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History Saves Bourbon Distillery From Trademark Infringement

Posted in Fair Use, Infringement, Law Suits

They say you can’t run away from your past, it will eventually catch up to you. Sazerac Brands may have just learned that lesson the hard way, thanks to the Sixth Circuit Court of Appeals.

Sazerac Brands owns rights in the OLD TAYLOR and COLONEL E.H. TAYLOR brands of whiskey (distilled at Sazerac’s Buffalo Trace distillery). It isn’t surprising, then, that Sazerac was not pleased when a new company, Peristyle, began using “Old Taylor” to refer to its in-development distillery in social media and in the press. Sazerac sued Peristyle for trademark infringement, resulting in a multi-year legal battle that ended earlier this month with the Sixth Circuit’s ruling (probably, pending further review).

But back to the history lesson. In 1887, Colonel Edmond Haynes Taylor, Jr.  built the Old Taylor Distillery in Kentucky, one of the most prolific distilleries of its time. It was more like the destination breweries you see today: it was a castle with gardens, pools, turrets, pergolas, and other embellishments that were uncommon at the time.

Prohibition came and sales disappeared. The distillery and the brand changed hands multiple times after World War II. Ultimately, the distillery was shut down in 1972, but Old Taylor brand whiskey continued. Most recently, the rights to the brand were purchased by Sazerac in 2009. The actual distillery became abandoned and run-down. Nature and vandals took their toll, even on the once picturesque pool (seen below, or here for more photos).

It remained this way until 2014, when Peristyle purchased the land with the intent of renovating the grounds and buildings for a new brand of whiskey. However, at the time of renovation, Peristyle had not yet decided on a new name and instead referred to the location as “the Former Old Taylor Distillery” or simply “Old Taylor.” Even though the distillery had been shut down for more than forty years, there was still a 400 foot “Old Taylor Distillery” sign on a warehouse and a “The Old Taylor Distillery Company” sign located at building’s main entrance.

Peristyle informed Sazerac that it intended to market its spirits under a different name than Old Taylor. Yet Sazerac pressed forward with its claims, even after Peristyle announced that its products would be marketed under the brand Castle & Key. Part of Sazerac’s concerns stemmed from Peristyle’s intent to keep the Old Taylor signs on its distillery and the “Old Taylor” name as well as continued references to Old Taylor in marketing and in the press for Castle & Key.

The Sixth Circuit affirmed the district court’s grant of summary judgment to Peristyle, concluding that Peristyle’s display and usage constituted fair use of the Old Taylor trademark. The court reasoned that Peristyle’s use of the name was historical in nature, describing the origins of the distillery and its physical location. After all, the court noted, the building is listed as the “Old Taylor Distillery” on the National Register of Historic Places.

It’s difficult to fault Sazerac for being concerned by Peristyle’s conduct, at least initially. But the court’s decision provides a lesson beyond history: owners of brands with a long lifespan should carefully consider the context in which a third-party is “using” their mark and whether fair use may apply.