You Don’t Have Jack: Small Tennessee Distillery Sued Over Label and Shape of Bottle By Jack Daniel’s

Unknown253006We have another trademark fight where a major company demands the sole right to a common feature or phrase or lettering. In this case, it is Jack Daniel’s Tennessee whiskey that is going after the small distiller of Popcorn Sutton’s Tennessee White Whiskey. The objection is that the white whiskey named for a famed Appalachian moonshiner is using a square-shaped bottling with similar labeling that looks like the square-shaped bottle of Jack Daniel’s.

randalls_2266_3417680brbon_jac1My opposition to the ever-expanding trademark and copyright laws is well known. (For a prior column, click here). Common phrases and symbols are being snatched up as Congress and the Obama Administration continue to yield to every demand for higher levels of penalties and prosecutions. In this case, the company appears to be claiming the right to a bottle shape. However, there are only a few basic bottle shapes as a practical matter for selling and shipping such products. Plenty of products are sold in similarly shaping containers.

The small distillery used to seal their product in mason jars. Ironically, I sometimes buy moonshine for a cocktail that I make called “The Big Daddy.” Various moonshine products are sold in mason jars but there is not a claim of copyright or trademark violations.

402891_169893333116752_1415154613_nMarvin “Popcorn” Sutton would not have stood for such muscle play. The moonshiner wrote a paperback called “Me and My Likker” and recorded videos on how to make moonshine. I have previously read about Sutton who took his own life in 2009 rather than go to prison for making white lightning. I must confess a family interest because I have moonshiners on both sides of my family — both the Irish and Italian sides.

Jack Daniel’s insists that people will be confused by the products and they do have strong similarities. Sutton has used similar lettering, though this lettering is reflective of the signs from the eighteenth century. Notably, the specific font is called by some font sites “the Jack Daniel’s font.” One site notes:

On the Jack Daniel’s Label, various fonts are used for different parts. Its wordmark “Jack Daniel’s”was designed using a serif font, which is very similar to a font called Black No. 7 designed by Stefan Huebsch. The font used for the cursive “Tennessee”is very similar to a font called Jackie_regular Alternative by Dario Muhafara. Both fonts are commercial fonts and you can purchase and download them here and here.

. . .

Unfortunately, we are currently unable to find a free alternative or a font similar to the commercial font identified [in the label]

Trademark laws are designed to avoid consumer confusion and use about a dozen common criteria to determine if there is a “likelihood of confusion.” The most obvious test is a comparison of the appearance, pronunciation, meaning, and commercial impression of the respective marks. There are obvious similarities in the product but also differences. There is also the question of the relatedness of the goods or services. If the goods are satisfying the same purpose or need or use, the change of confusion is greater. Obviously, these goods are closely related. A third test looks at the sophistication of the purchasers or consumers. Would most whiskey drinkers be confused or realize the difference. After all, Jack Daniel’s is something of an icon. Would a regular whiskey drinker pick up Sutton’s in confusion?

California-based Jack Daniel’s Properties Inc., is a subsidiary of Brown-Forman Corp. (That’s right, it is California based!). Jack Daniel’s is the flagship brand of Louisville-based Brown-Forman, which sold 11 million cases of Jack Daniel’s Black Label Tennessee Whiskey last year. Jack Daniel’s whiskey is produced in Lynchburg, Tenn.

Brown-Forman spokesman Phil Lynch has stated “We’ve taken action against many individuals and companies all over the world for infringing in the Jack Daniel’s trademark. We are vigorous in our defense of all our trademarks, and especially Jack Daniel’s.” I do not doubt it, but the question is whether the shape of a bottle in a simple square form should be protected.

What do you think? Would you decide differently in terms of the labels as opposed to the bottle shape?

35 thoughts on “You Don’t Have Jack: Small Tennessee Distillery Sued Over Label and Shape of Bottle By Jack Daniel’s

  1. There is little similarity. Perhaps JD’s real motive is to use their legal muscle to squash a nascent competitor. Tie them up in court, hurt them financially.
    Hey Jack, my whisky is Jameson’s. So sod off, Teabillies.

  2. How can JD sue, when labels and bottle shape, color and sizes, must be approved prior to use, by BATF&E?
    Popcorn’s products are excellent. Personally, I prefer Everclear 190 Proof (95% Alcohol).
    JD doesn’t like the competition due to marketing and now the market is moving towards the smaller makers who put care into some very high quality products.
    If J.B. is still running Popcorn Sutton Distillery, he can argue Daniels has utilized so many bottle shapes that almost nothing is left and, there are many others using black color labels and Americana script designs.
    The government wants taxes, the people want high quality products.

  3. This is equivelent to Apple suing Samsung… because both of their tablets are rectangular……………..

  4. I think you would have to be drunk in the first place to confuse which one you are buying. If I liked whiskey.. I would choose to try the “popcorn” sutton as I think Jack Daniels is the bottom of the barrel as far as whiskey goes. If Jack Daniels wins this lawsuit ( do not think this will happen) then will they next sue Evan Williams for their similarities of label design? And shape of bottle?

  5. The use of intellectual property law to destroy competitors has become rampant. Small business that have been operating for decades find themselves faced with multimillion dollar law suits and legal bills because someone registered a mark or name last week and wants to be compensated for their legal acumen and take the good will of the business without paying for it. The old mom and pop folds under the weight of the legal assault. That’s justice for you! As to Obama’s complicity, has he ever faced a corporates demand and said no? Has he ever shied away from giving a corporation a leg up or bail out?

  6. There was a memorial concert in Knoxville after Popcorn’s death where I had the opportunity to sample one of his last batches. There was some angry talk about how it took the ATF driving a good man to suicide before the laws relating to moonshine were finally changed.

  7. There is one simple law of geometry that seems to be overlooked. Square bottles are the most efficient shape to ship in a square box. There is more glass bottle contact with the cardboard dividers, thereby insuring any impact during shipping will be distributed over the largest possible area. Risk of breakage is reduced, as well as the overall size of the shipping container. That is more economical in terms of raw materials used.

    Copyright laws need to be revisited. The rubber stamp Congress has passed some draconian copyright laws. When I wrote the story of Kirby Cowan and the airmen of Buchenwald, I found a photo of the whole crew of his plane, with their B-17 in the background. Every single crew had their picture taken, usually before their first mission, because some never made it back. Guess what? That Army Air Corps photo taken by an Army photographer back in 1943 has been copyrighted by a veteran’s group who run a web site. Somebody who knows more about this than I do can please explain how they can do that.

  8. Junior Johnson is a local hero. He was one of the moonshiners who evaded the “revenooers” on these mountain roads in his souped up car. Those guys started racing each other on weekends to see who had the fastest car. Those races started being organized about a half-century ago when they started handing out prizes. We now know them as NASCAR.

    The Feds finally caught up with Junior and he was convicted, but got a Presidential pardon. One of the few things Ronald Reagan did right. Junior Johnson now sells his moonshine legally as “Junior Johnson’s Midnight Moon.” One weekend, when attending the big NASCAR race at Bristol, he stopped by a local package store and autographed every single bottle of his ‘shine they had in stock. Talk about a collector’s item. To their credit, the store did not jack the price, but sold them all at regular price. I missed out on getting the last one by minutes. I have trouble imaging Junior Johnson going after somebody for trademark infringement. Difference between good ol’ boys and corporate beancounters.

  9. The same thing happened in Amsterdam where a famed hooker who was also a good looker, which was her name in Dutch, sued some brassiere company for showing a set of breasts which looked like hers. No face was involved in the ad.

  10. Unless the type mode is copyrighted and the square bottle is patented, then jumpin Jack Daniels needs to be slammed down in a motion for summary judgment and perhaps an injunction against them for interference with moonshiners right to privacy under the Ninth Amendment.

  11. Jack Daniels is overrated and an example of great word of mouth marketing. It helped that it was Frank Sinatra’s favorite. I am a bourbon drinker. Brown-Forman makes an obscure brand of bourbon named, Old Forester. I was introduced to it by a juvenile court judge in KC. Ward Erwin was a retired FBI agent turned judge. He had the wisdom of Solomon and the street smarts of a gangbanger. Old Forester was his drink. When Ward was dying of cancer he did it w/ dignity, humor, and honesty. We were all sitting in a bar, drinking Old Forester, during one of our last “board meetings.” You could talk about death w/ Ward. That tells you a lot. Someone asked him what were some of the changes he’s made knowing he wasn’t going to be around much longer. Ward said, “I buy those travel sized toothpaste and deodorant.” Truly strong people do not let tragedy, sickness, pain, death, define them.

  12. Any publicity is good advertising…..for both…. But, I don’t really have a dog in the race…. But when I drank it didn’t really matter what label was on the bottle…..

  13. My father was a bourbon drinker and so was I until the age of 21. Jack Daniels was my brand, but back then it was not at the top of the bourbon scale, but it was cheaper than the good stuff. Nick is right it was Sinatra that made it “cool” and popular. Old Forrester is good, but so is Wild Turkey. The trouble I had with bourbon as I did with all brown whiskeys was that they occasionally made me sick. I switched to tequila in the late 60’s and found it never upset my stomach. But enough reminiscing and to the case at hand.

    OS is correct about the bottle shape. Much better for packing and reducing breakage. There are some bottle shapes that should be considered ubiquitous like Haig & Haig Pinch, or Crowne Royale. They should be allowed copyright.
    JD not so much. Also the labeling is not really deceptive since on JD the spelling of the name is the first thing ones eyes move to when perusing the bottle. There is no way “Popcorn Sutton’s” could be confused with it. Things have gotten way out of hand with these laws and especially the involvement of government prosecutions. Copyright should almost always be a matter of civil law.

  14. I have been the “keeper of intellectual properties” for a couple jobs in my career, and what I have always been told is that a “rigorous” defense of company property, including logos, fonts, colors and anything else that can be associated with the brand in question is absolutely necessary in order to maintain a legal claim to the item in question. When a company does not do this, it becomes a “jet-ski,” which used to be a name brand, but is no longer. Yes, JD has more money than any small brewery/distiller in the world, and I’m sure there are some out there that think they are more paying homage to the hugely popular brand than actually trying to infringe. But if JD doesn’t show a concerted effort to protect their brand, they could allow one aspect or another of their brand (fonts, color scheme, fringe art design on the label), to be representative of any and all “whiskeys,” and not just theirs, and thus public domain. The bottle shape, to me, is a non-starter, for the reasons Dr. Turley pointed out already. The label, though, is non-negotiable property, and they need to do what they have done, if only to satisfy the copyright protection minimums and maintain their unique look in the industry.

  15. In the US, copyrights apply to original works of authorship. Although “authorship” is a broad term, It does not seem to apply to bottles and, even if it did, the bottle’s “author” would need to show that the bottle was an original work (i.e., she thought of it herself). As I’ve written in other threads, I think it is unwise to mix discussions about trademarks and copyrights because these serve different purposes and have different legal standards for both creation and enforcement.

  16. Trademarks are not the only form of intellectual property relating to a product’s origin. There are also geographic descriptions (although the term of art used escapes me). So for example, not all blue cheese is Roquefort, not all sparkling wine is Champagne, and, I’ve heard that only whiskey made in Kentucky and aged in certain barrels is bourbon.

  17. The irony of this whole lawsuit is that Popcorn Sutton would not have ever gone legal while he was alive and probably wouldn’t have approved of a legal distillery opening up under his name.

  18. Trademark law has gone wild. OS, your comments about the square bottle being more efficient to ship was excellent. I think the defense team may need you on this one! I only wish that Mad Dog came in those square bottles!

  19. If I’m going to drink bourbon, and sometimes bourbon is the only thing that will do, I go to Beam’s Devil Cut.

    Interesting fact about square bottles, OS. Learn something new everyday.

  20. When I was a college freshman, one of my roommates went on a run to the liquor store (I don’t know where he got an ID) and asked me if I wanted him to pick up anything. Since he was from an old Philadelphia Main Line family and I didn’t wish to be thought of as an unsophisticated hick from west Texas (which, of course, I was), I asked him to pick me up a fifth of Old Forester, the only brand that quickly came to mind. During the course of that evening, I consumed most of the Old Forester straight up, together with an entire large bag of Cheez-Its. To avoid indelicacy, I will leave the outcome to your imaginations. I have not touched either product since.

  21. In my Old Forest reverie, I forgot to comment on the topic. Surely Jack Daniels does not expect to win based upon the bottle shape, but they may have a sufficient argument on the label to survive a motion to dismiss. It strikes me as week, but I’ve handled some trademark/tradename infringement litigation and agree with joelbwriter’s slippery slope analysis.

  22. I see the square bottle, but I can’t tell what brand of Lickher that’s running down that gal’s leg. Is that Popcorn Sutton or Jose Cuervo? LOL

    I don’t think that’s a good idea to have the flames around all that booze.

    That’s a damn fine bass band imo.

  23. **Mike Mack · Plymouth Regional High School
    I’m always way behind the times, just read that popcorn was dead, guess they got sick of wine in heaven and wanted some sippin’ whiskey. **

  24. I am having a hard time accepting that square bottles reduce the risk of breakage during shipping. Square bottles have corners, which would seem to be much like the point where two round bottles touch. So square bottles have four points of contact, as do round bottles, but square bottles have more surface area in contact with other bottles, which would seem to increase the risk of breakage.

  25. As an experiment, I drank 5 shots of Jack Daniel’s followed by 5 shots of Popcorn Sutton’s. I was then blindfolded, and given a taste test to see if I could tell the difference. I failed the test! They tasted identical to me. Not only that, but by the 15th shot, after I removed my blindfold, I could not even tell the difference between the labels! Thus, I conclude, this lawsuit is fully justified and supportable.

  26. Nick and Mike are correct that Frank Sinatra’s well-known fondness for Jack Daniel’s made the drinking it cool. Funny, though, his penchant for Campbell’s Franks and Beans didn’t quite catch on the same way. However, Frank wasn’t the only celebrity who made Jack a favorite. It was also the favorite alcoholic beverage of J. Edgar Hoover, who probably got the idea from Frank after listening-in to his phone calls. Other well-known people who preferred Jack included Winston Churchill, William Faulkner, John Huston, Paul Newman, and Jackie Gleason. I believe that Keith Richards also favored the stuff in his glory days. So far as I know, none were paid to endorse the product while they were living. That kind and breadth of celebrity approval is a more powerful brand enhancer than any paid endorsement.

  27. Ralph Adamo,

    Wow I didn’t know that was Winston’s Preference? From what I’ve heard of his drinking he was a profit center all by himself.

  28. going off yet staying on topic is the fact that to put a end to this type of crap. would be to teach the big companies a lesson about their law suits by hitting them in the sales… the people could fight back by not buying jd and going right to popcorn suttons. soon as jd wins this lawsuit.. so what will they do then? attempt to blame that on popcorn sutton too?

    its the only way for the people to begin teaching the big corporations the lessons they need to learn which is obama cant make us buy their products. the more they try to force the issue the more we need to fight back by supporting the smaller companies.. unless jd intends to sue every company who produces whiskey. they will lose

  29. Profit center? Nicely put. Yes, I’m sure that Jack Daniel’s was but one of his many preferences. Some classic lines from Sir Winston…..

    Bessie Braddock: Sir, you are drunk.
    Churchill: And you, madam, are ugly. But in the morning, I shall be sober.

    I have taken more good from alcohol than alcohol has taken from me.

    When I was younger I made it a rule never to take strong drink before lunch. It is now my rule never to do so before breakfast.

    The water was not fit to drink. To make it palatable, we had to add whisky. By diligent effort, I learnt to like it.

    I neither want it [brandy] nor need it, but I should think it pretty hazardous to interfere with the ineradicable habit of a lifetime.

  30. In order to keep a trademark you must defend the trademark if something even comes close.

    Popcorn Sutton must be spinning in his grave like an axle over this. Mason jars (which btw cannot be trademarked ever again as they fall into public domain in terms of shape due to the NEGLECT of Mason, yes that was really his name, in defending his patent and trademark) are how you sell shine.

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