Makers Of 'Peaky Blinders' Show Fail To Get Injunction Against Distillery For 'Peaky Blinders' Whiskey

from the cheers! dept

When you cover as many trademark disputes centered around the alcohol industry as I have, you really do start to realize just how many other industries don't seem to understand that their products are not the same as adult libations. Alcohol, you see, is not the same as a major metropolitan city. Alcohol is also not the same thing as fruit juice. Beer, as well, is not the same thing as wine. Alcohol is also not the same thing as a famous movie franchise.

And, as the producers of the hit show Peaky Blinders are hopefully about to learn, alcohol is also not the same thing as a television show about a famous historical gang. See, Sadler's Brewhouse in the UK recently applied for a trademark on the many "Peaky Blinders" alcoholic drinks it sells in the United States. The production company for Peaky Blinders the Netflix show caught wind of this and promptly sued for trademark infringement, going so far as to ask the court for an injunction to prevent Sadler's from selling its products.

Mandabach sued Sadler’s for trademark infringement in November, alleging Sadler’s “Peaky Blinder” whiskey, gin, rum, and dark beer was likely to cause confusion with its show about the 19th century Birmingham, U.K., gang after which the show is named.

Sadler’s applied for a U.S. trademark for the name in 2017. Mandabach sent it a warning letter in 2018, and Sadler’s began selling the drinks in the U.S. through co-defendants Halewood Wines & Spirits Inc and The Winebow Group LLC in 2020.

Now, before we get to how the court ruled on the injunction, there are a couple of things you have to understand about all of this. Peaky Blinders is not a fictional gang created by the show's producers. They were a very real street gang that operated in England until the early 1900s. Sadler's former owner was a descendent of a Peaky Blinder gang member and the gang used to go to the brewery's venues on the regular as a result. It's for those reasons that the company decided on using Peaky Blinders branding.

Now, the show producers claimed a number of things in its lawsuit and request for an injunction. It claimed that the trademark it held for the show was not at all descriptive, that it had acquired secondary meaning, and that there was real customer confusion in the public due to Sadler's use. The court denied the injunction and the reasoning it did so should give the producers pause on whether to keep this lawsuit going in the first place.

Caryn Mandabach Productions Ltd didn’t show that it owned a protectable trademark in the name, that Sadler’s Brewhouse Ltd’s products were likely to cause confusion, or that the alleged confusion caused it irreparable harm, U.S. District Judge Consuelo Marshall said Wednesday, rejecting the production company’s bid for a preliminary injunction.

Marshall found Wednesday that Mandabach didn’t prove it had a protectable interest in its unregistered trademarks, in part because its use of “Peaky Blinders” is “likely descriptive or suggestive of a television show regarding a group of persons named the Peaky Blinders.” Mandabach also didn’t make the “clear showing” required for a preliminary injunction that Sadler’s was likely to confuse consumers. Mandabach also wouldn’t be irreparably harmed without an injunction, Marshall said, noting that it waited over two years to sue and nearly three years to request an injunction after sending Sadler’s the warning letter.

The full ruling on the denied injunction is embedded below. If you want a sense of why Mandabach maybe should just drop this whole thing, it's worth a read. Injunction rulings have lower bars than would be considered in a motion to dismiss argument, should Sadler's seek one, but the analysis is still fairly damning. In a nod back to the opening paragraph of this post, for instance, consider the court's view on whether these two companies operate in the same marketplace.

“Related goods are generally more likely than unrelated goods to confuse the public as to the producers of the goods.” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1150 (9th Cir. 2011). Here, Plaintiff’s good is a television show whereas Defendants’ goods are whiskey. Therefore, the proximity of the goods factor does not favor finding a likelihood of confusion.

Most of the tests for trademark infringement and for granting an injunction follow a similar track.

Frankly, a great deal of this hinges on the show's own decision to use the name of a historically famous real life street gang as its show name. The idea that this slice of history could be locked up by a television show and prohibit its use in a totally unrelated market flies in the face of the purpose of trademark law.

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Filed Under: beer, injunction, likelihood of confusion, peaky blinders, trademark, tv shows
Companies: mandabach, sadler brewhouse


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  • identicon
    Pixelation, 21 May 2021 @ 8:31pm

    Well...

    I'll drink to that!

    reply to this | link to this | view in chronology ]

  • identicon
    Bobvious, 21 May 2021 @ 9:33pm

    "Injunction rulings have lower bars"

    I see what you did there. 🍺

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 21 May 2021 @ 10:41pm

    The idea that this slice of history could be locked up by a television show and prohibit its use in a totally unrelated market flies in the face of the purpose of trademark law.

    You'd think so, but taking inspiration from existing things and locking them up is entirely the basis of intellectual property law. Always has been.

    reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 22 May 2021 @ 3:13am

    If Mandabach's customers indulge in enough of Sadler’s product, they then might be inebriated enough to connect the two.

    Of course given the expansion of imaginary rights one might wonder if the descendant has a case to sue over portraying the family in a less than favorable light.

    reply to this | link to this | view in chronology ]

  • icon
    Roy_Hinkley (profile), 22 May 2021 @ 6:21am

    “laches” and “acquiescence” compels suits like this

    To be fair, it should be worth noting that trademark holders are compelled to pursue infringement if they wish to retain their property rights. Failing to bring suit in a timely fashion once aware could invite a laches and acquiescence defense.

    The landmark example is Thomas Kenneth Abraham d/b/a Paddle Tramps Manufacturing Co. v. Alphi Chi Omega, case no. 12-1341 (2013).

    I don't mean to suggest they have no choice in the matter, but my guess is most legal teams would prefer to let the judge decide rather than risk protection of the brand.

    reply to this | link to this | view in chronology ]

    • icon
      That Anonymous Coward (profile), 22 May 2021 @ 8:31am

      Re: “laches” and “acquiescence” compels suits like this

      If they were in the same industries, I could see the reasoning.
      (See the story about the stupid little brand that claimed Ocean Spray time traveled to steal the mark they stole from Ocean Spray covered here recently).

      But when you are a technology company suing a grocery store over fruit shape that only is similar in that people would say they are both fruit but different looking... ehhhhhh

      You make a tv show based on historical figures then suddenly claim your trademark over the entertainment market covers booze.
      What is unsaid here but well I have a feeling is the delay in the filing was because they were trying to get a cut from the booze maker.
      Oh your only popular because of our show so you should pay us... descendant of one of the historical figures we fictionalize.

      Imagine if someone clarified the law to head off these our trademark is for shoes but that means we have to sue that soup company on the other side of the planet.
      I mean isn't Monster a great example of a trademark bully claiming to own the work monster in every single industry despite them not holding the mark in those industries because they don't participate in them & not filed any paperwork claiming they will be.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 May 2021 @ 11:44am

      Re: “laches” and “acquiescence” compels

      Failing to bring suit in a timely fashion once aware could invite a laches and acquiescence defense.

      A lawsuit isn't the only option. The TV people could've offered a trademark license in return for a bottle of whiskey and maybe a promise the whiskey people won't use a similar logo to the TV show.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 May 2021 @ 10:50am

    The show peaky Blinders didn't have nearly enough scenes of them slashing peoples eyeballs open with the razorblades hidden in their hat brims.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 22 May 2021 @ 11:22am

    Re: thanks for sharing

    This is a bot above me.

    reply to this | link to this | view in chronology ]

  • icon
    BernardoVerda (profile), 22 May 2021 @ 2:55pm

    The idea that this slice of history could be locked up by a television show and prohibit its use in a totally unrelated market flies in the face of the purpose of trademark law.

    I would love an explanation on why this issue apparently wasn't even considered in the court's decision.

    It strikes me that this is an ongoing problem in "Intellectual Property" law, and many historical matters do in fact get locked behind "Intellectual Property" pay walls, when perhaps they shouldn't. (The example that most readily comes to mind for me is the notorious locking away of Martin Luther Kings famous I Have A Dream speech.)

    reply to this | link to this | view in chronology ]

  • icon
    Vermont IP Lawyer (profile), 23 May 2021 @ 6:28am

    Big Candy Is Angry

    I hope someone will offer their opinion about the case described in a recent NY Times article with the title "Big Candy is Angry."

    reply to this | link to this | view in chronology ]

  • identicon
    Ms Pedant, 23 May 2021 @ 2:39pm

    Peaky Blinders the Netflix show

    Peaky Blinders the BBC show. Detail is important.

    reply to this | link to this | view in chronology ]


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