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

We 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.

My 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.

Marvin “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?