Wednesday, September 01, 2021

Rogers v Grimaldi doesn't apply to alcohol, but Peaky Blinders still can't get injunction

Caryn Mandabach Prods. Ltd. v. Sadlers Brewhouse Ltd., 2021 WL 2497928, No. CV 20-10220-CBM-(JEMx) (C.D. Cal. May 19, 2021)

Mandabach produces the TV series Peaky Blinders, and it alleged that it owned trademarks and other intellectual property of the show “and certain quotations/sayings/phrases from the show.” Defendants allegedly sold three alcoholic beverages under the name “Peaky Blinder” and used quotations/sayings/phrases from the show. Mandabach sued under §43(a) and coordinate state law claims and sought cancellation of a trademark registration.

one of the beverages
Defendants argued that their use “communicates messages and ideas to consumers such as Defendant Sadler’s historical connection to the real Peaky Blinders gang,” so Rogers should apply. Defendant Sadler’s managing director declared she “felt that Peaky Blinder was an appropriate name” for Sadler’s new dark beer because the Peaky Blinder gang’s “well-known dark history” “connected” with the dark beer and she was interested in naming the beer after the Peaky Blinder gang in light of her family and Sadler’s history with the gang.

The court rejected the argument: “Such evidence does not demonstrate Defendants’ use of the mark conveys an idea or point of view, and therefore the Rogers test does not apply.” Of course, this is both the right result (the name of the beer is commercial speech on a nonspeech product) and completely bonkers reasoning (the Supreme Court has twice held in the past few years that trademarks often convey ideas and points of view). If we got rid of the bizarre idea that Rogers was about artistic works and correctly labeled it as being about commercial speech, courts would do much better.

Did Mandabach have valid marks? The dictionary definitions of the words “Peaky” and “Blinders” were not dispositive.  As applied to a TV show about a group of persons named the Peaky Blinders, it was descriptive or suggestive. (That doesn’t seem a helpful conclusion, but the court seems to think that suggestive terms must have secondary meaning to be protected.) And Mandabach failed to show actual association of the TV show with a particular source. It submitted 14 social media posts “which it contends shows consumers and retailers attributed a particular source to Defendants’ liquor and Plaintiff’s television show.” But there was no evidence that these were actual purchasers of Sadler’s products, and only one actually stated that they came from the same source (“I’m a MASSIVE fan of the Peaky Blinders TV series so I had to try their Irish Whiskey and give it a review.”). By contrast, another asks, “Are you a Peaky Blinders fan? Check out this awarding [sic] winning gin and whiskey from @sadlersbrewco!” That didn’t show that the person thought they both came from the same source.

What about other evidence of sales etc.? Mandabach submitted evidence demonstrating the show ranks as a top-5 Netflix original drama upon the release of each new season, a “teaser” trailer for the fifth season of the show has been viewed 2.5 million times, and the show has 4 million followers on in its Instagram account, 2.6 million followers on Facebook, and 686,000 followers on Twitter. There was also coverage by The New York Times, The Wall Street Journal, LA Times, Rolling Stone, Variety, Vox, and Mashable. But this didn’t show source significance. And five years of use in the US was insufficient to show secondary meaning.  Nor did Mandabach show its use was exclusive, so it didn’t show likely success on secondary meaning.

Comment: Meanwhile we have courts saying that even generic terms can be the foundation of §43(a) claims and therefore allowing claims based on part number comparisons to go forward.  

Anyway, Mandabach also didn’t show likely confusion. The mark was weak; the goods were not proximate; the marks were similar; one social media instance of confusion was insufficient to show likely confusion; marketing channels didn’t favor likely confusion because everyone uses the internet and social media; cost below $25 favored confusion.

As for intent, an article from Sadlers’ sales director about Peaky Blinder Beer said: “It’s been selling like mad and done exceptionally well; (2) The idea came from our managing director Chris Sadler, who is also head brewer. To be honest, the idea was inspired. And with a second series of Peaky Blinders set to hit the screen in September, its popularity is only likely to increase; and (3) we are confident it will be a success because of the popularity of the television programme.” But that didn’t go to intent in initially selecting the mark. The managing director declared “[a]t the time that I chose the name Peaky Blinder, I had never heard of [Plaintiff’s] Peaky Blinders television program ... and no one at Sadler’s was familiar with the program as far as I was aware,” and further declares she “felt that Peaky Blinder was an appropriate name” as discussed above.

Product line expansion: Though Sadler’s was unlikely to expand to TV, Mandabach’s commercial director declared “there has been great interest from third parties for licenses for wines and spirits,” in May 2020 Plaintiff executed a license agreement with a third party for red wine featuring the Peaky Blinders mark, and Mandabach “has been unable to complete a deal” with potential third-party licensees “for other types of alcohol and spirits ... as a result of the dispute with Defendants and their continued unauthorized use of the Peaky Blinders” marks. That favored a confusion finding.

On balance, Mandabach failed to make a “clear showing” of a likelihood of confusion at this stage.

False advertising/passing off: Same basic problems.

Even if the rebuttable presumption of irreparable harm applied, Mandabach had actual knowledge of the use of the mark in April 2018, when its licensee sent a warning letter to Sadler regarding its purported infringement. But Mandabach waited until November 2020 to sue and moved for a preliminary injunction only in March 2021. This delay demonstrated an absence of irreparable harm.


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