars, Case No. 3:01-cv-03647-WHA (N.D. Cal.); Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731 (2d Cir. 1978)) and bourbon distillers (National Distillers Products Corp. v. K. Taylor Distilling Co., 31 F. Supp. 611, 614 (E.D. Ky. 1940)), among others. The latest such case is being litigated in Kentucky, the heart of bourbon country, and concerns the use of a well-known name in the bourbon industry.
The facts in Heaven Hill Distilleries, Inc. v. Log Still Distilling, LLC, No. 3:21-CV-190, 2021 WL 5985253 (W.D. Ky. Dec. 16, 2021), involve the brand name “J.W. Dant” and the almost 200-year history since Joseph Washington Dant distilled his first bourbon by pouring it through a hollowed poplar log. In a detailed opinion that spans 58 single-spaced pages, the District Court tackles questions like, “When can you use your own family name as the brand for your beverage?” “Can you create an affiliation with a family ancestor who established the brand and the business?” “What if your relatives sold that brand a generation or two ago?”
In ruling on the Plaintiff Heaven Hill’s motion for a preliminary injunction, the Court recognized that this is “an affiliation case.” The Defendant Log Still, which was established by descendants of Joseph Washington Dant, entered the bourbon distillery world in 2018. At inception, Log Still tried to tie itself to the original Joseph Washington Dant’s old brand and heritage – which dated back to 1836. The problem was that the “J.W. Dant” brand had been owned for decades not by Mr. Dant’s descendants, but by Plaintiff Heaven Hill.
Evidence from industry sources demonstrated that Log Still’s marketing plan worked. Consumers and media alike had confused the two competing entities. The Court ultimately issued a preliminary injunction enjoining the Defendant from using the family name to associate itself with the old “J.W. Dant” distillery legacy. In addition, the Court prohibited the Defendant’s founder, John Wallace Dant III, from using his own name and initials (i.e., “J.W. Dant”) in marketing.
The Court began with a long history of Kentucky distillers affixing their names to the bourbons they produced. The Court explained how J.W. Dant distilled his bourbon in 1836 using the novel method on which the brand’s origin story rests. Until 1943, the family kept up the tradition and continued to produce and sell bourbon. At that point, the Dant Distillery Company – which was founded in 1870 – sold the J.W. Dant brand, the J.W. Dant trademarks, and the goodwill associated with the brand to United Distillers of America. After a further sale to Guinness and other intermediate entities, the Plaintiff Heaven Hill acquired the business, trademarks, and goodwill in 1993. Heaven Hill sold bourbon under the brand name “J.W. Dant” continuously from 1993 through today.
The Defendant Log Still was founded in 2018 by the seventh-generation descendants of J. W. Dant. The Court summarized the many ways in which the Defendant attempted to affiliate itself with the Dant legacy. Not only did Defendant name itself after the Dant distillation method of using a hollow log; it also built its distillery on former Dant land that it named “Dant Crossing,” and repeatedly linked itself to the Dant legacy in its marketing.
For example, the Defendant’s “Log Still Distillery” website referenced a “heritage” and “Dant legacy,” and asserted that “[o]ur story … begins with our forefather Joseph Washington Dant” who “gave birth to the Dant family’s place in bourbon lore with a legacy all our own.” The website also claimed that the “rebirth of the J.W. Dant legacy” was marked by “the latest generation of Dant distillers[.]” Defendant’s social media proclaimed, “we’re the Dant family and we’re back in the bourbon business.” In addition, Defendant obtained the domain name “jwdant.com” and used it to redirect Internet traffic to its “Log Still Distillery” website. Although Defendant named its bourbon “Monk’s Road,” the bottle referenced “a story of heritage & revival” and expressly described the original J.W. Dant legacy dating back to 1836. In implementing this branding strategy, the Defendant and its marketing team were aware that their choices and actions could lead to threats and legal challenges from Heaven Hill.
Based on a thorough analysis of the law and the facts, the Court granted Heaven Hill’s motion for a preliminary injunction. The Court’s finding of likelihood of confusion rested in large part on the actual confusion that had already occurred. The Court cited several instances of actual confusion in social and traditional media. Even though Log Still had only existed since 2018 and only started selling products in 2021, commentators who had seen Log Still photos asked, “is that [the] J. W. Dant I used to drink?” and”[w]hat about JW Dant…is that coming back?” An industry blog went so far as to run a story with a headline referring to “Log Still (formerly J.W. Dant).”
The Defendant’s intent also greatly influenced the Court’s likelihood of confusion analysis. The Court underscored that Log Still knew that Heaven Hill owned the J.W. Dant brand, yet still wanted a name that “related to the history of the family” that and allowed it to “create[ ] direct ties to the J.W. Dant name whether the brand can be used or not[.]” This and other evidence was all “legally damning” (and “about as close as many lawyers will ever come to a smoking gun”) because it expressly showed that Defendant wanted to reap the benefits of the “preexisting J.W. Dant brand and its associated goodwill – both owned by Heaven Hill.” The record also showed that Log Still “brazenly used J.W. Dant marks as reference points in the design of its own marks.” And the Court characterized Defendant’s “purchase and redirection of jwdant.com [ ] to its own website” as “res ipsa loquitor” evidence of intent.
In the end, the Court concluded that Defendant did not have any right to use the name J.W. Dant, even though it was not in fact using that name for the brand of its bourbon. The fact that “J.W. Dant” was also the name and initials of Defendant’s founder John Wallace Dant III was irrelevant. As the Court said, Defendant “is still using [the original] J.W. Dant, his story and the date 1836 to sell products and reap goodwill associated with the J.W. Dant brand.” The Court further noted that [junior] users’ actions that claim another organization’s history as their own implicates the goodwill of the mark they are prohibited from using.” Thus, “once a business sells its trademark and goodwill, the prior owner may no longer refer to the history of the business.”
The Court ultimately enjoined the Defendant from referencing J.W. Dant and his story – as well as all references to 1836 – on its products, labels, and logos. The Court also ordered Defendant to cease using the jwdant.com domain name, and to refrain from associating itself with the J.W. Dant legacy. The Court did permit Defendant to refer to J.W. Dant factually, i.e., “to accurately describe names, location and history” as well as family connection. The Court also enjoined Defendant from using the initials “J.W.” out of context, and would only allow it to use the scion Joseph Washington Dant’s full name in its marketing. In addition, Defendant was required to expressly and conspicuously disclaim any affiliation with or ownership of the J.W. Dant brand.
A takeaway: use your family name in a manner that is not likely to confuse, and do not associate your name with the well-known family tradition or legacy of a competitor. Also, if the family name belongs to a competitor, do not forget to use a disclaimer to clarify that there is no affiliation with your ancestors’ business or competitor that owns the mark. Bottoms up!
Author: Rory Radding