Bottle Battles: Lawsuits in the World of Alcohol Bottling

The importance of a memorable bottle brand cannot be understated: impressive bottles catch eyes and, in many cases, drive consumer purchasing decisions. It thus is not much of a surprise that the alcohol industry is full of lawsuits over everything from bottle designs to labels, bags, wax seals, and even the word “handmade.”

Fights over everything from glass skulls to drawstring bags

One of the most interesting battles in the world of bottle design occurred between Globefill Inc., maker of Crystal Head Vodka, and Elements Spirits Inc., maker of KAH Tequila. Crystal Head Vodka, popularized by actor/comedian Dan Aykroyd, is bottled in an angular, glass, skull-shaped bottle. Elements Spirits began selling a painted skull-shaped tequila bottle inspired by the Day of the Dead—though some alleged that the sculptor of the KAH Tequila bottle might have used a cast of a Crystal Head bottle during their design work. Globefill won the lawsuit, and Elements Spirits now sells tequila in square-shaped bottles with a stylized skull logo on the front.

Similar disputes occur in the world of whiskey. Diageo plc, the makers of Bulleit bourbon whiskey, sued Redemption Whiskey over its bottle design. Diageo claimed that Redemption’s bottles — shaped like a flask, adorned with a weathered brown label, and featuring embossed text on the upper portion of the glass of the bottle — were confusingly similar to Bulleit bourbon bottles. Diageo won, and Redemption’s bottles now have a cleaner brown label and no longer include the embossed text.

Bags have also been a source of dispute: Diageo, also the makers of Crown Royal whisky, sued Mexcor Importers for selling state-themed whiskeys (such as “Texas Crown Club”) packaged in drawstring bags featuring each state’s flag. Diageo was ultimately victorious, though the injunction they received seemingly hinged largely on the fact that Mexcor sold its bottles in labeled drawstring bags.

Even wax seals can become the source of branding disputes. Maker’s Mark once sued Jose Cuervo, alleging that a particular line of Jose Cuervo tequila—which featured a dripping red wax seal—infringed Maker’s Mark’s distinctive trade dress, a dripping wax seal. Maker’s Mark ultimately won an injunction that prevented Cuervo from using that seal.

Battles Hinge on Likelihood of Confusion

Regardless of the alcohol in the bottle, disputes over bottle designs often hinge over whether a trademark holder can prove a likelihood of confusion for consumers.

On one hand, the easy cases often emerge when an alleged knockoff tries to draw a direct correlation between their brand and another brand.  Pernod Ricard’s Absolut division, which produces the coffee liqueur brand Kahlua, sued an Orthodox Jewish distributor of “Kahfua,” a kosher coffee liqueur product with a strikingly similar yellow label that used a nearly identical font.  It seems likely that the purpose of “Kahfua” was to provide Orthodox Jews a kosher form of Kahlua.  Pernod Ricard ultimately won, and the distributor agreed to stop using the alleged knockoff label.

On the other hand, proving a likelihood of confusion can be harder when parts of words are involved. MillerCoors, manufacturer of the beer “Miller Lite” (which features a stylized “Lite” logo) sued South Korean brewery HiteJinro over logos for their American-styled beer “Hite” (which features a stylized “Hite” logo). The parties apparently settled during a Trademark Trial and Appeal Board dispute, and HiteJinro still sells beer with a stylized “Hite” logo. A similar battle occurred over Australian wines: Yellow Tail wine producer Casella Wines sued California’s Bronco Wine Company for allegedly infringing the “[yellow tail]” trademark because it sold a wine named “[Down Under].” While the overall designs of the labels were different in various ways, the dispute seemingly hinged over the use of “iconic square brackets” and “Australian-centric wording.” Bronco no longer sells “[Down Under]” wine.

That said, not all trademark and trade dress disputes over bottling are between two manufacturers of alcohol. Design company Salvatore Ferragamo sued former Los Angeles Rams football quarterback Vince Ferragamo when the latter opened a winery in southern California: the winery was originally “Ferragamo Winery” and would sell wine bottles under that name, but the winery now goes by the name “Vince Ferragamo Vineyards.” The historic adventurer’s club The Explorers Club sued Johnnie Walker over a line of whisky called “Johnnie Walker Explorers’ Club,” though the parties ultimately agreed on a license so that Johnnie Walker could continue to sell the line. More recently, electric car and clean energy company Tesla sued a Chinese company for producing “Tesila Beer” with a stylized “T” logo that looked suspiciously like the Tesla logo.

Celebrities are often involved

Amusingly, celebrity names often make an appearance in alcohol branding disputes. Musician Bob Dylan’s bourbon brand Heaven’s Door was sued by Heaven Hill Distilleries over their branding, as Heaven Hill asserted that the use of the word “Heaven” could confuse consumers. The case was settled in 2019.

Model Kendall Jenner’s tequila brand 818 Tequila was sued by the company that produces Tequila 512—that case also settled, each party agreeing to make changes to their labels to avoid customer confusion.

Rapper 50 Cent’s Branson Cognac was the target of a lawsuit by Rémy Martin because Branson Cognac XO was once sold in a disc-like bottle with a sunburst-like glass design centered around a logo (a style not dissimilar to bottles of Rémy Martin XO). While the terms of their settlement are secret, 50 Cent’s brand now sells cognac in a different, teardrop-shaped bottle.

irector Francis Ford Coppola’s wine brand, which sells wine in bottles with a rectangular black label, the word “Coppola,” and a bottle wrapped in gold netting, sued an Oregon winery for producing a wine called “Copa Co. Winemaker’s Cut” that also featured a black label, the word “Copa,” and a thin gold netting. Copa Co. appears to no longer make the Winemaker’s Cut, instead focusing on selling single-serve wine in specialized glass containers.

Even words like “handmade” and “highland” invite lawsuits

As innocuous as the word might seem, there have even been numerous legal battles over the word “handmade” as it appears on alcohol bottles. Tito’s Handmade Vodka producer Fifth Generation was sued for allegedly deceiving users by claiming that their vodka was “handmade.” While that might have been true back when the titular Tito was making vodka in Dr. Pepper containers, the plaintiff argued that it was no longer true now that Fifth Generation made Tito’s in “massive buildings containing 10 floor-to-ceiling stills and bottling 500 cases an hour.” That case was settled in 2018 for an undisclosed amount.

Maker’s Mark bourbon whisky was sued for similar reasons: a plaintiff argued that the term “handmade” on the bottles made promises about the whisky being made by hand. Unlike the Tito’s case, the Maker’s Mark case was dismissed, with a federal judge noting that “handmade cannot be reasonably interpreted as meaning literally by hand.”

Words evocative of particular regions are also often the source of lawsuits.  For example, the Scotch Whisky Association filed a lawsuit against the Virginia Distillery Company, alleging that the latter improperly used the word “Highland” on their bottles of Virginia-Highland Whisky.  Virginia Distillery Company ultimately agreed to remove the term “Highland” from their bottles.

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Given how often lawsuits arise in the world of alcohol, industry professionals should be careful: small mistakes can invite big lawsuits.  As such, the value of a good, specialized lawyer cannot be understated.  

Kirk Sigmon, an intellectual property lawyer in the Washington, D.C. offices of Banner Witcoff, counsels clients at all stages of invention, patent prosecution, intellectual property enforcement, and litigation.