Last night, I attended wine tasting. But this was no ordinary wine tasting. This was a wine tasting fit for the Philadelphia IP Law Association. We had a guest speaker, Mr. Paul W. Reidl, come and speak to us about trademark issues in the wine world.
He talked touched on issues such as surname, geographic, foreign equivalents, relatedness, and quality control issues, but what was most interesting to me was his case study: Kendall-Jackson Winery v. E. & J. Gallo Windery, 150 F.3d 1042 (9th Cir. 1998) (N.D. Cal.) (Walker, J.). For those of you who are familiar with Kendall-Jackson and Turning Leaf wines, this case will have more context to you. If you are not familiar, pictures of a Kendall-Jackson wine bottle and a Turning Leaf wine bottle are shown below. The actual wine bottles in the case looked a little different than the ones below (Burgundy/Bordeaux style bottles were in question), but you get the idea.
If I took a poll right now, I would be almost 100% certain that you think these two bottles look completely different. Well, Kendall-Jackson didn't think so. Kendall-Jackson filed a complaint alleging trademark infringement. They did also include a trade dress claim, but that was vague and none of the elements (i.e., bottle style, flanged top, cigar band wrapper, white label) functioned as a trade dress. Everything boiled down to the trademark (grape leaf). So let's look at the trademarks a little closer.
In summary judgment, the judge found that the leaf did not function as a trademark. At the same time, however, the judge said that a reasonable jury could find that the trade dress was distinctive and non-functional because of the "distinctive leaf." Yes. You heard correctly. The judge basically contradicted himself.
The parties proceeded to a jury trial, and the jury found no infringement. The jury thought that Kendall-Jackson had nothing to protect because the wine bottles from California generally share a similar look. Kendall-Jackson later filed a Motion for Judgment Notwithstanding the Verdict, but lost. Kendall-Jackson then appealed to the 9th Circuit, and the 9th Circuit affirmed.
What happened after this case was as equally interesting. Turning Leaf sued Kendall-Jackson for malicious prosecution, and they settled. Then Kendall-Jackson sued their lawyers for malpractice. I don't know what happened to that. I guess they settled too.