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Craft brewery asks judge to keep the ‘stone’ out of Keystone Light

MillerCoors revamped its marketing and advertising of its Keystone Light economy beer after a jury found its use of the “stone” trademark was a $56 million transgression.

SAN DIEGO (CN) — Suggesting they meet over a beer, a federal judge told attorneys for beer conglomerate MillerCoors and craft brewer Stone Brewing to agree on a post-trial injunction over the parties’ uses of the “stone” trademark or risk being on the receiving end of a court order they won’t like.

That’s because there’s an outstanding conflict in resolving the beer makers’ years-old trademark dispute: A jury found in March that MillerCoors — now known as Molson Coors — infringed Stone Brewing’s “stone” trademark related to the sale of its Keystone Light Economy beer, awarding Stone Brewing $56 million in damages.

But the same jury found the infringement was not “willful.”

After the trial, Stone Brewing asked U.S. District Judge Roger Benitez permanently block MillerCoors from using the “stone” trademark and immediately remove infringing products from store shelves.

Benitez raised concerns he was being asked to issue an injunction related to the word “stone,” which he noted was “very, very commonly used in the English language and has many different uses.”

MillerCoors’ use of “stone” in its marketing and advertising of Keystone Light, a decades-old beer brand that preceded Stone Brewing’s 1996 founding, was well-documented throughout the trial.

“I’m here to decide whether a reasonable jury, based on the evidence, could decide the case the way they did,” Benitez, a George W. Bush appointee, told the attorneys during an hours-long court hearing Friday.

At the outset, Benitez had indicated his tentative ruling was not to issue a permanent injunction.

MillerCoors attorney John Bunge bolstered his client’s case for why it should not be forced to pull 30-pack cases of ’Stones — the nickname given to Keystone Light by its customers — off store shelves before the busy summer BBQ season.

“Since the trial we have done our best to address the issues,” Bunge told Benitez, listing off the advertising and marketing changes MillerCoors had made to its Keystone Light brand in the weeks since the trial: deleting old social media posts, changing its 338 billboards, launching a line of “camo” clothes and changing the logo on its Keystone Light Ford Mustang driven in the 20222 NASCAR season by Austin Cindric, to name a few.

“We started planning in February,” Bunge noted. “We thought we would win the trial, but in the event we didn’t, we wanted to be prepared.”

“We have every incentive to follow through on what we told the world we are doing,” Bunge said.

Bunge said if Benitez were to issue an injunction ordering the removal of old Keystone Light products, which separate the “key” from “stone” to emphasize the word “stone,” there should be a “period of transition to the new brand.”

He also asked Benitez to reverse the $56 million jury verdict.

“We don’t know where the $56 million number came from,” Bunge said, suggesting it was improper for Stone Brewing to ask the jury award future damages related to the trademark infringement.

Daniel Lombard, another attorney for MillerCoors, asked Benitez toss out Stone Brewing’s entire case, based on MillerCoors’ claim Stone had waived its right to enforce its trademark due to the years of inaction between first sending the beer conglomerate a cease-and-desist letter in April 2010 and finally filing its lawsuit more than seven years later, in February 2018.

“We continued investing in this brand for years using the ‘stone’ word and what did we hear from Stone Brewing in all these years? Nothing,” Lombard said.

“It’s conduct inconsistent with Stone’s intent to enforce its right,” he added.

Stone Brewing attorney Noah Hagey said the same issue which caused his client to bring the trademark infringement case was still at the heart of the injunction request.

“There’s been enough dispute and enough fighting — it’s time for Keystone to lean back into its name and put the ‘Key’ back in ‘Stone,’” Hagey said.

He said courts throughout the Ninth Circuit have found injunctions “the remedy of choice” in trademark infringement cases and it was appropriate to issue one against MillerCoors.

But Benitez questioned whether it was “inconsistent” to ask the jury award Stone Brewing future damages only to turn around and argue to the court resolving the dispute hinges on a post-trial injunction.

“If we don’t have an injunction, what that means is we’ve been under-awarded damages,” Hagey responded. “We believe there is substantially more injury that has not been compensated.”

Hagey said the damages calculation of future lost profits presented to the jury was “based on the assumption there would be an immediate injunction and that Stone would be allowed to heal.”

He also reiterated trial testimony by Stone Brewing co-founder Steve Wagner the company may not be around much longer.

“We want to save this company, your honor, that’s all I can tell you,” Hagey said. “I’m fearful for my client if we don’t have an injunction and if the modest relief is not upheld.”

Benitez, citing his prior experience with injunctions as a San Diego Superior Court judge, was less convinced an injunction would resolve the litigation.

“I’m not so sure granting an injunction would end litigation between the parties,” Benitez said.

The parties were ordered to meet within 20 days to come up with injunction acceptable to both companies.

A hearing on Stone Brewing’s motion for disgorgement of MillerCoors’ profits and trebling of damages awarded by the jury is scheduled for Aug. 8.

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