Since intellectual property law and cocktails are a recurring topic lately, it’s worth mentioning a couple recent developments. First, the tiki-themed craft cocktail bar Painkiller in New York has been forced to change its name to PKNY after Pusser’s rum sued over its use of the name Painkiller, a reference to a tropical cocktail that predates both the bar and the rum:
In the lawsuit filed April 12 in U.S. District Court, plaintiff Pusser’s Rum Ltd., which sells rum, cocktail mixers and rum products such as cakes under the brand name “Painkiller” sued tiki bar owners Giuseppe Gonzalez and Richard Boccato, claiming irreparable harm to its brand, unfair competition and unfair business practices, according to court documents on file in the Southern District of New York. […]
The plaintiffs demanded that the bar stop calling itself and any of its drinks by the name Painkiller, for which they hold two U.S. trademarks, one for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice,” and one for “non-alcoholic mixed fruit juices,” which they market as “Pusser’s Painkiller Cocktail Mix.” […]
In a consent order signed by both parties May 16, Gonzalez and Boccato, along with their corporate entity, Essex Street Bar & Lounge, Inc., agreed to be “permanently restrained and enjoined” from using the trademarked term Painkiller or “any other confusingly similar term” in association with any bar, restaurant, grill, lounge or other establishment, or any “beverage, libation or cocktail” unless it is made with Pusser’s rum. They also agreed not to use the term in any marketing or advertising materials, and to give up their website domain within 45 days of the order, though the court did not require them to turn it over to Pusser’s.
Similarly, Portland’s own Trader Tiki has been forced to change the name of his line of syrups to B. G. Reynolds. He doesn’t name the company that would object to his marketing a line of tiki syrups with “Trader” in the name, but if you’re into cocktails you can probably make a good guess who that might be. (Side note: Why do these disputes always seem to involve rum and tiki companies?)
About a year ago, I was approached by the owners of another company of similar name, and asked cordially to stop calling myself a Trader and go off and do something else. I fought tooth and nail, but they weren’t having it. So, in respect to the original “Trader”, and with the advice of a few good friends, I am moving forward with the name change from Trader Tiki’s Exotic Syrups to B.G. Reynolds’ Exotic Syrups.
Naturally this is creating some ill will in the cocktail community, especially in the direction of Pusser’s, which is getting blasted on social media and blogs. This is part of a general backlash against trademarking cocktail names (see the conflict over the Dark and Stormy). There’s also a lot of confusion over copyright and trademarks. Technology policy writer Tim Lee helpfully clarified the differences last year in the context of Gosling’s trying to stifle competition in the Dark and Stormy cocktail:
But perhaps the most important difference is that trademarks have a dramatically different policy rationale from patents and copyrights. Copyrights and patents are designed to create legal monopolies that drive up the price of creative works and thereby reward authors and inventors for their creativity. Although consumers may benefit from the resulting increase in creativity, the short-term effect is to force them to pay more than they would in a competitive market. Trademarks aren’t like that at all. The point is not to limit competition. To the contrary, the point is to enhance competition by ensuring that consumers know what they’re getting. This is why it’s emphatically legal to run comparative advertising featuring your competitor’s trademarks. Microsoft may own the “Windows” trademark, but Apple is free to use it as a punching bag as long as they don’t mislead consumers about what they’re getting.
The same principle applies in the Dark and Stormy case. The point of trademark law is to make sure consumers know what they’re getting (whether it’s Gosling or Zaya), not to give Gosling a monopoly on the concept of mixing ginger beer with rum. I haven’t seen Zaya’s ad and I’m not a trademark lawyer, so I don’t want to speculate on the legal merits of Gosling’s position. But certainly the apparent purpose of Zaya’s ad—encouraging bartenders to substitute their own rum in place of Gosling’s—is entirely within the spirit of trademark law. If the net effect of Gosling’s threats is that consumers wind up with fewer opportunities to try mixing ginger beer with different kinds of rum, that is certainly not what trademark law is supposed to accomplish.
The Painkiller and Trader Tiki changes are matter of trademark law, not copyright. In the case of Pusser’s, the company actively markets and owns a trademark to a product called Pusser’s Painkiller Cocktail Mix. So while it was arguably excessive of them to sue a tiki bar with the same name, it’s not totally implausible that the bar might create confusion among customers or dilute their trademark. On the other hand, it’s also not clear that Pusser’s had a legitimate claim to the Painkiller trademark as applied to bar and restaurant names. Cocktail blogger Vidiot has run searches for the trademark and, while neither of us is an attorney, he makes a good argument that the company’s claim may not have held up in litigation. Since the case was settled, we may never know. Unfortunately, when a larger company threatens a start-up business with a lawsuit, it may be wiser for the smaller party to avoid the costs of fighting in court and focus on their business.
Another concerning part of the settlement is the requirement that PKNY no longer offer any drink called a Painkiller that doesn’t use Pusser’s rum. Though the settlement isn’t binding on anyone else, liquor companies would love to be able to trademark popular cocktails and insist on use of their brands — if not at individual bars, then at least in advertising. This is part of what was behind the Dark and Stormy dispute, and defending that trademark has been expensive and time-consuming, along with creating some mild ill will. In a recent Fortune profile, Malcolm Gosling of Gosling’s rum concedes that it’s probably not a strategy the brand would pursue again. “Would we trademark another drink?” he says wearily. “Probably not.”
If other brands continue this strategy, it could be be restrictive of bartenders’ creativity. However if there’s one lesson from the Painkiller case, it’s that bartenders will not react nicely to brands attempting to use trademark law to force their way into cocktails. The backlash against Pusser’s has been immediate and severe, with influential bartenders boycotting the brand and a Facebook group called “Bartenders Against Trademarking of Cocktails” up to more than 600 members. Whatever the company’s motives in demanding that Painkiller change its name, the costs to the brand in the craft cocktail community will be long-lasting. This is an episode that other brands considering enforcement of cocktail trademarks should remember well.
~Jacob Grier, bartender and writer of Liquidity Preference