United States District Court, N.D. California
ORDER ON FETZER'S MOTION FOR SUMMARY JUDGMENT RE:
DKT. NO. 63
William H. Orrick United States District Judge
Sazarac Company, Inc. and Sazarac Brands, LLC (collectively,
“Sazerac”) brought this action for federal
trademark and trade dress infringement and unfair competition
against Fetzer Vineyards, Inc. (“Fetzer”).
Sazerac alleges that Fetzer's 1000 Stories Zinfandel
buffalo mark and trade dress infringe its BUFFALO TRACE word
mark, Buffalo Logos, and trade dress for its BUFFALO TRACE
bourbon whiskey. Fetzer moves for summary judgment on all of
Sazerac's claims, on the grounds that they are
necessarily predicated on Sazerac asserting rights over the
generic term “bourbon, ” which it cannot do, and
because Sazerac has failed to demonstrate a likelihood of
confusion. But Fetzer mischaracterizes Sazerac's claims
and overlooks its evidence. Sazerac has demonstrated a
triable issue whether consumers are likely to be confused by
Fetzer's buffalo and trade dress on its 1000 Stories
Zinfandel. But because Sazerac failed to disclose properly
how it would prove any monetary damages, it is not entitled
to recover them. Fetzer's motion for summary judgment is
GRANTED concerning Sazerac's ability to recover monetary
damages and its infringement claims for six of the
trademarks. Fetzer's motion is DENIED regarding the other
two marks and the trade dress.
Sazerac's Buffalo Trace Brand
owns the Kentucky-based Buffalo Trace Distillery, “the
oldest continuously operating distillery in the United
States.” Sazerac's Response to Interrogatories at
4:2-3 (Hadid Decl. Ex. A; Dkt. No. 76-2). The Distillery is a
national historical landmark listed with the United States
National Park Service. Id. In 1999, Sazerac adopted
the Buffalo Trace name and introduced its BUFFALO TRACE brand
bourbon whiskey. Id. at 3:23-25. The distillery and
whiskey have received over 50 awards, including Distiller and
Distillery of the Year, and Best Straight Bourbon and Double
Gold Medal awards. Sazerac Business Record (Hadid
Confidential Decl. Ex. L; Dkt. No. 70-7[placeholder]; Dkt.
No. 70-8[under seal]). Sazerac “capitalized on BUFFALO
TRACE's accolades, ” Opp'n at 4, by investing
in advertising, and sales of the whiskey grew from 16, 000
cases in 2006 to over 3 million bottles in 2016. Comstock
Dep. at 134:22-24; 427:19-22 (Hadid Confidential Decl. Ex. V;
Dkt. No. 72-4[redacted]; Dkt. No. 72-5[under seal]).
has registered eight federal trademarks related to the
BUFFALO TRACE Trade Dress and Buffalo Logos:
• Buffalo Logo, U.S. Reg. No. 2, 601, 650, issued July
30, 2002, for “bourbon” and related marketing
• Buffalo Outline Logo, U.S. Reg. No. 2, 516, 318,
issued December 11, 2001, for related marketing goods;
• Buffalo Ripped Label Design, U.S. Reg. No. 2, 476,
423, issued August 7, 2001, for “bourbon”;
• BUFFALO TRACE And Design, U.S. Reg. No. 2, 622, 735,
issued September 24, 2002, for “bourbon” and
related marketing goods;
• BUFFALO TRACE, U.S. Reg. No. 2, 294, 792, issued
November 23, 1999, for “bourbon”;
• BUFFALO TRACE, U.S. Reg. No. 4, 859, 200, issued
November 24, 2015, for “distilled spirits;”
• BUFFALO TRACE DISTILLERY WHITE DOG, U.S. Reg. No. 3,
835, 562, issued August 17, 2010, for “whiskey;”
• WHITE BUFFALO, U.S. Reg. No. 4, 215, 557, issued
September 25, 2012, for “vodka.”
See Registrations (Hadid Decl. Ex. C; Dkt. No.
76-4). It licenses use of the Buffalo Trace trademarks on
products such as barrel heads, candles, and candies. Comstock
Dep. at 196:13-16; see also Wyant Dep. at 188:19-22;
191:16-23 (Confidential Hadid Decl. Ex. W; Dkt. No.
72-6[redacted]; Dkt. No. 72-7[under seal]); Licensing and
Coexistence Agreements (Confidential Hadid Decl. Exs. R, S,
T, U; Dkt. Nos. 71-10, 71-12, 72-1, 72-3[all under seal]).
Fetzer's 1000 Stories Wine
2011, Fetzer's Chief Executive Officer, Giancarlo
Bianchetti, arrived in the United States and noticed a trend
of American pride that he labeled “Americana.”
Bianchetti Dep. at 22:10-17 (Disharoon Decl. Ex. C; Dkt. No.
63-6). He also saw an opportunity for a wine brand
specifically targeting men. Id. at 22:2-3. In late
2013, he read a Smithsonian Magazine article entitled
“101 Objects that Made America, ” one of which
was the buffalo, and thought the image embodied the concepts
of the “male trend” and “Americana”
swelling in the country. Id. at 22:23- 23:8;
25:15-27:3; see also Affinity Creative Group
Document (Confidential Hadid Decl. Ex. VV; Dkt. No.
75-13[under seal]). He decided it was the “perfect
icon” for a new wine brand. Bianchetti Dep. at
28:16-24. He says that he had not heard of Sazerac or its
Buffalo Trace Bourbon Whiskey until after the lawsuit.
Id. at 21:2-16.
Fetzer proceeded with plans for its new wine brand, Rodrigo
Maturana, vice-president of marketing, sought inspiration
from other products tapping into the
“All-American” spirit. Maturana Dep. at 37:25;
55:8-10; 56:20-21 (Disharoon Decl. Ex. D; Dkt. No. 63-7). He
does not recall specifically looking at beverage products,
and he denies pre-lawsuit knowledge of Sazerac and its
Buffalo Trace whiskey. Id. at 56:16-21,
156:24-157:6. Fetzer retained Affinity Creative Group to
assist in the brand development and design. Id. at
59:4-17. The marketing team eventually settled on the name
“1000 Stories, ” which derived from playwright
David Mamet's depiction of the American buffalo, symbol
of the West, telling a thousand stories, “whether
roaming free or stuffed.” Id. at 93:23-95:11.
team decided that the 1000 Stories brand was going to target
the same demographic as the American bourbon consumer because
that aligned with the intended all-American, male-oriented
concept. Id. at 121:23-122:1; see also
id. at 134:15-23 (Confidential Hadid Decl. Ex. X; Dkt.
No. 72-9[under seal]); “1000 Stories Shoot” Email
(Id. Ex. Z; Dkt. No. 72-13[under seal]). It decided
to age the wine in bourbon barrels to aid in targeting male
consumers. It chose to prominently include the text
“Bourbon Barrel Aged” on the label, in part to
differentiate it on the market. Devries Dep. at 77:3-78:4
(Disharoon Decl. Ex. F; Dkt. No. 63-9); Rice Dep. at 93:4- 12
(Hadid Decl. Ex. XX; Dkt. No. 76-14); see also
Fetzer Marketing Document (Confidential Hadid Decl. Ex. EE;
Dkt. No. 73-9); Marketing Email (Confidential Hadid Decl. Ex.
WW; Dkt. No. 75-15[under seal]); 2016 Go to Market Plan
(Confidential Hadid Decl. Ex. DD; Dkt. No. 73-7[under seal]).
Its marketing materials note that the wine is aged in
“old bourbon barrels from famed distilleries such as
Heaven Hill and Four Roses.” Fetzer Marketing Document
(Confidential Hadid Decl. Ex. EE; Dkt. No. 73-9). And it
advertised its 1000 Stories wine in bourbon-focused
magazines, including Whiskey Advocate and Bourbon review, and
promoted the product at events aimed at bourbon drinkers.
E.g., Whiskey Advocate, Fall 2015 edition (Hadid
Decl. Ex. D; Dkt. No. 76-5); Bourbon Review (Id. Ex.
E; Dkt. No. 76-6); see also Bourbon Classic Sponsor
Ticket Form (Confidential Decl. Ex. FF; Dkt. No. 73-11[under
seal]); Email Exchange Re: Bourbon Classic (Id. Ex.
GG; Dkt. No. 73-13[under seal]); Email Exchange Re: Bourbon
Review Ad (Id. Ex. HH; Dkt. No. 74-1[under seal]);
Email Exchange Re: Whiskey Advocate (Confidential Hadid Decl.
Ex. II; Dkt. No. 74-3[under seal]). In its internal
documents, it mentions a goal to target Sazerac's
consumers in particular. Fetzer Innovations PP (Confidential
Hadid Decl. Ex. KK; Dkt. No. 74-7[under seal]). It even
proposed a sangria recipe combining its 1000 Stories wine
with Sazerac's Buffalo Trace Bourbon. Email Exchange
(Confidential Hadid Decl. Ex. MM; Dkt. No. 74-11[under
hired a market research firm to “design and conduct a
study that would measure the extent, if any, to which
Fetzer's use of the buffalo design trade dress in
connection with red zinfandel wine is or is not likely to
cause confusion among prospective purchasers of red zinfandel
wine.” Johnson Survey ¶ 5 (Hadid Decl. Ex. H; Dkt.
No. 76-9). According to the Johnson Survey, 46 percent of
respondents believed that the 1000 Stories red zinfandel came
from the same company or had a business relationship with the
company that makes Buffalo Trace. Johnson Survey ¶¶
also submitted an expert report from alcoholic beverage
industry expert C. Drew DeSarno, who offered the opinion that
“beverage-alcohol companies regularly capitalize upon
and expand brand equity of their trademarks across alcoholic
beverage categories[, ]” which leads consumers to
associate “similar brand imagery and logos on brands in
different alcoholic beverage categories” as products
from the same company. Desarno Report at 25 (Hadid Decl. Ex.
I, Dkt. No. 76-10). He further opined that “Fetzer is
trading on the goodwill developed by Sazerac for Buffalo
Trace Bourbon and consumers would likely believe Buffalo
Trace is either selling or endorsing Fetzer's 1000
Stories brand of wine.” Id. at 26
became aware of Fetzer's 1000 Stories brand through a
Certificate of Label Approval (“COLA”) filed with
the United States Alcohol and Tobacco Tax and Trade Bureau.
Fetzer's Response to Interrogatories at 5:11-15 (Hadid
Decl. Ex. A, F; Dkt. Nos. 76-2, 76-7). It “sent
Fetzer a letter requesting that Fetzer re-brand and refrain
from the use of buffalo imagery on its alcoholic beverage
products.” Opp'n at 6; see 2/26/15 Sazerac
Letter to Fetzer (Dkt. No. 76-8). It reasoned that “the
1000 Stories Buffalo Logo creates a likelihood of consumer
confusion given that (1) [Fetzer's] logo uses a depiction
of a buffalo similar to the Buffalo Trace buffalo
logos…; (2) [Fetzer's] wine is advertised as
having been aged in used bourbon barrel; (3) [Fetzer is]
using [its] logo in connection with a related alcoholic
beverage; and (4) [Fetzer's] product is likely to be sold
and marketed through the same channels that Sazerac uses for
its Buffalo Trace products.” 2/26/15 Letter at 1-2.
continued to use the buffalo imagery on its 1000 Stories
brand, and on October 6, 2015, Sazerac filed a complaint for
(1) trademark infringement under 15 U.S.C. § 1114,
Compl. ¶¶ 33-39; (2) federal unfair competition
under 15 U.S.C. § 1125(a), id. ¶¶
40-43; (3) federal trade dress infringement under 15 U.S.C.
§ 1125(a), id. ¶¶ 44-50; (4) common
law trademark infringement, id. ¶¶ 51-55;
and (5) unfair competition under California Business and
Professional Code § 17200, et seq.,
id. ¶¶ 56-60. Compl. (Dkt. No. 1). On
March 3, 2016, Sazerac amended the complaint to add Sazerac
Brands, LLC as a plaintiff. First Am. Compl.
(“FAC”)(Dkt. No. 36). On February 16, 2017,
Fetzer moved for summary judgment or partial summary judgment
“as to the entire Complaint, or, alternatively, that
partial summary judgment be granted as to the first, second,
third, fourth, and/or fifth causes of action, including as to
each individual trademark infringement claim…, as well
as on the claims for monetary damages, treble damages, and
attorneys' fees[.]” Mot. at 1 (Dkt. No.
63[redacted]; Dkt. No. 64-8[under seal]).
judgment on a claim or defense is appropriate “if the
movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law.” Fed.R.Civ.P. 56(a). In order to
prevail, a party moving for summary judgment must show the
absence of a genuine issue of material fact with respect to
an essential element of the non-moving party's claim, or
to a defense on which the non-moving party will bear the
burden of persuasion at trial. See Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). Once the movant has
made this showing, the burden then shifts to the party
opposing summary judgment to identify “specific facts
showing there is a genuine issue for trial.”
Id. The party opposing summary judgment must then
present affirmative evidence from which a jury could return a
verdict in that party's favor. Anderson v. Liberty
Lobby, 477 U.S. 242, 257 (1986).
summary judgment, the Court draws all reasonable factual
inferences in favor of the non-movant. Id. at 255.
In deciding a motion for summary judgment,
“[c]redibility determinations, the weighing of the
evidence, and the drawing of legitimate inferences from the
facts are jury functions, not those of a judge.”
Id. However, conclusory and speculative testimony
does not raise genuine issues of fact and is insufficient to
defeat summary judgment. See Thornhill Publ'g Co.,
Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 1979).
main contention is that Sazerac's claims necessarily
depend on it asserting rights in the generic term
“bourbon, ” and since it cannot do that, its
entire complaint must be dismissed as a matter of law. It
also argues that the claims must fail because Sazerac has
presented no evidence of consumer confusion. Mot. at 2. In
the alternative, it argues for partial summary judgment
because Sazerac's “case is based on a combination
of elements on the 1000 Stories label[, ]” there is no
evidence of misbranding, no showing of secondary meaning, no
evidence to support the monetary and treble damages claim,
and no showing that this is an exceptional case justifying
the award of attorneys' fees. Id. at 2-3.
causes of action for federal trademark infringement under the
Lanham Act, 15 U.S.C. § 1114, common law trademark
infringement, and unfair competition are subject to the same
“ultimate test” of “whether the public is
likely to be deceived or confused by the similarity of the
marks.” New W. Corp. v. NYM Co. of California,
595 F.2d 1194, 1201 (9th Cir. 1979). “Likelihood of
confusion exists when consumers are likely to assume that a
product or service is associated with a source other than its
actual source because of similarities between the two
sources' marks or marketing techniques.”
Shakey's Inc. v. Covalt, 704 F.2d 426, 431 (9th
Cir. 1983). Courts look to the following factors,
[S]imilarities between the protected and the allegedly
infringing marks, the class of goods in question and the
corresponding degree of care likely to be exercised by
purchasers in selecting a product, the marketing channels,
the intent of the alleged infringer, evidence of actual
confusion, and the fame of the prior mark.
Id. (footnote omitted). A party need only show a
likelihood of confusion and “actual confusion is not
necessary to a finding of likelihood of