‘Bourbon War’ Ends After Skirmish in Sixth Circuit

CINCINNATI (CN) – A distiller’s use of the Old Taylor name to pinpoint the location at which it will create a new bourbon does not infringe on a competitor’s trademark and falls under the fair-use defense, the Sixth Circuit ruled Thursday.

Sazerac Brands LLC sued Peristyle LLC for trademark infringement after Peristyle purchased and restored the Old Taylor Distillery in Millville, Kentucky – the namesake of E.H. Taylor, father of the modern bourbon industry.

The location is a historic landmark and contains two signs original to the property, and Sazerac – which owns trademarks for Old Taylor and Col. E.H. Taylor – claimed Peristyle used the logo and name to cash in on the site’s notoriety.

The parties argued before a Sixth Circuit panel on June 7, a hearing that U.S. Circuit Judge David McKeague called the start of the “Bourbon War.”

The Cincinnati-based appeals court wasted little time in issuing its opinion, which affirmed a lower court decision in favor of Peristyle.

U.S. Circuit Judge Jeffrey Sutton authored Thursday’s ruling approving Peristyle’s use of the Old Taylor name.

“Peristyle,” he wrote, “used the Old Taylor name in a descriptive and geographic manner. It referred to Old Taylor to pinpoint the historic location where Peristyle planned to make a new bourbon, not to brand that bourbon.”

“Keep in mind that Peristyle has not begun selling its bourbon. It won’t hit the shelves for four years. When it does hit the shelves, the bourbon will be called Castle & Key and Peristyle does not plan to put ‘Old Taylor’ on the bottle,” Sutton added.

Sazerac had argued that Peristyle’s use of the name on advertisements and social media posts trod on its trademark rights, but the Sixth Circuit panel disagreed.

Judge Sutton contrasted Peristyle’s use to that in the 1940 case National Distillers Products Corp. v. K. Taylor Distilling Co., out of the Eastern District of Kentucky.

In National Distillers, K. Taylor used the name “Kenner Taylor” to “dupe the public into thinking that Kenner Taylor bourbon was a successor to Old Taylor bourbon,” according to Sutton.

“Peristyle did no such thing,” he wrote. As Judge [Gregory] Van Tatenhove correctly recognized below, ‘Peristyle is not attempting to trade off the good will of Sazerac. Instead, Peristyle is enjoying the goodwill already ingrained in the property it purchased and is advertising itself for what it is: a distillery first built by Colonel Taylor, subsequently abandoned, but once again purchased, renovated, and restored to life as Castle & Key.’”

Sazerac insisted that Peristyle could not use the signs located on the property without infringing on its trademark, an argument that Judge Sutton also shot down.

“Past is prelude when it comes to Peristyle’s future,” he wrote. “It plans to put up a Castle & Key sign next to the historic signs before the company opens the yet-to-be-finished distillery to the public. Once they do, visitors will know they are at the historic Old Taylor distillery, where Castle & Key distills its own bourbon. Trademark law demands no more.”

Judge Sutton waxed poetic about bourbon in the introduction to his opinion, and noted that “over 95 percent of the world’s bourbon flows from an old Kentucky home.”

He elaborated: “A constellation of circumstances gives the Bluegrass State unique advantages to making bourbon: the local creative spirits, long lost to history, who innovated the brew; the state’s pure limestone waters, plentiful oak trees and a grain-friendly climate, all needed to produce the drink; the too-many-to-count hollows in the eastern part of the state, all needed to sustain the continued production of the drink during Prohibition; and a rich and richly preserved history of bourbon making that stretches back the late 18th century, all part of the experience of drinking bourbon today.”

U.S. Circuit Judges Bernice Donald and McKeague also sat on the panel.

Will Arvin, founding partner at Castle & Key, said in a statement that the Sixth Circuit’s decision “clears the way for Castle & Key to tell the whole story of our unique and historic site.”

“As we restore the birthplace of bourbon tourism to the destination that it once was, we will continue to honor the legacy of legendary distiller Col. Edmund Haynes Taylor, Jr.,” Arvin said.

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