Bloomberg News

Maker’s Mark, PTO Search, Phony Wine: Intellectual Property

May 10, 2012

The litigation lasted longer than the bourbon-aging process. Yesterday, more than nine years after the case was originally filed, a federal appellate court found that the signature red wax seal used on Maker’s Mark Distillery Inc.’s bourbon bottles is a valid trademark.

The Kentucky distillery, owned by Deerfield, Illinois-based Beam Inc., (BEAM:US) originally sued Diageo Plc (DGE), the world’s biggest liquor maker, in 2003, claiming Diageo’s Jose Cuervo infringed its trademark by using a red wax seal on bottles of tequila.

Diageo claimed that the trademark was unenforceable since it had “aesthetic functionality.” Marks that are deemed functional can’t be trademarked under federal law. A three-judge panel for the U.S. Court of Appeals in Cincinnati, however, affirmed the lower court’s ruling that the red seal wasn’t functional and was, as a result, a valid mark.

The lower court hadn’t awarded damages because it found Cuervo’s use of a red seal didn’t dilute the bourbon trademark.

“My grandmother dipped the first bottle of Maker’s Mark in red wax, and it’s been our signature trademark ever since,” Rob Samuels, chief operating officer of Maker’s Mark and whose family founded the distillery, said in a statement.

Diageo said in a statement that it was disappointed by the appeals court ruling. “However, the decision will have no practical effect on either Diageo’s or Tequila Cuervo’s business going forward, since neither has sold Cuervo products with dripping red wax seals since 2004,” according to the statement.

Michael Aschen of New York’s Abelman, Frayne & Schwab, and J. Kevin Fee of Morgan, Lewis & Bockius LLP represented London- based Diageo. Edward Colbert of the Washington office of Kenyon & Kenyon represented Maker’s Mark.

The case is Maker’s Mark Distillery Inc. v. Diageo North America Inc., 10-5508, U.S. Court of Appeals for the Sixth Circuit (Cincinnati).

For more trademark news, click here.

Copyright

Accused Seller of Fake Burgundy Wine Indicted by Grand Jury

Rudy Kurniawan, the California man arrested in March for allegedly selling more than $1.3 million in phony wine, was indicted by a grand jury in New York.

Kurniawan is charged with mail and wire fraud related to a scheme to sell counterfeit wine, according to a filing in federal court in Manhattan.

The 35-year-old Indonesian national had “thousands of printed wine labels to many of the most expensive wines in the world, such as Domaine de la Romanee-Conti and Chateau Petrus,” Assistant U.S. Attorney Jason Hernandez told a federal judge in March while describing a search of Kurniawan’s home by Federal Bureau of Investigation agents.

Kurniawan, who was arrested March 8 and accused of consigning at least 84 counterfeit bottles of Burgundy to a New York auction house, was ordered to remain in jail after Hernandez warned that he might flee if released on bail.

Luis Li, a Los Angeles lawyer who represented Kurniawan at the March 9 hearing, didn’t immediately return a call to his office for comment on the indictment.

The case is U.S. v. Kurniawan, 12-606, U.S. District Court, Southern District of New York (Manhattan).

For more copyright news, click here.

Patent

PTO Seeks Nominations for 5 Members for Public Advisory Groups

U.S. Patent and Trademark Office Director David J. Kappos requested nominations for three members to join the Patent Public Advisory Committee and two new members for the Trademark Public Advisory Committee, according to a notice published May 4 in the Federal Register.

“Our Public Advisory Committees help us work in concert with our stakeholder community to launch transformative initiatives to improve the way Americans innovate,” Kappos said in a statement. “Committee input is critical to our continuing efforts to support American innovation, create U.S. jobs and make U.S. businesses more competitive in the global economy.”

Each committee comprises nine voting members appointed by the Secretary of Commerce. Committee members serve for three years and their duties include reviewing and advising the director and preparing an annual report on patent and trademark matters.

For more patent news, click here.

Free Speech

New York Policeman Asks to Add Free-Speech Claim to Lawsuit

A New York police officer who claims he was locked in a psychiatric ward after documenting corruption in the department told a judge he wants to amend his $50 million lawsuit against the city to add a claim that his free-speech rights were violated.

A lawyer for Adrian Schoolcraft asked U.S. District Judge Robert Sweet yesterday for permission to change his client’s complaint to include a claim the city violated his right to make public reports that officers were told to falsify crime and arrest statistics.

Schoolcraft, who sued the city in August 2010, said police officials illegally tried to intimidate him and retaliate after he revealed an alleged policy requiring officers to boost arrests, falsify reports and suborn perjury to manipulate crime statistics.

William Fraenkel, a lawyer for the city, told Sweet that reporting misconduct is part of a police officer’s job, and therefore isn’t covered by the First Amendment.

Sweet didn’t say when he will rule on Schoolcraft’s request.

New York City Mayor Michael Bloomberg is founder and majority owner of Bloomberg LP, the parent company of Bloomberg News.

The case is Schoolcraft v. City of New York, 10-06005, U.S. District Court, Southern District of New York (Manhattan).

Settlements

‘Leprechaun’ Producer Agrees to Settle SEC Insider-Trading Case

A Hollywood movie producer and five others will pay almost $2 million to settle U.S. regulatory claims that they profited by trading shares of a company using inside information he obtained while serving as a board member.

Mohammed Mark Amin, his brother, cousin and three other friends and business partners made more than $618,000 on shares of DuPont Fabros Technology Inc. (DFT:US) after he learned that the firm was negotiating loans related to expanding business, the Securities and Exchange Commission said May 8 in a statement.

Amin, who is credited as a producer for more than 75 films including “Frida,” “Eve’s Bayou” and four “Leprechaun” movies, learned of the loans while serving on the DuPont Fabros board in 2008, the SEC said.

“Mark Amin disregarded his board responsibilities and betrayed shareholders at DuPont Fabros in favor of giving his circle of relatives and friends an inside scoop,” John McCoy, associate director of the SEC’s Los Angeles office, said in a statement.

A phone call to Carl Moor, an attorney for Amin, wasn’t immediately returned.

IP Moves

Kirkland & Ellis Adds Four IP Lawyers in New York Office

Four lawyers at Kaye Scholer LLP left the firm to join the New York office of Kirkland & Ellis LLP.

Leora Ben-Ami, Thomas Fleming, Patricia Carson and Christopher Jagoe are now partners in Kirkland’s intellectual property practice group.

Ben-Ami focuses on patent litigation and has represented drug and biotechnology firms such as Pfizer Inc., Genentech Inc. and DuPont Co., according to Kirkland’s statement.

Fleming specializes in IP litigation and has tried cases in the areas of biotechnology, pharmaceuticals and chemical products, as well as wireless technology and telecommunications.

Carson focuses on patent litigation and patent counseling matters, including IP due diligence and licensing in fields such as pharmaceuticals, biotechnology, chemicals, medical devices and consumer health care.

Jagoe focuses on patent litigation related to chemical, pharmaceutical and biotechnology matters. He has represented clients such as Roche Holding AG (ROG), Ariad Pharmaceuticals Inc. (ARIA:US), Pioneer Hi-Bred International Inc. and DuPont.

Nixon Peabody Adds Life Sciences Lawyer in Los Angeles

Seth D. Levy, who had been chairman of the life sciences practice in the Los Angeles office of Davis Wright Tremaine LLP, joined the Los Angeles office of Nixon Peabody LLP.

Associates Linda Huber, Sean Senn and B. Thomas Duke; patent agents Stephen Chen and Hema Vakharia-Rao; and patent scientist BinQuan Zhuang are joining Nixon Peabody as well.

Levy focuses on managing patent procurement in technical fields including biotechnology and life sciences. He represents academic institutions and emerging companies, the firm said in a statement.

To contact the reporter on this story: Ellen Rosen in New York at erosen14@bloomberg.net

To contact the editor responsible for this story: Michael Hytha at mhytha@bloomberg.net


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