Buffalo Trace Wines About Infringement

The image of a buffalo alone might bring to mind the American frontier or Native Americans. But, add in the word "bourbon" and put both on a bottle of alcohol, and many will likely think of Buffalo Trace Distillery and its namesake bourbon, Buffalo Trace, which was introduced back in 1999.

In 2014, Fetzer Vineyards, a wine producer, launched its "1000 Stories" brand, a California red zinfandel wine aged in bourbon barrels. Although produced by Fetzer, Fetzer's name was nowhere on the label for 1000 Stories. The wine's bottle prominently featured a large buffalo in the center of the label and smaller buffalos on the bottle's neck. Underneath the large buffalo, and before any mention of wine, appeared the description "Bourbon Barrel-Aged." The bottle also included the term "Small Batch" on the label, a term commonly associated with bourbon but not wine. The label was written in gold and white font.

Sazerac Company, which owns Buffalo Trace, sued Fetzer in California federal court for infringing Buffalo Trace's trademark and its "trade dress." (Trade dress refers to a product's design, shape and overall feel. Consider Coke's use of white cursive on a red background and its unique bottle shape as an example.) As many know, Buffalo Trace's trade dress for its bourbon includes a large buffalo in the center of the label, smaller buffalos on the bottle's neck, and gold and white font. Sound familiar?

Sazerac's case against Fetzer proceeded to a trial before the judge. At trial, Sazerac pointed to various pieces of evidence to show infringement, beyond just the similarities between the bottles. For example, after 1000 Stories was launched, Brown-Forman refused to partner with Fetzer to market the wine because "the 1000 Stories buffalo imagery called to mind Buffalo Trace bourbon." Yet Fetzer did nothing to assess the possible infringement. 

Fetzer's marketing of 1000 Stories also overlapped with the marketing of Buffalo Trace in a few ways. Fetzer advertised 1000 Stories in editions of magazines such as Whiskey Advocate that also featured Buffalo Trace. At the 2016 Bourbon Classic, 1000 Stories and Buffalo Trace were placed just two tables away from each other.

Despite the similarities between the bottles and other evidence of possible infringement, the judge ruled in favor of Fetzer. According to the judge, the "case was not close." Specifically, the judge found that Buffalo Trace's trade dress was not distinctive and that there was not a likelihood of confusion. Among other things, the judge focused on evidence showing that "Buffalo Trace has low brand recognition" and the differences between the two bottles. The judge's decision was later affirmed on appeal.

Although I probably disagree with the judge that the case was not a close call, I recognize that Sazerac had a few holes in its legal case that needed patching in order to prevail. For instance, the judge's finding that "Buffalo Trace has low brand recognition" was based on research from 2006 on consumer awareness of Buffalo Trace. The 2006 research was the only research Sazerac had ever done regarding consumer awareness of Buffalo Trace. 

Brand recognition of Buffalo Trace has skyrocketed in recent years (including when the trial was held in 2017), so it seems like Sazerac should have updated its research in order to show the distinctiveness and strength of Buffalo Trace's trade dress at trial. Distillers bringing similar infringement claims should thus be sure to highlight the popularity and vast recognition of their whiskey brands. 

However, I also think the similarities between the bottles of 1000 Stories and Buffalo Trace should have been given greater weight by the judge. To be sure, while the two bottles are different in a number of meaningful ways (the shape and color of the bottles and the direction and color of the buffalos, just to name a few), the similarities are pretty striking. The bottle for 1000 Stories has buffalos in the same two places as Buffalo Trace's bottle, and the writing on the label is in a gold and white font similar to that on Buffalo Trace's label. Based on that alone, I might not be surprised if a consumer was confused as to whether 1000 Stories was produced by Sazerac, perhaps as a wine spinoff of Buffalo Trace, particularly when Fetzer's name was nowhere on the label. Add in the fact that "Bourbon" and "Small Batch" appeared on the label, and I wouldn't be surprised by any confusion at all.

These sorts of similarities should be emphasized by distillers in infringement cases. What if a brandy producer introduced a brandy that was aged in bourbon barrels and sold in a bottle embossed with a bouquet of roses in the glass? I think some (myself included) would think that the brandy producer may be trying to infringe on Four Roses, but Sazerac's case against Fetzer shows that conclusion is not so clear cut.

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Sazerac Company, Inc. v. Fetzer Vineyards, Inc., 265 F. Supp. 3d 1013 (N.D. Cal. 2017)

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